An updated discussion of this issue is available here: The Supreme Court Finds IPR Proceedings Constitutional
The Supreme Court issued an order on June 12, 2017, indicating it will review the Federal Circuit’s judgment in Oil States Energy Services, LLC v. Green’s Energy Group, LLC, 639 Fed. Appx. 639 (Fed. Cir. 2016) (link). The petition presented three questions, of which the Court will address only one:
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.
There is nothing particularly noteworthy about what transpired between the parties, the PTAB, and the Federal Circuit. Oil States Energy Services sued Green’s Energy Group for infringing its patent. Green’s timely and successfully petitioned the PTAB to review and cancel the patent’s claims. The PTAB also denied Oil’s motion to amend its claims. The Federal Circuit affirmed, without opinion, the PTAB’s final written decision. What’s noteworthy, perhaps, is that the Supreme Court has already denied petitions presenting the same question. MCM Portfolio LLC v. Hewlett-Packard Co., 137 S. Ct. 292 (2016) (No. 15-1330); Cooper v. Lee, 137 S. Ct. 291 (2016) (No. 15-955); Cooper v. Square, Inc., 137 S. Ct. 475 (2016) (No. 16-76). Further, at the Court’s request, the government filed a brief in opposition recommending the Court not address this question. We discussed this issue when the Federal Circuit issued its decision in MCM Portfolio (link), and again when the government opposed cert. petitions in MCM Portfolio and Cooper v. Lee (link). In contrast to the Court’s disposition of the earlier petitions, nine Justices were available to decide whether to grant this petition.
Perhaps the Court is tiring of this question or the Court is again ready to upset settled expectations, here the expectation that the PTO may cancel a patent. The Court’s docket for the case is 16-712, and its decision may be expected by early next year.