Oil States Energy Services, LLC v. Greene's Energy Group, LLC, 042418 FEDSC, 16-712
|Opinion Judge:||THOMAS JUSTICE.|
|Party Name:||584 U.S. ____ (2018) v. GREENE'S ENERGY GROUP, LLC, ET AL. OIL STATES ENERGY SERVICES, LLC, PETITIONER|
|Judge Panel:||THOMAS, J., delivered the opinion of the Court, in which KENNEDY, Ginsburg, Breyer, Alito, Sotomayor, and Kagan, JJ., joined. Breyer, J., filed a concurring opinion, in which GlNSBURG and SOTOMAYOR, JJ., joined. GORSUCH, J., filed a dissenting opinion, in which ROBERTS, C. J., joined. BREYER, J.,...|
|Case Date:||April 24, 2018|
|Court:||United States Supreme Court|
Oil States sued Greene's Energy for infringement of a patent relating to technology for protecting wellhead equipment used in hydraulic fracturing. Greene’s challenged the patent’s validity in court and petitioned the Patent Office for inter partes review, 35 U.S.C. 311-319. The district court issued a claim-construction order favoring Oil States; the Board concluded that Oil States’ claims were... (see full summary)
Argued November 27, 2017
ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT No. 16-712.
Inter partes review authorizes the United States Patent and Trademark Office (PTO) to reconsider and cancel an already-issued patent claim in limited circumstances. See 35 U.S.C. §§311-319. Any person who is not the owner of the patent may petition for review. §311(a). If review is instituted, the process entitles the petitioner and the patent owner to conduct certain discovery, §316(a)(5); to file affidavits, declarations, and written memoranda, §316(a)(8); and to receive an oral hearing before the Patent Trial and Appeal Board, §316(a)(10). A final decision by the Board is subject to Federal Circuit review. §§318, 319.
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. The court then summarily affirmed the Board's decision in this case.
1. Inter partes review does not violate Article III. Pp. 5-17.
(a) Under this Court's precedents, Congress has significant latitude to assign adjudication of public rights to entities other than Article III courts. Executive Benefits Ins. Agency v. Arkison, 573 U.S.__, __. Inter partes review falls squarely within the public-rights doctrine. The decision to grant a patent is a matter involving public rights. Inter partes review is simply a reconsideration of that grant, and Congress has permissibly reserved the PTO's authority to conduct that reconsideration. Pp. 5-10.
(i) The grant of a patent falls within the public-rights doctrine. United States v. Duell, 172 U.S. 576, 582-583. Granting a patent involves a matter "arising between the government and others." Ex parte Bakelite Corp., 279 U.S. 438, 451. Specifically, patents are "public franchises." Seymour v. Osborne, 11 Wall. 516, 533. Additionally, granting patents is one of "the constitutional functions" that can be carried out by "the executive or legislative departments" without "'judicial determination.'" Crowell v. Benson, 285 U.S. 22, 50-51. Pp. 7-8.
(ii) Inter partes review involves the same basic matter as the grant of a patent. It is "a second look at an earlier . . . grant, " Cuozzo Speed Technologies, LLC v. Lee, 579 U.S.__, __, and it involves the same interests as the original grant, see Duell, supra, at 586. That inter partes review occurs after the patent has issued does not make a difference here. Patents remain "subject to [the Board's] authority" to cancel outside of an Article III court, Crowell, supra, at 50, and this Court has recognized that franchises can be qualified in this manner, see, e.g., Louisville Bridge Co. v. United States, 242 U.S. 409, 421. Pp. 8-10.
(b) Three decisions that recognize patent rights as the "private property of the patentee, " United States v. American Bell Telephone Co., 128 U.S. 315, 370, do not contradict this conclusion. See also McCormick Harvesting Machine Co. v. Aultman, 169 U.S. 606, 609; Brown v. Duchesne, 19 How. 183, 197. Nor do they foreclose the kind of post-issuance administrative review that Congress has authorized here. Those cases were decided under the Patent Act of 1870 and are best read as describing the statutory scheme that existed at that time. Pp. 10-11.
(c) Although patent validity was often decided in 18th-century English courts of law, that history does not establish that inter partes review violates the "general" principle that "Congress may not 'withdraw from judicial cognizance any matter which, from its nature, is the subject of a suit at the common law, " Stern v. Marshall, 564 U.S. 462, 484. Another means of canceling a patent at that time-a petition to the Privy Council to vacate a patent-closely resembles inter partes review. The parties have cited nothing to suggest that the Framers were not aware of this common practice when writing the Patent Clause, or that they excluded the practice from the scope of the Clause. Relatedly, the fact that American courts have traditionally adjudicated patent validity in this country does not mean that they must forever do so. See post, at 8-10. Historical practice is not decisive here because matters governed by the public-rights doctrine may be assigned to the Legislature, the Executive, or the Judiciary. Exparte Bakelite Corp., supra, at 451. That Congress chose the courts in the past does not foreclose its choice of the PTO today. Pp. 12-15.
(d) Finally, the similarities between the various procedures used in inter partes review and procedures typically used in courts does not lead to the conclusion that inter partes review violates Article III. This Court has never adopted a "looks like" test to determine if an adjudication has improperly occurred outside an Article III court. See, e.g., Williams v. United States, 289 U.S. 553, 563. Pp. 15-16.
(e) This holding is narrow. The Court addresses only the constitutionality of inter partes review and the precise constitutional challenges that Oil States raised here. The decision should not be misconstrued as suggesting that patents are not property for purposes of the Due Process Clause or the Takings Clause. Pp. 16-17.
2. Inter partes review does not violate the Seventh Amendment. When Congress properly assigns a matter to adjudication in a non-Article III tribunal, "the Seventh Amendment poses no independent bar to the adjudication of that action by a nonjury factfinder." Gran-financiera, S. A. v. Nordberg, 492 U.S. 33, 52-53. Thus, the rejection of Oil States' Article III challenge also resolves its Seventh Amendment challenge. P. 17.
639 Fed.Appx. 639, affirmed.
THOMAS, J., delivered the opinion of the Court, in which KENNEDY, Ginsburg, Breyer, Alito, Sotomayor, and Kagan, JJ., joined. Breyer, J., filed a concurring opinion, in which GlNSBURG and SOTOMAYOR, JJ., joined. GORSUCH, J., filed a dissenting opinion, in which ROBERTS, C. J., joined.
The Leahy-Smith America Invents Act, 35 U.S.C. §100 et seq., establishes a process called "inter partes review." Under that process, the United States Patent and Trademark Office (PTO) is authorized to reconsider and to cancel an issued patent claim in limited circumstances. In this case, we address whether inter partes review violates Article III or the Seventh Amendment of the Constitution. We hold that it violates neither.
Under the Patent Act, the PTO is "responsible for the granting and issuing of patents." 35 U.S.C. §2(a)(1). When an inventor applies for a patent, an examiner reviews the proposed claims and the prior art to determine if the claims meet the statutory requirements. See §§112, 131. Those requirements include utility, novelty, and nonobviousness based on the prior art. §§101, 102, 103. The Director of the PTO then approves or rejects the application. See §§131, 132(a). An applicant can seek judicial review of a final rejection. §§ 141(a), 145.
Over the last several decades, Congress has created administrative processes that authorize the PTO to reconsider and cancel patent claims that were wrongly issued. In 1980, Congress established "exparte reexamination, " which still exists today. See Act To Amend the Patent and Trademark Laws, 35 U.S.C. §301 et seq. Ex parte re-examination permits "[a]ny person at any time" to "file a request for reexamination." §302. If the Director determines that there is "a substantial new question of patentability" for "any claim of the patent, " the PTO can reexamine the patent. §§303(a), 304. The reexamination process follows the same procedures as the initial examination. §305.
In 1999, Congress added a procedure called "inter partes reexamination." See American Inventors Protection Act, §§4601-4608, 113 Stat. 1501A-567 to 1501A-572. Under this...
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