Filewrapper®

Inter Partes Review Proceedings (IPRs) Do Not Violate Article III of the Constitution per U.S. Supreme Court

April 24, 2018
Post by Jonathan L. Kennedy

The U.S. Supreme held in a 7-2 decision (Justice Gorsuch and Chief Justice Roberts dissenting), Oil States Energy Servs. V. Greene’s Energy Group, LLC, that the Inter Partes Review proceedings, commonly referred to as IPRs, do not violate Article III or the Seventh Amendment.

The Court was deciding two primary constitutional challenges: (1) whether IPRs violate Article III of the constitution by assigning a task intended for U.S. District Courts to an administrative agency (i.e., the Patent Office); and (2) whether IPRs violate the Seventh Amendment by having a matter tried outside of the U.S. Courts.  

The majority held that the grant of a patent falls within the public-rights doctrine.  Public and private rights are distinguished historically in legal precedent. The Court held that patents and “[i]nter partes review fall[] squarely within the public-rights doctrine.”  Elaborating on this, the Court noted that the decision to grant a patent is a matter involving public rights as it is a public franchise and provides the patentee the right to exclude the public from making, using, selling, and offering for sale the patented invention.  The Court also noted that granting patents is one of the constitutional rights carried out by the executive and legislative branches. This too is indicative of the public-rights doctrine as the granting of patents is a matter that occurs between the government and others. Quoting the Court’s earlier decision in In re Cuozzo, the majority reiterated that IPRs are “a second look at an earlier administrative” action, i.e., grant of a patent.  The only difference between IPR and examination is that the former occurs after issuance. The Court held that this is a distinction without a difference.

The public-rights doctrine provides Congress with “wide latitude to assign adjudication of public rights to entities other than Article III courts.”  Thus, by holding that patents and the IPR proceedings fall within the public rights doctrine, Congress has the authority to assign review, amendment, and cancellation of patents to the USPTO without violating Article III of the Constitution.  Moreover, the Court also held that since Congress can properly assign adjudication of patent validity to the USPTO, the Seventh Amendment is not violated.

Justice Gorsuch wrote a dissent, joined by Chief Justice Roberts.  The focus of the dissent is on the importance of independent judicial review of cases and controversies, which is laid out in Article III of the Constitution, and protecting the judiciary from “intrusions by the other branches.” The dissent provides a detailed historical review of Courts and the importance of independent judicial review over controversies between parties, contending that controversies between parties are to be considered by Article III courts.

The Court’s full opinion can be accessed here. A more detailed discussion of this case is provided in a subsequent article available here.



Post Categories

Comments (0)
Post a Comment



Captcha Image
Return to the Filewrapper Blog

Search Posts

Purpose

The attorneys of McKee, Voorhees & Sease, P.L.C. designed this blog as an informational and educational resource about intellectual property law for our clients, other attorneys, and the public as a whole. Our goal is to provide cutting-edge information about recent developments in intellectual property law, including relevant case law updates, proposed legislation, and intellectual property law in the news.

Disclaimer

McKee, Voorhees & Sease, P.L.C. provides this blog for general informational purposes only. By using this blog, you agree that the information on this blog does not constitute legal or other professional advice and no attorney-client or other relationship is created between you and McKee, Voorhees & Sease, P.L.C. Do not consider this blog to be a substitute for obtaining legal advice from a qualified, licensed attorney. While we try to revise this blog on a regular basis, it may not reflect the most current legal developments. We consciously refrain from expressing opinions on this blog and instead, offer it as a form of information and education, however if there appears an expression of opinion, realize that those views are indicative of the individual and not of the firm as a whole.

Connect with MVS

Enter your name and email address to recieve the latest news and updates from us and our attorneys.

Subscribe to: MVS Newsletter

Subscribe to: Filewrapper® Blog Updates

  I have read and agree to the terms and conditions of McKee, Voorhees & Sease, P.L.C.

Captcha Image