IPR: Not a Taking; Not an Illegal Exaction

by Dennis Crouch

Christy, Inc. v. US (Fed. Cir. 2020)

David McCutchen is the inventor of U.S. Patent No. 7,082,640 – a shop-vac that can reverse the air flow (back-flush) in order to clear the filter.  The video below shows how this is implemented.  McCutchen passed-away in 2019, but assigned his patent to his company – Christy, Inc. – which is apparently named after his daughter (Christy).

The patent here issued in 2003 — well before the AIA was even a concept.  However, when Christy attempted to enforce its patent against Black & Decker, the company turned around and petitioned for inter partes review. The PTAB cancelled most of the patent claims — a judgment affirmed on appeal without opinion.

At that point, Christy filed a class-action lawsuit in the Court of Federal Claims (CFC) against the U.S. Government — alleging that the cancellation constituted a 5th Amendment taking that required compensation.

nor shall private property be taken for public use, without just compensation.

U.S. Const. 5th Amendment.  In Oil States, the Supreme Court explained that patents are a “public right” also known as a “public franchise” rather than being pure “private property.” However, the Oil States majority was careful to cabin-in that decision only to the question presented in the case.

We emphasize the narrowness of our holding. We address the constitutionality of inter partes review only. . . . [O]ur decision should not be misconstrued as suggesting that patents are not property for purposes of the Due Process Clause or the Takings Clause.

Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, 138 S. Ct. 1365, 1379 (2018).  In its decision in Christy, the CFC sided with the Gov’t and found that IPR cancellation is not a compensable taking. This result comports with the Court’s prior decisions in Celgene Corp. v. Peter, 931 F.3d 1342, 1360 (Fed. Cir. 2019), cert. denied, 19-1074, 2020 WL 3405867 (U.S. June 22, 2020) and Golden v. United States, 955 F.3d 981 (Fed. Cir. 2020).   I’ll note that the not-a-taking holding is based upon the Federal Circuit’s legal conclusion that “IPRs do not differ sufficiently” from inter partes and ex parte reexaminations available pre-AIA.

The illegal exaction theory is interesting — Christy asks for a refund of its issuance and maintenance fees.  Since this is a class-action, that amount could add-up if we look at all of the patent claims cancelled via IPR.

On appeal, the Federal Circuit found that the CFC does have jurisdiction to hear the illegal exaction case under the Tucker Act, but found that the case lacks merit.

An illegal exaction occurs when money is “improperly paid, exacted, or taken from the claimant in contravention of the Constitution, a
statute, or a regulation.” Norman v. United States, 429 F.3d 1081 (Fed. Cir. 2005).  Given that the Board did not violate Christy’s Fifth Amendment rights by canceling its patent claims, Christy asserts no constitutional provision, statute, or regulation that the PTO violated by failing to refund Christy’s issuance and maintenance fee payments for the ’640 patent. Instead, Christy is left to contend that the PTO’s requiring Christy to pay issuance and maintenance fees for the ’640 patent was in error, and therefore the fees should be refunded. . . .

Christy’s argument fails because the law requires payment of these issuance and maintenance fees without regard to any later result of post-issuance proceedings, see, e.g., 35 U.S.C. §§ 41, 151. Christy identifies no statute, regulation, or constitutional provision compelling the fees’ refund if claims are later canceled in post-issuance proceedings.

Slip Op.

 

 

 

100 thoughts on “IPR: Not a Taking; Not an Illegal Exaction

  1. 10

    “For example, you assert that a constitutionally significant transformation happens when a patent is granted. However, you offer no basis for this claim. ”

    Do I need to offer a basis that water is wet?

    Yes, please do. Explain the nature of this constitutionally significant transformation. I can explain the basis for why contact with water can creates a transformation that is called “wet”. Of course, that would be changing the subject.

    “fundamental fact that a patent consists solely of the rights granted by statute.”

    And YOU miss the fundamental fact that — by statute, the attributes of property carries with it ALL Constitutional protections of property.?

    I take it you are interpreting 35 USC 261, which does not recite “ALL Constitutional protections of property.” Please explain the discrepancy and identify the the relevant protection at issue.

    1. 10.1

      Obtuse.

      Is it deliberate?

      By the way, ‘having the attributes of” need not explicitly state “inures ALL Constitutional protections of property.”

      But by all means, continue to show your aptitude for these things with posts like this one.

      You come close to doing a better job putting yourself down than I do.

      1. 10.1.1

        Why did you fail to include any explanations in your response?

        By the way, in standard English, the phrase “by statute” indicates causation. If you didn’t mean causation, you should have used a different word. Moreover, the full quote is “Subject to the provisions of this title, patents shall have the attributes of personal property.” Why do you think this means “Patents are personal property”? Are the other words decorative?

        1. 10.1.1.1

          Personal property is clearly a type of property.

          Do you really need this explained?

          (Keep on digging — you are the one in the hole here)

          1. 10.1.1.1.1

            Since compound posts confuse you and seem to attract strawman arguments, I’ll ask one question at a time.

            Why do you think that the phrase “Subject to the provisions of this title,” has no meaning in the statement that “Subject to the provisions of this title, patents shall have the attributes of personal property”?

            1. 10.1.1.1.1.1

              Nice projection of confusion (I have none) as well as ‘strawman arguments’ (mine are not the strawmen – you really should check yourself).

              “Subject to the provisions of this title” have to do with turning the inchoate right into the legal rights.

              This is basic Quid Pro Quo.

              Throw that shovel of yours into the ground again, my friend. You should be out of that hole that you are in, in like never at this rate.

              1. 10.1.1.1.1.1.1

                That is an “interesting” interpretation of 35 USC 261.

                “Has to do with turning the inchoate right into the legal rights”? That is just sad. It is almost as if you are falling back on talking points because you have no actual response.

                1. Or maybe because “falling back” to a basic view of patents provides the best understanding.

                  And yes, I noticed that you have provided no alternative view, nor anything except your mindless put down to back up your nothingness.

                  Can you ‘fall back’ as you fall flat?

    2. 10.2

      I asked before, but you slunk away without answering (only to return here on top with only insults), so let me put it to you again, your view of ‘asserted conclusions as first principles’ makes me wonder what YOUR first principles are.

      Do you have any?

      1. 10.2.1

        It is clear that reading comprehension isn’t your thing.

        The above being said, you don’t appear to understand the fundamental fact that a patent consists solely of the rights granted by statute. Apparently, you think that the rights granted by statute must include other enforceable rights from some other source.

        Now that I understand your reliance on a tortured reading of section 261, I decided to return to my policy of ignoring you. You somehow think that “Subject to the provisions of this title” relates only to Quid Pro Quo. Your reliance on Quid Pro Quo is a complete non sequitur (and I should know) because the bargain in obtaining a patent has nothing to do with defining the rights associated with a patent, which are in the statute. You seem to contend that “subject to the provisions of this title” only refers to some provisions. If so, you are claiming that Congress can somehow create personal property but cannot create personal property with certain limitations, like being subject to revocation. You cannot hand wave over this by relying on “basic” principles. Show me where these “basic” principles can be found in the statutes or the Constitution. Otherwise, I will just accept that you cannot support your assertions.

        Do not expect a further response.

        1. 10.2.1.1

          Do not expect a further response.
          I was not expecting a first response – with any level of cognition from you.

          You talk about reading comprehension when you want to know how water is wet.

          First principles for you in regards to property: must a statute making such having the attributes of property MUST provide ALL attributes?

          You keep on digging in that hole of yours…

        2. 10.2.1.2

          First principles for you in regards to property: do you really think that Congress chose that word in a vacuum?

          Your “first principle’ of “must be in the statute” absolutely misses the fact that the term is a well known legal term of art. It is simply not the ‘wild stretch’ that you want to assert (and do so with NO principles, first, second or any level) on a point that you simply want to not recognize.

  2. 9

    >The illegal exaction theory is interesting

    I agree that is interesting as it counters the argument that a mistake was made in the issuance of the patent and thus there is no taking but a correction of a mistake.

    1. 9.1

      The counter (apparently) to the mistake being made is to shift the ‘owner’ of the mistake from the government (FranchisOR) to the party paying the fees (FranchisEE).

      The FranchisEE is acting in good faith, while the FranchisOR is shirking any and all ‘duty’ that must ‘ride along’ with that prized ability to have that notion of control post-grant.

      Those espousing the legal concept of Public Franchise want the power without the responsibility.

      My Uncle Ben spins in his grave.

      1. 9.1.1

        Yeah this kind of stuff is what makes it pretty plain to me that the office should be reqed to put any patent that apps want to put back to examination back to examination upon request after an adverse PTAB decision in these kinds of cases. But congress doesn’t seem to have reqed it. I don’t understand that decision on their part.

        1. 9.1.1.1

          I should add that the reason could be corporate capture basically, of the congress critters.

          1. 9.1.1.1.1

            corporate capture basically, of the congress critters.

            I chuckled- you mean capture by $$$$, eh?

            1. 9.1.1.1.1.1

              Yeah that’s how it happens. It’s not just by stacking the deck of congress critters full of corporate people.

        2. 9.1.1.2

          ? 6, in the many cases in which an adverse IPR does not seek to remove, or does not decisionally remove, all of the claims of the patent, the patent owner CAN put the patent back into ex parte examiner examination – with a reissue or reexamination. [Of course one cannot validly recapture lost claims this way, as in any other Board decision.]

  3. 8

    fcking nice invention, i had wondered why they couldn’t do that in normal vacs a long time ago. Nice to see someone did it.

  4. 7

    In view of the fascination here with “taking” analogies to real property [land] cases that don’t really fit IPRs, here’s another proposed analogy you can argue over: Assume you get a big refund check from the IRS on your income tax. Two years latter you get audited and end up in an IRS administrative proceeding that says your refund was granted by a mistake now apparent from further facts, and they order your return of your refund. Will you refuse to pay back your refund, insisting that that would be a 5th Amendment prohibited “taking”? [Good luck.]

    1. 7.1

      Of course. Along with a jury trial as well. This is a fundamental right, quintessentially American. See link to nclalegal.org

      1. 7.1.1

        Josh,

        Some are quite happy with a large (and uncontrolled) fourth branch of the government.

        What could go wrong by having such a branch that so easily dissipates the checks and balances, separation of powers, and other such protections enshrined in the Constitution?

    2. 7.2

      It seems that Paul has long forgotten the late Ned Heller’s expose on when — and how — the government may ‘fix’ a property right (once sanctioned and released into the public).

      Maybe if Paul did MORE than merely snipe from the sidelines on these legal discussions, he might (just might) have enough credibility to be considered anything other than an IPR cheerleader and State apparatchik.

      1. 7.2.1

        I think it is fundamental to the western system of democracy so that you are not in a constant state of flux of what is yours and what isn’t.

        1. 7.2.1.1

          +1

  5. 6

    I am complicit in taking this discussion into the legal weeds. We are neglecting to consider that the inventor really did invent something useful, invested heavily in the development, commercialization, and patent. And his patent is a reasonable description of the scope of his invention. The PTAB is stretching and twisting the words and applying speculative hindsight about obviousness. Patents such as this are not mistakes, and would readily be upheld in a real court before a jury. The PTAB standard is impossible to meet and is an insidious bait and switch on inventors that is preventing us from meaningful participation. In short the Christy inventors is precisely the sort of “progress in the useful arts” that the patents system is supposed to promote. The PTAB is doing the exact opposite – discouraging progress in the useful arts.

    1. 6.1

      The PTAB is stretching and twisting the words and applying speculative hindsight about obviousness.

      Perhaps, I suppose. A concrete example would help to validate this contention. Can you cite a particular portion of the final decision from this IPR that you consider to be a notably significant example of word twisting or speculative hindsight?

    2. 6.2

      Big +1.

    3. 6.3

      Perhaps it isn’t being considered because it is a completely different issue. The constitutionality of an IPR proceeding is the same for claims that you think shouldn’t have been granted.

    4. 6.4

      “We are neglecting to consider that the inventor really did invent something useful”

      Please do tell us more about the “invention” that which found anticipated by prior art from 1961.

      1. 6.4.1

        The PTAB found anticipated, the equivalent of the Knave being held guilty for stealing the tarts in Alice in Wonderland:

        “Please your Majesty,” said the Knave, “I didn’t write it, and they can’t prove I did: there’s no name signed at the end.”

        “If you didn’t sign it,” said the King, “that only makes the matter worse. You must have meant some mischief, or else you’d have signed your name like an honest man.”

        There was a general clapping of hands at this: it was the first really clever thing the King had said that day.

        “That proves his guilt,” said the Queen.

        1. 6.4.1.1

          The anti-patent people constantly shift the burden. They say prove that it is worth a patent when the statute says prove that it is not worth a patent.

          The other game they play is the hindsight game. There is a lot of psychological evidence published in scientific journals that illustrates very well that it can be almost impossible for a human being to image not knowing something they already know. Most of the judges that aren’t trained in science put little to no effort in combating hindsight in their own thinking.

          1. 6.4.1.1.1

            We both know you didn’t even skim the bases for PTAB invalidating the claims here.

            I suggest you ask yourself this: “is my knee-jerk defense of this claim any better than someone who declares the claim obvious without looking at the prior art?”

            1. 6.4.1.1.1.1

              I do not read Night Writer’s post in the characterization that you impute, Ben.

              Read it again — it’s a post against a gamesmanship angle as opposed to any particular facts found in the PTAB decision.

            2. 6.4.1.1.1.2

              Ben, it is you that are shifting the burden. And, my comment was a substantive law comment on how the anti-patent paid bloggers constantly try to play the burden shifting game.

      2. 6.4.2

        Ben always hitting those talking points that get him that extra income over his examiner job.

        1. 6.4.2.1

          I am far less intrigued with Ben’s idiocy here than with the musings of NS II.

          As usual, NS II jumps in and sits on the wrong side of the issue, taking his potshots. Let’s see if he actually engages on the merits or more like his typical self, merely slinks away.

  6. 5

    When is a government taking not a taking?

    Why; when the all-seeing, all-knowing CAFC says it isn’t, of course.

    1. 5.1

      If it really constitutes a “taking” for a government entity to conclude that a patent claim was wrongly granted and declare that claim invalid, then the Art. III courts are liable for a mountain of takings compensation. The common-sense implication of this observation is that such post-grant invalidation cannot possibly be a “taking.”

      1. 5.1.1

        The Taking is the difference between a patent that is not invalid in a regular court and “reconsidered” by the USPTO.

        1. 5.1.1.1

          Greg — Josh beat me to the punch on this one.

        2. 5.1.1.2

          Either way the patent is invalid, and no one has a right to an invalid patent. If you never had a right to it, then losing it can’t be a taking. To peel away the analogy, if the government was actually taking land, it doesn’t hand a check to anyone who happens to be standing there, rather it pays the actual owner.

          1. 5.1.1.2.1

            id: “To peel away the analogy, if the government was actually taking land, it doesn’t hand a check to anyone who happens to be standing there, rather it pays the actual owner.”

            The correct analogy is this: If a government allows you to pay to obtain land . . . but later takes it away without at least returning the money you paid to obtain the land (including your costs and fees — think prosecution costs and fees), that is a government taking.

            Far worse being if you’ve gone ahead and built a home (think creating a new product / service / company) on the land the gov said was yours before they took your land from you.

            Christy got this exactly right.

            Now, whether or not the anti-patent SCOTUS will agree is another question . . .

    2. 5.2

      What exactly did the government take?

      The answer: nothing. A claim is either valid or invalid. Validity is judged based on the art at the time of the invention. In the ideal scenario, good art is discovered and used during prosecution. However, if invalidating prior art is available but not used during prosecution, a patent issues with an invalid claim. Its invalidity just has not be brought to light yet. The claim’s validity or invalidity was a fixed to the claim the moment it came into existence. An IPR merely recognizes that invalidity.

      1. 5.2.1

        PTAB uses different standards and procedures to reach a different conclusion. The Federal Circuit and Supreme Court have held that patent can be both valid and invalid, depending on which venue is reviewing. For instance Cuozzo holds that “These different evidentiary burdens mean that the possibility of inconsistent results is inherent to
        Congress’ regulatory design.”

        1. 5.2.1.1

          …holds…?

        2. 5.2.1.2

          I disagree that a claim can be both valid and invalid. I would rephrase your comment to say that the presumption of validity is stronger or weaker depending which forum you are in. That is, the different forums have different barriers to actually open Schrödinger’s box.

          1. 5.2.1.2.1

            Sounds like a shell game to me.

          2. 5.2.1.2.2

            You may “disagree,” Squirrel, but the characterization is indeed correct AND separate from the presumption of validity.

          3. 5.2.1.2.3

            “I disagree that a claim can be both valid and invalid.”

            Different standards for claim construction etc. lead to this result regularly.

  7. 4

    The way I see it, the fees you pay to the USPTO, and the efforts you go to, to get a Grant Certificate, gets you to a presumption of validity, a seat at the table, a basis for asserting a claim, in court. You have paid to be kitted out with a boot on your foot. You get what you pay for, every time, don’t you?

    The boot is of your own construction though. Nobody is guaranteeing, are they, that it is strong enough to be put to use. Nobody promises, do they, that it will survive first contact with the enemy.

    1. 4.1

      It probably would engender better public policy if the USPTO and the EPO were obliged to refund search, examination, & maintenance fees for patents that are subsequently invalidated. Right now these office collect one set of fees from the applicant to obtain a patent, and then another set of fees from an opponent to invalidate the same patent.

      That creates a perverse incentive in which one can maximize revenue by granting patents of dubious validity and then shake down an affected party to pay to invalidate that grant. I am not saying that either the USPTO or the EPO actually runs on this business model, but one really should not leave the incentives to encourage such an outcome.

      1. 4.1.1

        Since the vast majority of patents are not subject to an IPR, an obligation to refund examination and maintenance fees for the few that are cancelled is unlikely to be much of a financial incentive.

        1. 4.1.1.1

          Mere quantity is not at point – leave it to NS II to bungle one of the rare points that Greg makes…

        2. 4.1.1.2

          This is a fair point. I think that there is still a decent argument for the refund policy on fairness grounds, but you are correct that the magnitudes are not right for the incentive effect that I was suggesting in #4.1.

      2. 4.1.2

        Greg, I suppose that the fees payable to the USPTO in the event of post-issue validity proceedings are high enough to be interesting to USPTO business managers. But at the EPO the fee to oppose a patent, and the fee to appeal an EPO Examining or Opposition Division decision, are grotesquely below the true cost of managing such proceedings. The idea that EPO managers should be trying to provoke more oppositions is not credible.

        EPO managers have quite another business plan, namely to incentivise all Applicants to respond to the search report with such a solid and complete response that a Notice of Allowance can follow forthwith. See, the plan results in a steam of filing fee income, followed 12 to 24 months later with a stream of grant and printing fee income on those very cases.

        That way maximises income for the EPO, income that is handed out as dividends to the EPO’s shareholders, namely the 38 sovereign EPC Member States. Examiner numbers can be trimmed down to a minimum, and Applicants encouraged to file endless streams of divisional applications, each delivering a new income stream of filing, designation, search, examination, yearly maintenance fees, issue fees and printing fees.

        How to play the system? Easy: draft your patent applications in a way that makes it easy for EPO Examiners to issue a Notice of Allowance. It’s what most of the Examiners are desperate to do, to please the quality and business managers and thereby keep their job.

        1. 4.1.2.1

          MaxDrei,

          Maybe you should try to be a little cynical to how your own posts read.

          In the immediate case, substitute “rubber stamp approved” as your mechanism, and EVERY one of your touted ‘Ends’ is reached.

          1. 4.1.2.1.1

            No, anon, rubber stamp approval doesn’t cut it. Issuing bad patents increases the number of oppositions, each one of which is a serious drain on the EPO’s precious resources and its much-appreciated capability to pay out juicy dividends to its shareholders.

            The aim is quite different, namely to get out as soon as possible after filing an EESR with (annexed to it) an opinion on patentability which gives each Applicant a route map to issue of an early Notice of Allowance of claims that are new, useful, enabled and non-obvious (and very likely much narrower than those originally punted at the EPO). Applicant then chooses what claims to present with the fee for examination on the merits. At the EPO, you pays your money and you makes your choice (of the easy road or the hard).

            1. 4.1.2.1.1.1

              You just gave a ‘reasoned discourse’ for NOT going the opposition route – thereby removing that as a viable objection.

              The “rubber stamp” very much does apply to your reasoning here. If that rubber stamp affects that very first step that you provide (the opinion on patentability), then there would be NO basis for the oppositions.

              As I stated, you would do well to stop, pause, and look at your ‘motherhood and apple pie’ pronouncements with just an ounce of cynicism, and you would see that your ‘advice’ is ultimately shallow and easily brushed aside.

      3. 4.1.3

        Should patent owners likewise be required to refund all license and settlement fees obtained if their patents are invalidated?

        1. 4.1.3.1

          No – that is an additional cost back to the Office for creating the expectations under which those costs were incurred in good faith.

          I am rather surprised (not) that Greg – being active again – has not reminded everyone that a patent is a particular type of personal property, and the REASON why the Office can get involved again has to do with the type of property (and the necessary implications to the Office for being the ‘owner’ [in a way] of that type of property).

        2. 4.1.3.2

          Not if the infringer failed to persuade a jury of the patents invalidity.

        3. 4.1.3.3

          To wit, from Oil States (italics in original, bold is my emphasis):

          “Inter partes review falls squarely within the public-rights doctrine. This Court has recognized, and the parties do not dispute, that the decision to grant a patent is a matter involving public rights—specifically, the grant of a public franchise. Inter partes review is simply a reconsideration of that grant, and Congress has permissibly reserved the PTO’s authority to conduct that reconsideration. Thus, the PTO can do so without violating Article III.”

          What Thomas obfuscates is that the “decision to grant”” is one thing, but that ONCE GRANTED, a property right inures other protections of property found in the Constitution.

          The ‘tie’ to the ability of Congress to ‘reserve for reconsideration’ is played out through the use of the word ‘franchise’ (or more fully, ‘public franchise’).

          As Greg has been eager to point out, a public franchise is still a form of private property.

          What Greg has been remiss about — and directly on point with the Government having a remaining ‘tie’ after the grant releases the patent into the world (for that very ‘reconsideration’ power), is the notion of FranchisEE and FranchisOR — and critically — the duties that attend these legal notions.

          As is often the case, only one edge of a double-sided sword is paid attention to.

          1. 4.1.3.3.1

            What Thomas obfuscates is that the “decision to grant”” is one thing, but that ONCE GRANTED, a property right inures other protections of property found in the Constitution.

            As long as you keep presuming the nature of patent rights, you won’t be taken seriously. Your entire “argument” is based on the your presumption, which is obviously in dispute. Instead of whining, consider the possibility that you don’t understand the concept of a public franchise.

            1. 4.1.3.3.1.1

              I do not presume the nature of patent rights and if your view of that nature differs from what I post, by all means state what you view the nature of patent rights to be.

              1. 4.1.3.3.1.1.1

                I cannot identify the differences because you have never clearly articulated your view. You merely assert your conclusions as first principles. For example, you assert that a constitutionally significant transformation happens when a patent is granted. However, you offer no basis for this claim. The only thing we know about this transformation is that it is somehow inconsistent with IPRs.

                The above being said, you don’t appear to understand the fundamental fact that a patent consists solely of the rights granted by statute. Apparently, you think that the rights granted by statute must include other enforceable rights from some other source.

                1. For example, you assert that a constitutionally significant transformation happens when a patent is granted. However, you offer no basis for this claim.

                  Do I need to offer a basis that water is wet?

                  Do you have any background whatsoever in patent law or the history of innovation? Do you even know what the Quid Pro Quo is?

                  Your view of ‘asserted conclusions as first principles’ makes me wonder what YOUR first principles are.

                  Do you have any?

                2. fundamental fact that a patent consists solely of the rights granted by statute.

                  And YOU miss the fundamental fact that — by statute, the attributes of property carries with it ALL Constitutional protections of property.

                  You want to point to some imaginary speck in my eye while that forest of logs rests in yours.

    2. 4.2

      gets you to a presumption of validity

      Presence AND Level

      (ask i4i how important that is – do NOT ask Greg)

    3. 4.3

      The boot is of your own construction though. Nobody is guaranteeing, are they, that it is strong enough to be put to use.

      Perhaps in your Sovereign, with its different Quid Pro Quo, but here, there IS a guarantee of sorts and an official turning of ones inchoate right into a set of full legal rights.

      That is NOT merely the right to be in court.

      You are looking at what a patent IS in a more than somewhat hackneyed way.

      1. 4.3.1

        Don’t understand your drift, anon. What do you mean by “full”. (Boy, I really dislike adjectives. It’s the “any true Scotsman” all over again)

        Here in Germany, the District Courts trying patent infringement cases have no status to examine attacks on validity. If you have a validity attack, you have to get yourself down to Munich, to address the PTO or the Federal Patents Court.

        Nevertheless, your patent grant certificate buys you only an entry ticket to the District Court, the right to assert your exclusive rights in court. The court will listen to you but there is no guarantee that it will give you the relief you seek. Is that a “full” right and, if not, what is?

        1. 4.3.1.1

          Your lack of understanding does NOT mean that the fallacy of “no true Scotsman” is in play.

          That’s the second time recently that you deflected to that fallacious accusation.

          As to your bewilderment with “full,” I suggest that you look into understanding the US Quid Pro Quo and the notion of inchoate (in the Lockean view of patents as property).

        2. 4.3.1.2

          You keep on thinking of patent as ONLY this invitation into the courtroom.

          That is an incorrect view.

          I cannot be more direct, or put the issue more simply for you to grasp.

          1. 4.3.1.2.1

            1. Nobody is “inviting” the patent owner to assert his patent in court
            2. The right given by patent is inchoate up to issue. At that point it ceases to be inchoate but becomes real. The right given is the right to ask the court for relief from infringement of your real rights given by issue of the patent.

            1. 4.3.1.2.1.1

              The right given is the right to ask the court for relief

              Wrong.

              Simply and utterly wrong to phrase the right this way.

              See the post that you responded to.

              1. 4.3.1.2.1.1.1

                … try this: does the deed to your property merely give you a ticket to the courts to pursue actions that may be required to protect that property?

                Then try this: READ what the (US) patent law itself says about the right of the patent.

                1. Deed to the property, you say? Physical property exists as such, with or without any such “deed” and whatever any court might say about who owns it. But what does a patent “property” look like, distinct from the “deed”, the Notice of Grant?

                  Metes and bounds? Measure them in acres, do you, or feet and inches? Or does the court tell you what they are? You have the certificate which the PTO issues to you, but nothing else. You can take it to a court for assessment, and the court will decide what you get.

                  Magritte, his painting and his pipe. Let’s be clear which is which.

                2. “This is not a pipe” has no bearing on this discussion.

                  If you want to ‘push’ the physical existence angle, then the detriment to IP is even worse than the ‘real land’ basis, and that is a point NOT in your favor.

      2. 4.3.2

        Without the right to be in court, what is the point of a patent?

        1. 4.3.2.1

          Your question appears to be a desire to confuse one aspect with the nature of the whole.

          Why would you presume that one aspect IS the the whole?

          (You might want to take note that no one said not having a right to be in court was somehow unimportant)

          1. 4.3.2.1.1

            I’m not confusing anything. I simply submit that some aspects (i.e., rights) are more significant than others. Without the right to be in court (or at the ITC), the “set of full legal rights” would seem to be meaningless. Let me rephrase my question.

            Without the right to be in court (or at the ITC), do the remaining rights matter? If so, please explain.

            1. 4.3.2.1.1.1

              simply submit that some aspects (i.e., rights) are more significant than others

              On what presumption? You have not set out any ‘articulations’ (nor anything remotely close to meaningful support).

              Your “rephrase” merely begs the question of without ability to enforce, do you really have a right?

              THAT is simply not helpful to the point at hand, now is it?

              Without the ability to enforce ANYTHING, nothing is of any value.

              That forest of logs in your eyes rather gets in your way.

  8. 3

    This is Kelo v. City of New London, minus an independent judiciary and compensation.

    Under this holding, a private developer can have their cronies on city council declare your deed invalid and bulldoze your house without any compensation.

    The United States has become a banana republic.

    1. 3.1

      While invalidating a deed might invalidate ownership of real property, the property would continue to exist and some entity (public or private) would own it. Do you have an analogy involving something similar to patent rights that can disappear from existence without a valid deed or equivalent?

      1. 3.1.1

        Good point. The developer would have to allow Susette Kelo to sleep in the parking lot (if she pays the standard essential maintenance fees).

      2. 3.1.2

        In the patent sense, the property does not exist prior to the bargain of the Quid Pro Quo (leastwise, not to the ‘reality’ of the public).

        This makes the transgression against IP even worse than deeds to real lands.

      3. 3.1.3

        … maybe NS II presumes that the nature of the patent right does not include the Quid Pro Quo…

    2. 3.2

      The movement of the U.S. toward “banana republic” status is a distressingly defensible assertion, but the IPR system seems a strange example to marshall as your “exhibit A” for this thesis. NSA cell phone surveillance or millions of dollars in government contracts being directed to businesses owned by the president seem like much more glaring (and socially consequential) examples.

      1. 3.2.1

        “A very substantial portion of that price is going to have to come into the treasury of the United States,” Trump said of the potential TikTok sale. “The United States should be reimbursed or paid because without the United States they don’t have anything.” The president added: “It’s a little bit like the landlord-tenant. Without a lease, the tenant has nothing. So they pay what’s called key money or they pay something.”

      2. 3.2.2

        PTAB is on the cutting edge of the banana orchard. Recall in Oil States that the Associate Solicitor explained to Justice Gorsuch that the legal premise that permits the USPTO to revoke a patent also allows the EPA to invalidate a land patent for an ancestor’s regulatory violation.

        Otherwise I agree the impact can be mitigated by educating inventors about the scam. Then it will be on the level of state sponsored lotteries that rob from the poor and uneducated.

    3. 3.3

      It would be that if Ms. Kelo had never actually owned the property that was taken. No one is entitled to an invalid patent.

  9. 2

    The illegal exaction theory re: maintenance/issue fees is interesting, apart from the CAFC’s reasoning, it didn’t have any legs for the simple fact that — as the Court points out on page 8 — the IPR didn’t actually cancel all of the claims of the patent.

    I’m still a bit perplexed by the daisy chain of binding precedent w/r/t PTAB-related takings claims. First, the Court holds in Celgene that IPR cancellation is not a taking; then in Golden, the Court holds that Tucker Act jurisdiction was not displaced in the AIA — which seemingly means that the takings issue should not have been reached in Celgene. Yet the Court nonetheless held that Celgene controlled the outcome in Golden, and then in Christy said that that Golden controlled Christy. Substantively I think the outcomes likely do not differ, but it’s a little odd.

    1. 2.1

      [I]n Golden, the Court holds that Tucker Act jurisdiction was not displaced in the AIA — which seemingly means that the takings issue should not have been reached in Celgene.

      I think that this is correct. If it ever became necessary to think carefully about this, the reader should conclude that the “takings” portion of Celgene was mere dictum, because the CAFC did not have jurisdiction actually to hear that part of the case—it being not yet ripe. The whole point is moot, however, because the court has reached the same conclusion in Golden that it purported to reach in Celgene, such that there is a precedential holding to this effect in a case in which the CAFC did have jurisdiction. Also, Celgene merely purports to be applying Patlex, so even to the extent that one might question Golden‘s reliance on Celgene, the outcome is compelled by those same authorities that are cited in the Celgene dictum.

      1. 2.1.1

        Please be more careful there Greg,

        The whole point is moot, however, because the court has reached the same conclusion in Golden that it purported to reach in Celgene,

        You have lost track of the circular reasoning and it was NOT — as you put it — reaching the same conclusion (as if Celgene was not there); but instead it was relying on that dictum as if it were more IN the Celgene case.

        The late Ned Heller once provided a reference with a warning on this very mechanism: how dictum gets torqued out of control by the courts.

  10. 1

    Just a distinguishing reminder that the 5th Amendment prohibition that “nor shall private property be taken for PUBLIC use, without just compensation” [emphasis supplied] does apply to a government taking of patent rights for its own use, as in certain military equipment procurement contracts.

    1. 1.1

      Does the government ever grant the right to preclude it from patent infringement?

    2. 1.2

      Paul — that’s the other half of Golden. Relying on Zoltek/Schillinger, the Federal Circuit said no, government use is not a taking under the Fifth Amendment — but the government has waived suit under 28 USC 1498.

      1. 1.2.1

        This may be a distinction without a difference, but I don’t see 28 USC 1498 as a waiver of sovereign immunity. I see it as creating a cause of action.

        1. 1.2.1.1

          The two are not mutually exclusive. In this case, it is both.

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