On October 26, 2018, the U.S. Supreme Court granted certiorari, in part, to review Return Mail, Inc. v. United States Postal Service, et al. The question before the Supreme Court is whether the government is a ”˜person”™ who may petition to institute review proceedings under the 2011 America Invents Act (“AIA”).
Return Mail, Inc. (“Return Mail”) is a small technology company that developed an efficient and cost-effective system for processing returned mail after a failed delivery attempt, for which Return Mail received U.S. Patent No. 6,826,548 (“the ”²548 patent”). The United States Postal Service (“USPS”) expressed interest in licensing the ”²548 patent; however, no agreement was reached. Subsequently, the USPS announced the implementation of its own system which would process returned and undelivered mail. In response, Return Mail filed suit against the USPS for unlicensed use of the ”²548 patent. The USPS challenged the validity of the ”²548 patent at the USPTO Patent Trial and Appeal Board (“PTAB”) by filing a petition for Covered Business Method (“CBM”) review. The PTAB initiated review and issued a final written decision wherein the PTAB invalidated the ”²548 patent. Return Mail appealed the PTAB”™s decision to the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”).
On appeal, the Federal Circuit upheld the PTAB”™s conclusion of invalidity. Although neither party argued the meaning of the term ”˜person,”™ the issue of whether the USPS qualified as a ”˜person”™ under AIA § 18(a)(1)(B) was raised in Judge Newman”™s Dissent. In light of the fact that § 18 does not explicitly include the government as a person, Judge Newman explained the government should be excluded unless there is strong evidence supporting the contrary. Looking at the statute as a whole, Judge Newman relied heavily on the § 18 estoppel provision to conclude the government is not a ”˜person”™ under the AIA.
Specifically, Judge Newman noted the estoppel provision of the AIA only prevents petitioners from making arguments in district court or the International Trade Commission, that were made before the PTAB. However, the government may only be sued in the U.S. Court of Federal Claims. Therefore, if the government was included as a ”˜person”™ then Congress intended to grant government the ability to file post-grant proceedings before the PTAB while simultaneously granting the government the ability to avoid the estoppel provision. Moreover, Judge Newman could not find any basis that would support the inclusion of the government as a ”˜person.”™ Thus, Judge Newman concluded the PTAB had no statutory authority to institute the USPS”™s CBM petition and the final written decision should be vacated. Return Mail filed a petition for a Federal Circuit en banc rehearing addressing the Dissent”™s issue regarding the scope of ”˜person”™ but was denied. Return Mail then filed a petition for certiorari to the Supreme Court.
By granting certiorari to this issue, the Supreme Court will decide whether § 18 permits the government to file petitions for post-grant proceedings. Alternatively, the Supreme Court could also issue a narrow holding where the government is barred from filing petitions for the specific CBM review. However, it seems unlikely that the Supreme Court”™s decision will affect non-governmental agencies. Ultimately, the outcome of this case is uncertain due to the lack of precedent regarding this matter.