An interesting question has been presented to the U.S. Supreme Court when it granted a writ of certiorari on October 26, 2018. That is, is the United States Government, through one of its agencies, a “person” for purposes of the America Invents Act (AIA), the most recent Patent Act from 2012. The case, Return Mail Inc. v. United States Postal Service,[1] presents the specific question for the high court: whether the government is a “person” who may petition to institute review proceedings under the AIA.
Return Mail owns U.S. Patent No. 6,826,548 (‘548), directed to a system for processing returned mail subsequent a failed delivery attempt. The USPS sought an ex parte reexamination, where the USPTO found the claims valid, and further petitioned for a CBM review, in which the PTAB invalidated the ‘548 claims. This petition for writ of certiorari is Return Mail’s appeal of that decision. The question appears to follow the line of reasoning first established in SAS, which allowed private parties to challenge previously issued patent claims in an adversarial process before the USPTO’s PTAB that closely imitates civil litigation.[2] Since any “person” can file a petition under the AIA’s post-grant review process (see, IPRs: 35 U.S.C. §311(a); PGRs: 35 U.S.C. §321(a)).
However, the definition of “person” is not so clear. A person is a “person,” and a company has been deemed a “person,”,[3] but an animal is not a “person.”[4] Where the government is involved, it has not been conclusively established. It is true that one cannot just sue the federal government for patent infringement; the only relief is through one federal statute (28 U.S.C. §1498(b)). Return Mail’s brief relied on Vt. Agency of Natural Resources,[5] which held that Congress intended to exclude the government from the definition of “person.” Further, the brief relied on Mine Workers, which stated the term “person” does not ordinarily include the “sovereign” or the government.[6] The agency in question is the U.S. Postal Service, but the question could apply to any of the multitude of federal agencies, including the USPTO.
The briefing schedule is completed, an oral arguments are to be set for spring of 2019, and a final ruling either summer or fall 2019.
[1] 868 F.3d 1350 (Fed. Cir. 2017), cert. granted, 586 U.S.___ (2018).
[2] See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1352 (2018).
[3] See, e.g., Trustees of Dartmouth Coll. v. Woodward, 17 U.S. (4 Wheat.) 518, 527 (1819).
[4] See, e.g., People v. Frazier, 173 Cal.App.4th 613, 618 (Cal. App. 2009) (“Despite the physical ability to commit vicious and violent acts, dogs do not possess the legal ability to commit crimes”).
[5] Vt. Agency of Nat. Res. v. United States ex rel. Stevens, 529 U.S. 765, 780-81 (2000).
[6] United States v. Mine Workers of Am., 330 U.S. 258, 275 (1947).