Inter Partes Reviews Are Constitutional

Oil States Energy Services, LLC v. Greene’s Energy Group, LLC

The U.S. Supreme Court upheld the constitutionality of Inter PartesReview (IPR) patent validity proceedings before the Trial and Appeal Board (PTAB) in its April 24, 2018, decision in the Oil States case. Thus, all prior and currently pending IPRs remain constitutional. The Court noted that the decision is narrow – it affirms only the constitutionality of IPRs. Not addressed are other related issues, such as the retroactive application of IPRs to patents that issued prior to the creation of the IPR procedure by the American Invents Act (i.e., prior to September 16, 2012), or whether IPRs implicate the Due Process Clause or the Takings Clause. Also, rules and procedures affecting the conduct of IPR proceedings have changed, and may continue to change in the future. See, for example, this companion article. For now, however, IPRs will continue to be a proceeding that must be considered by patentees and competitors when developing an effective IP strategy.

For more information on IPR practice before the PTAB, please contact us.