* * * * SUPREME COURT UPHOLDS CONSTITUTIONALITY OF INTER PARTES REVIEW, SAYS PATENTS ARE “PUBLIC RIGHTS”
Oil States Energy Servs., LLC v. Greene’s Energy Grp., LLC, 16-712 — Today in an opinion by Justice THOMAS, the U.S. Supreme Court upheld a Federal Circuit affirmance of a USPTO inter partes review decision that Oil States’ claims for technology used in hydraulic fracturing were invalid as anticipated. Oil States argued that IPR proceedings violated the U.S. Constitution by extinguishing private property rights through a non-Article III forum without a jury.
The Supreme Court found that IPR does not violate Article III because the decision to grant a patent, and by extension to review a granted patent, involves a “public right,” the adjudication of which Congress has “significant latitude” to assign. It explained that a patent is a “public right” because is “involves a matter ‘arising between the government and others.’” Prior Supreme Court decisions cited by Oil States that characterized patents as private property “do not contradict this conclusion” and do not foreclose post-grant review. The Court noted its decision was to be read narrowly, addressing “only the constitutionality of [IPR] and the precise constitutional challenge Oil States raised here. The decision should not be misconstrued as suggesting that patents are not property for purposes of the Due Process Clause or Takings Clause.” The Article III holding compelled the conclusion that IPR proceedings do not violate the Seventh Amendment. Justice BREYER filed a concurring opinion joined by Justices GINSBURG and SOTOMAYOR.
Justice GORSUCH filed a dissenting opinion joined by Chief Justice ROBERTS, arguing that historically a U.S. patent was considered a “personal right” that the government could divest “only through proceedings before independent judges.”
IPO filed an amicus brief in the case arguing that: 1) U.S. patents should not be characterized as public rights, 2) the Federal Circuit’s statement in MCM Portfolio that patents are public rights was incorrect, and 3) deeming patents to be public rights could be damaging to the interests of patent holders, as well as the patent system at large.
(1 to 4 stars rate impact of opinion on patent & trademark law)
* * * * USPTO MUST ADDRESS PATENTABILITY OF EVERY CLAIM CHALLENGED IN IPR PETITION
SAS Inst. Inc. v. Iancu, 16-969 — Today in opinion by Justice Gorsuch, the U.S. Supreme Court held that the USPTO is required to decide the patentability of every claim challenged in a petition for inter partes review. ComplementSoft’s claim was for an integrated development environment for generating and maintaining source code. In an IPR, the USPTO final written decision addressed patentability of only those claims for which it instituted the proceeding. SAS argued to the Federal Circuit that the PTAB had erred by not addressing every claim challenged in its petition. In a split opinion, the original Federal Circuit three-judge panel held that Patent Act section 318(a) “only requires the Board to address claims as to which review was granted.”
The Supreme Court found that the plain meaning of § 318(a), which says that the USPTO “shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner,” supplies the “ready answer” that “the agency cannot curate the claims at issue but must decide them all.” The Court rejected the USPTO’s argument that the Director “retains discretion to decide which claims make it into an inter partes review and which don’t,” stating that “nothing in the statute says anything like that” and that “if Congress wanted to adopt the Director’s approach it knew exactly how to do so.” The Court also rejected policy arguments, which it said were “properly addressed to Congress, not this Court.” Chevron deference did not apply given Congress’ “unmistakable commands,” and the Court’s holding in Cuozzo finding that the decision to institute was “final and unappealable” was likewise irrelevant where, as here, “the Director exceeded his statutory authority.”
IPO filed an amicus brief in the case arguing that “[t]he plain language of the AIA requires the PTAB to issue a final written decision that addresses every claim challenged in the petition.”
Justice Ginsburg filed a dissenting opinion joined by Justices Breyer, Sotomayor, and KAGAN. Justice Breyer filed a dissenting opinion joined by Justices Ginsburg and Sotomayor and by Justice Kagan in part.
(1 to 4 stars rate impact of opinion on patent & trademark law)
