The Supreme Court of the United States issued a ruling today in Return Mail, Inc. v. Postal Service, 587 U.S. ___ (2019), holding that the United States Government is not a “person” eligible to petition for covered-business-method (“CBM”) review, inter partes review (“IPR”), or post-grant review (“PGR”) America Invents Act (“AIA”) proceedings before the United States Patent and Trademark Office (“USPTO”). Justice Sotomayor delivered the opinion for the Court in a 6-3 decision, while Justice Breyer, joined by Justices Ginsburg and Kagan, filed a dissenting opinion.
Return Mail, Inc. owns U.S. Pat. No. 6,826,548 (the “’548 Patent”), which is directed to a method for processing undeliverable mail. Op. at 5. In 2006, after declining to license the ’548 Patent for its enhanced address-change service to process undeliverable mail, the Postal Service petitioned for ex parte reexamination of the ’548 Patent. Op. at 5. The Patent Office cancelled the original claims, and issued new ones confirming the validity of the ’548 Patent. Id. Return Mail then sued the Postal Service in the Court of Federal Claims in order to seek compensation for the Postal Service’s unauthorized use of its invention. Id. The Postal Service again challenged the ’548 Patent, this time in a CBM review. The USPTO cancelled Return Mail’s patent claims, finding that they are directed to ineligible subject matter pursuant to 35 U.S.C. § 101, and a divided panel of the Court of Appeals for the Federal Circuit affirmed. Id. at 6. As part of its ruling, the Federal Circuit held that the Government is a “person” eligible to petition for CBM Review. Op. at 6; see also 35 U.S.C. §§ 311(a), 321 (a) (only a qualifying “person” may petition for CBM review).
The Court reversed, noting that in the absence of an express statutory definition of “person,” the Court “applies a ‘longstanding interpretive presumption that ‘person’ does not include the sovereign,’ and thus excludes a federal agency like the Postal Service.” Op. at 7 (quoting Vermont Agency of Natural Resources v. United States ex rel. Stevens, 529 U.S. 765, 780-81 (2000)). In view of the presumption that a statutory reference to a “person” does not include the Government, the majority found that the Postal Service was unable to show that the AIA’s context indicates otherwise. Op. at 9. The Court further noted that “excluding federal agencies from the AIA review proceedings avoids the awkward situation that might result from forcing a civilian patent owner (such as ReturnMail) 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).” Op. at 17. Accordingly, the Court held that a federal agency is not a “person” who may petition for post-issuance review under the AIA. Id.
In dissent, Justice Breyer found that the language of other related patent provisions strongly suggests that the term “person” includes the Government. The dissent further asked:
Why? Government agencies can apply for and obtain patents; they can maintain patents; they can sue other parties for infringing their patents; they can be sued for infringing patents held by private parties; they can invoke certain defenses to an infringement lawsuit on the same terms as private parties; they can invoke one of the pre-existing administrative procedures for challenging the validity of a private party’s patents; and they can be forced to defend their own patents when a private party invokes one of the three procedures established by the America Invents Act. Why, then, would Congress have declined to give federal agencies the power to invoke these same administrative procedures?
Dissent at 8.