Oil States Energy Services, LLC v. Greene's Energy Group, LLC

Whether inter partes review, an adversarial proceeding used by the Patent and Trademark Office to determine the validity of existing patents, violates the Constitutional right to an Article III forum and a jury.

Inter partes review is an adversarial process in which the Patent and Trademark Office’s (PTO) Patent Trial and Appeal Board (Board) can review existing patents and extinguish those rights. Inter partes review begins when a party, usually an alleged patent infringer, asks the Board to reconsider the PTO’s issuance of an existing patent and to invalidate it because it was anticipated by prior art or obvious. An employee of Petitioner’s subsidiary designed a solution to solve a problem related to hydraulic fracturing procedures. The solution was disclosed in a patent application. However, the design was a failure and the employee scrapped the idea. Then, the employee came up with a second solution and got a patent for the new design. Later, Petitioner filed an infringement suit against Respondent. Almost one year into the litigation, Respondent petitioned for inter partes review. The Board granted review and held that the second patent was anticipated and encompassed by the first patent. Petitioner then moved to amend the second patent and the Board denied the motion to amend. Petitioner appealed the Board’s determination to the Federal Circuit and the Federal Circuit affirmed without opinion. Petitioners argue that the pursuant to the Supreme Court’s precedent, the Constitution provides patent owners with a right to a jury and an Article III forum for invalidation proceedings and therefore, inter partes review violates these Constitutional rights.