Federal Circuit Finds That Retroactive Application Of IPR Proceedings To Pre-America Invents Act Patents Does Not Constitute An Unconstitutional Taking Under The Fifth Amendment

On July 30, 2019, the Federal Circuit issued its decision in Celgene Corp. v. Peter (available here). The Federal Circuit held that the retroactive application of inter partes review proceedings to pre-America Invents Act patents did not constitute an unconstitutional taking under the Fifth Amendment. The Federal Circuit found that the validity of patents had always been subject to challenge in district court and, for the last forty years, patents have also been subject to reconsideration and possible cancellation by the Patent and Trademark Office. “Although differences exist between IPRs and their reexamination predecessors, those differences do not outweigh the similarities of purpose and substance and, at least for that reason, do not effectuate a taking of Celgene’s patents.”