By Josh Nightingale and Matt Johnson

On June 12, 2017, the U.S. Supreme Court granted certiorari in Oil States Energy Servs., LLC v. Greene’s Energy Group, LLC, to decide whether inter partes review (IPR) violates the Constitution by extinguishing patent rights through a non-Article III forum without a jury.  As we wrote previously, the issue turns on whether patents are purely private rights, the adjudication of which must occur in an Article III tribunal, or conversely, whether IPR involves public rights that Congress could constitutionally assign to an administrative agency for resolution.

In the Federal Circuit, a number of patent owners appealing adverse PTAB decisions have filed motions to stay appeal pending the Supreme Court’s decision in Oil States:

  • Ultratec, Inc. v. CaptionCall, LLC, Nos. 2016-1706, -1707, -1710, -1712 – On June 15, 2017, Patent Owner-Appellant Ultratec filed a motion to stay appeal, arguing that the Federal Circuit should “await[] guidance from the Supreme Court on a question of constitutional magnitude that is fundamental to these consolidated appeals.” (Motion at 10.)  Briefing is complete in this case, and oral argument is scheduled for July 11, 2017.  On June 22, 2017, the court issued an order denying the motion without explanation.
  • Security People, Inc. v. Ojmar US, LLC, No. 2017-1385 – On June 15, 2017, Patent Owner-Appellant Security People filed a motion to stay appeal, arguing that “[b]ecause Oil States concerns issues fundamental to the validity of the Board’s decision underlying this appeal, holding this case in abeyance pending the decision in Oil States is an appropriate course of action.” (Motion at 1-2.)  Briefing is complete in this appeal, and Security People requests that the court suspend scheduling of oral argument.  The Federal Circuit has not yet acted on this motion.
  • Smartflash LLC v. Samsung Electronics, No. 2016-2451 – Patent Owner-Appellant Smartflash filed a motion to stay on June 19, 2017. In this case, briefing has not started, and the Federal Circuit has not yet acted on the motion.

Interested parties may wish to monitor the dockets in Security People and Smartflash to see how the court handles these motions, especially in light of the different stages of the respective cases.  [Update 9/8/2017: Motions by Security People and Smartflash were both denied.]

However, it seems unlikely that the court will grant these and similar other motions.  Much of the Federal Circuit’s docket consists of IPR appeals, and the granting of one such motion would result in many other motions from appellants.  The granting of these motions would bring much of the court’s caseload to a grinding halt, resulting in a large backlog.  Further, the requested stays are relatively lengthy, as a decision from the Supreme Court could come as late as June 2018.  Accordingly, it is likely that the Federal Circuit will deny these motions and continue to decide IPR appeals.

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Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Currently co-chairing the Firm's PTAB subpractice and involved in proceedings at the Board since the first day of their availability in September 2012, Matt regularly represents clients as both petitioners and patent owners at the Board. He further works as an advocate for clients in appeals from Board proceedings at the Federal Circuit.