U.S. Supreme Court Rules Inter Partes Review Proceedings do not Violate Article III or Seventh Amendment of the Constitution
In a much-anticipated decision, the Supreme Court on Tuesday, April 24, 2018, held that inter partes review (IPR) proceedings do not violate Article III or the Seventh Amendment of the Constitution. Oil States Energy Services, LLC v. Greene’s Energy Group, LLC., 2018 U.S. Lexis 2630. Justice Thomas wrote the opinion for the 7-2 majority, while Justice Gorsuch and Chief Justice Roberts, dissented. Justice Thomas opined that since the grant of a patent is a matter concerning a public right, and since IPR proceedings involve the same basic matter as patent grant, the constitution does not prohibit the USPTO from ruling on issues of validity outside an Article III court. Justice Gorsuch discussed in his dissent that the history of the patent system and precedent are based on the notion that patents are private rights and must therefore be adjudicated in Article III courts. The Court specifically noted that Oil States did not challenge the retroactive application of IPR, that is, whether IPRs are constitutional in patents which issued before enactment of the America Invents Act (AIA), which created IPR. Further, the Court emphasized that the holding does not address other potential constitutional challenges such as those related to the Due Process Clause or the Takings Clause. Expect to see further constitutional challenges to IPR in the future.