Today's Federal Circuit opinion in Golden v. United States, No. 19-2134 (Apr. 10, 2020) is the latest in the post-Oil States cases involving the alleged taking of patents.
Golden asserted three theories:
The complaint alleges the takings occurred by virtue of: (1) the government’s use, manufacture, development, and disclosure of the subject matter “outlined” in the claims and specifications of Golden’s patents; (2) the cancellation of certain patent claims during the [inter partes review] initiated by the government; and, (3) certain actions by the Claims Court and the Federal Circuit in the Lead Case.
Slip op. at 6.
The Federal Circuit rejected each of these theories.
First, the court held that an allegation that the feds infringed on Golden's patents was a tort claim, not takings. Slip op. at 10 (citing Schillinger v. United States, 155 U.S. 163, 168-69 (1894) (infringement claim "is one sounding in tort" and not covered by the Tucker Act).
Second, the court held that in Celgene, the Federal Circuit already concluded that inter partes review isn't a taking. That decision is now the subject to a cert petition, but at least for now, the Celgene opinion is still circuit precedent.
Although Golden does not challenge retroactive application of inter partes review in this case, Celgene controls the outcome here. Golden, as a patent owner, has “always had the expectation that the validity of patents could be 1362–63. Under Celgene, subjecting patents to inter partes review proceedings is not an unconstitutional taking under the Fifth Amendment. Id. at 1362.
Slip op. at 13-14 (footnote omitted).
Finally, the court make short work of Golden's judicial takings claim, concluding, "the actions of the Federal Circuit and the Claims Court cannot be an unconstitutional taking, as both courts 'adjudicate rights in patents.'" Slip op. at 15. In other words, courts are adjudicators, not capable of taking property.
Interestingly, the Federal Circuit avoided the most difficult issue in the case: are patents "property" protected by the Fifth Amendment (the question presented by the Celgene cert petition)? The Court of Federal Claims concluded "no," patents are not property. But the Federal Circuit expressly avoided the issue, assuming (without deciding) that patents are property, and then ruling against Golden on the merits of his takings claim. See slip op. at 14-15 ("we decline to address that question here, however, because, even if Golden’s patents are his private property for Takings Clause purposes, under Celgene, cancellation of patent claims in inter partes review cannot be a taking under the Fifth Amendment").
Golden v. United States, No. 19-2134 (Fed. Cir. Apr. 10, 2020)
