Although most patent counsel has been watching the patent case Oil States Energy Services v. Greene’s Energy Group, a U.S. Supreme Court decision in a lesser-known case now has companies scrambling to revisit their inter partes review strategy.
On April 24, the court held 7-2 in Oil States that inter partes review, a post-grant review process where the U.S. Patent and Trademark Office can affirm or extinguish patent claims, is indeed constitutional. The PTO can cancel patent rights despite the fact that its courts are not established by the Constitution because patent rights are public as opposed to private rights, the court found.
The same day, the court held 5-4 in SAS Institute Inc. v. Iancu that when the Patent Trial and Appeal Board institutes an IPR, it must decide on all of the patent claims the petitioner is challenging, contrary to how the board sometimes handled IPR challenges. The majority opinion hinged on a plain text reading of the IPR statute. While Oil States has proponents of IPR breathing a sigh of relief, SAS Institute has patentees bracing to remount a defense against patent claim challenges that could be revived from partial judgments.
“Oil States was the one everyone was worried about because if IPR had gone away, it would have been pandemonium,” said George Lewis, a partner at IP firm Merchant & Gould’s office in Denver. SAS Institute was “a sleeper case not a whole lot of people were watching,” he added.