28 November 2017
Washington DC
Reporter: Barney Dixon

IPR likely to be upheld in Oil States v Greene’s Energy

Inter partes review (IPR) proceedings will likely be held as constitutional in the Oil States Energy v Greene’s Energy Supreme Court case, however there is a “significant chance” that they will be rejected, according to intellectual property lawyers.

The US Supreme Court agreed to hear the case earlier this year and decide whether inter partes review, introduced in the America Invents Act, violates the US Constitution.

Yesterday (27 November) the court heard oral arguments, revealing the potential direction of the case.

According to John Vandenberg, partner at Klarquist, while the Oil States had the “tougher day in court”, Donald Trump’s Supreme Court pick, Justice Neil Gorsuch, was “uniformly hostile” to IPR proceedings.

“[Gorsuch] urged a stronger position than [Oil States] had taken or would take, suggesting that ex parte and inter partes reexaminations are unconstitutional under article 3 because a patent is a private right. [Oil States] took the position that reexaminations are OK under article 3 because they are not adjudications,” said Vandenberg.

Marshall Schmitt, partner at Michael Best added: “Justice Gorsuch was the most active questioner possibly inclined towards finding IPRs unconstitutional, but in some instances, even his questions acknowledged the strength of arguments in favor of upholding IPRs offered by respondent and the government.”

But, Schmitt explained: “For the most part, the questioning by the panel betrayed a belief that IPR proceedings are another mechanism for the patent office to correct errors it made in the initial examination process.”

Vandenberg concluded that the most likely result would be that IPR is upheld, partly on the grounds that Oil States conceded that reexaminations, which are substantively identical to IPRs do not violate article 3.

However, Vandenberg also noted that the court might only uphold IPR for patents filed after the America Invents Act, and there remained a “significant chance” that IPRs will be rejected on the whole.

Schmitt said that, whatever the decision is, there is a “likelihood of multiple opinions to ensure that the decision does not, in the minds of certain justices, unduly expand the power of the executive branch”.

Subscribe for free to read the latest issue of IPPro Patents, which includes our panel on the potential outcomes in Oil States v Greene’s Energy.

More news
The latest news from IPPro Patents
Join Our Newsletter

Sign up today and never
miss the latest news or an issue again

Subscribe now
Countries should break IP rules to ensure growth, says report
23 February 2018 | London | Reporter: Barney Dixon
Countries such as India and China should break harmonised intellectual property rules to avoid protectionist measures from the US and EU, according to a new report from Gowling WLG
EPO employment proposal halted
22 February 2018 | Munich | Reporter: Barney Dixon
A proposal to scrap permanent employment contracts at the EPO has been halted and a controversial article within it withdrawn, a source close to the Staff Union of the EPO has confirmed
UPC complaint to be heard in 2018
22 February 2018 | Karlsruhe | Reporter: Barney Dixon
The German Federal Constitutional Court will hear the constitutional complaint against the UPC in 2018
Cabinet Plasseraud promotes four to partner
21 February 2018 | Paris | Reporter: Barney Dixon
Cabinet Plasseraud has appointed for intellectual property attorneys to partner
NPE litigation in Europe sees continued growth
20 February 2018 | Brussels | Reporter: Barney Dixon
NPE litigation and enforcement in Europe has increased by an average almost 20 percent year-on-year since 2007, according to a new report from Darts-IP
BakerHostetler hires IP partner
19 February 2018 | Los Angeles | Reporter: Barney Dixon
BakerHostetler has hired Troy Schmelzer as partner in its intellectual property group
Sheppard, Mullin, Richter & Hampton promotes four to partner
16 February 2018 | California | Reporter: Barney Dixon
Sheppard, Mullin, Richter & Hampton has promoted four intellectual property attorneys to partner across its Shanghai, San Diego and San Francisco offices