Brief for 72 Professors of Intellectual Property Law as Amici Curiae in Support of Respondents in Oil States Energy v. Greene's Energy

52 Pages Posted: 31 Oct 2017

See all articles by Greg Reilly

Greg Reilly

IIT Chicago-Kent College of Law

Mark A. Lemley

Stanford Law School

Arti K. Rai

Duke University School of Law; Duke Innovation & Entrepreneurship Initiative

Date Written: October 30, 2017


This is a brief of 72 IP professors opposing the claim in Oil States that the IPR procedure is unconstitutional.

Petitioner argues that only a court – indeed, only a jury – has the power to decide that the United States Patent and Trademark Office erred in granting a patent. That argument flies in the face of the history of patent law and this Court’s precedents.

Patents are a creature of statute: as early as 1834, this Court specifically recognized that there is no “natural” or common law right to a patent. Rather, under its Article I power to establish a patent system, Congress is charged with determining the contours of the patent grant. Congressional power to establish the terms and conditions of the patent grant includes the power to establish a system for administrative correction of erroneously granted patents.

PTAB error correction is also narrow in scope, targeted towards bad patents that district court litigation would not address, and only a modest extension of prior administrative correction proceedings. Moreover, even this narrow scope is subject to significant appellate court control. PTAB review thus addresses the social cost of erroneous patent grants without threatening Article III values.

The Seventh Amendment does not compel a different conclusion. While patent infringement cases were tried to juries at common law, both the government and judges retained the power to revoke patents in England and in the early United States. When patent validity questions were considered in American courts throughout history, they were frequently considered by judges, not juries. And court consideration of patent validity issues coexisted with actions by the legislative and executive branches to revoke patents, actions which of course did not require a jury. While this Court need not reach the Seventh Amendment issue in order to dispose of petitioner’s claims, should it reach that issue it should make clear that the Seventh Amendment does not create a right to jury trial on patent validity.

Suggested Citation

Reilly, Greg and Lemley, Mark A. and Rai, Arti Kaur, Brief for 72 Professors of Intellectual Property Law as Amici Curiae in Support of Respondents in Oil States Energy v. Greene's Energy (October 30, 2017). Stanford Public Law Working Paper, Duke Law School Public Law & Legal Theory Series No. 2018-2, Available at SSRN: or

Greg Reilly

IIT Chicago-Kent College of Law ( email )

565 W. Adams St.
Chicago, IL 60661-3691
United States

Mark A. Lemley (Contact Author)

Stanford Law School ( email )

559 Nathan Abbott Way
Stanford, CA 94305-8610
United States

Arti Kaur Rai

Duke University School of Law ( email )

210 Science Drive
Box 90362
Durham, NC 27708
United States

Duke Innovation & Entrepreneurship Initiative ( email )

215 Morris St., Suite 300
Durham, NC 27701
United States

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