Supreme Court Rules PTAB Proceedings Constitutional

by Baker Donelson

Baker Donelson

The U.S. Supreme Court today issued dual decisions with substantial impact on the future of Inter Partes Review (IPR) and related proceedings for challenging the validity of patent claims before the PTAB (Patent Trial and Appeal Board). First, in Oil States Energy Services, LLC v. Greene's Energy Group, the Court rejected a fundamental challenge as to whether IPRs violated Article III of the U.S. Constitution. Then, in SAS Institute Inc. v. Iancu, the Court corrected the PTAB practice of issuing a partial decision, holding that if the Board institutes an IPR proceeding, it must decide the patentability of all of the claims that have been challenged.

IPRs, which were implemented by the America Invents Act in 2011, allow private third parties to challenge certain patent validity issues before the PTAB. The petitioner may request cancellation of one or more claims of a patent on lack of novelty or obviousness grounds. A panel of at least three PTAB administrative law judges preside over the proceedings, decide whether to institute the IPR, and ultimately issue a final written decision regarding the validity of the challenged claims.

IPRs often are used by a defendant in a patent infringement lawsuit as an alternative way to attack and potentially invalidate a patent. IPRs often are a cheaper and more successful route to killing a patent than litigation. In Oil States, the patent owner, Oil States Energy Services, sued Greene's Energy Group for patent infringement. The latter responded with an IPR, and the PTAB ultimately invalidated the challenged claims. Oil States appealed, asserting that IPR proceedings violated Article III and the right to a jury trial under the Seventh Amendment. The Federal Circuit rejected that argument.

The Supreme Court affirmed in a 7-2 decision, holding that because the decision to grant a patent is a matter involving public rights, it need not be adjudicated in an Article III court. For the same reason, "a second look at an earlier administrative grant of a patent" also need not be adjudicated in an Article III court. Further, as the IPR is properly assigned to a non-Article III tribunal, the Seventh Amendment right to a jury is inapplicable.

The SAS Institute case was also initiated in response to a patent infringement lawsuit brought by the patent owner, ComplementSoft. SAS filed an IPR petition challenging all 16 claims in the patent. The PTAB instituted the IPR as to only some of the claims, and ultimately held that the sub-set of claims were valid. SAS appealed, and the Federal Circuit vacated the determination of validity for one of the claims. The Federal Circuit also rejected SAS's argument that the PTAB final written decision was required to address the patentability of all challenged claims, holding that PTAB did not need to address claims for which the IPR was not instituted.

In a 5-4 decision, the Supreme Court held that when the PTAB initiates an inter partes review, it must resolve all of the claims challenged by the petitioner. The majority relied on the language of the AIA, which provides that "the Patent Trial and Appeal Board shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner." In this context, "any" means "every." PTAB "cannot curate the claims at issue, but must decide them all."

The Oil States decision resolves a significant question regarding what has turned into a significant alternative route to resolving patent validity challenges, and avoids the spectre of how to handle the multitude of patent claims that have been invalidated by PTAB. With the SAS Institute decision, however, it will likely not be "business as usual." One possible effect of the SAS Institute decision – and a concern advanced by Justice Ginsberg – is that the PTAB may refuse to entertain IPR petitions that it believes are too broad or challenge too many claims, while reviewing those that are more tailored and challenge only a smaller set of select claims. Petitioners may well find themselves filing two petitions where they filed only one before.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Baker Donelson | Attorney Advertising

Written by:

Baker Donelson

Baker Donelson on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.


JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at:

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.