The Supreme Court of the United States granted certiorari in Oil States Energy Servs., v. Greene's Energy Grp. on “[w]hether 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.” This is at least the fourth petition to present this issue; certiorari was denied on each of the prior three occasions. See MCM Portfolio v. Hewlett-Packard; Cooper v. Lee; and Cooper v. Square.
The case raises two primary questions: whether there is a Seventh Amendment right to a jury trial for patentability post-grant, and whether patents are public rights, as courts have traditionally ruled, or instead private rights that may only be revoked by an Article III court.
The Federal Circuit voted overwhelmingly not to hear the case en banc (by a vote of 10-2), with Judge Reyna dissenting on the grounds that it would be helpful for the court to clarify the difference between "public rights" and "private rights." When asked by the Supreme Court to respond to the petition for certiorari, the USPTO, represented by the Office of the Solicitor General, argued that it should be denied, explaining that “patents are quintessential public rights.”
A recent scholarly analysis by Professor Greg Reilly agreed, concluding that “a finding that administrative patent cancellation is unconstitutional would not just undo Congress’s policy choices for the patent system but would also threaten large swaths of the administrative state.” Other notable scholars have come to similar conclusions. See, e.g., Mark Lemley, Why Do Juries Decide If Patents Are Valid? (demonstrating jury trials on patent validity prior to 1971 were rare and finding that, “there is in fact no solid support in modern case law for such a right.”). Relatedly, we note that the Federal Circuit’s predecessor, the Court of Claims and Patent Appeals, was itself held by the Supreme Court in 1929 to be “a mere administrative tribunal” lacking Article III status. See Ex Parte Bakelite, 279 U.S. 438 (1929).
As companies and clients well know, post-grant review helps improve patent quality and provides an important check against the assertion of patents erroneously issued by the USPTO. We are encouraged that the Supreme Court granted certiorari to help clarify that the longstanding practice of post-grant review, such as ex parte reexaminations—themselves dating from 1981—, is a valid exercise of administrative authority. Settling the issue should stem unnecessary appeals and certiorari petitions and settle once and for all the immense practical value of the USPTO’s procedures to America’s business community.