Ruttler Mills PLLC

Seattle Patent Attorneys and Trademark Lawyers

206-838-6400 Complimentary 15 Minute Consultation

Supreme Court Rules in Major Patent Cases

Posted Tuesday, April 24, 2018 by Kyle Straughan

Today the Supreme Court issued opinions on the two stand-out patent cases on their docket this year. The cases, Oil States Energy Services, LLC v. Greene’s Energy Group, LLC and SAS Institute v. Iancu, Director, USPTO, et al., addressed whether the post-grant inter partes review process created by the America Invents Act was a Constitutionally permissible procedure, and whether the Patent Office must issue a patentability opinion on all challenged claims should the Patent Office agree to initiate an inter partes review respectively.

Oil States easily stole the proverbial show due to its Constitutional considerations and potential impact on the operations of the Patent Office. The crux of the dispute was whether a patent once issued could be removed by a process other than through an Article III court with a jury. If not, then inter partes review would essentially constitute an unconstitutional removal of property. The Supreme Court held that patents fell into a special class of rights called “public rights” which the Supreme Court has held previously that Congress has significant latitude to assign adjudication thereof to entities other than Article III courts. The Supreme Court noted that inter partes review is “simply a reconsideration of that [patent] grant.” The justices however did narrow their decision to inter partes review and cautioned that it should not be construed to suggest that patents are not property for the purposes of the Due Process or Takings clauses of the Constitution.

In SAS Institute, the issue was whether the Patent Trial and Appeal Board, upon making the decision to institute an inter partes review of a patent, must issue a patentability opinion on every single claim the petitioner challenged, or if they may pick particular claims. The Supreme Court held that language of the statute, specifically the use of the word “shall” making the USPTO’s duty a nondiscretionary one, and the use of the word “any” as implying application to every member of a group, means that the Patent Trial and Appeal Board must address every claim challenged. The Supreme Court held that the choice granted the USPTO is whether or not to institute review, not which claims to review once the decision is made.

Oil States: https://www.supremecourt.gov/opinions/17pdf/16-712_87ad.pdf

SAS Institute: https://www.supremecourt.gov/opinions/17pdf/16-969_f2qg.pdf

Supreme Court Rules in Major Patent Cases ›› Ruttler Mills PLLC