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<xTITLE>SCOTUS to Hear Oral Argument Over Constitutionality of Review of Patents</xTITLE>

SCOTUS to Hear Oral Argument Over Constitutionality of Review of Patents

by Beth Graham
November 2017

Disputing Blog by Karl Bayer, Victoria VanBuren, and Holly Hayes

Beth Graham

On Monday, the United States Supreme Court will hear oral argument in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, et al., No. 16-712.  In the case, the nation’s highest court will consider whether the controversial process that is currently used by the United States Patent and Trademark Office to analyze the validity of and cancel existing patents is constitutional.  Since the Leahy-Smith America Invents Act (“AIA”) was enacted in 2011, almost anyone may challenge the validity of a patent using an administrative process called inter partes review proceedings.

In the case that is now pending before the Supreme Court, Greene’s Energy Group filed a request for an inter partes review of two patent claims owned by Oil States Energy.  After a Patent Trial and Appeal Board instituted a trial pursuant to 35 U.S.C. § 314(a), the Board found that the patent claims at issue were not patentable and denied Oil States Energy’s Motion to Amend.

In response, Oil States Energy filed an appeal with the United States Court of Appeals for the Federal Circuit.  The appellate court affirmed the Board’s Final Written Decision and the company next sought review by the nation’s highest court.

In June, the Supreme Court agreed to consider only one of the three questions presented:

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.

Additional background regarding the case is available in a prior Disputing blog post.

The ramifications of the court’s decision will undoubtedly be far-reaching as over 7,700 inter partes review requests have been filed and more than 20,000 patent claims have reportedly been cancelled since the AIA was enacted.  To further illustrate its importance, almost 60 amicus briefs from a variety of individuals and organizations were filed in the case.

Oral argument audio and written transcripts will be available on the Supreme Court’s website next week.


Beth Graham received a J.D. from the University of Nebraska College of Law in 2004 and a M.A. in Information Science and Learning Technologies from the University of Missouri in 2006. She also holds a B.S. in Public Administration from the University of Nebraska-Omaha. She is licensed to practice law in Texas and the District of Columbia.

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