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Is Inter Partes Patent Review in Jeopardy After Supreme Court Argument?

By George Khoury, Esq. on November 30, 2017 | Last updated on March 21, 2019

A pair of patent appeals were argued before the High Court this week, each with potentially massive ramifications for IP litigators. One involves a challenge to a part of the inter partes patent review process established by the 2011 America Invents Act, while the other challenges the whole inter partes review process.

Both appeals strike a chord within the tech and intellectual property communities as each is attacking a process designed to stem and discourage patent trolls from filing lawsuits. The inter partes patent review process was designed to resolve the technical aspects of patent infringe disputes in a more cost effective manner.

Partial Inter Partes

In the SAS Institute v. Matel case, SAS was seeking to invalidate what is known as partial inter partes review. This is where the patent review board only reviews limited issues in an inter partes review action. One issue that the challenger took with these limited reviews was their appealability, or rather lack thereof.

However, the justices seemed reluctant to take away the power of the patent review board to only review the claims it sought fit in its discretion. The justices highlighted the fact that broad discretion was granted to the USPTO via statute to do so.

Unconstitutionality of the Whole Process

In the more widely watched Oil States v. Greene Energy case, the issue was quite a bit broader. Rather than challenging just a piece of the inter partes process, Oil States is asking the High Court to find that the whole process is unconstitutional due to the inter partes process taking away rights without a jury trial.

Invalidating the entire inter partes process, rather than just limiting the ability of the review board to limit what they review, would be a boon for the patent trolls which thrive on forcing settlements based upon the high cost of patent litigation. The inter partes review process reduces the leverage of patent trolls by forcing early review of the technical merits, and doing so in a more cost effective forum than the federal district courts.

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