SCOTUS Watch: Can Tribunals Replace Juries in Nixing Patents?
by Lisa V. Mueller (Michael, Best & Friedrich/Biofuels Digest) On November 27, 2017, the Supreme Court of the United States will hear arguments in Oil States Energy Services LLC. v. Greene’s Energy Group. It’s no “ho-hum” case.
If you or your company has any issued patents or is worried that you may be infringing one or more patents owned by another company (e.g., a competitor), then you should care about this case. In fact, the Oil States case is so important that it is posed to become a landmark decision for the patent community.
What is this case about? The case involves the constitutionality of a U.S. Patent and Trademark Office (U.S. PTO) procedure known as inter partes review (IPR) which came into effect on September 16, 2012. IPRs are conducted by a entity within the U.S. PTO known as the Patent Trial and Appeal Board (PTAB). During an IPR, the validity of a previously granted U.S. Patent is assessed based on patents or printed publications (namely, the prior art). IPR decisions are made by technical specialists at the PTAB and not by juries. This is very different than in a court of law where decisions regarding the validity of patents are made mostly by juries. Since IPRs came into effect in 2012, hundreds of patents have been invalidated. While many infringers have challenged patents through the use of IPR, there have been reports of third parties gaming the system for unintended and potentially extortionary practices.
The Seventh Amendment states that any controversy that exceeds a value of twenty dollars has the right to a jury trial.
According to Oil States, IPR proceedings are an administrative procedure within the U.S. PTO during which decisions are rendered by technical specialists at the PTAB. As a result, IPRs are unconstitutional because neither a jury nor an Article III forum renders the decision and historically, suits to invalidate patents have been tried before a jury in a court of law. READ MORE