Discussion Board

Is Uncle Sam a “Person”? Supreme Court Grants Cert to Consider Government Standing in CBM Proceedings

Team Contact: Andrew B. Turner

Return Mail Inc. v. United States Postal Service, Case No. 17-1594 (U.S. Oct. 26, 2018)

The U.S. Supreme Court granted certiorari in a case concerning a government agency’s standing to challenge the patentability of an issued patent by filing a petition under the America Invents Act’s Transitional Program for Covered Business Method Patents (“CBM”). The case raises interesting issues involving standing under the AIA and the limits of sovereign immunity.

The petitioner, Return Mail, Inc., owns U.S. Patent No. 6,826,548, covering a process for handling returned and undeliverable mail. Return Mail filed an action against the United States Postal Service (“USPS”) in the U.S. Court of Claims under 28 U.S.C. § 1498(a) based on the USPS’ alleged infringement of the ‘548 patent. The USPS then filed a petition for CBM review at the Patent Trial and Appeal Board (PTAB). Under the AIA, a “person” who has been “sued for infringement” or “charged with infringement” of a business method patent may file a petition for CBM review under certain circumstances. AIA § 18(a)(1)(B). The PTAB ruled that the § 1498 action was a suit for “patent infringement” triggering jurisdiction for CBM review and found the challenged claims unpatentable. CBM2014-00116, Paper 11 at 15-18; Paper 41 at 12. The Federal Circuit affirmed in a 2-1 decision.

In its Supreme Court petition, Return Mail argues that: 1) the United States government is not a “person” eligible to file a petition for post grant review under the AIA, since the term “person” generally is not interpreted to include the government unless the statute expressly so provides (and the AIA does not define “person” to include the government); and 2) the USPS lacks standing to file a CBM petition because, like all government agencies, it has the power to practice under a U.S. patent by invoking its power of eminent domain. As a result, Return Mail contends that the USPS is not subject to a threat of infringement that is necessary to establish jurisdiction under the AIA. However, the Supreme Court granted cert only on Question 1.

The Court has not yet scheduled oral argument in the case.