Case No. 17-1594, Fed. Cir.
Preview by Michelle Divelbiss, Online Editor
It has been almost a decade since the Supreme Court decided that corporations are people, and now the Court looks to whether the government is a “person.” Under the Leahy-Smith America Invents Act (“AIA”), patent disputes can be adjudicated administratively through post-grant review, inter partes review, and a transitional covered business method (“CBM”) review. The AIA allows “a person who is not the owner of a patent [to] file . . . a petition to institute” the post-grant review or inter partes review proceedings to challenge the validity of a patent. 35 U.S.C. §§ 311(a), 321(a) (2012). To file a petition for a CBM review, “a person” or their “real party in interest or privy” must have been sued for or charged with patent infringement. AIA, Pub. L. No. 112-29, § 18(a)(1)(B), 125 Stat. 284, 330 (2011). The question before the Court is whether the government is a “person” who can file a petition to institute these methods of review.
Petitioner Return Mail Inc. (“Return Mail”) obtained a patent on an invention that expedites the process of identifying the correct destination address for undeliverable mail by scanning barcodes instead of relying on the alphanumeric address. The United States Postal Service (“USPS”) was interested in a license agreement for the use of this invention. During negotiations to work out an agreement, USPS announced the use of its own system to expedite the handling of undeliverable mail. After Return Mail informed USPS that the use of that system would infringe on its patent, USPS filed a petition to institute an ex parte review of Return Mail’s patent. (An ex parte review is a nonadversarial proceeding in which someone other than the patent owner asks the Patent Office to review the patentability of an issued patent.) The Patent Office found that Return Mail’s invention was patentable.
Some years later, Return Mail sued USPS for infringing on its patent. That suit lasted three years, and USPS subsequently petitioned the Patent and Trademark Appeals Board (“Board”) for a CBM review, alleging that the invention was not patentable. Because USPS is an “independent establishment” of the U.S. government, the government is the real party in interest. Return Mail claimed that the government was not a “person” and could therefore not institute the CBM proceeding. The Board disagreed with Return Mail’s argument; instead, the Board indicated that because the government was sued over the patent, it had standing to seek the review. Years later, the Board found the patent invalid based on patent-ineligible subject matter.
The Court of Appeals for the Federal Circuit affirmed the Board’s decision, further stating that if the government is not a “person” for purposes of the AIA, it is for the legislature to clarify, not the courts. Now, the Supreme Court is gearing up to weigh in on yet another statutory interpretation involving personhood. Law professors have submitted briefs as amici curiae supporting Petitioner Return Mail, including The George Washington University Law School’s own Dmitry Karshtedt.