Oil States Energy Servs., LLC v. Greene's Energy Grp., LLC

138 S. Ct. 1365 (2018)



Inter partes review falls squarely within the public-rights doctrine. Judicial precedent recognizes that the decision to grant a patent is a matter involving public rights, specifically, the grant of a public franchise. Inter partes review is simply a reconsideration of that grant, and Congress has permissibly reserved the United States Patent and Trademark Office's (PTO’s) authority to conduct that reconsideration. Thus, the PTO can do so without violating U.S. Const. art. III.


Petitioner Oil States Energy Services, LLC, obtained a patent relating to technology for protecting wellhead equipment used in hydraulic fracturing. It sued respondent Greene's Energy Group, LLC, in Federal District Court for infringement. Greene's Energy challenged the patent's validity in the District Court and also petitioned the PTO for inter partes review. Both proceedings progressed in parallel. The District Court issued a claim-construction order favoring Oil States, while the Board issued a decision concluding that Oil States' claims were unpatentable. Oil States appealed to the Federal Circuit. In addition to its patentability arguments, it challenged the constitutionality of inter partes review, arguing that actions to revoke a patent must be tried in an Article III court before a jury. While the case was pending, the Federal Circuit issued a decision in a separate case, rejecting the same constitutional arguments raised by Oil States.


Is inter partes review, in this case, violative of U.S. Const. art. III?




The Court ruled that inter partes review under 35 U.S.C.S. §§ 311-319 did not violate U.S. Const. art. III where such review was simply a reconsideration of the grant of a patent, thereby falling squarely within the public-rights doctrine. In the case at bar, the Court held that the review qualified the property rights granted by the Patent Act.

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