US government urges SCOTUS to deny retroactive IPR suit
The US Supreme Court should not take up a petition asking whether it’s a violation of the Fifth Amendment for patents issued before the enactment of the American Invents Act (AIA) to be subjected to inter partes reviews (IPR), according to the US government.
Late last week, the US government submitted its brief in opposition to Enzo Life Sciences’ petition for certiorari.
The due process clause of the Fifth Amendment provides: “No person shall be deprived of life, liberty, or property, without due process of law”.
Enzo had submitted its petition to the Supreme Court in March, after the full US Court of Appeals for the Federal Circuit refused to review the case and upheld an IPR which found Enzo’s patent covering nucleic acid detection technology unpatentable.
“This court should hold that the AIA’s retroactive application of IPR to pre-AIA patents violates the due process clause by expressly authorising the US Patent and Trademark Office (USPTO) to revoke patents without the statutory protection of the presumption of validity—a substantive right that vested when the patents issued,” said Enzo, in its petition.
The US government, in its own filing, said that the AIA specifies that IPRs “shall apply to any patent issued before, on, or after that effective date”, with the effective date being September 16, 2012 (when the provisions took effect).
According to the government, Enzo had forfeited its challenge by failing to present it clearly in its opening brief at the Federal Circuit. Instead, the Federal Circuit believed Enzo presented a challenge under the just compensation clause.
“Nothing about this case would warrant the unusual step of granting a petition for a writ of certiorari to address a constitutional question that … had not been directly addressed in any prior precedential court of appeals opinion,” said the brief.
The government added that Enzo’s contentions lacked merit, because the
changes that Congress “made to the ways in which the USPTO can review the validity of previously issued patents were not irrational and did not deprive petitioner of any vested right”.
Enzo had argued that the AIA deprived it of a “vested burden of proof” by subjecting its patent to IPR where unpatentability may be established by a “mere preponderance of the evidence”.
In response, the government claimed that, at the time Enzo’s patent was issued, the USPTO was already authorised to conduct “administrative reconsideration proceedings in which the agency could ‘reconsider the validity of issued patents on particular grounds, applying a preponderance of the evidence standard’”.
The brief concluded: “Petitioner thus had no ‘vested’ right to avoid the application to its patent of a USPTO reevaluation mechanism that uses an ordinary preponderance standard.”
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