Return Mail, Inc. v. United States Postal Service

Following up on our Winter 2019 Newsletter, on June 10, 2019, the Supreme Court reversed the U.S. Court of Appeals for the Federal Circuit”™s decision in Return Mail, Inc. v. United States Postal Service, holding the U.S. Government is not a “person” capable of instituting AIA USPTO review proceedings ”“ inter partes reviews, covered business method reviews, and post-grant reviews.

With Justice Sotomayor delivering the majority opinion for this case, the Supreme Court first noted the AIA did not define the term “person.” In the absence of a definition, the Supreme Court applied the longstanding interpretative presumption that the term “person” does not include the Government and its agencies. Further, the Supreme Court recognized the Dictionary Act”™s definition of the term “person” did not include the Government. However, the Supreme Court noted the definition could be superseded by the statutory context of the AIA review proceedings.

Subsequently, the Supreme Court discussed the United States Postal Service”™s (“Postal Service”) arguments that the AIA”™s reference to a “person” includes the Government in the context of AIA review proceedings because: (1) several patent statutes include the Government as a “person,” (2) federal agencies have previously been allowed to participate in the patent system, and (3) the Government is subject to liability for infringement.

First, the Supreme Court explained the Postal Service”™s primary argument failed because the patent statutes did not consistently include the Government as a “person.” Moreover, the Supreme Court noted the several patent statutes which included the Government as a “person,” had no bearing on AIA review proceedings. Therefore, contrary to the Postal Service”™s argument, the Supreme Court did not find that the mere existence of some Government-inclusive references were sufficient to overcome the longstanding presumption that Congress did not intend to include the Government as a person.

With respect to the Postal Service”™s second argument, the Supreme Court reasoned that Government involvement in the patent system in the past “[did] not speak to whether Congress meant for the Government to participate as a third-party challenger in AIA review proceedings.” Additionally, the Supreme Court explained there was no “settled” meaning of the term “person” with respect to the newly established AIA review proceedings. Accordingly, the definition of a “person” in prior patent statutes could not be incorporated into the new AIA review proceedings.

Lastly, the Supreme Court determined the Postal Service”™s third argument was unpersuasive due to procedural and monetary restrictions placed on patent owners who sue the Government for infringement. For example, a patent owner who sues the Government for infringement cannot seek an injunction, demand a jury trial, or ask for punitive damages. Therefore, the Supreme Court concluded it was reasonable for Congress to treat the Government differently.

In addition, the Supreme Court determined excluding federal agencies from the AIA review proceedings avoids the awkward situation that might result from forcing a civilian patent owner to defend its patent in an adversarial, adjudicatory proceeding initiated by one federal agency (such as the Postal Service) and overseen by a different federal agency (the USPTO).

Accordingly, the Supreme Court found the Government was not a “person” capable of instituting AIA review proceedings. Thus, patent owners may have an advantage when suing a government agency for patent infringement in the early stages of litigation.