by Dennis Crouch
In 2018, the Supreme Court’s 7-2 decision in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, 584 U.S. 325 (2018) affirmed the constitutionality of inter partes review (IPR) proceedings. The Court held that patents are “public rights” and thus may be canceled through congressionally authorized administrative proceedings without violating Article III or the Seventh Amendment right to a jury trial. This decision was a significant win for proponents of the America Invents Act (AIA) and those seeking to use the Patent Trial and Appeal Board (PTAB) as an efficient mechanism to cancel issued patents.
Fast forward to 2024, and a number of us were watching the non-patent case of SEC v. Jarkesy, 144 S. Ct. 2117 (2024), wondering if it might destabilize Oil States. Jarkesy indeed narrowed the scope of what qualifies as a “public right,” potentially reopening the debate on the constitutionality of IPRs.
In Jarkesy, the Court adopted a more restrictive view of public rights, stating that any matter “which, from its nature, is the subject of a suit at the common law” presumptively concerns private rights requiring Article III adjudication. In my view, this new formulation poses a challenge for Oil States, as patent validity determinations were traditionally resolved in common law courts at the time of the founding – a point emphasized by Justice Gorsuch in his Oil States dissent (joined only by Chief Justice Roberts). Although the Chief Justice had joined Gorsuch in the Oil States dissent, he and Gorsuch were in the Jarkesy majority, with Chief Justice writing the majority opinion. This change in position may explain why the Jarkesy majority perhaps aligns more closely with the Oil States dissent. However, Justice Thomas, author of Oil States, also joined the Jarkesy majority.
Despite this narrowing, many pro-AIA trial advocates breathed a sigh of relief, as it is not immediately clear from Jarkesy that Oil States had been fatally undermined. The majority opinion in Jarkesy cited Oil States without questioning its reasoning, which some interpreted as an implicit affirmation of its continued validity.
However, at least one patentee sees an opening. ParkerVision, Inc. The company is deep into litigation over its U.S. Patent Nos. 7,292,835 and 7,110,444 covering frequency down-conversion in wireless modems. With a number of infringement lawsuits waiting on hold, the PTAP concluded that the claims were invalid as obvious. The Federal Circuit affirmed parallel appeals with R.36 no-opinion judgments. But now, Jarkesy is set to ask the Supreme Court to reconsider Oil States in light of Jarkesy. The most recent filing was an application for an extension of time to file a petition for certiorari. Advocates typically use these requests for time as a an advocacy tool — to begin to explain their case. Here, ParkerVision argues that, in light of Jarkesy, “reconsideration of this Court’s contrary holding in Oil States is … warranted.” Under Jarkesy‘s narrower articulation of the public rights doctrine, “patent validity is a matter that must be adjudicated by a jury, not an administrative body.”
This argument finds support (although perhaps backhanded) in Justice Sotomayor’s Jarkesy dissent, where she noted the potential implications for Oil States, describing the majority’s decision as part of a “disconcerting trend” of moving disputes from administrative agencies to the judiciary.
The next step will be for ParkerVision to file its full petition for certiorari and we will see if the Court is willing to reconsider its prior approach. The petitioner received a 60 day delay and so its initial petition is due November 2, 2024. I think that an ideal approach here would be to closely review and marshal the historical evidence provided in Oil States–particularly considering how it aligns to the stated approach in Jarkesy.
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Ronald Daignault (Daignault Iyer) is listed as counsel for ParkerVision. At the Federal Circuit, Jason Charkow of the Daignault firm argued the case for the patentee. Ed Mayle (Kilpatrick Townsend & Stockton LLP) argued for TCL along with Kristopher Reed on the brief. LG was a co-appellee and was represented in the briefs by Ropes & Gray folks, including Scott McKeown, David Chun, Steven Pepe, Matthew Shapiro, and Scott Taylor.