SCOTUS Upholds Inter Partes Review Against Article III Challenge

Steven D. Schwinn, John Marshall Law School

The Supreme Court this week upheld a congressionally authorized practice called "inter partes review" that allows for reconsideration and cancellation by the Patent and Trademark Office of an already-issued patent. The Court said that inter partes review didn't violate Article III (by assigning a role of the judiciary to the PTO) or the Seventh Amendment.

The case tested inter partes review against Article III, on the argument that inter partes review represents an impermissible delegation of a core judicial function to an executive agency.

The Court, drawing on precedent, said that patents fell within the "public-rights doctrine," which permits executive or legislative bodies to determine matters "arising between the government and others." And moreover, inter partes review "involves the same basic matter as the grant of a patent" in the first place, and is therefore only a kind of "second look at an earlier . . . grant" by the PTO.

Justice Breyer wrote a concurrence, joined by Justices Ginsburg and Sotomayor, saying that "the Court's opinion should not be read to say that matters involving private rights may never be adjudicated other than by Article III courts."

Justice Gorsuch, joined by Chief Justice Roberts, dissented, arguing that the practice cut into the unique Article III role and independence of the courts and impermissibly assigned the role to the PTO. (Chief Justice Roberts and Justice Gorsuch (joined by Justice Kennedy) also dissented in Patchak, the case earlier this Term holding that a congressional act instructing courts to dismiss a certain class of cases didn't violate Article III, even when the act was targeted at a particular pending case, for similar reasons. These dissents are well worth a read.)