Intellectual Property Law

New Matter 2018 SUMMER Volume 43, Number 2

Letter from the Editor-in-Chief

Thomas A. Ward

ARRIS Group, Inc.

Welcome to the summer edition of New Matter for 2018. The cover art for this issue is set to emphasize the Supreme Court’s April 2018 Oil States decision holding that inter partes review (IPR) proceedings are constitutional. The graphics on the cover show the increase in the new IPR proceedings when they were first available under the newly enacted American Invents Act. Today IPR proceedings in the PTO are a much less expensive means of determining if patents are valid than court litigation, and are used in a majority of patent litigation proceedings to determine patent validity in place of a judicial determination. The IPR proceedings are instituted by the Patent Trial and Appeal Board (PTAB) within the PTO and not within a court. The Supreme Court’s decision that IPR proceedings are constitutional is a major milestone in patent law.

In the 7-2 decision authored by Justice Thomas, the US Supreme Court held that IPR proceedings—a congressionally created administrative processes in which the PTO may reconsider and cancel patent claims that were wrongly issued—are constitutional. The minority and majority opinions primarily wrestled with whether history and tradition established that patent validity must be decided by a court. Justice Gorsuch, writing for the minority, made an impassioned dissent that patents have always been considered personal rights that could only be revoked with the concurrence of independent judges, and that judicial independence from the acts ofpolitical appointees— no matter how well intended—was a fundamental promise provided by the framers. The Supreme Court specifically noted that its decision addresses "only the precise constitutional challenges…raised" making it likely that future cases on the validity of IPR proceedings could occur. Based on the Court’s decision, it certainly appears that IPR will be here for a while longer.

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