The Supreme Court is poised to issue decisions in two IPR-related cases that some predict will end IPRs as we know them. One of the cases, Oil States Energy Services v. Greene's Energy Group, could eliminate IPRs and gut the PTAB's role in reviewing issued patents. The other case, SAS Institute Inc. v. Iancu, could balloon the PTAB's workload and could expose those requesting review of patents to greater risk if they fail to fully make their case.
As with all prophecies of the end (so far), prophesies of the end of IPRs could also be premature, as the Supreme Court could simply allow IPRs to continue in their current form. Read on for a brief refresher on the context of Oil States, and stay tuned for a preview of SAS.
Oil States challenges the constitutionality of IPRs. A finding of unconstitutionality would be a big change in what has become the status quo in patent disputes. IPRs have been successful beyond some expectations. When creating the regulations to administer IPRs, the PTO estimated that it would receive 500 petitions for IPR in FY2015. It actually received 1,737 petitions. That popularity, along with a perception that IPRs kill challenged patent claims, has attracted fervent critics of the proceeding.
To critics, this case is one that has been long dreamed of. The appellants argue that IPRs usurp the courts' constitutional authority to adjudicate the validity of issued patents. Thus, one of IPRs' original rationales—to move some validity disputes from district courts to specialized and expeditious proceedings under the purview of the PTO's patent experts—may contribute to its downfall.
The notable number of issues that could sway the Court makes predicting the outcome perilous. As we previously wrote, oral arguments featured discussion of the line between public rights and private rights, a distinction that may help some justices to decide whether IPRs' usurpation is permissible. Even the authority of the English Privy Council in the 18th century may play a role, as some see its authority to review English patents as setting precedent for the PTAB's role in IPRs.
Yet, most commentators expect that a majority of the Court will uphold IPRs in some form. The number of petitions filed since the oral arguments has not changed in any meaningful way, perhaps reflecting most practitioners' expectations that the process is unlikely to disappear.
To compound the uncertainty, while the Court may entirely abolish IPRs or leave them intact, it may also choose a middle ground. For example, the Court could find that merely obtaining a patent after Congress created IPRs could make IPRs a permitted risk of patent ownership. If the Court were to go that route, the decision might beg the question of what else would subject a patent owner to the risk of IPR. Would paying a maintenance fee? Would registering an assignment?
We will have greater certainty as soon as next week about whether IPRs' days as a fixture of patent litigation are coming to an end.
In the next post, we will preview SAS, a case that has not garnered the same attention as Oil States, but deserves to, since it might reshape IPRs as we know them.
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