SCOTUS to clarify ‘person’ requirements under AIA
The US Supreme Court will consider whether the government is a “person” that can petition to institute review proceedings under the America Invents Act (AIA).
America’s highest court granted certiorari in the matter of Return Mail v US Postal Service (USPS) on Friday, October 26.
Return Mail, a provider of ‘return mail solutions’, owns US patent number 6,826,548 for “the processing of mail items that are undeliverable due to an inaccurate or obsolete address for the intended recipient”.
According to Return Mail, the USPS implemented its own ‘return to sender’ technology which infringed the ‘548 patent, after refusing to enter into a licensing agreement with Return Mail.
The USPS is the government agency responsible for providing postal services in the US.
In response to the allegations, the USPS filed an invalidity suit at the US Patent and Trademark Office (USPTO), which then held that the ‘548 patent is directed to an abstract idea and is unpatentable.
Return Mail appealed against the decision, but in August 2017, the US Court of Appeals for the Federal Circuit affirmed the USPTO’s determination.
Return Mail filed a petition for rehearing, but this was denied in December.
In May, Return Mail filed a petition for a writ of certiorari.
Return Mail presented two questions: whether the government is a “person” who may petition to institute review proceedings under section 18 of the AIA, and whether a compensation action at the US Court of Federal Claims, whereby a patent owner is seeking a remedy for governmental use of a patent, constitutes a claim for patent infringement under the AIA.
Under section 18 of the AIA, a “person” who has been sued for patent infringement can challenge the validity of that patent through a covered business method (CBM) review at the US Patent Trial and Appeal Board. This is the action that the USPS took.
Two amicus briefs were filed in June, both expressing support for Return Mail.
One, filed by Kenneth Simon, an attorney who has also acted as a trial judge, claimed that the term “person” does not include sovereign entities, such as a government agency.
The other, filed by 15 patent law professors, said that the USPS is “trying to have it both ways” by wanting the “powers of sovereignty without the disadvantages, and the rights of a private party without the exposure to liability”.
The USPS responded in September, asking that the petition be denied. It claimed that “authorising federal agencies to petition for CBM review is consistent with Congress’s purpose in enacting AIA section 18”.
On Friday, the Supreme Court said that it would consider Return Mail’s first question only.
Speaking to WIPR, John O’Quinn, partner from Kirkland & Ellis in Washington, DC, noted that the case really concerns whether one agency of the government is able to challenge whether another agency erred in issuing a patent.
“If one federal agency and another disagree, they normally do not litigate over it,” he said.
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