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PublishedOctober 31, 2017

CCIA Files Amicus In IPR Constitutionality Case At Supreme Court

CCIA Files Amicus In IPR Constitutionality Case At Supreme Court

Yesterday, we filed an amicus brief (along with the Internet Association, the National Association of Realtors, the Software and Information Industry Association, the Association of Global Automakers, and SAS Institute) in the Oil States v. Greene’s Energy case in the Supreme Court.  This case is a challenge to the constitutionality of the inter partes review (IPR) system, claiming that IPR is unconstitutional.  

Oil States, a drilling company, patented a technique used in fracking.  It then sued another drilling company, Greene’s Energy, claiming Greene’s had infringed the patent.  Greene’s, faced with an expensive lawsuit, chose to file an IPR.  The Patent Trials and Appeals Board decided that the Oil States patent was invalid, and the Federal Circuit affirmed.

Oil States, rather than accepting that the prior art disclosed their idea, chose to appeal their case to the Supreme Court, claiming that the same executive agency which determines whether to grant a patent cannot legally review whether that grant was erroneous.  They claim that doing so violates Article III of the Constitution and the Seventh Amendment.

The Summary of Argument in the brief does a nice job of making our point, so I’ll just show you what we said.

Summary of Argument

And there’s a very simple reason why.  Patents are public rights, created by Congress and implemented via Congress’s express statutory scheme.  Part of that scheme, created by an overwhelming majority vote in Congress, is inter partes review.  

The petitioner, and the amici claiming that IPR is unconstitutional, rely on arguments that our brief discredits—analogies to land patents, claims that patent validity was adjudicated at common law, claims that patents can only be invalidated by a jury.  None of those arguments hold up, as our brief explains.

We’re not the only ones who think the petitioner’s arguments are wrong: amici ranging from the AARP and Apple to chip manufacturer TSMC and 72 distinguished IP law professors agree.

Argument in the case is November 27th.  That’s when we’ll have a better sense of what the Justices think of all this.

Josh Landau

Patent Counsel, CCIA

Joshua Landau is the Patent Counsel at the Computer & Communications Industry Association (CCIA), where he represents and advises the association regarding patent issues.  Mr. Landau joined CCIA from WilmerHale in 2017, where he represented clients in patent litigation, counseling, and prosecution, including trials in both district courts and before the PTAB.

Prior to his time at WilmerHale, Mr. Landau was a Legal Fellow on Senator Al Franken’s Judiciary staff, focusing on privacy and technology issues.  Mr. Landau received his J.D. from Georgetown University Law Center and his B.S.E.E. from the University of Michigan.  Before law school, he spent several years as an automotive engineer, during which time he co-invented technology leading to U.S. Patent No. 6,934,140.

Follow @PatentJosh on Twitter.

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