By Matt Johnson

On Monday, the Supreme Court heard arguments regarding the constitutionality of PTAB post-grant trials in Oil States Energy Servs., LLC v. Greene’s Energy Group, LLC, No. 16-712 (U.S.).  The question posed to the Court is “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 argument included discussion of whether a patent is a private right that requires adjudication by an Article III court.  Justice Sotomayor framed the issue as:

“If I own something, which is what your basic position, I understand, is, that this is a personal right, how can a government agency take that right away without due process of law at all? Isn’t that the whole idea of Article III, that only a court can adjudicate that issue?”

Counsel for Petitioner Oil States distinguished PTO reexaminations from PTAB trials, arguing that reexaminations of issued patents are within the power of the PTO:

“And — and our position – our position is not that the PTO is precluded from error correction. It simply can’t do it through this adjudication. So, for example, we believe ex parte reexams, which are fundamentally examinational and not adjudicational in nature, are perfectly consistent with Article III.”

The full text of the argument can be accessed here.

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Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Matt consults on nearly every one of Jones Day's over 225 PTAB cases to date. He currently serves as co-chair of Jones Day's PTAB practice.