Divided Justices Ask Tough Questions About Aia Reviews

Earlier today the U.s. Supreme Courtroom heard oral arguments in Oil States Energy Services, LLC 5. Green's Energy Group, LLC, the case that volition require the Supreme Court to decide whether inter partes review (IPR) proceedings earlier an executive agency tribunal are ramble, or whether the adjudication of patent validity must take place in Commodity III federal courts.

While it is always difficult and sometimes impossible to predict the outcome of Supreme Court cases based simply on the oral argument transcript, a review of the transcript in Oil States suggests the Supreme Court is split up on what to exercise with IPR proceedings. Leading upward to the oral arguments Acting PTO Director Joe Matal has been on tape in various forums predicting a nine-0 ruling past the Supreme Court in favor of the constitutionality of IPR proceedings. While the oral argument raises more than questions than it provides answers, a 9-0 decision that ratifies the constitutionality of IPR proceedings seems quite unlikely.

Justice Gorsuch seems the most probable, based on his questions, to support the petitioner's position that there is a ramble infirmity surrounding IPR proceedings. Primary Justice Roberts likewise seemed to have substantial concerns with respect to IPR proceedings. Possibly somewhat predictably, Justice Breyer and to a lesser extent Justices Sotomayor and Kagan, seemed through their questions to view IPR proceedings equally only some other opportunity for the Patent Role to make sure the correct conclusion has been reached at the time the patent was granted by the Patent Office. Justice Kennedy overall seemed more than in line with the thinking of the liberals on the Court, Justice Ginsberg asked hard questions and seemed difficult to predict how she might rule. Justice Thomas characteristically remained silent, although his judicial philosophy would exist typically in line with Justice Gorsuch. Justice Alito asked simply a few questions of the petitioner's counsel, Allyson Ho, which focused on whether the Constitution requires a Patent Deed and whether Congress could put limitations on the grant of "these monopolies."

Information technology seems accurate to recognize that each of those before the Supreme Court today fielded difficult questions from a hot Court. There were themes that emerged throughout the questioning. And 1 peculiar attribute of the day seemed to be that the Department of Justice continues to take patent positions that are perfectly simpatico with Obama era policies. I suppose the lesson of the day is this: Non much has changed relative to patent policy under President Trump despite the great hopes of many in the patent owner community.

Questions for Ms. Ho, representing Oil States, tended to focus on the differences between reexamination and inter partes review, with Ms. Ho explaining that reexamination is "fundamentally examinational," in contrast to IPR proceedings, which are adjudicatory and the type of "cases that have been adjudicated in courts for centuries…"

Questions for Christopher Kise, representing the respondent Greene's Energy Group, tended to focus on three different aspects: (ane) What if a patent owner has spend millions or billions of dollars in reliance on the patent over a menses of many years, do rights ever vest? (ii) Whether there is an opportunity to review the agency determination in an Article III tribunal. (3) Whether patents are a individual correct.

With respect to the showtime outcome, which continued to come up over and over again once raised by Justice Breyer, it seemed to problem the Court that there is no period of time in which a patent vests and patent owners tin meaningfully rely on the patent having vested. Although Justice Breyer raised the question, which was picked upwardly on past Chief Justice Roberts and Justice Gorsuch, Breyer would later say show his antipathy for a vested rights theory, proverb that such a theory was popular in the 19th century, and held sway with Justice Story in earlier cases, "but in fact has happily sunk from sight." Still, Roberts and Gorsuch seemed concerned with the issue of vested rights.

Questions reserved for Malcolm Stewart, who argued on behalf of the federal authorities, tended to focus on the difference between patents and state, the extent to which the Patent Role could constitutionally be involved in deciding infringement issues, and the bear upon on panel stacking at the Patent Trial and Appeal Board in order to achieve the consequence desired by the Director in a particular case.

With respect to the Patent Role deciding infringement issues, Stewart seemed to paint himself into a chip of a corner when he distinguished an executive tribunal such as the PTAB deciding infringement issues considering there is no precedent in common law or elsewhere to back up damages beingness awarded by an agency in a dispute between parties. This led Justices Sotomayor and Gorsuch to ask whether information technology would be constitutional for the Patent Office, or the Managing director specifically, to render decisions in patent infringement matters if no damages were sought.

Following upwards on Justice Sotomayor's question, Gorsuch to enquire: "So a declaration of not-infringement could be issued by the managing director, for example, correct?" Stewart explained that would be harder to defend because making such decisions is "non part of the PTO's traditional piece of work." This caused Gorsuch to question how long does it take to make a tradition. This was in reference to Kise and Stewart arguing that for the past twoscore years reexamination has been a procedure offered past the PTO, while Ms. Ho had argued that for 400 years courts take been responsible for adjudicating patents.

In rebuttal Ms. Ho picked up on the line of questioning relating to panel stacking as being problematic, which was a recurring theme during the oral arguments: "[T]he beingness of panel stacking shows precisely the danger of judges, of decision-makers, who are subject area to executive political influence."

It seemed that no one serious defended the practice of panel stacking, although it was minimized as not having happened very much. This lead Justice Kennedy to inquire Mr. Kise to assume console stacking were rampant every bit he answered the Chief Justice'southward concerns. Kise would once more say that information technology is not rampant, but "that the Administrative Procedures Act and other provisions of the Constitution would deal with infirmities in a particular case on an as-applied basis…"

I moment of humor did arise when Chief Justice Roberts was asking Mr. Stewart most PTAB console stacking.

MR. STEWART:… My understanding of the cases is that the chief judge was concerned that the initial -­

CHIEF JUSTICE ROBERTS: The master judge?

MR. STEWART: The chief approximate of the PTAB.

CHIEF JUSTICE ROBERTS: Yous're talking about the executive employee?

MR. STEWART: An executive branch official. The main judge of the PTAB -­

Master JUSTICE ROBERTS: When we say "judge," we ordinarily hateful something else.

MR. STEWART: Okay.

(Laughter.)

Whatsoever the ultimate outcome of the case is, one thing seems certain. The thoughts of Neal Solomon in his series were eerily on point. Solomon wrote an 8-office series on the constitutionality of the PTAB under the public rights doctrine, which was absolutely front end and center throughout the questioning. Solomon predicted cases similar Crowell, Northern Pipeline, Schor and Stern would all be relevant to the Courtroom's conclusion, and each of those cases were raised in questioning by the Justices.

There will undoubtedly be more than to write in the coming days and weeks. Stay tuned.

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Source: https://www.ipwatchdog.com/2017/11/27/supreme-court-hears-oil-states-challenge-constitutionality-ipr/id=90510/

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