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ARTICLE · 29 JANUARY 2016

Post-Grant PTAB Procedures Are Constitutional

McDermott Will & Emery
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In a case of first impression, the U.S. Court of Appeals for the Federal Circuit upheld the constitutionality of inter partes review (IPR) proceedings.

United StatesIntellectual Property
Alex Grabowski
Alex Grabowski
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MCM Portfolio LLC v. Hewlett-Packard Co.

In a case of first impression, the U.S. Court of Appeals for the Federal Circuit upheld the constitutionality of inter partes review (IPR) proceedings. The Federal Circuit ruled that because patents were a public right, Congress could delegate adjudicatory authority to an Article I court such as the Patent Trial and Appeal Board (PTAB or "Board) at the U.S. Patent and Trademark Office (PTO) without violating Article III or the Seventh Amendment. MCM Portfolio LLC v. Hewlett-Packard Co., Case No. 15-1091 (Fed. Cir., Dec. 2, 2015) (Dyk, J.).

The case arose from an IPR involving a flash memory patent. MCM Portfolio (MCM) sued Hewlett-Packard (HP) on a patent covering error correction technology in flash drive readers. HP responded by petitioning the PTAB for an IPR, asserting that the involved patent was invalid for obviousness. The PTAB instituted an IPR proceeding, eventually invalidating the claims. MCM appealed.

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