Banner & Witcoff offers the following content as a resource to help clients understand and prepare for the potential impact of this case:
On June 12, 2017, the Supreme Court agreed to take up Oil States Energy Services LLC v. Greene’s Energy Group. The question for the Supreme Court is: “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.”
Oil States argued in its petition that the inter partes review procedure created by the America Invents Act is unconstitutional because Congress cannot delegate the power to invalidate granted patents to the U.S. Patent and Trademark Office. Oil States maintains that patents are private property rights, which can only be revoked by a federal court under Article III of the Constitution.
Greene’s Energy Group challenged Oil States’ patent on hydraulic fracturing technology at the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board after Oil States sued the company for infringement. The PTAB held in an inter partes review that several claims of the patent were invalid. The Federal Circuit affirmed the decision in May 2016.
The Supreme Court heard arguments in the case on Nov. 27, 2017. In reaching its decision, the Supreme Court will likely need to decide whether patent rights are a public right or a private right. If a patent is a public right, under current precedent Congress has the authority to delegate controversies to a non-Article III tribunal such as the PTAB. If the Court finds that patent rights are public rights, then IPR is almost certain to survive.
- November 27, 2017 – Supreme Court oral arguments
- June 12, 2017 – Supreme Court grants certiorari
- November 23, 2016 – Oil States files petition with Supreme Court
- May 4, 2016 – Federal Circuit issues decision