On June 12, 2017, the Supreme Court granted certiorari in Oil States Energy Servs. LLC v. Greene’s Energy Grp., LLC, No. 16-712 (U.S. Jun. 12, 2017). The Supreme Court will review whether the Constitution permits the PTAB, a non-Article III forum, to terminate patent rights in administrative proceedings such as inter partes reviews (IPRs).

Previously, the Supreme Court denied petitions requesting review of the constitutionality of AIA post-grant proceedings. See Cooper v. Lee, 137 S. Ct. 291 (2016); MCM Portfolio LLC v. Hewlett-Packard Co., 137 S. Ct. 292 (2016); and Cooper v. Square, Inc., 137 S. Ct. 475 (2016).

The grant of certiorari in Oil States has had an immediate impact at the PTAB. As discussed below, Oil States has motivated patent owners in post-grant proceedings to present arguments asserting the unconstitutionality of such proceedings.

Assertions of Unconstitutionality

In IPR2016-01701, Paper 15 at 3-8 (PTAB Jun. 19, 2017), the Patent Owner Response contained six pages of arguments asserting the unconstitutionality of IPRs. In other cases, patent owners have eschewed detailed argumentation in favor of a brief comment reserving the right to submit arguments at a later time. See, e.g., IPR2017-00933, Paper 6 at 41 (PTAB Jun. 15, 2017); IPR2017-00984, Paper 7 at 1, n. 1 (PTAB Jun. 14, 2017). The responses filed in IPR2017-00933 and -00984 were preliminary responses. Thus, the patent owners in such cases will have another opportunity to brief the issue in the event trial is instituted. In addition, in a notice of appeal to the Federal Circuit, a patent owner cited Oil States as a potential basis for “challenging the Board’s decision on constitutional grounds” on appeal. IPR2016-00577, Paper 32 at 1 (PTAB Jun. 20, 2017).

PTAB’s Denial of a Request Seeking a Stay

In IPR2016-00431 (PTAB Jun. 14, 2017), the patent owner requested authorization to file a motion to stay the IPR proceeding and the issuance of a final written decision in view of Oil States. The PTAB panel denied the patent owner’s request and issued a final written decision the following day. IPR2016-00431, Papers 40, 41. In its order denying the request, the PTAB panel stated that the request was denied “[f]or the reasons explained to the parties during the conference call.” To date, a transcript of the conference call has not been entered. Regardless of the specific rationale employed by the panel, the panel’s denial of the request to file a motion to stay is not surprising, as the routine granting of stays in view of Oil States could have the effect of halting all pending inter partes post-grant proceedings at the PTAB.

AIA Petitions After Oil States

A week and a half after Oil States, AIA petitions continue to be filed in the PTAB. According to Docket Navigator®, 90 AIA petitions were filed between June 13, 2017 (the day after the Supreme Court granted certiorari in Oil States) and June 22, 2017. The early indication is that petitioners are continuing to file AIA petitions, and the PTAB is continuing to adjudicate these proceedings.