Oil States Energy Services, LLC v. Greene's Energy Group, LLC ( 2018 )

(Slip Opinion) OCTOBER TERM, 2017 1
Syllabus
NOTE: Where it is feasible, a syllabus (headnote) will be released, as is
being done in connection with this case, at the time the opinion is issued.
The syllabus constitutes no part of the opinion of the Court but has been
prepared by the Reporter of Decisions for the convenience of the reader.
See United States v. Detroit Timber & Lumber Co., 200 U.S. 321, 337.
SUPREME COURT OF THE UNITED STATES
Syllabus
OIL STATES ENERGY SERVICES, LLC v. GREENE’S
ENERGY GROUP, LLC, ET AL.
CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR
THE FEDERAL CIRCUIT
No. 16–712. Argued November 27, 2017—Decided April 24, 2018
Inter partes review authorizes the United States Patent and Trade-
mark Office (PTO) to reconsider and cancel an already-issued patent
claim in limited circumstances. See 35 U.S. C. §§311–319. Any per-
son who is not the owner of the patent may petition for review.
§311(a). If review is instituted, the process entitles the petitioner
and the patent owner to conduct certain discovery, §316(a)(5); to file
affidavits, declarations, and written memoranda, §316(a)(8); and to
receive an oral hearing before the Patent Trial and Appeal Board,
§316(a)(10). A final decision by the Board is subject to Federal Cir-
cuit review. §§318, 319.
Petitioner Oil States Energy Services, LLC, obtained a patent re-
lating to technology for protecting wellhead equipment used in hy-
draulic fracturing. It sued respondent Greene’s Energy Group, LLC,
in Federal District Court for infringement. Greene’s Energy chal-
lenged the patent’s validity in the District Court and also petitioned
the PTO for inter partes review. Both proceedings progressed in par-
allel. The District Court issued a claim-construction order favoring
Oil States, while the Board issued a decision concluding that Oil
States’ claims were unpatentable. Oil States appealed to the Federal
Circuit. In addition to its patentability arguments, it challenged the
constitutionality of inter partes review, arguing that actions to re-
voke a patent must be tried in an Article III court before a jury.
While the case was pending, the Federal Circuit issued a decision in
a separate case, rejecting the same constitutional arguments raised
by Oil States. The court then summarily affirmed the Board’s deci-
sion in this case.
Held:
2 OIL STATES ENERGY SERVICES, LLC v. GREENE’S ENERGY
GROUP, LLC
Syllabus
1. Inter partes review does not violate Article III. Pp. 5–17.
(a) Under this Court’s precedents, Congress has significant lati-
tude to assign adjudication of public rights to entities other than Ar-
ticle III courts. Executive Benefits Ins. Agency v. Arkison, 573 U. S.
___, ___. Inter partes review falls squarely within the public-rights
doctrine. The decision to grant a patent is a matter involving public
rights. Inter partes review is simply a reconsideration of that grant,
and Congress has permissibly reserved the PTO’s authority to con-
duct that reconsideration. Pp. 5–10.
(i) The grant of a patent falls within the public-rights doctrine.
United States v. Duell, 172 U.S. 576, 582–583. Granting a patent in-
volves a matter “arising between the government and others.” Ex
parte Bakelite Corp., 279 U.S. 438, 451. Specifically, patents are
“public franchises.” Seymour v. Osborne, 11 Wall. 516, 533. Addi-
tionally, granting patents is one of “the constitutional functions” that
can be carried out by “the executive or legislative departments” with-
out “ ‘judicial determination.’ ” Crowell v. Benson, 285 U.S. 22, 50–
51. Pp. 7–8.
(ii) Inter partes review involves the same basic matter as the
grant of a patent. It is “a second look at an earlier . . . grant,” Cuozzo
Speed Technologies, LLC v. Lee, 579 U. S. ___, ___, and it involves the
same interests as the original grant, see Duell, supra, at 586. That
inter partes review occurs after the patent has issued does not make
a difference here. Patents remain “subject to [the Board’s] authority”
to cancel outside of an Article III court, Crowell, supra, at 50, and
this Court has recognized that franchises can be qualified in this
manner, see, e.g., Louisville Bridge Co. v. United States, 242 U.S.
409, 421. Pp. 8–10.
(b) Three decisions that recognize patent rights as the “private
property of the patentee,” United States v. American Bell Telephone
Co., 128 U.S. 315, 370, do not contradict this conclusion. See also
McCormick Harvesting Machine Co. v. Aultman, 169 U.S. 606, 609;
Brown v. Duchesne, 19 How. 183, 197. Nor do they foreclose the kind
of post-issuance administrative review that Congress has authorized
here. Those cases were decided under the Patent Act of 1870 and are
best read as describing the statutory scheme that existed at that
time. Pp. 10–11.
(c) Although patent validity was often decided in 18th-century
English courts of law, that history does not establish that inter
partes review violates the “general” principle that “Congress may not
‘withdraw from judicial cognizance any matter which, from its na-
ture, is the subject of a suit at the common law,” Stern v. Marshall,
564 U.S. 462, 484. Another means of canceling a patent at that
time—a petition to the Privy Council to vacate a patent—closely re-
Cite as: 584 U. S. ____ (2018) 3
Syllabus
sembles inter partes review. The parties have cited nothing to sug-
gest that the Framers were not aware of this common practice when
writing the Patent Clause, or that they excluded the practice from
the scope of the Clause. Relatedly, the fact that American courts
have traditionally adjudicated patent validity in this country does not
mean that they must forever do so. See post, at 8–10. Historical
practice is not decisive here because matters governed by the public-
rights doctrine may be assigned to the Legislature, the Executive, or
the Judiciary. Ex parte Bakelite Corp., supra, at 451. That Congress
chose the courts in the past does not foreclose its choice of the PTO
today. Pp. 12–15.
(d) Finally, the similarities between the various procedures used
in inter partes review and procedures typically used in courts does
not lead to the conclusion that inter partes review violates Article III.
This Court has never adopted a “looks like” test to determine if an
adjudication has improperly occurred outside an Article III court.
See, e.g., Williams v. United States, 289 U.S. 553, 563. Pp. 15–16.
(e) This holding is narrow. The Court addresses only the consti-
tutionality of inter partes review and the precise constitutional chal-
lenges that Oil States raised here. The decision should not be mis-
construed as suggesting that patents are not property for purposes of
the Due Process Clause or the Takings Clause. Pp. 16–17.
2. Inter partes review does not violate the Seventh Amendment.
When Congress properly assigns a matter to adjudication in a non-
Article III tribunal, “the Seventh Amendment poses no independent
bar to the adjudication of that action by a nonjury factfinder.” Gran-
financiera, S. A. v. Nordberg, 492 U.S. 33, 52–53. Thus, the rejection
of Oil States’ Article III challenge also resolves its Seventh Amend-
ment challenge. P. 17.
639 Fed. Appx. 639, affirmed.
THOMAS, J., delivered the opinion of the Court, in which KENNEDY,
GINSBURG, BREYER, ALITO, SOTOMAYOR, and KAGAN, JJ., joined. BREYER,
J., filed a concurring opinion, in which GINSBURG and SOTOMAYOR, JJ.,
joined. GORSUCH, J., filed a dissenting opinion, in which ROBERTS, C. J.,
joined.
Cite as: 584 U. S. ____ (2018) 1
Opinion of the Court
NOTICE: This opinion is subject to formal revision before publication in the
preliminary print of the United States Reports. Readers are requested to
notify the Reporter of Decisions, Supreme Court of the United States, Wash-
ington, D. C. 20543, of any typographical or other formal errors, in order
that corrections may be made before the preliminary print goes to press.
SUPREME COURT OF THE UNITED STATES
_________________
No. 16–712
_________________
OIL STATES ENERGY SERVICES, LLC, PETITIONER
v. GREENE’S ENERGY GROUP, LLC, ET AL.
ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF
APPEALS FOR THE FEDERAL CIRCUIT
[April 24, 2018]
JUSTICE THOMAS delivered the opinion of the Court.
The Leahy-Smith America Invents Act, 35 U.S. C. §100
et seq., establishes a process called “inter partes review.”
Under that process, the United States Patent and Trade-
mark Office (PTO) is authorized to reconsider and to
cancel an issued patent claim in limited circumstances. In
this case, we address whether inter partes review violates
Article III or the Seventh Amendment of the Constitution.
We hold that it violates neither.
I
A
Under the Patent Act, the PTO is “responsible for the
granting and issuing of patents.” 35 U.S. C. §2(a)(1).
When an inventor applies for a patent, an examiner re-
views the proposed claims and the prior art to determine if
the claims meet the statutory requirements. See §§112,
131. Those requirements include utility, novelty, and
nonobviousness based on the prior art. §§101, 102, 103.
The Director of the PTO then approves or rejects the
application. See §§131, 132(a). An applicant can seek
judicial review of a final rejection. §§141(a), 145.
2 OIL STATES ENERGY SERVICES, LLC v. GREENE’S
ENERGY GROUP, LLC
Opinion of the Court
B
Over the last several decades, Congress has created
administrative processes that authorize the PTO to recon-
sider and cancel patent claims that were wrongly issued.
In 1980, Congress established “ex parte reexamination,”
which still exists today. See Act To Amend the Patent and
Trademark Laws, 35 U.S. C. §301 et seq. Ex parte re-
examination permits “[a]ny person at any time” to “file a
request for reexamination.” §302. If the Director deter-
mines that there is “a substantial new question of patent-
ability” for “any claim of the patent,” the PTO can reex-
amine the patent. §§303(a), 304. The reexamination
process follows the same procedures as the initial exami-
nation. §305.
In 1999, Congress added a procedure called “inter partes
reexamination.” See American Inventors Protection Act,
§§4601–4608, 113 Stat. 1501A–567 to 1501A–572. Under
this procedure, any person could file a request for reexam-
ination. 35 U.S. C. §311(a) (2006 ed.). The Director
would determine if the request raised “a substantial new
question of patentability affecting any claim of the patent”
and, if so, commence a reexamination. §§312(a), 313 (2006
ed.). The reexamination would follow the general proce-
dures for initial examination, but would allow the third-
party requester and the patent owner to participate in a
limited manner by filing responses and replies. §§314(a),
(b) (2006 ed.). Inter partes reexamination was phased out
when the America Invents Act went into effect in 2012.
See §6, 125 Stat. 299–305.
C
The America Invents Act replaced inter partes reexami-
nation with inter partes review, the procedure at issue
here. See id., at 299. Any person other than the patent
owner can file a petition for inter partes review. 35
U.S. C. §311(a) (2012 ed.). The petition can request can-
Cite as: 584 U. S. ____ (2018) 3
Opinion of the Court
cellation of “1 or more claims of a patent” on the grounds
that the claim fails the novelty or nonobviousness stand-
ards for patentability. §311(b). The challenges must be
made “only on the basis of prior art consisting of patents
or printed publications.” Ibid. If a petition is filed, the
patent owner has the right to file a preliminary response
explaining why inter partes review should not be insti-
tuted. §313.
Before he can institute inter partes review, the Director
must determine “that there is a reasonable likelihood that
the petitioner would prevail with respect to at least 1 of
the claims challenged.” §314(a). The decision whether to
institute inter partes review is committed to the Director’s
discretion. See Cuozzo Speed Technologies, LLC v. Lee,
579 U. S. ___, ___ (2016) (slip op., at 9). The Director’s
decision is “final and nonappealable.” §314(d). 1
Once inter partes review is instituted, the Patent Trial
and Appeal Board—an adjudicatory body within the PTO
created to conduct inter partes review—examines the
patent’s validity. See 35 U.S. C. §§6, 316(c). The Board
sits in three-member panels of administrative patent
judges. See §6(c). During the inter partes review, the
petitioner and the patent owner are entitled to certain
discovery, §316(a)(5); to file affidavits, declarations, and
written memoranda, §316(a)(8); and to receive an oral
hearing before the Board, §316(a)(10). The petitioner has
the burden of proving unpatentability by a preponderance
of the evidence. §316(e). The owner can file a motion to
amend the patent by voluntarily canceling a claim or by
“propos[ing] a reasonable number of substitute claims.”
§316(d)(1)(B). The owner can also settle with the peti-
tioner by filing a written agreement prior to the Board’s final
decision, which terminates the proceedings with respect to
——————
1 The Director has delegated his authority to the Patent Trial and
Appeal Board. See 37 CFR §42.108(c) (2017).
4 OIL STATES ENERGY SERVICES, LLC v. GREENE’S
ENERGY GROUP, LLC
Opinion of the Court
that petitioner. §317. If the settlement results in no
petitioner remaining in the inter partes review, the Board
can terminate the proceeding or issue a final written
decision. §317(a).
If the proceeding does not terminate, the Board must
issue a final written decision no later than a year after it
notices the institution of inter partes review, but that
deadline can be extended up to six months for good cause.
§§316(a)(11), 318(a). If the Board’s decision becomes final,
the Director must “issue and publish a certificate.”
§318(b). The certificate cancels patent claims “finally
determined to be unpatentable,” confirms patent claims
“determined to be patentable,” and incorporates into the
patent “any new or amended claim determined to be pa-
tentable.” Ibid.
A party dissatisfied with the Board’s decision can seek
judicial review in the Court of Appeals for the Federal
Circuit. §319. Any party to the inter partes review can be
a party in the Federal Circuit. Ibid. The Director can
intervene to defend the Board’s decision, even if no party
does. See §143; Cuozzo, supra, at ___ (slip op., at 15).
When reviewing the Board’s decision, the Federal Circuit
assesses “the Board’s compliance with governing legal
standards de novo and its underlying factual determina-
tions for substantial evidence.” Randall Mfg. v. Rea, 733
F.3d 1355, 1362 (CA Fed. 2013).
II
Petitioner Oil States Energy Services, LLC, and re-
spondent Greene’s Energy Group, LLC, are both oilfield
services companies. In 2001, Oil States obtained a patent
relating to an apparatus and method for protecting well-
head equipment used in hydraulic fracturing. In 2012, Oil
States sued Greene’s Energy in Federal District Court for
infringing that patent. Greene’s Energy responded by
challenging the patent’s validity. Near the close of discov-
Cite as: 584 U. S. ____ (2018) 5
Opinion of the Court
ery, Greene’s Energy also petitioned the Board to institute
inter partes review. It argued that two of the patent’s
claims were unpatentable because they were anticipated
by prior art not mentioned by Oil States in its original
patent application. Oil States filed a response opposing
review. The Board found that Greene’s Energy had estab-
lished a reasonable likelihood that the two claims were
unpatentable and, thus, instituted inter partes review.
The proceedings before the District Court and the Board
progressed in parallel. In June 2014, the District Court
issued a claim-construction order. The order construed
the challenged claims in a way that foreclosed Greene’s
Energy’s arguments about the prior art. But a few months
later, the Board issued a final written decision concluding
that the claims were unpatentable. The Board acknowl-
edged the District Court’s contrary decision, but nonethe-
less concluded that the claims were anticipated by the
prior art.
Oil States sought review in the Federal Circuit. In
addition to its arguments about patentability, Oil States
challenged the constitutionality of inter partes review.
Specifically, it argued that actions to revoke a patent must
be tried in an Article III court before a jury. While Oil
States’ case was pending, the Federal Circuit issued an
opinion in a different case, rejecting the same constitu-
tional arguments. MCM Portfolio LLC v. Hewlett-Packard
Co., 812 F.3d 1284, 1288–1293 (2015). The Federal Cir-
cuit summarily affirmed the Board’s decision in this case.
639 Fed. Appx. 639 (2016).
We granted certiorari to determine whether inter partes
review violates Article III or the Seventh Amendment.
582 U. S. ___ (2017). We address each issue in turn.
III
Article III vests the judicial power of the United States
“in one supreme Court, and in such inferior Courts as the
6 OIL STATES ENERGY SERVICES, LLC v. GREENE’S
ENERGY GROUP, LLC
Opinion of the Court
Congress may from time to time ordain and establish.” §1.
Consequently, Congress cannot “confer the Government’s
‘judicial Power’ on entities outside Article III.” Stern v.
Marshall, 564 U.S. 462, 484 (2011). When determining
whether a proceeding involves an exercise of Article III
judicial power, this Court’s precedents have distinguished
between “public rights” and “private rights.” Executive
Benefits Ins. Agency v. Arkison, 573 U. S. ___, ___ (2014)
(slip op., at 6) (internal quotation marks omitted). Those
precedents have given Congress significant latitude to
assign adjudication of public rights to entities other than
Article III courts. See ibid.; Stern, supra, at 488–492.
This Court has not “definitively explained” the distinc-
tion between public and private rights, Northern Pipeline
Constr. Co. v. Marathon Pipe Line Co., 458 U.S. 50, 69
(1982), and its precedents applying the public-rights doc-
trine have “not been entirely consistent,” Stern, 564 U.S.,
at 488. But this case does not require us to add to the
“various formulations” of the public-rights doctrine. Ibid.
Our precedents have recognized that the doctrine covers
matters “which arise between the Government and per-
sons subject to its authority in connection with the per-
formance of the constitutional functions of the executive or
legislative departments.” Crowell v. Benson, 285 U.S. 22,
50 (1932). In other words, the public-rights doctrine ap-
plies to matters “ ‘arising between the government and
others, which from their nature do not require judicial
determination and yet are susceptible of it.’ ” Ibid. (quot-
ing Ex parte Bakelite Corp., 279 U.S. 438, 451 (1929)).
Inter partes review involves one such matter: reconsid-
eration of the Government’s decision to grant a public
franchise.
A
Inter partes review falls squarely within the public-
rights doctrine. This Court has recognized, and the par-
Cite as: 584 U. S. ____ (2018) 7
Opinion of the Court
ties do not dispute, that the decision to grant a patent is a
matter involving public rights—specifically, the grant of a
public franchise. Inter partes review is simply a reconsid-
eration of that grant, and Congress has permissibly re-
served the PTO’s authority to conduct that reconsidera-
tion. Thus, the PTO can do so without violating Article
III.
1
This Court has long recognized that the grant of a pa-
tent is a “ ‘matte[r] involving public rights.’ ” United States
v. Duell, 172 U.S. 576, 582–583 (1899) (quoting Murray’s
Lessee v. Hoboken Land & Improvement Co., 18 How. 272,
284 (1856)). It has the key features to fall within this
Court’s longstanding formulation of the public-rights
doctrine.
Ab initio, the grant of a patent involves a matter “aris-
ing between the government and others.” Ex parte Bake-
lite Corp., supra, at 451. As this Court has long recog-
nized, the grant of a patent is a matter between “ ‘the
public, who are the grantors, and . . . the patentee.’ ”
Duell, supra, at 586 (quoting Butterworth v. United States
ex rel. Hoe, 112 U.S. 50, 59 (1884)). By “issuing patents,”
the PTO “take[s] from the public rights of immense value,
and bestow[s] them upon the patentee.” United States v.
American Bell Telephone Co., 128 U.S. 315, 370 (1888).
Specifically, patents are “public franchises” that the Gov-
ernment grants “to the inventors of new and useful im-
provements.” Seymour v. Osborne, 11 Wall. 516, 533
(1871); accord, Pfaff v. Wells Electronics, Inc., 525 U.S. 55,
63–64 (1998). The franchise gives the patent owner “the
right to exclude others from making, using, offering for
sale, or selling the invention throughout the United
States.” 35 U.S. C. §154(a)(1). That right “did not exist
at common law.” Gayler v. Wilder, 10 How. 477, 494
(1851). Rather, it is a “creature of statute law.” Crown
8 OIL STATES ENERGY SERVICES, LLC v. GREENE’S
ENERGY GROUP, LLC
Opinion of the Court
Die & Tool Co. v. Nye Tool & Machine Works, 261 U.S. 24,
40 (1923).
Additionally, granting patents is one of “the constitu-
tional functions” that can be carried out by “the executive
or legislative departments” without “ ‘judicial determina-
tion.’ ” Crowell, supra, at 50–51 (quoting Ex parte Bakelite
Corp., supra, at 452). Article I gives Congress the power
“[t]o promote the Progress of Science and useful Arts, by
securing for limited Times to Authors and Inventors the
exclusive Right to their respective Writings and Discover-
ies.” §8, cl. 8. Congress can grant patents itself by stat-
ute. See, e.g., Bloomer v. McQuewan, 14 How. 539, 548–
550 (1853). And, from the founding to today, Congress has
authorized the Executive Branch to grant patents that
meet the statutory requirements for patentability. See 35
U.S. C. §§2(a)(1), 151; see also Act of July 8, 1870, §31, 16
Stat. 202; Act of July 4, 1836, §7, 5 Stat. 119–120; Act of
Apr. 10, 1790, ch. 7, §1, 1 Stat. 109–110. When the PTO
“adjudicate[s] the patentability of inventions,” it is “exer-
cising the executive power.” Freytag v. Commissioner, 501
U.S. 868, 910 (1991) (Scalia, J., concurring in part and
concurring in judgment) (emphasis deleted).
Accordingly, the determination to grant a patent is a
“matte[r] involving public rights.” Murray’s Lessee, supra,
at 284. It need not be adjudicated in Article III court.
2
Inter partes review involves the same basic matter as
the grant of a patent. So it, too, falls on the public-rights
side of the line.
Inter partes review is “a second look at an earlier ad-
ministrative grant of a patent.” Cuozzo, 579 U. S., at ___
(slip op., at 16). The Board considers the same statutory
requirements that the PTO considered when granting the
patent. See 35 U.S. C. §311(b). Those statutory require-
ments prevent the “issuance of patents whose effects are
Cite as: 584 U. S. ____ (2018) 9
Opinion of the Court
to remove existent knowledge from the public domain.”
Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 6
(1966). So, like the PTO’s initial review, the Board’s inter
partes review protects “the public’s paramount interest in
seeing that patent monopolies are kept within their legit-
imate scope,” Cuozzo, supra, at ___ (slip op., at 16) (inter-
nal quotation marks and alterations omitted). Thus, inter
partes review involves the same interests as the determi-
nation to grant a patent in the first instance. See Duell,
supra, at 586.
The primary distinction between inter partes review
and the initial grant of a patent is that inter partes review
occurs after the patent has issued. But that distinction
does not make a difference here. Patent claims are granted
subject to the qualification that the PTO has “the au-
thority to reexamine—and perhaps cancel—a patent
claim” in an inter partes review. See Cuozzo, supra, at ___
(slip op., at 3). Patents thus remain “subject to [the
Board’s] authority” to cancel outside of an Article III court.
Crowell, 285 U.S., at 50.
This Court has recognized that franchises can be quali-
fied in this manner. For example, Congress can grant a
franchise that permits a company to erect a toll bridge,
but qualify the grant by reserving its authority to revoke
or amend the franchise. See, e.g., Louisville Bridge Co. v.
United States, 242 U.S. 409, 421 (1917) (collecting cases).
Even after the bridge is built, the Government can exer-
cise its reserved authority through legislation or an ad-
ministrative proceeding. See, e.g., id., at 420–421; Hanni-
bal Bridge Co. v. United States, 221 U.S. 194, 205 (1911);
Bridge Co. v. United States, 105 U.S. 470, 478–482 (1882).
The same is true for franchises that permit companies to
build railroads or telegraph lines. See, e.g., United States
v. Union Pacific R. Co., 160 U.S. 1, 24–25, 37–38 (1895).
Thus, the public-rights doctrine covers the matter re-
solved in inter partes review. The Constitution does not
10 OIL STATES ENERGY SERVICES, LLC v. GREENE’S
ENERGY GROUP, LLC
Opinion of the Court
prohibit the Board from resolving it outside of an Article
III court.
B
Oil States challenges this conclusion, citing three deci-
sions that recognize patent rights as the “private property
of the patentee.” American Bell Telephone Co., 128 U.S.,
at 370; see also McCormick Harvesting Machine Co. v.
Aultman, 169 U.S. 606, 609 (1898) (“[A granted patent]
has become the property of the patentee”); Brown v. Du-
chesne, 19 How. 183, 197 (1857) (“[T]he rights of a party
under a patent are his private property”). But those cases
do not contradict our conclusion.
Patents convey only a specific form of property right—a
public franchise. See Pfaff, 525 U.S., at 63–64. And
patents are “entitled to protection as any other property,
consisting of a franchise.” Seymour, 11 Wall. at 533 (em-
phasis added). As a public franchise, a patent can confer
only the rights that “the statute prescribes.” Gayler,
supra, at 494; Wheaton v. Peters, 8 Pet. 591, 663–664
(1834) (noting that Congress has “the power to prescribe
the conditions on which such right shall be enjoyed”). It is
noteworthy that one of the precedents cited by Oil States
acknowledges that the patentee’s rights are “derived
altogether” from statutes, “are to be regulated and meas-
ured by these laws, and cannot go beyond them.” Brown,
supra, at 195. 2
One such regulation is inter partes review. See Cuozzo,
——————
2 This Court has also recognized this dynamic for state-issued fran-
chises. For instance, States often reserve the right to alter or revoke a
corporate charter either “in the act of incorporation or in some general
law of the State which was in operation at the time the charter was
granted.” Pennsylvania College Cases, 13 Wall. 190, 214, and n. †
(1872). That reservation remains effective even after the corporation
comes into existence, and such alterations do not offend the Contracts
Clause of Article I, §10. See Pennsylvania College Cases, supra, at 212–
214; e.g., Miller v. State, 15 Wall. 478, 488–489 (1873).
Cite as: 584 U. S. ____ (2018) 11
Opinion of the Court
579 U. S., at ___ (slip op., at 3). The Patent Act provides
that, “[s]ubject to the provisions of this title, patents shall
have the attributes of personal property.” 35 U.S. C.
§261. This provision qualifies any property rights that a
patent owner has in an issued patent, subjecting them to
the express provisions of the Patent Act. See eBay Inc. v.
MercExchange, L. L. C., 547 U.S. 388, 392 (2006). Those
provisions include inter partes review. See §§311–319.
Nor do the precedents that Oil States cites foreclose the
kind of post-issuance administrative review that Congress
has authorized here. To be sure, two of the cases make
broad declarations that “[t]he 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 pat-
ent.” McCormick Harvesting Machine Co., supra, at 609;
accord, American Bell Telephone Co., 128 U.S., at 364.
But those cases were decided under the Patent Act of
1870. See id., at 371; McCormick Harvesting Machine Co.,
supra, at 611. That version of the Patent Act did not
include any provision for post-issuance administrative
review. Those precedents, then, are best read as a de-
scription of the statutory scheme that existed at that time.
They do not resolve Congress’ authority under the Consti-
tution to establish a different scheme. 3
——————
3 The dissent points to McCormick’s statement that the Patent Office
Commissioner could not invalidate the patent at issue because it would
“ ‘deprive the applicant of his property without due process of law, and
would be in fact an invasion of the judicial branch.’ ” Post, at 10 (quot-
ing McCormick Harvesting Machine Co. v. Aultman, 169 U.S. 606, 612
(1898)). But that statement followed naturally from the Court’s deter-
mination that, under the Patent Act of 1870, the Commissioner “was
functus officio” and “had no power to revoke, cancel, or annul” the
patent at issue. 169 U.S., at 611–612.
Nor is it significant that the McCormick Court “equated invention
patents with land patents.” Post, at 10. McCormick itself makes clear
that the analogy between the two depended on the particulars of the
12 OIL STATES ENERGY SERVICES, LLC v. GREENE’S
ENERGY GROUP, LLC
Opinion of the Court
C
Oil States and the dissent contend that inter partes
review violates the “general” principle that “Congress may
not ‘withdraw from judicial cognizance any matter which,
from its nature, is the subject of a suit at the common law,
or in equity, or admiralty.’ ” Stern, 564 U.S., at 484 (quot-
ing Murray’s Lessee, 18 How., at 284). They argue that
this is so because patent validity was often decided in
English courts of law in the 18th century. For example, if
a patent owner brought an infringement action, the de-
fendant could challenge the validity of the patent as an
affirmative defense. See Lemley, Why Do Juries Decide If
Patents Are Valid? 99 Va. L. Rev. 1673, 1682, 1685–1686,
and n. 52 (2013). Or, an individual could challenge the
validity of a patent by filing a writ of scire facias in the
Court of Chancery, which would sit as a law court when
adjudicating the writ. See id., at 1683–1685, and n. 44;
Bottomley, Patent Cases in the Court of Chancery, 1714–
58, 35 J. Legal Hist. 27, 36–37, 41–43 (2014).
But this history does not establish that patent validity
is a matter that, “from its nature,” must be decided by a
court. Stern, supra, at 484 (quoting Murray’s Lessee,
supra, at 284). The aforementioned proceedings were
between private parties. But there was another means of
——————
Patent Act of 1870. See 169 U.S., at 609–610. Modern invention
patents, by contrast, are meaningfully different from land patents. The
land-patent cases invoked by the dissent involved a “transaction [in
which] ‘all authority or control’ over the lands has passed from ‘the
Executive Department.’ ” Boesche v. Udall, 373 U.S. 472, 477 (1963)
(quoting Moore v. Robbins, 96 U.S. 530, 533 (1878)). Their holdings do
not apply when “the Government continues to possess some measure of
control over” the right in question. Boesche, 373 U.S., at 477; see id.,
at 477–478 (affirming administrative cancellations of public-land
leases). And that is true of modern invention patents under the current
Patent Act, which gives the PTO continuing authority to review and
potentially cancel patents after they are issued. See 35 U.S. C. §§261,
311–319.
Cite as: 584 U. S. ____ (2018) 13
Opinion of the Court
canceling a patent in 18th-century England, which more
closely resembles inter partes review: a petition to the
Privy Council to vacate a patent. See Lemley, supra, at
1681–1682; Hulme, Privy Council Law and Practice of
Letters Patent for Invention From the Restoration to 1794,
33 L. Q. Rev. 63 (1917). The Privy Council was composed
of the Crown’s advisers. Lemley, supra, at 1681. From
the 17th through the 20th centuries, English patents had
a standard revocation clause that permitted six or more
Privy Counsellors to declare a patent void if they deter-
mined the invention was contrary to law, “prejudicial” or
“inconvenient,” not new, or not invented by the patent
owner. See 11 W. Holdsworth, A History of English Law
426–427, and n. 6 (1938); Davies, The Early History of the
Patent Specification, 50 L. Q. Rev. 86, 102–106 (1934).
Individuals could petition the Council to revoke a patent,
and the petition was referred to the Attorney General.
The Attorney General examined the petition, considered
affidavits from the petitioner and patent owner, and heard
from counsel. See, e.g., Bull v. Lydall, PC2/81, pp. 180–
181 (1706). Depending on the Attorney General’s conclu-
sion, the Council would either void the patent or dismiss
the petition. See, e.g., Darby v. Betton, PC2/99, pp. 358–
359 (1745–1746) (voiding the patent); Baker v. James,
PC2/103, pp. 320–321, 346–347 (1752) (dismissing the
petition).
The Privy Council was a prominent feature of the Eng-
lish system. It had exclusive authority to revoke patents
until 1753, and after that, it had concurrent jurisdiction
with the courts. See Hulme, 33 L. Q. Rev., at 189–191,
193–194. The Privy Council continued to consider revoca-
tion claims and to revoke patents throughout the 18th
century. Its last revocation was in 1779. See id., at 192–
193. It considered, but did not act on, revocation claims in
1782, 1794, and 1810. See ibid.; Board of Ordinance v.
Parr, PC1/3919 (1810).
14 OIL STATES ENERGY SERVICES, LLC v. GREENE’S
ENERGY GROUP, LLC
Opinion of the Court
The Patent Clause in our Constitution “was written
against the backdrop” of the English system. Graham,
383 U.S., at 5. Based on the practice of the Privy Council,
it was well understood at the founding that a patent sys-
tem could include a practice of granting patents subject to
potential cancellation in the executive proceeding of the
Privy Council. The parties have cited nothing in the text
or history of the Patent Clause or Article III to suggest
that the Framers were not aware of this common practice.
Nor is there any reason to think they excluded this prac-
tice during their deliberations. And this Court has recog-
nized that, “[w]ithin the scope established by the Constitu-
tion, Congress may set out conditions and tests for
patentability.” Id., at 6. We conclude that inter partes
review is one of those conditions. 4
For similar reasons, we disagree with the dissent’s
assumption that, because courts have traditionally adjudi-
cated patent validity in this country, courts must forever
continue to do so. See post, at 8–10. Historical practice is
not decisive here because matters governed by the public-
rights doctrine “from their nature” can be resolved in
multiple ways: Congress can “reserve to itself the power to
——————
4 Oil States also suggests that inter partes review could be an uncon-
stitutional condition because it conditions the benefit of a patent on
accepting the possibility of inter partes review. Cf. Koontz v. St. Johns
River Water Management Dist., 570 U.S. 595, 604 (2013) (“[T]he
government may not deny a benefit to a person because he exercises a
constitutional right” (internal quotation marks omitted)). Even assum-
ing a patent is a “benefit” for purposes of the unconstitutional-
conditions doctrine, that doctrine does not apply here. The doctrine
prevents the Government from using conditions “to produce a result
which it could not command directly.” Perry v. Sindermann, 408 U.S.
593, 597 (1972) (internal quotation marks and alterations omitted).
But inter partes review is consistent with Article III, see Part III–A,
supra, and falls within Congress’ Article I authority, see Part III–C,
supra, so it is something Congress can “command directly,” Perry,
supra, at 597.
Cite as: 584 U. S. ____ (2018) 15
Opinion of the Court
decide,” “delegate that power to executive officers,” or
“commit it to judicial tribunals.” Ex parte Bakelite Corp.,
279 U.S., at 451. That Congress chose the courts in the
past does not foreclose its choice of the PTO today.
D
Finally, Oil States argues that inter partes review vio-
lates Article III because it shares “every salient character-
istic associated with the exercise of the judicial power.”
Brief for Petitioner 20. Oil States highlights various
procedures used in inter partes review: motion practice
before the Board; discovery, depositions, and cross-
examination of witnesses; introduction of evidence and
objections based on the Federal Rules of Evidence; and an
adversarial hearing before the Board. See 35 U.S. C.
§316(a); 77 Fed. Reg. 48758, 48761–48763 (2012). Similarly,
Oil States cites PTO regulations that use terms typically
associated with courts—calling the hearing a “trial,” id.,
at 48758; the Board members “judges,” id., at 48763; and
the Board’s final decision a “judgment,” id., at 48761,
48766–48767.
But this Court has never adopted a “looks like” test to
determine if an adjudication has improperly occurred
outside of an Article III court. The fact that an agency
uses court-like procedures does not necessarily mean it is
exercising the judicial power. See Freytag, 501 U.S., at
910 (opinion of Scalia, J.). This Court has rejected the
notion that a tribunal exercises Article III judicial power
simply because it is “called a court and its decisions called
judgments.” Williams v. United States, 289 U.S. 553, 563
(1933). Nor does the fact that an administrative adjudica-
tion is final and binding on an individual who acquiesces
in the result necessarily make it an exercise of the judicial
power. See, e.g., Murray’s Lessee, 18 How., at 280–281
(permitting the Treasury Department to conduct “final
and binding” audits outside of an Article III court). Al-
16 OIL STATES ENERGY SERVICES, LLC v. GREENE’S
ENERGY GROUP, LLC
Opinion of the Court
though inter partes review includes some of the features of
adversarial litigation, it does not make any binding de-
termination regarding “the liability of [Greene’s Energy] to
[Oil States] under the law as defined.” Crowell, 285 U.S.,
at 51. It remains a matter involving public rights, one
“between the government and others, which from [its]
nature do[es] not require judicial determination.” Ex parte
Bakelite Corp., 279 U.S., at 451. 5
E
We emphasize the narrowness of our holding. We ad-
dress the constitutionality of inter partes review only. We
do not address whether other patent matters, such as
infringement actions, can be heard in a non-Article III
forum. And because the Patent Act provides for judicial
review by the Federal Circuit, see 35 U.S. C. §319, we
need not consider whether inter partes review would be
constitutional “without any sort of intervention by a court
at any stage of the proceedings,” Atlas Roofing Co. v.
Occupational Safety and Health Review Comm’n, 430 U.S.
442, 455, n. 13 (1977). Moreover, we address only the
precise constitutional challenges that Oil States raised
——————
5 Oil States also points out that inter partes review “is initiated by
private parties and implicates no waiver of sovereign immunity.” Brief
for Petitioner 30–31. But neither of those features takes inter partes
review outside of the public-rights doctrine. That much is clear from
United States v. Duell, 172 U.S. 576 (1899), which held that the doc-
trine covers interference proceedings—a procedure to “determin[e]
which of two claimants is entitled to a patent”—even though interfer-
ence proceedings were initiated by “ ‘private interests compet[ing] for
preference’ ” and did not involve a waiver of sovereign immunity. Id., at
582, 586 (quoting Butterworth v. United States ex rel. Hoe, 112 U.S. 50,
59 (1884)). Also, inter partes review is not initiated by private parties
in the way that a common-law cause of action is. To be sure, a private
party files the petition for review. 35 U.S. C. §311(a). But the decision
to institute review is made by the Director and committed to his unre-
viewable discretion. See Cuozzo Speed Technologies, LLC v. Lee, 579
U. S. ___, ___ (2016) (slip op., at 9).
Cite as: 584 U. S. ____ (2018) 17
Opinion of the Court
here. Oil States does not challenge the retroactive appli-
cation of inter partes review, even though that procedure
was not in place when its patent issued. Nor has Oil
States raised a due process challenge. Finally, our deci-
sion should not be misconstrued as suggesting that pa-
tents are not property for purposes of the Due Process
Clause or the Takings Clause. See, e.g., Florida Prepaid
Postsecondary Ed. Expense Bd. v. College Savings Bank,
527 U.S. 627, 642 (1999); James v. Campbell, 104 U.S.
356, 358 (1882).
IV
In addition to Article III, Oil States challenges inter
partes review under the Seventh Amendment. The Sev-
enth Amendment preserves the “right of trial by jury” in
“Suits at common law, where the value in controversy
shall exceed twenty dollars.” This Court’s precedents
establish that, when Congress properly assigns a matter
to adjudication in a non-Article III tribunal, “the Seventh
Amendment poses no independent bar to the adjudication
of that action by a nonjury factfinder.” Granfinanciera,
S. A. v. Nordberg, 492 U.S. 33, 53–54 (1989); accord, Atlas
Roofing Co., supra, at 450–455. No party challenges or
attempts to distinguish those precedents. Thus, our rejec-
tion of Oil States’ Article III challenge also resolves its
Seventh Amendment challenge. Because inter partes
review is a matter that Congress can properly assign to
the PTO, a jury is not necessary in these proceedings.
V
Because inter partes review does not violate Article III
or the Seventh Amendment, we affirm the judgment of the
Court of Appeals.
It is so ordered.
Cite as: 584 U. S. ____ (2018) 1
BREYER, J., concurring
SUPREME COURT OF THE UNITED STATES
_________________
No. 16–712
_________________
OIL STATES ENERGY SERVICES, LLC, PETITIONER
v. GREENE’S ENERGY GROUP, LLC, ET AL.
ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF
APPEALS FOR THE FEDERAL CIRCUIT
[April 24, 2018]
JUSTICE BREYER, with whom JUSTICE GINSBURG and
JUSTICE SOTOMAYOR join, concurring.
I join the Court’s opinion in full. The conclusion that
inter partes review is a matter involving public rights is
sufficient to show that it violates neither Article III nor
the Seventh Amendment. But 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,
say, sometimes by agencies. Our precedent is to the con-
trary. Stern v. Marshall, 564 U.S. 462, 494 (2011); Com-
modity Futures Trading Comm’n v. Schor, 478 U.S. 833,
853–856 (1986); see also Stern, supra, at 513 (BREYER, J.,
dissenting) (“The presence of ‘private rights’ does not
automatically determine the outcome of the question but
requires a more ‘searching’ examination of the relevant
factors”).
Cite as: 584 U. S. ____ (2018) 1
GORSUCH, J., dissenting
SUPREME COURT OF THE UNITED STATES
_________________
No. 16–712
_________________
OIL STATES ENERGY SERVICES, LLC, PETITIONER
v. GREENE’S ENERGY GROUP, LLC, ET AL.
ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF
APPEALS FOR THE FEDERAL CIRCUIT
[April 24, 2018]
JUSTICE GORSUCH, with whom THE CHIEF JUSTICE
joins, dissenting.
After much hard work and no little investment you
devise something you think truly novel. Then you endure
the further cost and effort of applying for a patent, devot-
ing maybe $30,000 and two years to that process alone. At
the end of it all, the Patent Office agrees your invention is
novel and issues a patent. The patent affords you exclu-
sive rights to the fruits of your labor for two decades. But
what happens if someone later emerges from the wood-
work, arguing that it was all a mistake and your patent
should be canceled? Can a political appointee and his
administrative agents, instead of an independent judge,
resolve the dispute? The Court says yes. Respectfully, I
disagree.
We sometimes take it for granted today that independ-
ent judges will hear our cases and controversies. But it
wasn’t always so. Before the Revolution, colonial judges
depended on the crown for their tenure and salary and
often enough their decisions followed their interests. The
problem was so serious that the founders cited it in their
Declaration of Independence (see ¶11). Once free, the
framers went to great lengths to guarantee a degree of
judicial independence for future generations that they
themselves had not experienced. Under the Constitution,
2 OIL STATES ENERGY SERVICES, LLC v. GREENE’S
ENERGY GROUP, LLC
GORSUCH, J., dissenting
judges “hold their Offices during good Behaviour” and
their “Compensation . . . shall not be diminished during
the[ir] Continuance in Office.” Art. III, §1. The framers
knew that “a fixed provision” for judges’ financial support
would help secure “the independence of the judges,” be-
cause “a power over a man’s subsistence amounts to a
power over his will.” The Federalist No. 79, p. 472 (C.
Rossiter ed. 1961) (A. Hamilton) (emphasis deleted). They
were convinced, too, that “[p]eriodical appointments,
however regulated, or by whomsoever made, would, in
some way or other, be fatal to [the courts’] necessary inde-
pendence.” The Federalist No. 78, at 471 (A. Hamilton).
Today, the government invites us to retreat from the
promise of judicial independence. Until recently, most
everyone considered an issued patent a personal right—no
less than a home or farm—that the federal government
could revoke only with the concurrence of independent
judges. But in the statute before us Congress has tapped
an executive agency, the Patent Trial and Appeal Board,
for the job. Supporters say this is a good thing because
the Patent Office issues too many low quality patents;
allowing a subdivision of that office to clean up problems
after the fact, they assure us, promises an efficient solu-
tion. And, no doubt, dispensing with constitutionally
prescribed procedures is often expedient. Whether it is
the guarantee of a warrant before a search, a jury trial
before a conviction—or, yes, a judicial hearing before a
property interest is stripped away—the Constitution’s
constraints can slow things down. But economy supplies
no license for ignoring these—often vitally inefficient—
protections. The Constitution “reflects a judgment by the
American people that the benefits of its restrictions on the
Government outweigh the costs,” and it is not our place to
replace that judgment with our own. United States v.
Stevens, 559 U.S. 460, 470 (2010).
Consider just how efficient the statute before us is. The
Cite as: 584 U. S. ____ (2018) 3
GORSUCH, J., dissenting
Director of the Patent Office is a political appointee who
serves at the pleasure of the President. 35 U.S. C.
§§3(a)(1), (a)(4). He supervises and pays the Board mem-
bers responsible for deciding patent disputes. §§1(a),
3(b)(6), 6(a). The Director is allowed to select which of
these members, and how many of them, will hear any
particular patent challenge. See §6(c). If they (somehow)
reach a result he does not like, the Director can add more
members to the panel—including himself—and order the
case reheard. See §§6(a), (c); In re Alappat, 33 F.3d 1526,
1535 (CA Fed. 1994) (en banc); Nidec Motor Corp. v.
Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013,
1020 (CA Fed. 2013) (Dyk, J., concurring), cert. pending,
No. 17–751. Nor has the Director proven bashful about
asserting these statutory powers to secure the “ ‘policy
judgments’ ” he seeks. Brief for Petitioner 46 (quoting
Patent Office Solicitor); see also Brief for Shire Pharma-
ceuticals LLC as Amicus Curiae 22–30.
No doubt this efficient scheme is well intended. But can
there be any doubt that it also represents a retreat from
the promise of judicial independence? Or that when an
independent Judiciary gives ground to bureaucrats in the
adjudication of cases, the losers will often prove the un-
popular and vulnerable? Powerful interests are capable of
amassing armies of lobbyists and lawyers to influence
(and even capture) politically accountable bureaucracies.
But what about everyone else?
Of course, all this invites the question: how do we know
which cases independent judges must hear? The Constitu-
tion’s original public meaning supplies the key, for the
Constitution cannot secure the people’s liberty any less
today than it did the day it was ratified. The relevant
constitutional provision, Article III, explains that the
federal “judicial Power” is vested in independent judges.
As originally understood, the judicial power extended to
“suit[s] at the common law, or in equity, or admiralty.”
4 OIL STATES ENERGY SERVICES, LLC v. GREENE’S
ENERGY GROUP, LLC
GORSUCH, J., dissenting
Murray’s Lessee v. Hoboken Land & Improvement Co., 18
How. 272, 284 (1856). From this and as we’ve recently
explained, it follows that, “[w]hen a suit is made of the
stuff of the traditional actions at common law tried by the
courts at Westminster in 1789 . . . and is brought within
the bounds of federal jurisdiction, the responsibility for
deciding that suit rests with” Article III judges endowed
with the protections for their independence the framers
thought so important. Stern v. Marshall, 564 U.S. 462,
484 (2011) (internal quotation marks omitted). The Court
does not quarrel with this test. See ante, at 12–14. We
part ways only on its application. 1
As I read the historical record presented to us, only
courts could hear patent challenges in England at the time
of the founding. If facts were in dispute, the matter first
had to proceed in the law courts. See, e.g., Newsham v.
Gray, 2 Atk. 286, 26 Eng. Rep. 575 (Ch. 1742). If success-
ful there, a challenger then had to obtain a writ of scire
facias in the law side of the Court of Chancery. See, e.g.,
Pfander, Jurisdiction-Stripping and the Supreme Court’s
Power To Supervise Inferior Tribunals, 78 Texas L. Rev.
1433, 1446, n. 53 (2000); Lemley, Why Do Juries Decide If
Patents Are Valid? 99 Va. L. Rev. 1673, 1686–1687 (2013)
(Lemley, Juries). The last time an executive body (the
King’s Privy Council) invalidated an invention patent on
an ordinary application was in 1746, in Darby v. Betton,
PC2/99, pp. 358–359; and the last time the Privy Council
——————
1 Some of our concurring colleagues see it differently. See ante, at 1
(BREYER, J., concurring). They point to language in Commodity Futures
Trading Comm’n v. Schor, 478 U.S. 833 (1986), promoting the notion
that the political branches may “depart from the requirements of
Article III” when the benefits outweigh the costs. Id., at 851. Color me
skeptical. The very point of our written Constitution was to prevent
the government from “depart[ing]” from its protections for the people
and their liberty just because someone later happens to think the costs
outweigh the benefits. See United States v. Stevens, 559 U.S. 460, 470
(2010).
Cite as: 584 U. S. ____ (2018) 5
GORSUCH, J., dissenting
even considered doing so was in 1753, in Baker v. James,
PC2/103, pp. 320–321. After Baker v. James, the Privy
Council “divest[ed] itself of its functions” in ordinary
patent disputes, Hulme, Privy Council Law and Practice of
Letters Patent for Invention from the Restoration to 1794
(Pt. II), 33 L. Q. Rev. 180, 194 (1917), which “thereafter
[were] adjudicated solely by the law courts, as opposed to
the [crown’s] prerogative courts,” Mossoff, Rethinking the
Development of Patents: An Intellectual History, 1550–
1800, 52 Hastings L. J. 1255, 1286–1287 (2001) (Mossoff,
Rethinking Patents). 2
This shift to courts paralleled a shift in thinking. Pa-
tents began as little more than feudal favors. Id., at 1261.
The crown both issued and revoked them. Lemley, Juries
1680–1681. And they often permitted the lucky recipient
the exclusive right to do very ordinary things, like operate
a toll bridge or run a tavern. Ibid. But by the 18th century,
inventors were busy in Britain and invention patents
came to be seen in a different light. They came to be
viewed not as endowing accidental and anticompetitive
monopolies on the fortunate few but as a procompetitive
means to secure to individuals the fruits of their labor and
ingenuity; encourage others to emulate them; and promote
——————
2 See also Brief for H. Tomás Gómez-Arostegui et al. as Amici Curiae
6–37; Brief for Alliacense Limited LLC as Amicus Curiae
10–11; Gómez-Arostegui & Bottomley, Privy Council and Scire Facias
1700–1883, p. 2 (Nov. 6, 2017) (Addendum), https://ssrn.com/
abstract=3054989 (all Internet materials as last visited Apr. 20, 2018);
Observations on the Utility of Patents, and on the Sentiments of Lord
Kenyon Respecting That Subject 23 (2d ed. 1791) (“If persons of the
same trade find themselves aggrieved by Patents taken for any thing
already in use, their remedy is at hand. It is by a writ of Scire Facias”);
Mancius v. Lawton, 10 Johns. 23, 24 (NY Sup. Ct. 1813) (Kent, C. J.)
(noting the “settled English course” that “[l]etters-patent . . . can only
be avoided in chancery, by a writ of scire facias sued out on the part of
the government, or by some individual prosecuting in its name” (em-
phasis deleted)).
6 OIL STATES ENERGY SERVICES, LLC v. GREENE’S
ENERGY GROUP, LLC
GORSUCH, J., dissenting
public access to new technologies that would not otherwise
exist. Mossoff, Rethinking Patents 1288–1289. The Con-
stitution itself reflects this new thinking, authorizing the
issuance of patents precisely because of their contribution
to the “Progress of Science and useful Arts.” Art. I, §8,
cl. 8. “In essence, there was a change in perception—from
viewing a patent as a contract between the crown and the
patentee to viewing it as a ‘social contract’ between the
patentee and society.” Waltersheid, The Early Evolution
of the United States Patent Law: Antecedents (Part 3), 77
J. Pat. & T. Off. Soc. 771, 793 (1995). And as invention
patents came to be seen so differently, it is no surprise
courts came to treat them more solicitously. 3
Unable to dispute that judges alone resolved virtually
all patent challenges by the time of the founding, the
Court points to three English cases that represent the
Privy Council’s dying gasp in this area: Board of Ordnance
v. Wilkinson, PC2/123 (1779); Grill [Grice] v. Waters,
PC2/127 (1782); and Board of Ordnance v. Parr, PC1/3919
(1810). 4 Filed in 1779, 1782, and 1810, each involved an
——————
3 Seealso, e.g., Mossoff, Who Cares What Thomas Jefferson Thought
About Patents? Reevaluating the Patent “Privilege” in Historical
Context, 92 Cornell L. Rev. 953, 967–968 (2007) (Mossoff, Reevaluating
the Patent Privilege) (“[A]n American patent in the late eighteenth
century was radically different from the royal monopoly privilege
dispensed by Queen Elizabeth or King James in the early seventeenth
century. Patents no longer created, and sheltered from competition,
manufacturing monopolies—they secured the exclusive control of an
inventor over his novel and useful scientific or mechanical invention”
(footnote omitted)); Mossoff, Rethinking Patents 1286–1287; H. Fox,
Monopolies and Patents: A Study of the History and Future of the
Patent Monopoly 4 (1947).
4 The 1794 petition the Court invokes, ante, at 13, involved a Scottish
patent. Simpson v. Cunningham, PC2/141, p. 88 (1794). The English
and Scottish patents systems, however, were distinct and enforced by
different regimes. Gómez-Arostegui, Patent and Copyright Exhaustion
in England Circa 1800, pp. 10–16, 37, 49–50 (Feb. 9, 2017),
https://ssrn.com/abstract=2905847. Besides, even in that case the
Cite as: 584 U. S. ____ (2018) 7
GORSUCH, J., dissenting
effort to override a patent on munitions during wartime,
no doubt in an effort to increase their supply. But even
then appealing to the Privy Council was seen as a last
resort. The 1779 petition (the last Privy Council revoca-
tion ever) came only after the patentee twice refused
instructions to litigate the patent’s validity in a court of
law. Gómez-Arostegui & Bottomley, Privy Council and
Scire Facias 1700–1883, p. 6 (Nov. 6, 2017)
https://ssrn.com/abstract=3054989 (citing Board of Ord-
nance v. Wilkinson, PC2/123 (1779), and PC1/11/150
(1779)). The Council did not act on the 1782 petition but
instead referred it to the Attorney General where it ap-
pears to have been abandoned. Gómez-Arostegui & Bot-
tomley, Privy Council and Scire Facias, supra, at 17–18.
Meanwhile, in response to the 1810 petition the Attorney
General admitted that scire facias was the “usual manner”
of revoking a patent and so directed the petitioner to
proceed at law even as he suggested the Privy Council
might be available in the event of a “very pressing and
imminent” danger to the public. Id., at 20 (citing
PC1/3919 (1810)).
In the end, these cases do very little to support the
Court’s holding. At most, they suggest that the Privy
Council might have possessed some residual power to
revoke patents to address wartime necessities. Equally,
they might serve only as more unfortunate evidence of the
maxim that in time of war, the laws fall silent. 5 But
——————
Scottish Lord Advocate “ ‘was of opinion, that the question should be
tried in a court of law.’ ” Gómez-Arostegui & Bottomley, Addendum,
supra, at 23 (citing Petition of William Cunningham, p. 5, Cunningham
v. Simpson, Signet Library Edinburgh, Session Papers 207:3 (Ct. Sess.
Feb. 23, 1796)).
5 After all, the English statute of monopolies appeared to require the
“force and validitie” of all patents to be determined only by “the Comon
Lawes of this Realme & not otherwise.” 21 Jac. 1, c. 3, §2 (1624). So
the Privy Council cases on which the Court relies may not reflect the
best understanding of the British constitution.
8 OIL STATES ENERGY SERVICES, LLC v. GREENE’S
ENERGY GROUP, LLC
GORSUCH, J., dissenting
whatever they do, these cases do not come close to proving
that patent disputes were routinely permitted to proceed
outside a court of law.
Any lingering doubt about English law is resolved for
me by looking to our own. While the Court is correct that
the Constitution’s Patent Clause “ ‘was written against the
backdrop’ ” of English practice, ante, at 14 (quoting Gra-
ham v. John Deere Co. of Kansas City, 383 U.S. 1, 5
(1966)), it’s also true that the Clause sought to reject some
of early English practice. Reflecting the growing senti-
ment that patents shouldn’t be used for anticompetitive
monopolies over “goods or businesses which had long
before been enjoyed by the public,” the framers wrote the
Clause to protect only procompetitive invention patents
that are the product of hard work and insight and “add to
the sum of useful knowledge.” Id., at 5–6. In light of the
Patent Clause’s restrictions on this score, courts took the
view that when the federal government “grants a patent
the grantee is entitled to it as a matter of right, and does
not receive it, as was originally supposed to be the case in
England, as a matter of grace and favor.” James v. Camp-
bell, 104 U.S. 356, 358 (1882) (emphasis added). As Chief
Justice Marshall explained, courts treated American
invention patents as recognizing an “inchoate property”
that exists “from the moment of invention.” Evans v.
Jordan, 8 F. Cas. 872, 873 (No. 4,564) (CC Va. 1813).
American patent holders thus were thought to “hol[d] a
property in [their] invention[s] by as good a title as the
farmer holds his farm and flock.” Hovey v. Henry, 12 F.
Cas. 603, 604 (No. 6,742) (CC Mass. 1846) (Woodbury, J.).
And just as with farm and flock, it was widely accepted
that the government could divest patent owners of their
rights only through proceedings before independent judges.
This view held firm for most of our history. In fact, from
the time it established the American patent system in
1790 until about 1980, Congress left the job of invalidating
Cite as: 584 U. S. ____ (2018) 9
GORSUCH, J., dissenting
patents at the federal level to courts alone. The only
apparent exception to this rule cited to us was a 4 year
period when foreign patentees had to “work” or commer-
cialize their patents or risk having them revoked.
Hovenkamp, The Emergence of Classical American Patent
Law, 58 Ariz. L. Rev. 263, 283–284 (2016). And the fact
that for almost 200 years “earlier Congresses avoided use
of [a] highly attractive”—and surely more efficient—
means for extinguishing patents should serve as good
“reason to believe that the power was thought not to exist”
at the time of the founding. Printz v. United States, 521
U.S. 898, 905 (1997).
One more episode still underscores the point. When the
Executive sought to claim the right to cancel a patent in
the 1800s, this Court firmly rebuffed the effort. The Court
explained:
“It has been settled by repeated decisions of this court
that when a patent has [been issued by] the Patent
Office, it has passed beyond the control and jurisdic-
tion of that office, and is not subject to be revoked or
cancelled by the President, or any other officer of the
Government. It has become the property of the pa-
tentee, and as such is entitled to the same legal pro-
tection as other property.” McCormick Harvesting
Machine Co. v. Aultman, 169 U.S. 606, 608–609
(1898) (citations omitted).
As a result, the Court held, “[t]he only authority compe-
tent 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 pat-
ent.” Id., at 609.
The Court today replies that McCormick sought only to
interpret certain statutes then in force, not the Constitu-
tion. Ante, at 11, and n. 3. But this much is hard to see.
Allowing the Executive to withdraw a patent, McCormick
10 OIL STATES ENERGY SERVICES, LLC v. GREENE’S
ENERGY GROUP, LLC
GORSUCH, J., dissenting
said, “would be to deprive the applicant of his property
without due process of law, and would be in fact an inva-
sion of the judicial branch of the government by the execu-
tive.” 169 U.S., at 612. McCormick also pointed to “re-
peated decisions” in similar cases that themselves do not
seem to rest merely on statutory grounds. See id., at 608–
609 (citing United States v. Schurz, 102 U.S. 378 (1880),
and United States v. American Bell Telephone Co., 128
U.S. 315 (1888)). And McCormick equated invention
patents with land patents. 169 U.S., at 609. That is
significant because, while the Executive has always dis-
pensed public lands to homesteaders and other private
persons, it has never been constitutionally empowered to
withdraw land patents from their recipients (or their
successors-in-interest) except through a “judgment of a
court.” United States v. Stone, 2 Wall. 525, 535 (1865);
Wellness Int’l Network, Ltd. v. Sharif, 575 U. S. ___, ___
(2015) (THOMAS, J., dissenting) (slip op., at 11) (“Although
Congress could authorize executive agencies to dispose of
public rights in lands—often by means of adjudicating a
claimant’s qualifications for a land grant under a stat-
ute—the United States had to go to the courts if it wished
to revoke a patent” (emphasis deleted)).
With so much in the relevant history and precedent
against it, the Court invites us to look elsewhere. Instead
of focusing on the revocation of patents, it asks us to ab-
stract the level of our inquiry and focus on their issuance.
Because the job of issuing invention patents traditionally
belonged to the Executive, the Court proceeds to argue,
the job of revoking them can be left there too. Ante, at 6–
10. But that doesn’t follow. Just because you give a gift
doesn’t mean you forever enjoy the right to reclaim it.
And, as we’ve seen, just because the Executive could issue
an invention (or land) patent did not mean the Executive
could revoke it. To reward those who had proven the social
utility of their work (and to induce others to follow suit),
Cite as: 584 U. S. ____ (2018) 11
GORSUCH, J., dissenting
the law long afforded patent holders more protection than
that against the threat of governmental intrusion and
dispossession. The law requires us to honor those histori-
cal rights, not diminish them.
Still, the Court asks us to look away in yet another
direction. At the founding, the Court notes, the Executive
could sometimes both dispense and revoke public fran-
chises. And because, it says, invention patents are a
species of public franchises, the Court argues the Execu-
tive should be allowed to dispense and revoke them too.
Ante, at 9–10. But labels aside, by the time of the found-
ing the law treated patents protected by the Patent Clause
quite differently from ordinary public franchises. Many
public franchises amounted to little more than favors
resembling the original royal patents the framers expressly
refused to protect in the Patent Clause. The Court points
to a good example: the state-granted exclusive right to
operate a toll bridge. Ante, at 9. By the founding, courts
in this country (as in England) had come to view anticom-
petitive monopolies like that with disfavor, narrowly
construing the rights they conferred. See Proprietors of
Charles River Bridge v. Proprietors of Warren Bridge, 11
Pet. 420, 544 (1837). By contrast, courts routinely applied
to invention patents protected by the Patent Clause the
“liberal common sense construction” that applies to other
instruments creating private property rights, like land
deeds. Davis v. Palmer, 7 F. Cas. 154, 158 (No. 3,645) (CC
Va. 1827) (Marshall, C. J.); see also Mossoff, Reevaluating
the Patent Privilege 990 (listing more differences in
treatment). As Justice Story explained, invention patents
protected by the Patent Clause were “not to be treated as
mere monopolies odious in the eyes of the law, and there-
fore not to be favored.” Ames v. Howard, 1 F. Cas. 755,
756 (No. 326) (CC Mass. 1833). For precisely these rea-
sons and as we’ve seen, the law traditionally treated pat-
ents issued under the Patent Clause very differently than
12 OIL STATES ENERGY SERVICES, LLC v. GREENE’S
ENERGY GROUP, LLC
GORSUCH, J., dissenting
monopoly franchises when it came to governmental inva-
sions. Patents alone required independent judges. Nor
can simply invoking a mismatched label obscure that fact.
The people’s historic rights to have independent judges
decide their disputes with the government should not be a
“constitutional Maginot Line, easily circumvented” by
such “simpl[e] maneuver[s].” Bank Markazi v. Peterson,
578 U. S. ___, ___ (2016) (ROBERTS, C. J., dissenting) (slip
op., at 12).
Today’s decision may not represent a rout but it at least
signals a retreat from Article III’s guarantees. Ceding to
the political branches ground they wish to take in the
name of efficient government may seem like an act of
judicial restraint. But enforcing Article III isn’t about
protecting judicial authority for its own sake. It’s about
ensuring the people today and tomorrow enjoy no fewer
rights against governmental intrusion than those who
came before. And the loss of the right to an independent
judge is never a small thing. It’s for that reason Hamilton
warned the judiciary to take “all possible care . . . to de-
fend itself against” intrusions by the other branches. The
Federalist No. 78, at 466. It’s for that reason I respectfully
dissent.