lack of novelty grounds. Oil States appealed this decision to the CAFC, in
part by attacking the constitutionality
of the PTAB review process.
The CAFC thought so little of Oil
States’ appeal that it did not even issue
an opinion to explain its denial. But Oil
States was not ready to give up. It asked
the U.S. Supreme Court to review the
BAD” PATENTS HAVE been a plague to many in the soft- ware industry. Patents can be “bad” for numerous rea- sons. Although patents are
supposed to be available only for new
and inventive advances, sometimes it
is difficult for examiners to locate the
most relevant prior art. Not knowing
about this art may cause them to approve patents that should not have
been issued. Sometimes claims are
too abstract or vague to be eligible for
patents, or are deficient in other ways.
To address the bad patent problem,
most developed countries have created administrative procedures so that
third parties can challenge the validity
of patents by asking a patent office tribunal to re-examine the patents. Post-grant review procedures are cost-effective ways to get rid of bad patents
without having to go through full-dress, multiyear, very expensive litigation and appellate review. Patents that
survive post-grant reviews are “
stronger” for having gone through this extra scrutiny.
In 2011, the U.S. Congress enacted
the America Invents Act (AIA), which,
among other things, gave the Patent
Trial & Appeal Board (PTAB) the pow-
er to review issued patents and extin-
guish claims that the board deems
deficient for lack of novelty or inven-
tiveness. Those dissatisfied with
PTAB rulings can ask the Court of Ap-
peals for the Federal Circuit (CAFC) to
Greene’s Energy Group was among
the firms that asked PTAB to review a
patent being asserted against it. Oil
States Energy Services had sued it in
federal court for infringement of this
patent. PTAB agreed with Greene’s that
the Oil States patent was invalid on
Will the Supreme
Court Nix Reviews
of Bad Patents?
Considering the longer-term implications
of a soon-to-be-decided U.S. Supreme Court case.
The statue The Contemplation of Justice, created by the sculptor James Earle Fraser,
flanks the U.S. Supreme Court building in Washington, D.C.