Return Mail, Inc. v. U.S. Postal Serv.
Headline: Federal agencies cannot use the Patent Office’s new post-issuance review processes to cancel other people’s patents; the Court holds agencies are not persons under the 2011 law, limiting government challenges
Holding: The Court held that a federal agency is not a "person" who may petition for post-issuance review under the 2011 Patent Act, reversing the Federal Circuit and preventing agency-initiated AIA challenges.
- Bars federal agencies from initiating AIA post-issuance reviews before the Patent Board.
- Allows agencies to still seek ex parte reexamination by the Patent Office.
- Government patent disputes must rely on court defenses and monetary-compensation suits.
Summary
Background
A private company that owns a patent for handling undeliverable mail accused the United States Postal Service of infringing that patent after the Postal Service adopted a new mail-processing service. The Postal Service first sought an ex parte reexamination and later asked the Patent Trial and Appeal Board for a covered-business-method (CBM) review. The Board canceled the patent claims, and the Federal Circuit held that a federal agency can be a "person" who petitions for these post-issuance reviews. The Supreme Court agreed to decide whether a federal agency counts as a "person" under the 2011 America Invents Act.
Reasoning
The Court asked whether the statutory word "person" includes the Federal Government. Starting from a longstanding presumption that "person" does not include the sovereign, the Court said that Congress must show an affirmative intent to include agencies. The majority found no clear textual or contextual signal in the AIA to overcome that presumption. It emphasized the difference between a hands-off ex parte reexamination and the adversarial AIA review processes, noted that other patent provisions sometimes include agencies but that those provisions do not compel inclusion here, and rejected arguments that government liability under 28 U.S.C. §1498 requires agency access to AIA review. The Court therefore concluded an agency is not a "person" eligible to initiate AIA post-issuance review.
Real world impact
The decision removes the Patent Board route for federal agencies to challenge others' patents. Agencies can still submit prior art or seek ex parte reexamination and must rely on court defenses and §1498 claims when accused of infringement. The Federal Circuit judgment allowing agency CBM petitions was reversed and the case remanded for further proceedings.
Dissents or concurrances
Justice Breyer, joined by Justices Ginsburg and Kagan, dissented, arguing the statute's text, history, and executive practice support treating agencies as "persons" able to use the AIA procedures.
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