Golden v. United States
955 F.3d 981
Fed. Cir.2020Background
- Golden filed a Tucker Act suit in the Court of Federal Claims (Lead Case) alleging patent infringement and Fifth Amendment takings based on government use of several patents; he amended the complaint multiple times and included takings and §1498 claims.
- The Claims Court stayed takings claims early in the Lead Case as potentially duplicative of infringement claims; later it lifted the stay and dismissed Golden’s takings claims in the Lead Case.
- DHS instituted an inter partes review (IPR) of Golden’s RE43,990 patent; Golden filed a non‑contingent motion to amend, the Board cancelled original claims, and Golden’s proposed substitutes were found unpatentable; he did not appeal the Board’s final decision.
- Golden filed a separate suit (the present case) again alleging Fifth Amendment takings based on government infringement, the IPR, and actions by various courts and agencies; the Claims Court consolidated the suits.
- The Claims Court dismissed the present complaint under RCFC 12(b)(1) and 12(b)(6) as largely duplicative of the Lead Case and for lack of jurisdiction because patent infringement claims must proceed under 28 U.S.C. §1498 rather than as takings.
- Golden appealed; the Federal Circuit affirmed, rejecting his takings and related contract arguments and concluding the IPR cancellations in these circumstances were not chargeable to the government.
Issues
| Issue | Plaintiff's Argument (Golden) | Defendant's Argument (United States) | Held |
|---|---|---|---|
| Whether a patent‑infringement claim against the government can be pursued as a Fifth Amendment taking in the Claims Court | Infringement amounted to a taking; Tucker Act jurisdiction under §1491 allows takings claims | Patent infringement actions against the government must be pursued exclusively under §1498; takings theory is unavailable | Dismissed for lack of Tucker Act takings jurisdiction; §1498 is the exclusive remedy for government patent use |
| Whether cancellation of patent claims in IPR (including a government‑initiated IPR) is a Fifth Amendment taking and whether the AIA displaces Tucker Act jurisdiction | Cancellation reduced patent value and expectations; government initiation makes it a taking | AIA provides review mechanisms; IPR/agency scheme either displaces Tucker Act or does not constitute a taking | AIA does not displace Tucker Act (it is not a statutory scheme imposing monetary liability on the U.S.); Celgene controls that IPRs do not amount to takings; here cancellations resulted from Golden’s non‑contingent amendment and are not chargeable to gov't |
| Whether actions by the Claims Court or Federal Circuit, or alleged breaches of implied‑in‑fact contracts, constitute takings or viable claims | Judicial rulings and implied contracts harmed patent rights and effected takings | Courts adjudicate patent rights; such claims are not takings and contract theories were not properly pleaded or are waived | Claims against courts fail (they adjudicate rights); implied‑in‑fact contract claims are unpersuasive or waived |
| Whether the present suit was duplicative of the Lead Case such that dismissal or consolidation was appropriate | Asserts similar takings claims but filed separately | Claims are duplicative of Lead Case and properly consolidated or dismissed | Claims Court properly consolidated and dismissed largely as duplicative |
Key Cases Cited
- Schillinger v. United States, 155 U.S. 163 (1894) (patent infringement is a tort and cannot be recast as a Fifth Amendment taking)
- Zoltek Corp. v. United States, 442 F.3d 1345 (Fed. Cir. 2006) (treats §1498 as exclusive avenue for government patent infringement claims)
- Zoltek Corp. v. United States, 672 F.3d 1309 (Fed. Cir. 2012) (en banc) (post‑remand en banc proceedings affecting Zoltek jurisdictional analysis)
- Celgene Corp. v. Peter, 931 F.3d 1342 (Fed. Cir. 2019) (IPR proceedings do not effect an unconstitutional taking; patent owners expect validity challenges)
- Return Mail, Inc. v. United States Postal Serv., 139 S. Ct. 1853 (2019) (federal agencies are not 'persons' who may petition for IPR)
- United States v. Bormes, 568 U.S. 6 (2012) (Tucker Act jurisdiction displaced when a statute contains its own judicial remedies)
- Horne v. Department of Agriculture, 569 U.S. 513 (2013) (framework for determining displacement of Tucker Act jurisdiction)
- Oil States Energy Services, LLC v. Greene's Energy Group, LLC, 138 S. Ct. 1365 (2018) (IPR involves public rights but does not decide patent property status for takings)