Justia Summary

The Leahy-Smith America Invents Act (AIA) of 2011 created the Patent Trial and Appeal Board, 35 U.S.C. 6(c), which conducts administrative review proceedings that enable a “person” to challenge the validity of a patent post-issuance: “inter partes review,” “post-grant review,” and “covered-business-method review” (CBM review). The Board either confirms or cancels the patent claims. Any dissatisfied party may then seek judicial review in the Federal Circuit. A patent can also be reexamined either in federal court during a defense to an infringement suit or in an ex parte reexamination by the Patent Office.

USPS introduced an enhanced service to process undeliverable mail, which Return Mail asserted infringed its patent. USPS petitioned for ex parte reexamination. The Patent Office confirmed the patent’s validity. Return Mail then sued, seeking compensation for the unauthorized use of its invention. USPS petitioned for CBM review. The Patent Board concluded that the subject matter of Return Mail’s claims was ineligible to be patented. The Federal Circuit affirmed.

The Supreme Court reversed. The government is not a “person” capable of instituting AIA review proceedings. Absent an express definition of “person” in the patent statutes, the Court applied a longstanding interpretive presumption that “person” does not include the sovereign, citing common usage, and the Dictionary Act. There are many references to “person[s]” in the Patent Act and the AIA: Sometimes “person” plainly includes or excludes the government, but sometimes it might be read either way. The mere existence of some government-inclusive references and the government’s ability to obtain a patent do not overcome the presumption that the government is not a “person” eligible to petition for AIA review. Congress may have had good reason to authorize the government to initiate a hands-off ex parte reexamination but not to become a party to the AIA’s full-blown adversarial proceeding.