Oil States Energy Services, LLC v Greene’s Energy Group, LLC

Oil sought review of the Federal Circuit decision rejecting its constitutional challenges to inter partes review of patents. The Court, 7-2, affirmed. The majority held the review here falls within the public rights doctrine as granting a patent falls within the doctrine and the review process seeks to revoke the patent after the fact and is thus also a public right. It rejected Oil’s arguments to the contrary holding the precedent relied upon by oil involved a different statutory scheme and English practice does not establish patent validity must be decided by a court as petitions to royal advisers could also result in a patent being revoked. It finally held that there is no 7th Amendment violation as the review was properly vested in an administrative agency. Breyer, joined by Ginsberg and Sotomayor, added a concurrence arguing private rights can also be adjudicated in agencies. Gorsuch, joined by Roberts, dissented arguing that under English practice at the time of the founding, only courts could resolve cases about patent validity, American practice from 1790 to 1980 vested review of patent validity to courts alone, executive branch efforts to invalidate a patent were rejected in 1898 by the Court, inter patrtes review vests that power in a political appointee of the executive branch and thus the review scheme violates separation of powers.

SAS Institute, Inc. v Iancu

SAS sought review of the Federal Circuit decision allowing Iancu to limit the claims of patent invalidity in inter partes review proceedings. The Court, 5-4, reversed and remanded. It held that under 35 USC 318(a), the Patent And trademark office are required to decided “any patent claim” and this means every claim, the process supports this view as petitioners not Iancu or his successors decide what claims to put in the petition and Iancu only has authority to start a review or not start one, Chevron deference does not apply as 318(a) is not ambiguous and the Court has jurisdiction to decide this case under the Administrative Procedures Act. Ginsberg, joined by Breyer, Sotomayor and Kagan, dissented arguing that Congress did not mean to prohibit the Patent trial dn Appels Board form adopting reasonable wedding mechanisms in inter partes review cases. Breyer, joined by Ginsberg and Sotomayor and Kagan in part, dissented arguing that 318(a) is ambiguous as it does not set out what claims are actually being reviewed, the structure does not resolve the ambiguity, that Chevron is a rule of thumb considering what a reasonable legislator would have likely intended in the delegation of gap filling authority (Kagan did not join this part) and the weeding out processes used here a reasonable reading.