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It’s official: Supreme Court says government isn’t a person – for patent purposes

Dec 3, 2019 | Newsletter, Patent Law, Patterson Thuente News

Patentees welcomed a recent U.S. Supreme Court decision that significantly reduces the pool of potential challengers to the validity of existing patents. Thanks to the ruling, federal government agencies can’t take advantage of three patent review processes created less than a decade ago — because the federal government isn’t a “person” under patent law.

Post office delivers a blow

Return Mail, Inc., owns a patent for a method of processing undeliverable mail. After the U.S. Postal Service (USPS) introduced an enhanced address-change service to process undeliverable mail, Return Mail claimed the service infringed the patent and offered to license its invention to the USPS.

In response, and prior to the America Invents Act of 2011 (AIA), the USPS sought a re-examination of the patent, but the U.S. Patent and Trademark Office (USPTO) confirmed the patent’s validity. Return Mail then sued the USPS, seeking compensation for the unauthorized use of its invention.

While that lawsuit was pending, the USPS petitioned for “covered-business-method” (CBM) review, a remedy created by the AIA. The USPTO concluded that Return Mail’s invention wasn’t eligible to be patented and canceled it. The U.S. Court of Appeals for the Federal Circuit affirmed. Return Mail then turned to the Supreme Court.

Supreme Court addresses the matter

The AIA provides that a “person” eligible to seek CBM review may not do so “unless the person or the person’s real party in interest or privy has been sued for infringement.” The question before the Supreme Court was whether the government is a “person” capable of instituting CBM review or two other AIA-created patent review proceedings.

The federal patent law doesn’t define the term “person.” In such circumstances, the Supreme Court generally applies a longstanding presumption that “person” doesn’t include “the sovereign.” Further, since 1947, the Dictionary Act has provided the definition of the term that courts generally use in determining the meaning of any federal law. That definition doesn’t include the federal government.

The Supreme Court recognized that the presumption isn’t a hard and fast rule but said that courts can disregard it only with evidence of contrary congressional intent. The USPS, therefore, needed to point to some indication in the AIA’s text or context that showed that Congress had intended to include the government as a “person.” The USPS tried, but the Court found its arguments unpersuasive.

In particular, the USPS argued that the AIA’s reference to a “person” in the context of postpatent issuance reviews must include the government because other references to persons in the patent statutes appear to do so. The Court concluded, though, that the 18 or more references to persons in the Patent Act and the AIA revealed no clear trend — sometimes “person” plainly includes or excludes the government, and other times, as here, it might be read either way. The mere existence of some government-inclusive references doesn’t suffice to overcome the presumption that a government isn’t a “person” eligible to petition for AIA review proceedings.

Return to sender

As a result of the Supreme Court’s ruling, federal government agencies no longer can ask the USPTO (notably, another federal agency) to invalidate a patent that has already issued. They can challenge patent validity only as a defense in a patent infringement lawsuit.

Return Mail, Inc. v. U.S. Postal Service, No. 17-1594, June 10, 2019, U.S.

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