In Return Mail, Inc. v. United States Postal Service et al., 587 U.S. ___ (2019) [hereinafter ‘Return Mail’ and ‘Postal Service’] the United States Supreme Court [hereinafter ‘the Court’] held that the statutory term ‘person’ does not include the federal government for any of the three America Invents Act post issuance patent review proceedings [hereinafter ‘post issuance review’]. As a result, the Postal Service never had the ability to petition for post issuance review by the U.S. Patent Trial and Appeal Board [hereinafter ‘the Board’]. Post issuance review comprises three statutory proceedings by which a person who does not own a particular patent may petition the Board to review this patent’s validity. 35 U.S.C. sections 311 and 321. Grounds for submitting a petition under each of the three post issuance review proceedings, and for which a patent can be challenged depends upon (i) petition filing deadlines or (ii) whether the patented invention qualifies as a ‘covered business method.’ The issue before the Court in was whether a federal agency is a ‘person’ capable of petitioning for post-issuance review.
Return Mail owns a patent for a method of processing undeliverable mail. Return Mail commenced litigation against the Postal Service for in the Federal Court of Claims for improperly using this patented method. Despite a re-examination by which the patent office confirmed the patent’s validity, the Post Service petitioned for post issuance review. The Board accepted the petition, and thereafter it concluded Return Mail’s patent was invalid and cancelled it. The Federal Circuit affirmed and held that that the Post Office was a person within the meaning of the post issuance review statutes. As a result, the Postal Service had originally properly petitioned for post issuance review and the patent remained cancelled.
The Court reversed and remanded the Federal Circuit’s decision. Among its reasons for so doing, the Court first applied the presumption that the word ‘person’ in a statute does not include the sovereign, and so federal agencies are excluded from its scope. On this point the Court noted that the federal Dictionary Act provides the definition of a statutory term unless (i) the context of a statute indicates otherwise, or (ii) absent an affirmative showing to the contrary. Here, the Dictionary Act does not include the federal government within the scope of the definition of ‘person.’ Furthermore, the Postal Service failed to provide an affirmative showing because, although federal agencies may obtain patents, this statutory right does not address a federal agency’s rights relating to a third party’s patent. Secondly, the rule of consistent usage is not applicable where the same word appears in conflicting statutory contexts as in this case. Thirdly, although the patent office may initiate ex parte patent validity proceedings, there is no statutory basis to conclude that the government may engage with private parties in an adversarial process such as post issuance review.
Finally, because the Federal Court of Claims provides no injunctive relief against federal agencies, government, then it is reasonable to exclude these agencies from an adversarial forum with private claimants. From this equitable perspective, the Court concluded that excluding federal agencies from the term ‘person’ avoids situations by which a private patent owner participates in an adversarial process both (i) initiated by a federal agency, and (ii) overseen by another federal agency.
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