Earlier this week in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, __ U.S. ___ (2018)(Thomas, J.), and SAS Institute Inc. v. Iancu, __ U.S. ___ (2018)(Gorsuch, J.), the Supreme Court issued opinions dealing with Inter Partes Review (IPR).
(1) Oil States Energy Services is by far one of the most important patent decisions from the Supreme Court in recent years:
The Court sustained IPR post grant administrative patent challenges as Constitutional. Thus, practice remains unchanged; but, Oil States Energy Services has now finally resolves the nagging question whether such administrative post grant patent challenges are Constitutional.
(2) SAS Institute fine tuned the IPR regime by holding that if the Office institutes review certain claims of a patent, it must then reach a decision on the validity of all of that group of claims, not merely some of the claims of that group. E.g., if a patent has claims 1-20 and IPR review is granted for claims 8-12, then the PTO must reach a merits decision of all of the group of claims 8-12.
The attached PDF version of this note contains the majority opinions of both cases, highlight marked in turquoise to point to more interesting facets of each opinion.