United States: Confusion And Delay

Last Updated: December 6 2018
Article by Sandip H. Patel

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. Oil States did not contest that cancellation of its patent through inter partes review in such circumstances was a putative "taking without just compensation" and denial of due process. The Supreme Court suggested as much, yet refrained from commenting further. Id. at 1379.

The Takings Clause of the Fifth Amendment states that private property shall not be taken for public use without just compensation. Contemporary Supreme Court decisions state that patents are property for purposes of the Takings Clause, Florida Prepaid Postsecondary Educ. Expense Bd. v. College Sav. Bank, 527 U.S. 627, 642 (1999), and that patents cannot be appropriated by the government without just compensation. See Horne v. Dept. of Agric., 135 S. Ct. 2419, 2427 (2015). And a 90-year old Supreme Court decision posits that laws retroactively eliminating a patent infringement claim would raise concerns under the Takings Clause. Richmond Screw Anchor Co. v. United States, 275 U.S. 331, 345 (1928). Unsurprisingly therefore companies often pursue patents and forego trade secret protections with an expectation the patent laws will not so fundamentally change as to eviscerate the investment in disclosing the invention to the public in exchange for the patent.

The Court's refrain in Oil States did not go unnoticed. Patent owners, who, like Oil States, similarly lost patents in inter partes review proceedings, have since challenged the constitutionality of those proceedings relative to their lost patents—patents that issued from applications filed before the effective date of the America Invents Act (AIA), which authorized these reviews. One such appeal pending before the Federal Circuit concerns Genentech's patents covering methods of purifying therapeutic antibodies. Another pending appeal concerns AbbVie's patents covering therapeutic administrations of its Humira® drug product. In both, the patent owners lost inter partes reviews. And in both appeals, the patent owners have seized on the Court's opinion to raise constitutional challenges.

The Federal Circuit recently issued orders (Genentech Order and AbbVie Order), inviting the government to defend the constitutionality of the proceedings. Specifically, the court stayed both appeals and explained its statutory obligation to certify to the Attorney General that a party is questioning "the constitutionality of an Act of Congress in a proceeding in which the United States ... is not a party." Having certified that fact, the court directed the Attorney General to advise whether the government would intervene. In Genentech, the Attorney General moved to intervene, and recently filed a brief defending the constitutionality of the proceedings. In AbbVie, the Attorney General, in late November, moved to intervene and is expected to file a brief similar to its Genentech brief.

The Attorney General's Genentech brief argues that inter partes reviews do not newly expose pre-AIA patents to post-issuance administrative review, but merely alter procedures and the forum for that review—alterations that nevertheless comport with principles of due process. Importantly, according to the brief, the proceedings do not alter any substantive provisions governing patentability determinations but rationally advance a legitimate legislative purpose in "protect[ing] the public's interest in avoiding erroneously granted patents that allow private parties to monopolize ideas that properly belong to the public at large." The brief also rejects the Fifth Amendment challenge, stating the Office's cancellation of a patent through inter partes review is merely a determination that the patentee never had a valid property right, and not meaningfully different than a district court judgment that the patent is invalid. In both cases, according to the brief, "there was nothing for the government to take."

Congress devised the AIA statute with the Patent Office's input. It is therefore no mystery that the legislative and executive branches of the government considered the proceedings constitutional. Indeed the two branches devised a separate review proceeding available only for patents applied for after the effective date of the AIA, see 35 USC §§ 321–329 (post grant review), underscoring an intention that pre-AIA patents are subject to inter partes reviews. The Department of Justice and the Patent Office reaffirmed these views in the brief they filed in the Oil States case. The Supreme Court's opinion unfortunately has invited delays in the Genentech and AbbVie appeals (and in other pending and future appeals) and unnecessarily so if the Court's invitation turns out to have been illusory. More recently, when this due process issue arose in early October, the Court issued an order summarily denying an unopposed certiorari petition. Advanced Audio Devices, LLC v. HTC Corp., 721 F. App'x 989 (Fed. Cir. 2018), cert. denied, 586 U.S. ___ (Oct. 9, 2018) (denying a petition questioning "[w]hether inter partes review of patents filed before enactment of the Leahy-Smith America Invents Act violates the Takings Clause of the Fifth Amendment to the U.S. Constitution").

Most of the thousands of patents subjected thus far to inter partes review petitions issued from applications filed before the effective date of the AIA. Over time, that will change. But for now nobody should be surprised if patent owners appealing Patent Office decisions that canceled their pre-AIA patents question the constitutionality of the proceedings. The Attorney General's brief in Genentech identifies nearly two dozen other pending appeals posing the same question. No matter what the Federal Circuit decides in Genentech, AbbVie, or some other appeal, the Supreme Court is going to have to address this issue. It's a pity, perhaps, that it did not do it in Oil States.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions