SCOTUS asks Director Lee to respond to SCOTUS cert petition


At the end of February, the United States Supreme Court requested a response from Michelle K. Lee, Director of the United States Patent and Trademark Office (USPTO), related to the petition for writ of certiorari filed by Oil States Energy Services, LLC, Petitioner, against Greene’s Energy Group, LLC, et. al. The dispute is between the parties to an inter partes review (IPR) proceeding conducted by the Patent Trial and Appeal Board (PTAB).

There are three questions presented by Oil States in the petition for writ of certiorari:

  1. Whether inter partes review – an adversarial process used by the Patent and Trademark Office (PTO) to analyze the validity of existing patents – violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.
  2. Whether the amendment process implemented by the PTO in inter partes review conflicts with the Court’s decision in Cuozzo Speed Technologies, LLC v. Lee, 136 S.Ct. 2131 (2016), and congressional direction.
  3. Whether the “broadest reasonable interpretation” of patent claims – upheld in Cuozzo for use in inter partes review – requires the application of traditional claim construction principles, including disclaimer by disparagement of prior art and reading claims in light of the patent’s specification.

Despite these very important questions, the Federal circuit affirmed the Patent Trial and Appeal Board (PTAB) without opinion with a Rule 36 judgment.

It will be interesting to see the response filed by the USPTO, which is due on or before March 29, 2017, and whether the Supreme Court decides to take one or more of the questions presented. Oil States does raise some compelling questions, as does the not specifically raised question about the Federal Circuit’s commonplace usage of Rule 36 decisions even when facing very important decisions – including decisions of Constitutional magnitude.

Substantively, on the Constitutional issue, Oil States questions whether inter partes review is contrary to Article III of the U.S. Constitution and the Seventh Amendment of the Constitution, but notes that this challenge was foreclosed during oral argument because of the Federal Circuit’s decision in MCM Portfolio LLC v. Hewlett-Packard Co.

On the issue of amendments, Oil States explains that the PTAB refused to consider the evidence it submitted in claim charts, which is hard to believe unless you are familiar with the procedural rules (or lack thereof) at the PTAB. The PTAB has said (and the Federal Circuit agreed) that they do not have to consider even timely submitted evidence filed as a matter of right!

With respect to disparagement of the prior art, Oil States raises an important question about the importance of a specification and prosecution history with respect to interpreting claims. Increasingly, examiners, courts and the PTAB are only looking at patent claims when determining whether the claims are valid or invalid. This is most dramatic in the case of patent eligibility determinations, but it occurs elsewhere also.

Oil States will be given the chance to file a reply within two weeks of the government’s response. If the March 29 deadline holds, that will likely put the case in line for discussion by the Supreme Court at the April 21 or April 28 conference, says Robert Greenspoon, an appellate attorney from Chicago who specializes in patent appeals. That would mean a possible decision on the certiorari petition on either April 24 or May 1, assuming the Court does not carry the matter forward.

“If history repeats itself, the Government may seek an extension of time,” says Greenspoon. “This could delay this timeline, with a remote chance of pushing consideration of the petition into the next term. If the Government plays this card and seeks a full summer delay, expect resistance from the Petitioner, and possibly a rare opposition to an extension request.”

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