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”.
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