On Monday November 27, 2017, in the Oil States and SAS Institute cases, the Supreme Court entertains oral arguments dealing withinter partes review (IPR). Merits decisions in both cases are expected before the Court completes its present Term at the end of June 2018.

The Questions Presented are as follows:

 
Oil States Energy Services v. Greene’s Energy Group, No. 16-712:  “Whether inter partes review –  an adversarial process used by the Patent and Trademark Office (PTO) to analyze the validity of existing patents –  violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.”

Oil States has far reaching implications that, if decided in favor of petitioner, would have a most dramatic impact on the patent system, as per the analysis attached to the pdf version of this note. 

 
SAS Institute Inc. v. Matal, Supreme Court No. 16-969:  “Does 35 U.S.C. § 318(a), which provides that the Patent Trial and Appeal Board in an inter partes review ‘shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner,’ require that Board to issue a final written decision as to every claim challenged by the petitioner, or does it allow that Board to issue a final written decision with respect to the patentability of only some of the patent claims challenged by the petitioner, as the Federal Circuit held?”

Regards,
Hal