U.S. Patent Trademark Office. Courtesy photo

The U.S. government is asking the Court of Federal Claims to throw out a would-be class action seeking to recover for patent owners who’ve lost claims in America Invents Act (AIA) proceedings.

Criticizing the 58-page complaint in Christy v. United States as “unnecessarily prolix,” the government accuses plaintiffs counsel at Birmingham-based Heninger Garrison Davis of succumbing to “the popular myth that a patent is a contract” between patent owner and government.

The U.S. Patent and Trademark Office does not manifest any intent to contract when it grants a patent, “just as a local official manifests no intent to contract by granting a driver’s license,” the government states in a July 9 motion to dismiss signed by DOJ attorney Jenna Munnelly.

The government also argues it’s immune from the suit, and that the Court of Federal Claims is without jurisdiction to hear the case. The suit is pending before Judge Margaret Sweeney.

Christy has drawn attention because of the U.S. Supreme Court’s decision in Oil States Energy Services v. Greene’s Energy Group last April. The high court in that case turned away a different constitutional challenge to the PTO’s authority to cancel previously issued patents. But the majority stated that it was neither deciding whether such cancellations were an unconstitutional taking, nor whether the AIA could be applied retroactively to cancel patents issued before 2011.

A few weeks later Heninger Garrison sought to test those propositions with Christy. Partner Timothy Davis argued in his complaint that the PTO conceded before the Supreme Court that it uses the AIA to withdraw patents that should never have been issued in the first place. “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 wrote. He called for the PTO to reimburse patent owners for attorney fees spent defending before the PTAB, plus any money plaintiffs invested in the patented invention.

The complaint emphasizes that patents are presumed valid under Section 282 of the Patent Act. The DOJ’s motion tries to turn that around against the plaintiff. Because patents are only presumed valid, “this means that it is possible for patents to be invalidated,” she argues, and patent owners have known that since long before the AIA.

“Christy received what it expected: patents that were presumed valid,” Munnelly states. “Christy should not be allowed to use its opposition to the AIA to transform patents into ‘patent contracts’ that forbid the government from following its own statutes.”

Further, a patent is not like a parcel of land that the government puts into the public domain to build a highway. “After an IPR, the patent is not taken or licensed by the government,” Munnelly writes. “Rather, if found to be invalid, the patent no longer exists; i.e. it is no longer property.”

Finally, when patents are ruled invalid, there is no statutory basis for determining the amount of monetary relief that would be owed the patent owner under its theory of exaction, Munnelly writes.

“Christy provides no explanation of how the theoretical value of its ‘investments,’ the value of its ‘right to exclude’ and payments made to its counsel were at the direction of the government or that the government benefited,” she writes.