Introduction

Return Mail, Inc. v. Postal Service, 139 S. Ct. 1853 (2019), addressed a pivotal question in patent law: whether a federal agency qualifies as a "person" under the America Invents Act (AIA) and is thus eligible to petition for post-issuance patent review proceedings. The case centered around Return Mail, Inc., the holder of U.S. Patent No. 6,826,548 (the ’548 patent), which the United States Postal Service (Postal Service) challenged through the Covered-Business-Method (CBM) review process established by the AIA. The Supreme Court ultimately held that federal agencies do not qualify as "persons" for the purposes of initiating these specific AIA review proceedings.

Summary of the Judgment

The Supreme Court, through the opinion delivered by Justice Sotomayor, affirmed the lower court’s decision that the Postal Service does not qualify as a "person" under the AIA to petition for CBM review of Return Mail’s patent. The Court emphasized the longstanding interpretive presumption that the term "person" excludes the sovereign, including federal agencies, unless Congress clearly indicates otherwise. Consequently, the Federal Circuit's interpretation allowing the Postal Service to challenge the patent was overturned, and the case was remanded for further proceedings consistent with the Supreme Court’s opinion.

Analysis

Precedents Cited

The Court leaned heavily on established precedents that define "person" as excluding the sovereign government. Cases such as Vermont Agency of Natural Resources v. United States ex rel. Stevens, UNITED STATES v. MINE WORKERS, UNITED STATES v. COOPER CORP., and UNITED STATES v. FOX were instrumental in shaping the Court’s reasoning. These cases collectively support the notion that federal agencies are not encompassed within the statutory definition of "person" unless explicitly stated otherwise by Congress.

Vermont Agency of Natural Resources v. United States ex rel. Stevens, 529 U.S. 765 (2000)
UNITED STATES v. MINE WORKERS, 330 U.S. 258 (1947)
UNITED STATES v. COOPER CORP., 312 U.S. 600 (1941)
UNITED STATES v. FOX, 94 U.S. 315 (1877)

Legal Reasoning

The Court applied the interpretive principle that "person" typically excludes the federal government unless Congress has clearly indicated an intention to include it. The majority reasoned that the absence of the Government in the statutory definitions of "person" within the Patent Act suggests that the Government should not be construed as a "person" for purposes of initiating AIA review proceedings. Additionally, the Court examined the context and consistent usage of the term "person" across different sections of the Patent Act, finding no compelling indication that the Government should be included in the specific context of AIA post-issuance reviews.

The dissent, led by Justice Breyer, challenged this interpretation by highlighting the Government's involvement in other facets of patent law, such as the ability to obtain and maintain patents. The dissent argued that statutory context and legislative intent pointed towards an inclusive definition of "person" that encompasses federal agencies.

Impact

This judgment has significant implications for both federal agencies and patent holders. By excluding federal agencies from being "persons" eligible to petition for AIA post-issuance reviews, the ruling limits the tools available to government entities to challenge potentially invalid patents administratively. This decision reinforces the exclusive position of private parties in utilizing AIA review mechanisms, potentially affecting how federal agencies engage with patented technologies and defend against infringement claims.

Moreover, the ruling underscores the importance of precise statutory language and the courts' deference to legislative intent. It may prompt Congress to clarify the definition of "person" in future legislation if there is a desire to include federal agencies in such administrative proceedings.

Complex Concepts Simplified

America Invents Act (AIA) Post-Issuance Review Proceedings

The AIA introduced several administrative processes allowing third parties to challenge the validity of a patent after it has been granted. These include Inter Partes Review (IPR), Post-Grant Review (PGR), and Covered Business Method (CBM) Review. Each process provides a mechanism for ensuring that patents meet the necessary legal standards of novelty and non-obviousness.

Definition of "Person"

In legal terms, "person" can refer to both natural persons (individuals) and juridical persons (entities like corporations). However, this definition typically excludes sovereign entities, such as federal agencies, unless explicitly included in the statutory language.

Presumption Against Including the Government as a "Person"

Courts often operate under the presumption that the term "person" does not include sovereign entities like the federal government. This presumption can only be overturned if there is clear evidence of Congressional intent to include such entities in the statutory definition.

Covered-Business-Method (CBM) Review

CBM Review is a specific type of post-grant review under the AIA that focuses on patents related to financial products or services. It allows third parties to challenge the validity of business method patents through an administrative process that is typically quicker and less costly than traditional litigation.

Conclusion

The Supreme Court's decision in Return Mail, Inc. v. Postal Service reinforces the traditional legal understanding that federal agencies do not qualify as "persons" under the America Invents Act for the purpose of initiating post-issuance patent review proceedings. This exclusion limits the avenues available to the government in administratively challenging patents and delineates a clear boundary between sovereign entities and private parties in the realm of patent law. The ruling emphasizes the judiciary's role in adhering to legislative intent and interpretive presumptions, thereby shaping the operational dynamics of patent challenges in the United States.

Moving forward, federal agencies will need to rely on alternative legal strategies, such as asserting defenses of patent invalidity within infringement lawsuits, rather than leveraging administrative review processes established by the AIA. Additionally, this decision may influence future legislative efforts to explicitly define "person" within patent statutes, potentially altering the landscape of administrative patent challenges.