In consolidated appeals of a trio of Board decisions canceling pre-AIA patents in inter partes reviews (IPR), the Federal Circuit held “that the retroactive application of IPR proceedings to pre-AIA patents is not an unconstitutional taking under the Fifth Amendment.” Celgene Corp. v. Peter, Appeals 2018-1167, -1168, -1169, Slip Op. at 3 (Fed. Cir. July 30, 2019). As we previously discussed (link), the Supreme Court’s decision in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, 138 S. Ct. 1365, 1379 (2018), left open this issue. The Board’s decisions on appeal pre-date Oil States and unsurprisingly, perhaps, Celgene did not therefore raise the issue before the Board. But Celgene and the Patent Office briefed this constitutional issue in the appeal and then addressed it at oral argument to the Federal Circuit’s satisfaction. In further view of the growing number of appeals raising this issue in the wake of Oil States, the court exercised its discretion to decide the issue.
Continue Reading Federal Circuit Addresses Constitutional Issue Supreme Court Left Open

In Oil States Energy Services., LLC v. Greene’s Energy Group, LLC, Justice Thomas, writing for a 7-2 majority of the Supreme Court, explained that inter partes review proceedings do not violate Article III or the Seventh Amendment of the Constitution. 138 S. Ct. 1365 (2018). But his opinion for the majority invited confusion and delay, upon the brink of which the Federal Circuit now stands. This stems from Oil States’ failure to explicitly challenge in the broad question its certiorari petition presented the retroactive application of inter partes review to its patent—a patent that issued before the procedure existed.
Continue Reading Confusion and Delay

United States Constitution and gavel with brass ring.

Two petitions for certiorari are pending before the Supreme Court in which the aggrieved patent owners in MCM Portfolio LLC. v. Hewlett-Packard Co. and Cooper v. Lee are challenging the constitutionality of AIA trials.  The Federal Circuit in MCM Portfolio upheld the PTAB’s authority to adjudicate the validity of issued patents, determining that IPR proceedings are not unconstitutional under Article III or the Seventh Amendment right to a jury trial.  MCM Portfolio LLC. v. Hewlett-Packard Co., 812 F.3d 1284 (Fed. Cir. 2015).  In Cooper, the district court granted summary judgment against Cooper on administrative exhaustion grounds and the Federal Circuit summarily affirmed. Cooper v. Lee, 86 F.Supp.3d 480 (2015);  Cooper v. Lee, Nos. 2015-1483, 2016-1071 (Fed. Cir. 2016).  The Government filed briefs in opposition to both petitions – the Cooper opposition brief was filed in April, and the MCM opposition brief was filed in June.  A decision on the petitions is expected at the beginning of the Supreme Court’s October 2016 term.
Continue Reading Government Weighs in on Constitutionality of Inter Partes Review