Oil States Energy Services, LLC v. Greene's Energy Group, LLC (16-712)
argument 16-712Oil States Energy Services, LLC v. Greene's Energy Group, LLC
Supreme Court of the United States
1h 2m
7 speakers
5 chapters
transcribed 7 days ago
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What historical role have courts played in adjudicating patent validity?
We'll hear argument first this morning in case number 16712, Oil States Energy Services v. Greens Energy Group. Ms.
Hope? Mr. Chief Justice, and may it please the Court, for 400 years, courts have adjudicated disputes between private parties about the validity of patents. Six years ago, Congress transferred this judicial power to an executive branch tribunal that is unusual because of five features. First, it exercises the judicial power. Second, in disputes between private parties. Third, over private rights. Fourth, without both Article III supervision and consent. and fifth, about questions adjudicated in courts for 400 years.
So you outlined your position, but there must be some means by which the Patent Office can correct the errors that it's made, like missing prior art that would be preclusive. So do you recognize any error correction mechanism as within Article III?
Yes, certainly, Justice Ginsburg. And our position is not that the PTO is precluded from error correction. It simply can't do it through this adjudication. So, for example, we believe ex parte reexams, which are fundamentally examinational and not adjudicational, in nature are perfectly consistent with Article 3.
But your brief wasn't clear on that. You recognized the difference between reexamination, but you didn't take a position on whether that would be permissible. But now you are. The reexamination procedure would be all right.
Yes, ex parte reexamination. What about
inter partes reexamination?
I think inter partes reexamination presents a closer case, but it is still fundamentally examinational. I think in the government brief that we cite on page 13 of our reply, where the government itself draws a line between both ex parte and inter partes reexamination and says these are fundamentally examinational. Could you
review for me what you mean by examinational?
Certainly. I think what the government means by examinational and what we mean by examinational is that that is fundamentally a proceeding between the Patent and Trade Office, between the government and the patent owner, between the private party.
But it's one, I suppose, in which anybody can participate? In other words, including the person alleging infringement
or
the person challenging the grant or the
patent?
Yes.
Not with respect to, with respect to, I think that's a fundamental difference. With respect to ex parte re-exam, the only role for the third party is to request. And then at that point, the third party drops out. Even with respect to inter partes re-exam, where Congress gave the third party more participatory rights. The third party bears no burden of production or persuasion. It is still fundamentally a matter between the PTO and the patent. I'm
sorry. There is always inherent a burden of production. You can't write the PTO and say, I think this patent's invalid, period. You have to supply them with a reason for doing what they're doing. So why is that reason important? any different than actively participating and pointing the PTO in the right direction. What is so fundamentally Article III that changes this process into an Article III violation?
Both
of them are just informing the PTO of the nature of its error and giving it an opportunity to correct its error.
I think the fundamental difference, which is I think why the government itself has referred to inter-partisan re-exam as adjudicational, is it is initiated by the third party, and the third party actually prosecutes that proceeding. It is deciding a cause between the patent partner. Well, not quite,
because under the rules, if the third party settles with the patent donor, the PTO can still continue the action. can still decide the question, can still participate on appeal. So it is a public issue that is being litigated or discussed or adjudicated. So isn't that quite different than a normal adjudication?
I don't believe so, Your Honor. And let me push back a little bit on when you say that the PTO — may continue to conduct the proceedings.
How does the Patent Office correct errors such as missed prior art?
Both the statute and the regulations provide that the PTAB may dismiss the case, which its public guidance says is its preference, or it may proceed
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Chapters
5 chapters
1
What historical role have courts played in adjudicating patent validity?
0:00–5:22
2
How does the Patent Office correct errors such as missed prior art?
5:22–13:09
3
What is the difference between ex parte and inter partes reexamination?
13:09–26:18
4
Why are patents considered private rights protected by Article III?
26:18–57:21
5
How do the Takings Clause and Due Process Clause relate to patent revocation?
57:21–1:02:25