Will Inter Partes Reviews Be Abolished By The Supreme Court?

On November 27, 2017, the Supreme Court heard oral arguments in a case that could undermine a key provision in the America Invents Act. Oil States Energy Services, LLC v. Greene’s Energy Group, LLC (Oils States).  The issue raised in Oil States calls into question the Patent Trial and Appeals Board’s (PTAB) authority to conduct Inter Partes Reviews (IPRs). Prior to enactment of the America Invents Act (AIA) in 2011, patent practitioners thought that the USPTO was issuing too many “bad” patents. In response, Congress created IPRs which were intended to be a less expensive and quicker (compared to district court litigation) means for a third party to challenge the validity of a patent.  Since their creation, over 7,000 IPR petitions have been filed and the PTAB has issued final decisions on more than 1400 patents.  All or some of the claims in 80% of these patents have been invalidated.  Needless to say, given these statistics, IPRs are not very popular with patent owners who now contend that the proceedings are biased against them. In Oil States, the patent at issue, U.S. 6,179,053, was directed to a well tool used to protect wellheads during fracking operations. The litigation began when Oil States filed an infringement suit against Greene’s in the Eastern District of Texas.  Greene’s counterclaimed that the patent was invalid for lack of novelty over a Canadian patent...

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