The US Supreme Court will hear a very important patent case on the Monday following Thanksgiving. The case is Oil States Energy Services, LLC v. Greene’s Energy Group, LLC. The reason this is important is that the overriding issue of the case is the validity of Inter-Partes Reviews (IPR) and Post Grant Reviews (PGR) as they are currently conducted at the United States Patent and Trademark Office (USPTO) by the Patent Trial and Appeals Board (PTAB).
Prior to 2011 when a patent holder felt they were being infringed an infringement law suit was handled by the courts. In 2011 Congress passed the America Invents Act (AIA), which included three new changes in the way patents could be challenged: IPRs, PGRs, and Covered Business Methods. Challenges were to be adjudicated through a trial conducted by the PTAB. Rules were written on how these challenges were to be made and how the PTAB was to act on the challenges.
- Inter-partes review is a new trial proceeding conducted at the Board to review the patentability of one or more claims in a patent only on a ground that could be raised under § 102 (novelty) and §103 (obviousness), and only on the basis of prior art consisting of patents or printed publications. Inter-partes review process begins with a third party (a person who is not the owner of the patent) filing a petition
- Post grant review is a new trial proceeding conducted at the Board to review the patentability of one or more claims in a patent on any ground that could be raised under § 282(b)(2) or (3). (Presumption of validity and the burden of invalidity is asserted by a challenger).
The transitional program for covered business method patents (CBM) is a new trial proceeding conducted at the Board to review the patentability of one or more claims in a covered business method patent.
The rules have made it easy for challengers, but difficult for patent owners. Under the AIA, patent owners have not had success in amending their patent claims. The level of proof that a patent is invalid is relatively easy to reach for challengers. PTAB has cancelled at least one claim in almost 80% of the patents challenged. Multiple challenges can happen on a single patent. These are a few of the reasons why this Court case is so important to inventors and patent owners.
- One side argues that patents are public rights established by law and that the USPTO tribunals are allowed under the Constitution. These tribunals or Article I hearings allow for review of patents without the patent owner having the opportunity to have a jury trial on the validity of their patent.
- One side argues that patents are private rights afforded by the Constitution. If this is the case, then the only way a patent can be invalidated is through an Article III court where the patent owner has a right to a jury trial.
The UIA has signed onto an amicus brief that views patents as private rights. The brief also provides a historical view of how Article 3, Section 3, Clause 8 of the Constitution came about. This clause, frequently called the IP clause, allows congress the ability to provide a limited exclusive right to authors and inventors in exchange for the disclosure of their writings and inventions. An inventor owns his/her invention and the issuance of a patent does not change that ownership.
Don’t expect a decision from the Supreme Court before next spring. The results from this important case could ultimately shape the way patents are viewed in the future. We will keep you informed as this case moves forward.