Patent Owners Cannot Sue the Government for Patent Infringement as a Fifth Amendment Taking

| Adam Powell


Before O’Malley, Mayer, and Wallach. Appeal from the United States Court of Federal Claims.

Summary: (1) Patent infringement claims against the government must be brought under 28 U.S. § 1498, not as a Fifth Amendment taking claim. (2) An IPR initiated by a government agency is not a taking if the patent owner voluntarily canceled all claims in a non-contingent motion to amend.

Larry Golden filed suit pro se in the U.S. Court of Federal Claims seeking compensation for the government’s alleged taking of his patents. The complaint alleged the takings occurred by (1) the government’s use of subject matter “outlined” in the claims and specification of Golden’s patents, (2) the cancellation of patent claims during an IPR initiated by the Department of Homeland Security (DHS), and (3) the dismissal of Golden’s taking claims in a previous case. The Claims Court dismissed Golden’s claims because they were duplicative of the previous case and were actually patent infringement claims that had to be pursued under 28 U.S.C. § 1498. Golden appealed.

The Federal Circuit concluded the dismissal of Golden’s patent infringement-based takings claims was proper because a patentee could not sue the government for patent infringement as a Fifth Amendment taking. Rather, patent claims against the government must be pursued exclusively under 28 U.S.C. § 1498. As for the IPR-based takings claims, the Federal Circuit previously held in Celgene Corp. that IPR is not normally an unconstitutional taking under the Fifth Amendment. The Federal Circuit noted that the DHS is a government agency, which is not a “person” that can petition for IPR under the Supreme Court’s Return Mail decision. However, that did not impact the decision because (1) Golden did not appeal the IPR, which became final before Return Mail, and (2) the claims were canceled as a result of Golden’s voluntary non-contingent motion to amend during the IPR.

Editor: Paul Stewart