IP litigation counsel Matthew Rizzolo (Washington, D.C.) authored a May 2 Law360 article examining the possibility of future constitutional challenges to Patent Trial & Appeal Board proceedings after the U.S. Supreme Court’s Oil States v. Greene’s decision – in particular, whether owners of now-cancelled patents might bring claims against the government under the takings clause of the Fifth Amendment, which requires payment of “just compensation” when private property is taken for public use. IP litigation associate Kathryn Thornton (Washington, D.C.) contributed to the article.
In the Oil States case, the Justices upheld the constitutionality of America Invents Act post-grant patent validity reviews at the PTAB, but emphasized the narrowness of the Court’s holding and noted that patents are property afforded the protection of the Fifth Amendment.
Mr. Rizzolo explains that the Court’s caveats might lead some patent owners to seek compensation from the government in the Court of Federal Claims for the cancellation of patents in PTAB proceedings. He also notes that there are interesting historical parallels between the challenges to PTAB proceedings now and litigation over abandoned railroad conversions to bike trails over the last few decades.
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