Summary: The Oil States v Greene’s Energy case, which the US Supreme Court deals with at the moment, looks likely to leave the Patent Trial and Appeal Board stronger than ever (enshrined in law and defended by the highest court)

SEVERAL days ago we noted that the Patent Trial and Appeal Board (PTAB) would be fine, at least judging by the way hearings were going. The hearings started 5 days ago. We soon saw that even foes of PTAB were willing to admit that PTAB would be fine. The main question is, will the decision be unanimous or not?

A few days ago CCIA correctly noted that the Justices would likely defend PTAB unless something shocking happens. It also quoted or alluded to the words of Justice Gorsuch and Justice Kagan:

The Oil States case focuses on whether it’s constitutional for the Patent and Trademark Office (PTO) to review the validity of a patent after they issue it—whether the PTO can go back and double-check its own work, in other words.

Generally, the Justices (other than Justice Gorsuch, who made his position clear—but didn’t see much support for it from other Justices) seem comfortable with the PTO doing this. While a few expressed concerns about specific procedural aspects of IPR, there was little real concern about whether it was appropriate to have this kind of double-check of an agency’s own work.

Justice Gorsuch appears to feel that IPR is inappropriate, but the other Justices appear inclined to uphold it as constitutional even as they continue to signal that they want to monitor the procedure to make sure it’s being conducted fairly.

IPR seems likely to remain available as a fast, accurate, and efficient procedure for reviewing weak patents.

[...]

In other words, at least based on this comment, Justice Kagan is suggesting that sovereign immunity doesn’t apply to IPRs.

As one might expect, the patent microcosm's sites (behind paywall in this case) also cover this case regarding PTAB's future, but they only quote lawyers, i.e. the patent microcosm. Here is what one such site wrote: "US Supreme Court Justices seemed divided during arguments for Oil States v Greene’s Energy and SAS Institute v Matal. Patent lawyers have been busy making predictions about how the court will rule in the two cases, which could dramatically change how the Patent Trial and Appeal Board operates..."

Well, now we know that neither case it going to change anything substantial. But the patent microcosm is trying to create uncertainty; it wants to assure clients that they should continue pursuing lots of patents, even in an environment which is increasingly sceptical towards these. ⬆