An updated discussion of this issue is available here: The Supreme Court Finds IPR Proceedings Constitutional
Joe Matal, interim director of the Patent Office, addressed the IPO’s 45th Annual Meeting on September 19, 2017, in San Francisco. He said that the Office, and particularly the PTAB, experienced a productive yet tumultuous five years since the passage of the AIA, and acknowledged that the Federal Circuit’s docket of appeals today is dominated by the PTAB’s decisions in AIA trials. He expressed high confidence that the Supreme Court will soon determine, unanimously, that these trials do not violate the Constitution even if they extinguish property rights through a non-Article III forum without a jury.
As discussed by Mr. Matal, Congress long ago created the Patent Office and directed that agency to issue patents under standards established by federal law. Congress established inter partes post-issuance proceedings in 1999. Those proceedings, known as inter partes reexamination, were of limited value and therefore used infrequently. The reason, according to Mr. Matal, was that the reexamination statute offered the Patent Office too little authority to create rules that would make that procedure a practical alternative to challenging patents in court. The AIA was driven, in part, to remedy these limitations and offer the Patent Office broader authority to shape post-issuance proceedings over time and with experience to offer the public the practical litigation-alternative that inter partes reexamination apparently did not.
AIA trials, according to Mr. Matal, are a tool Congress created to administer the rights a patent confers, regardless of whether the rights are characterized as “public,” “private,” or a mix of those rights. He reiterated his earlier view on the legislative history of the AIA that the Patent Office remains “a particularly appropriate venue for making validity determinations in a cost-effective and technically sophisticated environment.” See Matal, “A Guide to the Legislative History of the America Invents Act: Part II of II,” 21 Fed. Cir. Bar J. 539, 601 (2012) (link). He emphasized that the broad rule-making authority that Congress granted the Office in administering AIA trials means that the Office has the power to revise its rules. He therefore encouraged the public to work constructively with the Office to revise, where necessary, the trial procedures in a way that allays their concerns, rather than advocate the trials should be eliminated.
Later in the day’s session, a panel of speakers that included the PTAB’s Chief Administrative Patent Judge David Ruschke polled the large audience of patent practitioners on whether they think “inter partes reviews should be ruled unconstitutional.” Of the responses, 42% expressed that the proceedings should be ruled unconstitutional. The Court’s decision in the case, Oil States Energy Services LLC v. Greene’s Energy Group, LLP (discussed here), is expected in 2018.