Bass, Berry & Sims attorney Terry Clark provided commentary to IPWatchdog following the U.S. Supreme Court’s April 24, 2018, decisions in Oil States Energy Services LLC v. Greene’s Energy Group LLC and SAS Institute v. Iancu. “Today’s decisions add yet another layer of complexity to the already uncertain world of patent law,” said Terry. “It remains to be seen whether Congress (with different versions of patent legislation currently pending before the House and the Senate) will take up the policy questions implicated in these decisions.”

The ruling in Oil States upheld the constitutionality of inter partes review proceedings at the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO). The Court permissibly gave the USPTO the right to review and revoke an issued patent under the inter partes review process, in lieu of a jury trial. “The Oil States decision confirms that as long as new prior art exists, patent prosecution never really ends until the patent expires,” Terry said. “Assuming an applicant successfully obtains a patent, he must live with the uncertainty of further review under the USPTO’s ‘broadest reasonable interpretation’ and ‘preponderance of evidence’ standards should he ever decide to enforce his ‘public rights.'”

In SAS Institute, the Supreme court upheld the constitutionality of inter partes review, ruling that there is no authorization in the statute for the PTAB to partially institute an inter partes review. “The SAS Institute decision makes certain that if the PTAB institutes an IPR proceeding on only one claim, it must consider the invalidity of EVERY challenged claim regardless of the merits,” Terry commented. “Unless the Patent Office significantly expands the PTAB’s capacity to accept a substantial increased workload, this decision may have the unexpected result of reducing the percentage of petitions actually granted, shifting more invalidity disputes back into Article III courts.”

Both articles were published by IPWatchdog and are available online:

For additional insight on both cases, please read the analysis by members of our Intellectual Property Litigation team that was published on April 24, 2018, “U.S. Supreme Court Upholds Constitutionality of Patent Inter Partes Review.