Supreme Court upholds patent review process
Supreme Court upholds patent review process

The US Supreme Court [official website] ruled [opinion, PDF] 7-2 Tuesday in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC [SCOTUSblog materials] that inter partes review, which authorizes the US Patent and Trademark Office (USPTO) [official website] to reconsider and cancel an already-issued patent claim, under 35 USC §§ 311-319, does not violate Article III or the Seventh Amendment [text] of the Constitution.

This review system was created by Congress in the 2011 Leahy-Smith America Invents Act. It has made it easier for big tech companies to invalidate patents held by so-called “patent trolls.”

In an opinion by Justice Clarence Thomas, the Supreme Court affirmed the judgment [opinion, PDF] of the US Court of Appeals for the Federal Circuit.

Justice Stephen Breyer filed a concurring opinion, joined by Justices Ruth Bader Ginsburg and Elena Kagan. Justice Neil Gorsuch filed a dissent, joined by Chief Justice John Roberts.

In a separate patent case Tuesday, the court ruled [opinion, PDF] 5-4 in SAS Institute Inc. v. Matal [SCOTUSblog materials] that when the USPTO institutes an inter partes review under the America Invents Act, it must decide the patentability of all of the claims the petitioner has challenged.

Gorsuch based his majority opinion on the plain meaning of the statute, which provides that the USPTO must “issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner.” 35 USC § 318(a).

Ginsburg filed a dissenting opinion, joined by Breyer, Sotomayor and Kagan. Breyer also filed a dissenting opinion, joined by Ginsburg and Sotomayor and in part by Kagan.