By Greg Castanias, Sasha Mayergoyz, Stuart Yothers, and Daniel Kazhdan

Today, the Supreme Court agreed to hear a challenge to the constitutionality of inter partes review.  In Oil States Energy Services v. Greene’s Energy Group, No. 16-712, the Court agreed to decide this question:  “Whether inter partes review—an adversarial process used by the Patent and Trademark Office (PTO) to analyze the validity of existing patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.”

The crux of the case will likely come down to how the Court views the nature of the rights granted by a patent—are they purely private property rights, in which case their taking must be adjudicated by a jury, or are they public rights that permissibly may be altered or extinguished by an administrative agency such as the PTO’s PTAB?

Briefing will take place over the summer, and the case will likely be heard in the Court’s November or December argument sessions, with a decision likely before the end of June 2018.

In an earlier post, we noted that a number of Federal Circuit judges questioned whether inter partes review is constitutional.

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Greg Castanias, head of Jones Day's Federal Circuit team, has almost 30 years' experience as a leading appellate and intellectual property litigator. His experience includes four Supreme Court arguments, 60-plus Federal Circuit arguments, and countless others in federal and state courts across the nation, from Alaska to Connecticut.