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Supreme Court to Consider Constitutionality of PTAB Proceedings

On June 12, 2017, the U.S. Supreme Court granted Oil States Energy Services, LLC’s petition for a writ of certiorari to address the following question: “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.” The Supreme Court declined to grant certiorari on Oil States’ remaining two questions presented, relating to amendment procedures and claim construction.

Oil States’ argument is that patents are private property rights that can only be revoked by an Article III court, not by an Article I agency. In particular, Oil States urges the Supreme Court to overturn the Federal Circuit’s decision in MCM Portfolio LLC v. Hewlett-Packard Co., which held that patents are public rights and that “Congress has the power to delegate disputes over public rights to non-Article III courts.”[1]  The Federal Circuit has already upheld the constitutionality of the PTO’s ex parte reexamination process in Patlex Corp. v. Mossinghoff.[2]  In doing so, consistent with MCM, the Federal Circuit affirmed the power of an Article I agency to adjudicate the validity of an issued patent in the first instance.[3]

The Supreme Court previously rejected three other petitions challenging the constitutionality of Patent Trial and Appeal Board (“PTAB”) proceedings. And, as recently as last month, the same issue was presented for en banc review to the Federal Circuit, which declined to review in a 10–2 vote.[4]  Accordingly, this case will present the first opportunity for the Supreme Court to consider the constitutionality of the immensely popular post-grant proceedings put in place by the America Invents Act.  The case also presents interesting issues regarding a patentee’s right to a jury trial under the Seventh Amendment.

[1] 812 F.3d 1284, 1289 (Fed. Cir. 2015).

[2] 758 F.2d 594 (Fed. Cir. 1985).

[3] Id. at 604.

[4] Cascades Projection LLC v. Epson Am., Inc., No. 2017-1517, slip op. at 2 (Fed. Cir. May 10, 2017).

Copyright 2017 K & L Gates


About this Author

Jason A. Engel, Registered Patent Attorney, KL Gates, Law Firm

Jason A. Engel is a registered patent attorney with an undergraduate degree in electrical engineering. He concentrates his practice on the litigation of intellectual property matters with a focus on patent litigation and patent office litigation. He has substantial experience before the Patent Trial and Appeal Board, in federal district courts across the country, and with Section 337 investigations in the U.S. International Trade Commission.

Mr. Engel is experienced in all aspects of litigation, including discovery, motion practice, claim...

Devon C. Beane, Intellectual Property Lawyer, Patent Litigator, KL Gates, Law Firm

Devon Beane is an intellectual property lawyer concentrating her practice on patent litigation, appellate litigation, post-grant practice at the Patent Trial and Appeal Board, patent licensing, and client counseling. She has a bachelor of science in chemistry.

Ms. Beane is experienced in all phases of patent litigation, including fact and expert discovery, witness preparation, discovery and dispositive motion practice, claim construction practice, and trial and post-trial proceedings. Ms. Beane is also experienced in all phases of Federal Circuit appeals, including initial filings, motion practice, substantive briefs, en banc proceedings, and hearing preparation.

Erik J. Halverson, PTO Registered Patent Attorney, KL Gates, Law Firm

Erik Halverson is an associate in the Chicago office, a PTO-registered patent attorney, and a member of the IP Procurement and Portfolio Management practice group.

Mr. Halverson focuses on patent related matters such as drafting, prosecuting, and analyzing U.S. and international patent applications involving a variety of technologies. He also provides strategic counseling, due diligence research and analysis for portfolio acquisitions, and opinion work such as patentability, validity, non-infringement, and freedom-to-operate opinions.