In simple terms before the new law you had to go to court to get a patent reviewed. Now you can file a request with the patent office and skip court. Which makes it cheaper and easier to fight bad patents.
That's a fair summary of the finding (and I would contend, the major issue in this case).
The counter-argument that might lead one to disagree with this decision is that the Patent Office reports to the President, so it is subject to the political motives of that branch.
For example, let's say, a major democratic donor receives a software patent on a novel ML algorithm useful for predicting voting behavior. Under inter partes review, the President (or his subordinates) could invalidate that person's patent if challenged regardless of the evidence. If inter partes review were found unconstitutional, they would need to convince a jury that the algorithm was, in fact, inappropriately granted.
All inter partes review decisions are subject to judicial review by the Federal Circuit. The standard applied by the Courts is called "substantial evidence." To dumb down the standard (it is only slightly higher than this): The board cannot simply make shit up on the way to its decision.
Your hypothetical would probably fail under even more deferential standards of review. God fucking knows it would not survive the Federal Circuit--I'm happy to link plenty of cases where they told the board that its invalidity decision was not supported by substantial evidence.
Yes, sorry. My goal was to lay out the parade of horribles on the other side of the case to illustrate why the question was being asked at all.
You're right that IPR is judicially reviewable and I'd agree that my example would probably not hold up to review if clearly politically motivated and contrary to evidence.
Someone who's worried about this might argue with you that to have a patent invalidated, then the invalidation subsequently overturned is not the same thing as not having a patent invalidated in the first place, if only in the eyes of the market. I don't think it's a meritless argument, though it's not one that sways me personally.
Fair enough. You'd be surprised how well this stuff is priced in on the merits. Plenty of ex IP attorneys like me working in and for financial institutions evaluating these petitions. Not all patents are good. Not all are bad. But do this long enough you can decently handicap arguments, especially in IPRs where all the petitioners' evidence theoretically on the table from the start.
The counter-argument that might lead one to disagree with this decision is that the Patent Office reports to the President, so it is subject to the political motives of that branch.
No, because this decision wasn't about whether the process was good or bad, but whether patents are private property, which was the point made by Oil States International.
Good point, the courts still hold ultimate review of patents. The new law just moved the point when review switches over from the executive branch to the judicial branch.
The majority opinion relies on that in part too, briefly suggesting (in III-E) that it might not necessarily have reached the same decision if Patent Office invalidations weren't appealable in the courts. They don't specifically say that appealability is required, but they leave open the question of whether this review system could be upheld without it.
In simpler terms, things stay exactly the way they are today and this decision--by itself--has no impact on anyone. It was a hail Mary pass to overturn something, denying that radical change is not itself a change. I appreciate the legal certainty and philosophical questions raised, but for just about every HN reader: this isn't really newsworthy. Go about your day.
