➤➤ Want to receive Skilled in the Art as an email. Sign up here.

|

A Class Action Even the Supreme Court Could Love?

Sixteen days. That's how long we made it without a major constitutional challenge to inter partes review. The truce ended Thursday with Christy v. U.S., a putative class action in the Court of Federal Claims on behalf of every patent owner who's had one or more claims invalidated during America Invents Act proceedings. Dennis Crouch appears to have been first with the news at Patently-O.

Birmingham-based Heninger Garrison Davis argues in Christy 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 PTO has already conceded liability by declaring it uses IPRs to correct its own mistakes, the firm argues.

“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,” states the complaint, signed by Heninger managing partner Timothy Davis. The PTO also must reimburse patent owners for attorneys fees spent defending before the PTAB, plus any money invested in the patented invention, the complaint states.

Patent owners can learn more about the class action here. Live chat is standing by to assist.

This would all seem far fetched—if not for the Supreme Court's seeming invitation for just such a lawsuit. Even as it rejected the Oil States constitutional challenge to IPRs last month, Justice Clarence Thomas' 7-2 opinion emphasized the narrowness of the holding. “Our decision should not be misconstrued as suggesting that patents are not property for purposes of the Due Process Clause or the Takings Clause,” Thomas wrote.

The patent owned by the name plaintiff was challenged by Black & Decker and invalidated based on obviousness and anticipation. Ropes & Gray counsel Matt Rizzolo, who foresaw this type of suit last week, says those kinds of garden variety IPRs probably present the weakest takings claims, because the PTO has been reexamining patents for Sections 102 and 103 since the 1980s. Covered business method reviews (CBMs), where patents can be cancelled for Section 101 eligibility or Section 112 indefiniteness, “have the most potential viability, because they represented a departure in substance from prior PTO proceedings.”

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 said. “So there is still some portion of the property right intact and to which the issue and maintenance fees apply.”

My own armchair diagnosis is the Supreme Court justices seem to dislike patents and to really, really dislike class actions. It's hard to imagine them embracing a marriage of the two.

But ask me again in 16 days.

Will Broadest Reasonable Come Back to Bite?

In other positive news for patent owners this week, the PTO under new Director Andrei Iancu announced a formal proposal to do away with the broadest reasonable interpretation claim construction standard in AIA proceedings.

At least it seemed like positive news. The chair of Ropes & Gray's PTAB practice, Scott McKeown, has a dissenting opinion. He writes that patent owners are going to rue the day BRI gets sent packing. McKeown forecasts more stays of district court proceedings, especially when the new Phillips claim construction standard is combined with the Supreme Court's SAS framework for instituting IPRs.

WesternGeco's Patents Get a Trim

Under the radar: The Federal Circuit on Monday affirmed PTAB decisionsthat invalidated parts of three patents held by WesternGeco LLC. If that name sounds familiar, it's probably because the company has a big patent damages appeal pending before the Supreme Court. And those damages stem from two of the three patents the PTAB and the Federal Circuit just trimmed back.

Will that have any impact on the Supreme Court case? Fitzpatrick, Cella, Harper & Scinto partner Christopher Loh calls it an open question, but it seems doubtful. That's because jurors didn't apportion the $93 million lost profit award among the six patent claims asserted at trial. Instead, the verdict form asked jurors to determine what damages WesternGeco suffered “if any claim is infringed and not invalid.”

Sounds like full steam ahead for the Supreme Court case.

Merck Swallows $14 Million Fee Award

Last month, Merck & Co. lost its bid to restore a $200 million patent infringement verdict that had been thrown out due to its unclean hands. Now Merck has conceded it will have to pay a whopping $14 million in “exceptional case” attorneys fees to Gilead Sciences, assuming the Federal Circuit ruling sticks. “Having conferred, the parties agree that the affirmance in the merits appeal should result in affirmance” of the fee award as well, Merck appellate counsel Jeffrey Lamken of MoloLamken wrote to the court Wednesday.

Merck fought hard against the award before U.S. District Judge Beth Labson Freeman, in part on the ground that Gilead counsel Fish & Richardsonactually billed $1.4 million less than the lodestar amount under a flat-fee arrangement. But the parties called off appellate briefing last fall, telling the Federal Circuit that “if the unclean-hands determination is affirmed in its entirety, the exceptional-case determination and fee award will stand.”

TC Heartland Limited to U.S. Borders

The Supreme Court's TC Heartland decision placed limits on where U.S. companies can be sued for patent infringement. But it does not apply to foreign companies, the Federal Circuit ruled Wednesday. “Congress did not clearly make—and did not otherwise express an intent to make—a change to the rule as it affects foreign corporations,” Chief Judge Sharon Prost wrote for the court. My ALM colleague Tom McParland has more details here.

Side note: Prost makes clear the court has about had its fill of TC Heartland-related mandamus petitions. Future challenges might have to wait until after trial.

Monkey See, Monkey Celluloid

The Hollywood Reporter broke the news this week that Conde Nast Entertainment has bought the life rights to nature photographer David Slater, setting off speculation that a movie about the monkey selfie legal dramamight be in the works.

It was Slater who set up the camera that a crested macaque allegedly used to snap the monkey selfie seen around the world. People for the Ethical Treatment of Animals sued, arguing that the macaque was the rightful owner of the copyright. The Ninth Circuit ruled in April that monkeys don't have standing to bring copyright suits, but by then, PETA and Slater had struck a deal where 25 percent of future proceeds support macaque habitat.

Slater's lawyer, Berkeley solo Andrew Dhuey, says he'd like to be played by Greg Kinnear. “He hasn't been that busy, so he's probably available,” Dhuey jokes.

I'm not sure who'd be cast in the other roles, but without a doubt, Ninth Circuit Judge Carlos Bea ought to get a cameo as himself.

In closing, I wish that the movies of all your cases come with happy endings—or at least decent settlements. See you again Tuesday.