In 2011 Congress enacted Inter Partes Review (IPR) as part of the Leahy-Smith America Invents Act to refine the processes used by United States Patent and Trademark Office (PTO) in conducting patent reexamination to make those processes more efficient and better enable the PTO to identify and invalidate erroneously issued patent claims. Invalid patents impose burdens on the pace of innovation and on the general economy, particularly when asserted by patent monetization entities against technology companies, like Intel, that invest heavily in research and development to drive technological innovation forward.
In the Oil States Energy vs Greene’s Energy case, Petitioner Oil States’ patent claims on a well-head mechanism used in fracking operations were invalidated via an IPR requested by Respondent Greene’s Energy, who Oil States had sued alleging patent infringement of those patent claims. After appeal to the Federal Circuit, where the Federal Circuit rejected Oil States’ complaints that the IPR process and ruling were erroneous and unconstitutional, Oil States sought review by the U.S. Supreme Court.
The Supreme Court granted review to answer the question: whether the IPR process is unconstitutional because it allows the PTO to extinguish private property rights (i.e., issued patent claims) through a non-Article III forum (i.e., not in Federal District Court, but instead, in front of a three-member panel of the Patent Trial and Appeals Board (PTAB) at the PTO) without a jury.
Intel’s brief argues that IPR is constitutional because patent rights are primarily public rights and Congress therefore has broad discretion to place conditions and limitations on the scope of patent rights, including the discretion to create IPR and allow the PTO to implement it, to ensure that the patent system furthers its public objectives, including fostering innovation and disclosure of new inventions. Given that the PTO’s longstanding authority to decide whether an invention merits a patent in the first place has never been viewed as threatening to individual liberties, Intel further argued that it is difficult to see why the PTO’s revisiting its issuance decision should be viewed any different and therefore the IPR inquiry does not require a jury.
Seven other technology companies signed on to Intel’s amicus brief Applied Materials, Cisco, Google, LGE, On-Semiconductor, Samsung and Xerox.