Orrick Library Seminar Series: US Supreme Court May Rule IPRs Unconstitutional: What Should Your Company Be Doing?

日本語： 米国連邦最高裁判所はIPRを違憲と判断するのか：日本企業としてどう対応すべきか

Orrick’s Global Japan Practice is hosting a series of “Orrick Library” seminars to explore legal issues in various fields in Japan as well as the United States, Asia and Europe. The appellate attorney who will attend the Oil States argument will be joining the 90 minute event in our Tokyo office.  

For the past 5 years, Japanese companies sued by sophisticated NPEs in the United States have defended using the inter partes review (“IPR”) process of the U.S. Patent Office.  But in a few weeks, the Supreme Court will consider whether to strike down this critical procedure.  Mark Davies, our appellate attorney who will attend the Oil States argument, will be in our Office to discuss the case, and he will be joined by two of our experts in the IPR process, Vann Pearce in our Washington D.C. Office and Alyssa Caridis in our Los Angeles Office.  Please join us on Wednesday, December 13, 2017 to learn about the best strategy for Japanese companies that currently use the IPR process. 

Background:

Since the passage of the America Invents Act, Japanese companies have effectively used the inter partes review (“IPR”) proceedings at the Patent Office to invalidate or narrow patent claims asserted by NPEs.  In Oil States v. Greene’s Energy, however, the U.S. Supreme Court will consider whether the IPR process violates the Constitution.  If IPR proceedings are held unconstitutional, there will be a great deal of unpredictability about current IPR proceedings and even past IPR decisions.  Orrick’s Mark Davies will be attending oral arguments at the Supreme Court on November 27^th and will be reporting on the proceedings in person at Orrick’s Tokyo office on December 13, 2017.  This is a special opportunity for Japanese companies to hear first-hand about the Supreme Court proceedings.  In addition, Vann Pearce and Alyssa Caridis will discuss whether Japanese companies should file IPRs while waiting for the Supreme Court’s ruling and also strategies to consider in case the Supreme Court rules IPRs unconstitutional.

Although the conventional wisdom suggests that the Supreme Court is unlikely to hold IPRs unconstitutional, there are several reasons to be far more concerned.  First, the Supreme Court only decided to consider the question after a new Justice was added to the bench, and that Justice is considered generally skeptical of administrative agency authority.  Second, there are surprisingly credible substantive arguments against the validity of the IPR process.  For example, the patent owner suggests that patents are private rights and therefore should not be subject to cancellation by an administrative court without the right to a jury.  Third, the Court is unlikely to fear the practical ramifications of holding IPRs unconstitutional.  The “friend of the Court” briefs are divided on whether IPRs promote Progress, and the Court has in the past not let concerns about practical consequences stop it from holding a law unconstitutional. 

Accordingly, there is a real possibility that the Supreme Court will hold IPRs unconstitutional.  Japanese companies should consider their strategies before the Supreme Court’s ruling, which we expect sometime between April and July of 2018.  A lot can be learned from attending the oral argument and listening closely to the questions the Justice ask and reactions to the answers.  Mark, Vann and Alyssa will talk about possible rulings and sensible next steps.    

There will be time set aside for questions and answers.  

Date: December 13 (Wednesday) 9:00 am – 10:30 am (Registration from 8:45 am)
Place: Orrick Tokyo Law Office (Map)
Speakers:
Mark Davies, Partner, Orrick Washington D.C. Office
T. Vann Pearce, Partner, Orrick Washington D.C. Office
Alyssa Caridis, Partner, Orrick Los Angeles Office
Language: English
Fee: No charge
Registration deadline: December 11 (Monday)

* David Case, Shinsuke Yakura and Anri Nakamoto will join and offer additional perspectives in Japanese.

** Orrick, Herrington & Sutcliffe LLP is an accredited MCLE provider in the States of New York and California.  This continuing legal education course has been approved in accordance with the requirements of the Continuing Legal Education Board for a maximum of 1.5 credit hours, of which 1.5 credit hours can be applied toward the areas of professional practice requirement.

For questions, please contact Aya Mori .