On June 10, 2019, the Supreme Court in Return Mail Inc. v. United States Postal Service (17-1594) ruled 6-3 that a federal agency cannot petition for the review of an issued patent under the America Invents Act (AIA). This decision prevents the U.S. government from challenging the validity of issued patents through inter partes reviews (IPRs), post-grant reviews (PGRs), and covered business method reviews (CBM reviews).
Background
In 2011, Congress enacted the AIA, which permits a "person" to challenge issued patents through three types of then newly created administrative proceedings—IPRs, PGRs, and CBM reviews—which are conducted before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office. IPRs allow a "person" to challenge the validity of an issued patent on anticipation or obviousness grounds, using prior art patents and printed publications; PGRs allow "a person" to challenge an issued patent on any ground, albeit within nine months of the patent's issuance; and CBM reviews allow a "person" to challenge an issued patent that claims a method or apparatus for performing operations used in the practice, administration, or management of a financial product or service.
Return Mail owns U.S. Patent No. 6,826,548, which claims a method for processing undeliverable mail. Return Mail sued the U.S. Postal Service for infringement of the '548 patent in the Court of Federal Claims. The Postal Service subsequently petitioned the PTAB for CBM review of the '548 patent. The PTAB in the CBM proceeding determined that the subject matter claimed in the '548 patent was ineligible to be patented. On appeal, the Court of Appeals for the Federal Circuit affirmed, and held that the Postal Service, i.e., the government, was a "person" eligible to petition for CBM review.
The Supreme Court granted certiorari on the question of whether a federal agency is a "person" that can petition for IPRs, PGRs, and CBM reviews under the AIA.
The Supreme Court Decision
Justice Sotomayor wrote the majority opinion, joined by Justices Roberts, Thomas, Alito, Gorsuch, and Kavanaugh.
The majority began by noting that the AIA does not expressly define the term "person," and that, in the absence of an express definition, the Supreme Court generally applies the long-standing presumption that a "person" does not include the government or an agency thereof. The majority rejected the Postal Service's argument that this presumption should apply only where a statute would subject the government to liability, explaining that although the presumption is "particularly applicable" in situations where Congress has subjected the government to liability to which it has not been subject before, "it is hardy confined to such cases."
The majority then reasoned that nothing in the AIA justified displacing the presumption that the government was not a "person." The majority first observed that the Patent Act and AIA referred to "person[s]" in at least 18 different places, and that while the use of the term in some instances "plainly includes the Government," "sometimes—as here—it might be read either way." The majority concluded that the "mere existence of some Government-inclusive references" in the statute could not overcome the presumption that Congress did not intend for the term "person" in the AIA's post-issuance review provisions to include the government. In that regard, the majority rejected the Postal Service's reliance on 35 U.S.C. § 207(a)(1), which authorizes "[e]ach [f]ederal agency" to obtain patents of its own. According to the majority, § 207(a)(1) does not bear upon the interpretation of the AIA's post-issuance review provisions, because it "implies nothing about what a federal agency may or may not do following the issuance of someone else's patent."
The majority next discounted the Postal Service's observation that since 1981 the Patent Office has treated federal agencies as "persons" that may request ex parte reexamination of an issued patent. According to the majority, ex parte reexamination and AIA post-issuance review are "fundamentally different" proceedings, in that ex parte reexamination is an "internal" Patent Office process, whereas AIA post-issuance reviews are "adversarial, adjudicatory proceedings between the 'person' who petitioned for review and the patent owner… Thus, there are good reasons Congress might have authorized the Government to initiate a hands-off ex parte reexamination but not to become a party to a full-blown adversarial proceeding before the Patent Office."
Last, the majority rejected the Postal Service's argument that, because the government is subject to civil liability for patent infringement like other potential infringers, the government, like other potential infringers, should be afforded the benefit of challenging a patent de novo through AIA post-issuance reviews. The majority asserted that "[w]e see no oddity…in Congress affording non-governmental actors an expedient route that the Government does not also enjoy for heading off potential infringement suits." The majority also observed that Congress had afforded the government certain benefits not shared by other infringers: "Most notably, [28 U.S.C.] § 1498 restricts a patent owner who sues the Government to her 'reasonable and entire compensation' for the Government's infringing use; she cannot seek an injunction, demand a jury trial, or ask for punitive damages, all of which are available in infringement suits against nongovernmental actors under [35 U.S.C.] § 271(e)(4)."
Justice Breyer, joined by Justices Ginsburg and Kagan, dissented. According to the dissent, the use of the term "person" in other provisions of the Patent Act clearly included the government, and these uses were sufficient to overcome the presumption that the government was not a "person" for purposes of the AIA post-issuance review provisions. The dissent further questioned "the majority's efforts to find an explanation for why Congress would have wanted to deny Government agencies the ability to invoke the speedier administrative procedures established by the [AIA]" (emphasis in original).