Oil States Energy Services v. Greene’s Energy Group

Has the administrative state gone too far into disputes over innovation and technology? That question animates Oil States Energy Services v. Greene’s Energy Group. The Supreme Court will hear arguments on Monday, November 27 over whether the Patent Trial & Appeal Board violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.

SAS Institute v. Matal

In SAS Institute v. Matal, the question presented is, in the context of post-grant review of a patent under the America Invents Act (“AIA”), whether the Patent Trial and Appeal Board (“PTAB”) must issue a final written decision on the validity of every patent claim challenged, or can the PTAB rule on only some of the patent claims challenged. This case involves a relatively confined question of statutory construction, but, assuming the Supreme Court does not dismantle the AIA’s post-grant review system in Oil States, SAS Institute has the potential to dramatically change post-grant patent challenges.

The statute at issue, 35 U.S.C. 318(a), mandates: “If an inter partes review is instituted . . . , the Patent Trial and Appeal Board shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner . . . .” The Patent Office interprets this provision to mean that the PTAB need provide a final written decision on only the claims the PTAB reviews in full. Thus, under current practice, a patent challenger can ask the PTAB to cancel all claims of a patent when filing an IPR petition, but the PTAB may institute full review of only some of the claims. The final written decision is limited to only those claims the PTAB reviews in full. Petitioner in SAS Institute challenges this practice, arguing that the plain text of the statute, along with the statutory text and purpose, requires a decision on all challenged claims.

The case has important implications about the AIA process, the degree to which AIA review of patents creates finality to patent validity determinations, and the applicability of Chevron deference to the Patent Office’s rules and procedures.

Featuring:
Mr. Matthew J. Dowd, Founder, Dowd PLLC
Mr. Brian H. Pandya, Partner, Wiley Rein

Teleforum calls are open to all dues paying members of the Federalist Society. To become a member, sign up here. As a member, you should receive email announcements of upcoming Teleforum calls which contain the conference call phone number. If you are not receiving those email announcements, please contact us at 202-822-8138.