USPTO's Post-Issuance Patent Review Process Does Not Violate Article III, Seventh Amendment

IP Law Daily reached to Finnegan partner Trenton Ward for his thoughts on the Supreme Court's decision in Oil States Energy Services, LLC v. Greene's Energy Group LLC. Trenton issued the following statement:

The Oil States saga came to a close today, as Justice Thomas authored a decision on behalf of a seven-member majority finding that inter partes review does not violate Article III or the Seventh Amendment. The Court determined that "within the scope established by the Constitution, Congress may set out conditions and tests for patentability," and "inter partes review is one of those conditions." In response to the arguments that McCormick and other Supreme Court precedent foreclosed post-issuance administrative review of patents, the Court determined that those cases addressed a version of the Patent Act that did not include any provision for post-issuance administrative review. Further, the Court determined that the precedent did not limit Congress’s authority to establish another scheme.

Justices Gorsuch and Roberts dissented and cautioned that the majority’s decision "may not represent a rout but it at least signals a retreat from Article III’s guarantees." The dissent suggests that enforcing Article III isn’t about protecting judicial authority for its own sake but, instead, ensuring the people enjoy no fewer rights against governmental intrusion than those who came before. In response, the majority commented that they "disagree with the dissent’s assumption that, because courts have traditionally adjudicated patent validity in this country, courts must forever continue to do so." The majority held that Congress can reserve for itself the power to reconsider patentability, delegate that power to executive officers, or commit it to judicial tribunals.

Importantly Justice Thomas concludes the decision by emphasizing the narrowness of the holding. Specifically, Justice Thomas identifies that Oil States did not raise a due process challenge and did not challenge the retroactive application of inter partes review.