SCOTUS to consider whether government is a ‘person’
The US Supreme Court is due to hear oral arguments tomorrow in Return Mail v US Postal Service.
Tomorrow, February 19, the US’s highest court will consider whether the government is a “person” that can petition to institute review proceedings under the America Invents Act (AIA).
Return Mail is the owner of 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”.
The US Postal Service (USPS), a government agency responsible for providing postal services in the US, allegedly infringed the patent after implementing its own ‘return to sender’ technology and refusing to enter into a licensing agreement with Return Mail.
In response, the USPS filed a petition under the AIA’s procedures for the review of covered business method patents.
The US Patent and Trademark Office held that the ‘548 patent was directed to an abstract idea and is unpatentable. This decision was affirmed by the US Court of Appeals for the Federal Circuit.
In May last year, Return Mail filed a petition for a writ of certiorari and, in June the same year, two amicus briefs were filed, both expressing support for Return Mail.
One of the briefs, 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”.
According to Ryan Phelan, partner at Marshall, Gerstein & Borun in Chicago, an overwhelming majority of the briefs support the view of Circuit Judge Pauline Newman, who delivered the dissenting judgment in the Federal Circuit’s decision.
Newman noted that “because the government is immune from lawsuits and liability for infringement, it lacks the power that Congress has conferred upon infringers via the AIA to contest the validity of a patent in a covered business method proceeding”, said Phelan.
Return Mail’s petition was granted in October 2018.
Matthias Kamber, partner at Keker, Van Nest & Peters in San Francisco, said that Return Mails’ basic argument is relatively straightforward; that is, that The Dictionary Act (which instructs courts to apply definitions of certain common words to all statutes) doesn’t include the federal government in the definition of “person”.
In response, the federal government has argued that other parts of the Patent Act include the government as a “person”. For example, patent law usually uses the word “person” to describe an entity that infringes or holds a patent.
“Thus, the government argues, statutory context trumps the statutory definition. Indeed, to broadly rule otherwise here might threaten the government’s participation in the patent system as both a patent owner and defendant against infringement suits,” said Kamber.
For Kamber, the interesting sticking point relates to estoppel: Congress avoided giving defendants “the proverbial two bites at the apple” through the use of statutory estoppel.
Under estoppel, if the Patent Trial and Appeal Board doesn’t invalidate a patent, petitioners are prevented from asserting the same defences in court.
“Congress did not, however, address whether estoppel applied to the government as a defendant—only whether it applied in district court actions or before the International Trade Commission,” said Kamber.
He added that Congress seems to have left a gap that would allow the government to re-assert invalidity arguments in a parallel proceeding before the Court of Federal Claims (which has exclusive jurisdiction to hear patent infringement claims against the government).
“In short, the statute leads to an anomalous result whereby the federal government could get two bites at the apple when others could not. While that does not appear deliberate on the part of Congress, it may not trouble the Supreme Court,” concluded Kamber.
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:
USPTO may force foreign TM applicants to use US attorneys
WiLAN loses patent dispute after failing to produce evidence
