Last week, the United States Supreme Court issued an opinion in Return Mail, Inc. v. United States Postal Service, No. 17-1594 (June 10, 2019), explaining that the Government is not a “person” authorized to petition for institution of review proceedings under the America Invents Act (AIA).
Return Mail owned a patent with claims directed to a method for processing undeliverable mail, which it asserted the United States Postal Service (USPS) infringed with its address-change service used to process undeliverable mail. In response to Return Mail’s infringement allegation, the USPS requested ex parte reexamination of the patent. The Patent Office cancelled the original claims, but allowed new ones to issue and, upon completion of the reexamination, Return Mail sued the USPS for infringement. While that suit was pending, the USPS petitioned the Patent Trial and Appeal Board (PTAB) to conduct a Covered Business Method (CBM) review of the patent. The PTAB instituted the CBM review, determined the claims were directed to ineligible subject matter, and cancelled the claims. The Federal Circuit affirmed.
The Supreme Court granted certiorari, and held a federal agency is not a “person” capable of petitioning for post-issuance review under the AIA. The Court explained that, absent an express statutory definition, there is a longstanding presumption that the term “person” does not include the Government. The Court concluded there was no affirmative showing of statutory intent to the contrary in the AIA. The Court explained the fact that other references to “persons” in the patent statutes include the Government does not mean that the references to “persons” in the sections on AIA review do so. The Court noted several differences between AIA review proceedings and other types of proceedings before the Patent Office. The Court also explained that the Government’s exposure in a patent infringement suit is different from that of private parties because, in a suit against the Government, a party cannot obtain injunctive relief, demand a jury trial, or ask for enhanced damages. The Court noted that excluding federal agencies from being able to seek AIA review of patents “avoids the awkward situation that might result from forcing a civilian patent owner (such as Return Mail) to defend the patentability of her invention in an adversarial, adjudicatory proceeding initiated by one federal agency (such as the Postal Service) and overseen by a different federal agency (the Patent Office).”