By Brent T. Yonehara
On June 12, 2017, the U.S. Supreme Court granted the petition for certiorari in Oil States Energy Services v. Greene’s Energy Group, LLC.[1] Of the three issues presented by petitioner Oil States, only one will be heard before the Supreme Court, namely:
Whether inter partes review – an adversarial process used by the Patent and Trademark Office (PTO) to analyze the validity of existing patents – violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.
(for the granted petition, see here.)
The other two issues requested by Oil States will not be addressed before the Court.
Inter partes reviews (IPRs) were one of the adversarial proceedings created by the America Invents Act (AIA) in 2012. IPRs replaced the inter partes reexamination proceedings following enactment of AIA on September 16, 2012.[2]
The immediate question is whether patents, once issued, are either a private right (i.e., a private property right) or a public right, where the validity or invalidity can be determined by a government agency regulating the issuance of patents. The Court of Appeal for the Federal Circuit, from where this case was last heard, ruled against Oil States’ contention that patent rights are private rights, not public rights, and are not subject to Article III treatment. To quote Oil States, “ . . . patent rights are property rights, and property rights are pivate rights – not ‘public rights’.”[3] There are some commentators who believe the Supreme Court will overturn the decision of the Federal Circuit, as it has been apt to do of late. However, in the very recent B&B Hardware case, the Supreme Court held that TTAB’s decisions received preclusive effect, essentially holding that TTAB was an Article III court.[4] While B&B Hardware dealt with issue preclusion and trademarks, it could be seen as a corollary to Oil States and patents in that the the Supreme Court might, consistent with its holding in B&B Hardware, extend this concept of Article III treatment to the patent side of the USPTO. If it does, the Supreme Court will have the permitted the rare act of affirming a Federal Circuit decision.
Depending on the outcome, this case could demolish the entire AIA review adjudication process within the USPTO.
The case should be heard sometime in Fall 2017, with a ruling delivered sometime in early 2018.
[1] 639 F.App’x 639 (Fed. Cir. 2016), cert granted, ___U.S.L.W.___ (June 12, 2017) (No. 16-712).
[3] See Reply Brief for the Petitioner, at 9.
[4] B&B Hardware, Inc. v. Hargis Industries Inc., 575 U.S.___ (2015) (slip op. at 14-15).
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