Supreme Court Has Eye on IPR

Inter partes review, a widely adopted patent litigation strategy, faces constitutional challenge

The nation’s highest court recently turned heads by agreeing to hear a case that could eliminate a popular yet controversial tool for patent litigants.

Inter partes review, a post-grant re-examination process in which the Patent Trial and Appeals Board delivers expedited determinations of a patent claim’s validity, is now seeing its most legitimate legal threat yet, at least in the eyes of the U.S. Supreme Court.

The court granted certiorari June 12 in Oil States Energy Services vs. Greene’s Energy Group, et al., a case in which petitioner Oil States argues that the IPR process is unconstitutional. Companies that have grown reliant on IPR as a cost-saving avenue in patent litigation are still apt to use the embattled process, albeit with an eye toward what the high court might do, patent attorneys say.

The U.S. Patent and Trademark Office’s inter partes review process spawned from the America Invents Act of 2011. The tool allows parties an avenue for challenging a patent claim’s validity that is much less expensive than doing so in district court. If the board agrees to review a patent claim, it delivers a final determination within one year.

To read this story and other complete articles featured in the July 10, 2017 print edition of Law Week Colorado, copies are available for purchase online.