Neither AIA Proceeding nor Government Infringement Constitute Fifth Amendment Taking
The US Court of Appeals for the Federal Circuit upheld a US Court of Federal Claims dismissal, rejecting arguments that patent infringement is a taking under the Fifth Amendment. Golden v. United States, Case No. 19-2134 (Fed. Cir. Apr. 10, 2020) (O’Malley, J.).
In 2013, Larry Golden filed a complaint in Claims Court alleging patent infringement by the US government (lead case). Over the years, Golden amended his complaint in the lead case five times to add additional claims of infringement. Starting with the second amended complaint, Golden added allegations of “government taking” pursuant to 28 USC 1491(a), arguing that the government had taken his patented technology for public use without just compensation. In May 2019, the Claims Court granted in part the government’s motion to dismiss Golden’s taking claims in the lead case.
Shortly before the Claims Court granted the government’s motion to dismiss in the lead case, Golden filed the present case seeking compensation, this time alleging governmental Fifth Amendment taking of his property, i.e., several of his US patents, which were also at issue in the lead case. The new complaint alleged that takings occurred by virtue of:
- The government’s use, manufacture, development and disclosure of the subject matter in the claims and specifications of Golden’s patents
- The cancellation of certain patent claims during the inter partes review (IPR) initiated by the government
- Certain actions by the Claims Court and the Federal Circuit in the lead case.
The Claims Court dismissed the new complaint, finding Golden’s claims in the new complaint duplicative of the taking claim in the lead case, which the Claims Court had already dismissed. The Claims Court further found that even if the new complaint was not duplicative, the Claims Court did not have jurisdiction because Golden could not label his patent infringement claim as a “taking” in order to obtain jurisdiction in the Claims Court. The Claims Court also found that patent rights are not private property rights for the purposes of a Fifth Amendment takings claim based on the result of an AIA proceeding. Golden appealed.
The Federal Circuit affirmed the Claims Court’s dismissal of Golden’s takings claims. First, the Court determined that the Claims Court did not have jurisdiction over Golden’s patent-infringement-based takings claims. The Federal Circuit noted that the Claims Court has limited jurisdiction to hear suits against the United States, and in this instance, the Claims Court did not have jurisdiction to hear the new takings claims based on allegations of patent infringement because patent infringement claims are tort claims and must be pursued exclusively under 28 USC § 1498, and not under 28 USC § 1491(a).
Second, the Federal Circuit rejected Golden’s IPR-based takings claims. Citing its decision in Celgene Corp. v. Peter (IP Update, Vol. 22, No. 8), the Federal Circuit explained that subjecting patents to IPR proceedings is not an unconstitutional taking under the Fifth Amendment. Furthermore, in examining the facts of the case, the Court found that Golden did not appeal the Patent Trial and Appeal Board’s final decision in the IPR, and Golden’s substitute claims during the IPR were found unpatentable. Therefore, the claims were cancelled as a result of Golden’s own voluntary actions and not through any unconstitutional taking.