The Supreme Court issued decisions in the cases of Oil States v. Greene’s Energy and SAS v. Iancu, addressing the constitutionality of inter partes review (“IPR”) and determining whether the Patent Trial and Appeal Board (“PTAB”) must decide the patentability of all claims challenged by an IPR petitioner. The decisions held that IPR proceedings are constitutional and 35 U.S.C. § 318(a) requires the PTAB to issue a final written decision addressing the patentability of all claims challenged in the petition if instituted, putting an end to “partial institution” decisions. Although the Court has clarified the constitutionality of IPR, its decision in SAS will significantly impact the role of the petitioner, patent owner, and PTAB, creating less certainty for parties during IPR proceedings.
In Oil States, the Court held 7-2 that IPR, an adjudicative procedure before the PTAB at the United States Patent & Trademark Office (“USPTO”) to reconsider patentability of issued patents, does not violate Article III of the Constitution nor the Seventh Amendment. Oil States Energy Servs., LLC v. Greene’s Energy Grp., LLC, No. 16-712, slip op. (U.S. Apr. 24, 2018). Patent owner and petitioner Oil States sued Greene’s Energy in federal court for infringing Oil States’ patent, encompassing protections for wellhead equipment used in fracking. Greene’s Energy countersued asserting invalidity of the patent and also filed an IPR petition before the PTAB. Pending litigation, the PTAB, after institution, invalidated challenged claims in the patent. On appeal, the Federal Circuit upheld the constitutionality of IPR and ultimately affirmed the PTAB’s decision.
