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Robert Paul Morris, an independent inventor of over 300 patents, from Raleigh, North Carolina, demonstrates outside the U.S. Supreme Court on the day of arguments in Oil States v Greene’s Energy, Nov. 27, 2017. Photo: Diego M. Radzinschi/ALM.[/caption] Tuesday was supposed to be the big PTAB showdown at the U.S. Supreme Court. After two-hours of questioning, it seemed more like a big bust. There was no clear majority signaling the death of inter partes review—the administrative procedure for reviewing patent validity created by the 2011 America Invents Act—in Oil States v. Greene's Energy. And only a couple of justices seemed to object in SAS Institute v. Matal to the PTAB's practice of adjudicating IPRs on a claim-by-claim basis. The big winner on the day appeared to be the U.S. Court of Appeals for the Federal Circuit and Judge Timothy Dyk, whose opinions upholding the constitutionality of the IPR process and claim-by-claim adjudication appear likely to stand. Chief Justice John Roberts and Justice Neil Gorsuch shot volleys of hostile questions at accused infringer Greene's Energy Group LLC, but didn't seem to get much support from Justices Samuel Alito and Anthony Kennedy, or any members of the court's more liberal wing. “Could Congress say, 'We are reducing the life of all patents by 10 years,'” Kennedy asked Morgan Lewis partner Allyson Ho, representing patent owner Oil States Energy Services LLC. Ho conceded that Congress could, though she said that's different from setting up adversarial trials before an administrative agency. But Kennedy said it shows patent owners must accept limited expectations about the longevity of their patents. Kennedy and Justice Elena Kagan hinted at a possible compromise in which only patents issued post-AIA might be subject to IPR, but Roberts pushed back on that notion. Monday's argument was the culmination of a constitutional challenge that's been years in the making. Patent owners argue that, once issued by the PTO, patents become private property rights that can only be nullified by jury trial in Article III courts. Congress overreached with the 2011 America Invents Act by delegating that judicial power to the Patent Trial and Appeal Board, which is an arm of the Patent and Trademark Office. The IPR procedure bears all of the hallmarks of litigation, but without its constitutional safegards, Oil States argues. It's a dispute between private parties, who produce discovery, submit testimony, appear at a “trial” and then receive a decision from a panel of administrative judges. But instead of life-tenured judges presiding over a panel of impartial jurors, IPRs are decided by administrative judges beholden to the expediences of the executive branch, they argue. That's led to unfairnesses such as the PTAB's chief judge stacking panels with extra judges for particular cases—an issue Roberts and Gorsuch repeatedly hammered on – and allowing petitioners to harass patent owners with serial petitions. Greene's Energy and the PTO say the constitutional argument is off base and the unfairness claims are overblown. Patents are public rights created by statute, enacted pursuant to Congress' constitutional authority to secure patents “for limited times” to “promote the progress of science and useful arts.” Congress declared in the Patent Act that patents shall have the attributes of personal property “subject to the provisions in this title”—in other words, subject to conditions such as inter partes review, Greene's and the government argue. Greene's Energy and the government say there's no need to dredge up 18th-century England. Greene's argues “the historical record is less than clear,” while the PTO argues the Privy Council, an advisory body to the Crown, was empowered to annul patents much as the PTO does today. Instead, Greene's and the government argue IPRs have proven an extremely valuable tool for blunting abusive patent litigation that seeks to leverage the high costs of district court litigation for nuisance-value settlements. There was little discussion of 18th century English practices on Tuesday, which was the first good sign for the PTAB. Gorsuch suggested that an 1898 Supreme Court decision, McCormick Harvesting v. Aultman, should control the outcome. The court wrote in that case that “the only authority competent to set a patent aside, or to annul it, or to correct it for any reason whatever, is vested in the courts of the United States, and not in the department which issued the patent.” But Justice Sonya Sotomayor—who'd criticized some PTAB practices in the Supreme Court's only previous PTAB case, Cuozzo v. Lee—disagreed. She said the court was merely interpreting the patent statutes of that era. “I'm not quite sure how you get to the constitutional holding,” she told Ho. Deputy Solicitor General Malcolm Stewart said the executive branch takes input from private parties all the time before rendering decisions—even the solicitor general's office takes oral presentations from the parties before recommending whether the Supreme Court should grant cert in a case, he pointed out. Confronted by Gorsuch and Roberts about stacking panels, Stewart said it happened only a few times to secure uniformity of decision. He compared it to a federal appellate court reviewing a three-judge panel's decision en banc. In the SAS case, Justice Samuel Alito said the plain language of the AIA requires that PTAB decide all patent claims challenged in an IPR position. But Justices Stephen Breyer, Elena Kagan and others appeared to disagree. Unless the justices were just playing devil's advocate, the protesters who gathered outside the court Tuesday morning are likely to be disappointed. One of them, Josh Malone, just won a $12 million jury verdict for infringement of his patent on a water balloon toy in Texas district court last week. But he faces a PTAB trial next week that could cast doubt on the validity of his patents. “We're all acquiescing” to big tech companies that don't like patents, he complained. “We've said, 'Google, Amazon, Facebook and Elon Musk have provided all the innovation we need. We don't need any more from garage inventors.'” Join Law.com’s lead IP reporter Scott Graham on Tuesday, Nov. 28 for a day-after debrief by conference call. He’ll be comparing notes with Orrick, Herrington & Sutcliffe partner Mark Davies. To register, click here.