Supreme Court Holds IPR Patent Challenges Constitutional

April, 24th, 2018

Categories: Articles, Blog, News Tags: CBM, IPR, litigation, patent, precedential, PTAB, USPTO, whipgroup

By Dov Hirsch

 

Today, the U.S. Supreme Court has issued two important patent related decisions regarding Inter Partes Reviews (“IPR”) under the America Invent Act.

In Oil States Energy Services, LLC V. Greene’s Energy Group, LLC, the Court ruled that IPRs do not violate the U.S. Constitution and that the PTAB has the authority to invalidate patents.  This 7 – 2 decision, delivered by Justice Thomas, leaves intact the system that has been widely used to challenge and invalidate many patents.

In Sas Institute Inc. V. Iancu, the Court ruled that the PTAB must decide the validity of every challenged claim when it agrees to institute IPR for at least one challenged claim.  This decision, delivered by Justice Gorsuch, marks a departure from the PTAB’s current practice of granting “partial institution” to some of the challenged claims where applicable.  This decision could have wide-ranging implications for current and future IPR reviews before the PTAB.

WHIPgroup has significant experience representing its clients on both sides of IPR proceedings before the PTAB.  We most recently used the IPR procedure to invalidate all claims of a client’s competitor’s patent.

WHIPgroup is leading counsel for U.S. and international technology companies. We specialize in patent and trademark law.

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