New Cert Petition: Is Invalidation Of A Patent Via Inter Partes Review A Taking? "Is a patent a property right or is it something less?"

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Here's the latest cert petition on an issue we've been following for a while (see here, here, here and here, for example). Is invalidation of an already-issued patent via inter partes review a taking?

In this case, the Federal Circuit held no taking, consistent with its earlier opinion in Celgene. The takings issue was teed up (but not decided) by the Supreme Court in Oil States, which noted that patents may be "property for purposes of the Due Process Clause or the Takings Clause." The Court denied at least one earlier cert petition on the issue, and now it's back.

Here's how the petition frames it:

Is a patent a property right or is it something less? And if a patent holder cannot depend on the United States Patent and Trademark Office “(USPTO”) to competently evaluate a patent application, should an applicant receive some of the money it paid when the USPTO makes a mistake? Here, Christy obtained a patent, then lost it during Inter Partes Review (“IPR”). Subsequently, it sought to receive compensation for the property that was taken by the USPTO. In the alternative, Christy sought return of the fees it paid in order to obtain its patent after it was notified that a patent would be granted.

We suggest you read the entire petition, even if you are not a "IP person."

Here's the Questions Presented:

Petitioner Christy, Inc. obtained a patent after following all the steps and rules and paying all of the fees demanded of it. Upon trying to assert its property rights embodied in the patent against an accused infringer, the Government invalidated the patent during Inter Partes Review (“IPR”) initiated by the accused infringer because it had allegedly been mistakenly issued. Christy, Inc. received no compensation for its property nor return of the fees it paid.

In that context, the Questions Presented are:

1) When a duly-issued patent is invalidated through a post-grant review process (such as an IPR), must compensation be paid under the Takings Clause?

2) When a duly-issued patent is invalidated through a post-grant review process (such as an IPR), should the issuance and maintenance fees that were demanded by the government by mistake be returned?

We shall follow along, as always. Here's the Court's e-docket. It looks like the U.S. has waived response. Let's see if any Justice requests a response.

Petition for a Writ of Certiorari, Christy, Inc. v. United States, No. 20-1003 (U.S. Jan. 21, 2021)