U.S. Supreme Court Decides Government is a Not a "Person," and Bars It From Challenging Patents in AIA Post-Grant Proceedings

Monday, June 24, 2019

The U.S. Supreme Court decided in Return Mail, Inc. v. U.S. Postal Service, No. 17-1594, 2019 WL 2412904 (June 10, 2019) that the Government is not a “person” capable of instituting a proceeding under the Leahy-Smith America Invents Act (AIA) of 2011.  That Act created several post-issuance proceedings to allow a “person” other than the patent owner to challenge the validity of an issued patent.  Those proceedings are for inter partes review (IPR) (https://bw-iplaw.com/inter-partes-review-ipr), post grant review (PGR) (https://bw-iplaw.com/post-grant-review-pgr), and covered business method (CBM) (https://bw-iplaw.com/covered-business-method-cbm).  Justice Sotomayor, writing for the majority, found that in the absence of an express definition of the term “person” in the patent statutes, a longstanding interpretive presumption that excludes federal agencies (including the U.S. Postal Service) applies.  The majority’s decision strips federal agencies of an important and increasingly utilized tool for defending against claims of infringement.  Justice Breyer, writing for the dissent, pointed out that the term “person” has already been interpreted to apply to the Government in several instances (despite the presumption relied upon by the majority), including allowing the Government to: maintain patents; sue and be sued for infringement; invoke certain infringement defenses; invoke reexamination; and defend its patents in AIA proceedings.