Supreme Court Bars AIA Patent Challenges by the Government in Return Mail Decision
The Supreme Court ruled Monday in a 6-3 decision that federal agencies may not file America Invents Act (AIA) petitions at the Patent Trial and Appeal Board (PTAB). Return Mail, Inc. v. United States Postal Service et al., 587 U.S. ___ (2019). The Court held that the federal government is not a “person” within the meaning of the AIA and is therefore ineligible to pursue the post-grant patent challenges authorized by that act, including inter partes review (IPR), post-grant review (PGR), and covered business method (CBM) review. The decision does not abridge the federal government’s ability to pursue ex-parte reexamination challenges under 35 U.S.C. § 302.
The dispute between Return Mail and the United States Postal Service arose when Return Mail sued the Postal Service for patent infringement, arguing that the agency’s enhanced address-change service infringed its patent that claims a method for processing undeliverable mail. After Return Mail sought relief in the Court of Federal Claims, the Postal Service petitioned for CBM review of Return Mail’s patent, which the PTAB found to be patent-ineligible. The Federal Circuit affirmed, concluding that the federal government is a “person” within the meaning of the AIA. The Supreme Court subsequently reversed the Federal Circuit, citing the Court’s “longstanding interpretive presumption that ‘person’ does not include the sovereign.” This presumption reflects “common usage,” as well as an express directive from Congress in the Dictionary Act, which does not include the federal government among the persons listed in the definition of “person.”
To show that the term “person” in the AIA includes the federal government, the Postal Service must point to evidence within the act that Congress intended the term to have that meaning. First, the Postal Service relied on the “consistent use principle” – i.e. when Congress uses a word to mean one thing in one part of a statute, it will mean the same thing elsewhere. The Court rejected this argument, finding that there was no clear trend shown in the AIA’s 18 uses of the word “person.” The Postal Service then argued that, since the federal government has been able to apply for patents in the name of the United States for many years, Congress must have intended to allow the government access to AIA proceedings. The Court rejected this argument as well, finding that the government’s ability to obtain a patent does not speak to whether Congress meant for the government to participate as a third-party challenger in AIA proceedings. Finally, the Postal Service asserted that it must be allowed access to AIA proceedings because, like other potential infringers, it is also subject to civil liability and can assert defenses of patent invalidity. The Court also rejected this argument, stating that federal agencies face lower and more calculable risks than nongovernmental actors, so it is reasonable for Congress to treat them differently.
The Court’s full decision can be found here.