SCOTUS agrees to hear constitutional challenge to PTAB, against wishes of Trump administration

Today’s decision by the US Supreme Court to grant cert in Oil States Energy Services v Greene’s Energy Group promises to raise some serious questions over the future of post-issuance review procedures at the USPTO. The case challenges the constitutionality of inter partes reviews (IPR) which over the last five years have proved highly controversial among patent owners.

DC insider Peter Harter, founder of The Farrington Group and formerly with Intellectual Ventures, circulated the memo below on the case this morning. As he points out, with the court also due to hear another challenge to a key part of the IPR process in SAS Institute v Lee, the PTAB is going to be firmly under the microscope next autumn – along with the judgement of Joe Matal, recently appointed as acting head of the USPTO following the departure of Michelle Lee. Harter’s memo also includes detail on some key upcoming IP events in DC that are worth keeping an eye on.

This morning the US Supreme Court granted cert in Oil States vs. Greene’s Energy, a dispute between two operating companies in the oil and gas fracking business. Oil States is represented by Allyson Ho of Morgan Lewis who was second chair to (now Senator and former Morgan Lewis partner) Ted Cruz when he won a patent case SEB vs. Global-Tech on willful blindness. The grant is limited to the first question posed: “Whether inter partes review, an adversarial process used by the Patent and Trademark Office (PTO) to analyze the validity of existing patents, violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.”

This marks the second time and in just a few weeks where the Court grants cert over the objection of the US government and on a patent issue concerning PTAB.  The Court recently granted cert in SAS Institute v. Lee.  In both cases Jeff Wall, President Trump’s Acting Solicitor General (SG) for the United States at the Department of Justice, promoted the policies of the Obama administration.  Wall’s views in both cases were directly informed by Joe Matal, who was recently named by Commerce Secretary Wilbur Ross to the position of, “Performing the Functions and Duties of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO” a title and role that legally does not exist and violates Department Organizational Orders.  Any patents signed by Matal may not be valid and his actions in this position may be ultra vires.

Amicus brief and media activity in Oil States and SAS this summer and autumn should provide a useful amplifier to those in Congress that want to review PTAB and reform its abuses and enthusiasms.

Tomorrow, June 13th, the IP Subcommittee of the US House of Representatives has a hearing on TC Heartland to discuss the impact of the Court’s recent decision on venue cases. It is unknown whether pending cases will have to refile.  Delaware’s Governor Carney is happily looking forward to having a lot of new business in his state. Last week in a public policy call on innovation Gov. Carney said that patent litigation in his state is like a company with thousands and thousands of jobs move into the state.

On June 19th and 22th the White House hosts two events focused on technology issues. The Office of American Innovation hosts its first in person tech CEO meeting and the American Technology Council via the Office of Science and Technology Policy hosts a policy session focused on the Internet of Things, 5G and immigration issues with a focus on reducing regulatory burdens. It is possible that the tech giants participating in both of these meetings during “tech week” will promote the need for Trump to act on patent reform.

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