Ruling in favor of Foley & Lardner client Greene’s Energy Group, LLC, the United States Supreme Court today held that inter partes review (IPR) proceedings at the U.S. Patent & Trademark Office are constitutional. The decision impacts significantly the intellectual property rights of all patent holders, and garnered participatory interest from a broad spectrum of technology, manufacturing, pharmaceutical, life sciences and financial services industries.
Writing for the majority, Justice Clarence Thomas ruled that IPR proceedings do not violate either Article III or the Seventh Amendment. “Inter partes review is simply a reconsideration of [the PTO’s] grant [of a patent], and Congress has permissibly reserved the PTO’s authority to conduct that reconsideration. Thus, the PTO can do so without violating Article III.” The Court also held that IPRs do not violate the Seventh Amendment. “Because inter partes review is a matter that Congress can properly assign to the PTO, a jury is not necessary in these proceedings.”
“This is truly great news for American business and industry,” said Foley partner Christopher Kise who argued the case before the Supreme Court. “Actual innovators and productive businesses such as Greene’s Energy can now rest assured this important facet of our system will be retained, and the burden imposed by non-practicing entities will be minimized.” The Oil States win marks the fourth Supreme Court victory for Kise.
The decision also represents the Supreme Court’s evolving view as to the proper role of administrative agencies in the adjudication of disputes. Since at least 1982, when it decided Northern Pipeline Construction Co. v. Marathon Pipe Line Co., 458 U.S. 50 (1982), the Supreme Court has wrestled with the question of whether the creation by Congress of specialized adjudicatory forums (i.e., bankruptcy courts, administrative law judges) encroaches on the powers the Constitution reserves to the judicial branch. To address such issues, the Oil States briefing and argument involved a detailed analysis of the origins of U.S. patent law dating back to the founding of the nation. Kise added, “We are pleased Greene’s Energy was able to convince the Court that the IPR process does not intrude upon the judicial power, but rather represents a legitimate, necessary and cost-effective, error-correction mechanism that strengthens the U.S. patent system.”
In addition to Kise, the Foley & Lardner team also included George Quillin, Pavan Agarwal, David Goroff, Brad Roush, Lawrence Dougherty, and Joshua Hawkes.