US Supreme Court decides OIL STATES AND SAS.
PATENT AND TRIAL APPEAL BOARD IS HERE TO STAY.
OIL STATES V. GREENE'S ENERGY
1. Inter partes review does not violate Article III..
(a) Under this Court’s precedents, Congress has significant lati-tude to assign adjudication of public rights to entities other than Ar-ticle III courts. Executive Benefits Ins. Agency v. Arkison. 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 con-duct that reconsideration.
(i) The grant of a patent falls within the public-rights doctrine. Granting a patent in-volves a matter “arising between the government and others.”. Specifically, patents are “public franchises.”. Additionally, granting patents is one of “the constitutional functions” that can be carried out by “the executive or legislative departments” with-out “ ‘judicial determination.’.
When the Patent Office institutes an inter partes review, it mustdecide the patentability of all of the claims the petitioner has challenged. The plain text of §318(a)
resolves this case. Its directive is both mandatory and comprehensive. The word “shall” generally imposes a nondiscretionary duty, and the word “any” ordinarily impliesevery member of a group. Thus,
§318(a) means that the Board must address every claim the petitioner has challenged. The Director’s “partial institution” power appears nowhere in the statutory text. And both text and context
strongly counsel against inferring such a power.
The statute envisions an inter partes review guided by the initialpetition. Congress structured the process such thatthe petitioner, not the Director, defines the proceeding’s contours. The ex parte reexamination statute shows that Congress knew exactly how to authorize the Director to investigate patentability questions“[o]n his own initiative, and at any time,” §303(a). The inter partesreview statute indicates that the Director’s decision “whether” to institute review “pursuant to [the] petition” is a yes-or-no choice. §314(b).
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