Inter Partes Review Is Here To Stay – Supreme Court Upholds Constitutionality

Written by: Christopher H. Blaszkowski & Alyssa R.M. Pugh

In a 7-2 decision, Justice Thomas delivered an opinion in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC holding that the inter partes review process is constitutional under both Article III and the Seventh Amendment.

The determinative issue before the Court was whether patent rights are “private rights” that must be heard by an Article III court, or “public rights” for which Congress has “significant latitude” to assign adjudication to entities other than Article III courts.  The Court concluded that patents are “public rights” and, accordingly, that inter partes review “falls squarely in the public-rights doctrine.”  Thus, the Patent Trial and Appeal Board (PTAB) may, without violating Article III or the Seventh Amendment, continue to conduct AIA trials.  Justice Thomas emphasized “the narrowness” of the majority opinion—limiting it to the facts and issues of Oil States’ challenge.  The ruling expressly does not address whether a non-Article III forum could hear an infringement action, nor should it be “misconstrued as suggesting that patents are not property for purposes of the Due Process Clause or the Takings Clause.”

Justice Breyer’s concurrence, joined by Justice Ginsburg and Justice Sotomayor, agreed fully with the majority opinion, but would go further to rule that some matters regarding “private property rights” could be adjudicated by “other than Article III courts.”

Justice Gorsuch, who was joined by Chief Justice Roberts, dissented, taking issue with the adjudication of patent rights—granted “after much hard work and no little investment” by the patent owner—by “a political appointee and his administrative agents.”  The dissent opined that the Court’s decision signaled a “retreat from Article III’s guarantees” and sacrificed the “right to an independent judge” in the “name of efficient government.”