Written By Christina E. Brule
On October 26, 2018, the United States Supreme Court granted certiorari to determine whether the government is a “person” who may petition to institute review proceedings under the America Invents Act. Previously, the United States Court of Appeals for the Federal Circuit upheld a decision by the Patent Trial and Appeal Board that stated the Government was a “person” and had standing to file the petition.
In 2011, Congress passed the Leahy-Smith America Invents Act (“AIA”), which created several quasi-adjudicatory proceedings, including the review of covered business method (“CBM”) patents, that the Patent Trial and Appeal Board (“PTAB”) oversees.
Return Mail, Inc. (“RMI”), founded in 2000, serves end-user companies and print mail service providers, which are companies likely to receive large quantities of return mail. RMI offers three products: RMI READ, a barcoding system that eliminates the handling of return mail; RMI On Site, a process that reduces the hours of labor required; and RMI reAddress, a search tool that updates your recipient address databases.
RMI patented RMI READ as a CBM patent: U.S. Patent No. 6,826,548 B2 (“the ’548 Patent”). Pursuant to § 18 of the AIA, a petition requesting CBM patent review of claims 39-44 of the ’548 Patent was filed by the United States Postal Service and United States of America (collectively “USPS”). RMI also brought suit against the United States for infringement of the ’548 Patent in the U.S. Court of Federal Claims.
The PTAB concluded that claims 39-44 of the ’548 Patent were unpatentable. Throughout the proceeding, RMI argued that USPS lacked standing to petition for CBM patent review. However, in its final written decision, the PTAB determined that USPS had standing under § 18 of the AIA. RMI appealed the final written decision of the PTAB.
On appeal, RMI put forth two alternative arguments: (1) USPS does not meet statutory standing requirements to petition for CBM review or (2) the ’548 Patent claims are not directed to ineligible subject matter and are patentable. The Supreme Court has granted certiorari to review the first argument.
RMI argued that because it brought suit under 28 U.S.C. § 1498, an eminent domain statute, the USPS is statutorily barred from petitioning for review of its CBM patent. The court disagreed, stating that “nothing in the text of § 18(a)(1)(B) indicates an intent to restrict ‘infringement’ to suits that fall under the Patent Act.”
Furthermore, RMI argued that the government has an implied license to practice patented inventions. Once again, the court disagreed. The court stated that “[w]hen the government has infringed, it is deemed to have ‘taken’ [a] patent license under an eminent domain theory.”
Thus, the court concluded that USPS had standing within the meaning of § 18(a)(1)(B).
The United States Court of Appeals for the Federal Circuit affirmed the decision of the PTAB. The court held that USPS had standing to institute review of a CBM patent under the AIA.
In addressing the dissent’s position, that the government is not a “person” within the meaning of § 18(a)(1)(B), the court stated: “we believe the better reading of ‘person’ in § 18(a)(1)(B) does not exclude the government.”
In the 2-1 decision of the court, Judge Newman dissented. The dissent argued that generally a “person” defined by statute does not include the United States and its agencies unless expressly stated in the statute.
Judge Newman offered multiple references in support of his interpretation: the language used in § 18(a)(1)(B) is “person;” The Dictionary Act, 1 U.S.C. § 1 excludes the government from the definition of the term “person”; and numerous cases to establish precedence that the “person” is “ordinarily construed to exclude the government.”
The USPS contends that the statutory context around the AIA indicates that the term “person” should be construed to include the government.
Return Mail notes that the question of whether the government constitutes a “person” under the AIA is important because federal agencies often respond to suits of infringement by filing petitions that invoke the jurisdiction of the PTAB.
This case continues the recent trend of the Supreme Court to take more patent-related cases.
28 U.S.C. § 1498(a).
AIA § 18, Pub. L. No. 112-29, 125 Stat. 284, 329-31 (2011) (CBM review).
Company Information, Return Mail, Inc. (last visited Nov. 10, 2018).
Gene Quinn, Federal Circuit says U.S. government is a ‘person’, can file CBM to challenge patents, IPWATCHDOG (Aug. 29, 2017).
Leesona Corp. v. United States, 599 F.2d 958 (Ct. Cl. 1979).
Patent Trial and Appeal Board, USPTO (last visited Nov. 10, 2018).
Return Mail, Inc. v. United States Postal Serv., 868 F.3d 1350 (Fed. Cir. 2017).
Steve Brachman, Supreme Court to Determine if Federal Government Is a ‘Person’ Eligible to Petition the PTAB, IPWATCHDOG (Oct. 31, 2018).
United States Postal Serv. v. Return Mail, No. CMB2014-00116, 2015 Pat. App. LEXIS 12853 (P.T.A.B. Oct. 15, 2015).
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