Government is not a ‘person’ in AIA: SCOTUS
The US Supreme Court has ruled that a federal government agency does not qualify as a “person” who can challenge the validity of a patent.
The court delivered its majority decision in Return Mail v United States Postal Service today, June 10, overturning the US Court of Appeals for the Federal Circuit’s 2017 ruling that the government was a person under the America Invents Act (AIA).
Return Mail had appealed against a US Patent and Trademark Office decision to cancel one of its patents after the United States Postal Service filed a petition for an ex parte review of the patent.
Delivering the court’s decision on behalf of Justices John Roberts, Clarence Thomas, Samuel Alito, Neil Gorsuch and Brett Kavanaugh, Justice Sonia Sotomayor said that the court applied a presumption that ‘person’ did not include “the sovereign”.
This presumption could only be overridden if there was an “affirmative showing of statutory intent to the contrary,” the court said.
According to Justice Sotomayor, the onus was on the Postal Service to prove that there was such intent in the AIA.
The word ‘person’ is used in the AIA in “multiple conflicting ways”, the court found. There was, therefore, little reason to think that “the mere existence of some Government-inclusive” uses of the word ‘person’ meant that Congress intended for this to be applied in every case.
The Postal Service had argued that it must be eligible to petition for patent review proceedings as, like any other potential infringer, it is subject to civil liability.
In its judgment, however, the court said that the case had no bearing on the Postal Service’s ability to defend an infringement suit.
“Once sued, an agency may, like any other accused infringer, argue that the patent is invalid, and the agency faces the same burden of proof as a defendant in any other infringement suit,” Justice Sotomayor observed.
“We see no oddity, however, in Congress’ affording nongovernmental actors an expedient route that the government does not also enjoy for heading off potential infringement suits,” the court said.
Nongovernmental actors faced far greater risk in infringement suits, such as the possibility of injunctive relief preventing them from using a patented technology, Justice Sotomayor said.
“Because federal agencies face lower risks, it is reasonable for Congress to have treated them differently,” the judgment read.
In a dissenting opinion, Justice Stephen Breyer said that it would have made “little sense” for the word ‘person’ not to mean a government agency in the legislation.
Responding to the majority decision, Justice Breyer said that “infringement suits against the government can threaten to injure government interests even absent the threat of injunctive relief”.
Justice Breyer said that this fact “runs counter to the majority’s efforts to find an explanation for why Congress would have wanted to deny government agencies the ability to invoke the speedier administrative procedures established by the AIA”.
Justices Elena Kagan and Ruth Bader Ginsburg joined in Breyer’s dissenting opinion.
Richard Rainey, partner at Covington & Burling, who co-led Return Mail's team in the Supreme Court proceedings, said that the decision was a "significant victory for Return Mail and for all technology companies and patent holders that may find themselves in the government's crosshairs". “By excluding federal agencies from AIA review proceedings, the Court’s decision limits the government’s ability to bring duplicative challenges to the validity of privately-owned patents,” Rainey added. Did you enjoy reading this story? Sign up to our free daily newsletters and get stories like this sent straight to your inbox.
Today's top stories:
Artist seeks cancellation of Frida Kahlo TM
Lego sues over ‘Minifigure’ copies
SCOTUS decision limits govt’s ability to defend itself in patent suits: lawyers
