AN ALABAMA LAW FIRM HAS LAUNCHED A
class action on behalf of patent owners
who have lost claims during America
Invents Act proceedings.
Birmingham-based Heninger Garrison Davis argues in Christy v. United States
that the U. S. Patent and Trademark Office
is taking property without just compensation every time it cancels claims in a post-grant proceeding. The U.S. Supreme
Court seemed to sketch out such a theory
in its Oil States Energy Services v. Greene’s
Energy decision in April, which turned
away a broader constitutional challenge
to inter partes review (IPR).
IPR is the system set up by the America Invents Act for the patent office to take
a second look at previously issued patents.
Thousands of patents have been partly or
fully invalidated under the system since it
was launched in 2012.
The complaint, signed by Heninger
managing partner Timothy Davis, contends that the PTO conceded liability by
taking the position during the Oil States
litigation that it uses IPRs to withdraw
patents that never should have been issued.
“If this is the case, then the USPTO
should never have collected (or be allowed
to keep) any issuance fees or maintenance
fees for any of the patents,” Davis writes
in the complaint. The PTO also must
reimburse patent owners for attorneys’
fees spent defending before the PTAB,
plus any money plaintiffs invested in the
patented invention, the complaint states.
Justice Clarence Thomas’ 7-2 opinion
in Oil States emphasized the narrowness
of the decision. He said the court was not
expressing an opinion on whether the
PTO could reach back and cancel patents
issued before the America Invents Act.
And, he wrote, “Our decision should not
be misconstrued as suggesting that pat-
ents are not property for purposes of the
due process clause or the takings clause.”
The patent owned by name plain-
tiff Christy Inc. was issued in 2006 and
describes an “ambient air backflushed
filter vacuum.” Black & Decker Corp.
brought two IPRs that invalidated many
of the patent claims based on obvious-
ness and anticipation. Along with takings
in violation of the Fifth Amendment, the
suit alleges breach of contract, breach of
duty of good faith and fair dealing, unjust
enrichment and improper exaction of fees.
Ropes & Gray counsel Matthew Riz-
zolo, who predicted a takings suit in an
article in May, says ordinary IPRs prob-
ably present the weakest taking claims,
because the PTO has been reexamining
patents for anticipation and obviousness
since the 1980s. Covered business method
reviews, a procedure similar to IPR but
where patents can be canceled for Section
101 eligibility or Section 112 indefinite-
ness, “have the most potential viability,
because they represented a departure in
substance from prior PTO proceedings,”
Rizzolo and University of Missouri
School of Law professor Dennis Crouch,
who blogged about Christy in May, both
describe the case as a long shot. The best
chance of recovery, they suggest, is for
issuance and maintenance fees.
Rizzolo sees one other potential flaw
in the Christy patent as the vehicle: “It
appears that the patent at issue had only 18
of its 20 claims ruled invalid in the IPRs,”
he says. “So there is still some portion of
the property right intact and to which the
issue and maintenance fees apply.” ■
CLASS ACTION TARGETS DENIALS UNDER AIA
BY SCOTT GRAHAM
The suit asserts that the U.S. Patent and Trademark Office
is taking property without just compensation every time it
cancels claims in a post-grant proceeding.