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Return Mail, Inc. v. U.S. Postal Service

Federal Agencies May Not Petition for AIA Post-Issuance Review

Return Mail, Inc. v. U.S. Postal Service, __ U.S. ___, 2019 WL 2412904 (June 10, 2019) (SOTOMAYOR, J. (joined by Roberts, C.J., Thomas, Alito, Gorsuch, Kavanaugh, J.J.); Dissent by Breyer, J. (joined by Ginsburg, Kagan, J.J.)) (Fed. Cir.: PROST, Newman (dissenting), Wallach / PTAB) (5 of 5 stars)

Supreme Court holds that a federal agency is not a “person” who may petition for review of a patent post-issuance per 35 U.S.C. §§ 311(a), 321(a) or AIA § 18(a)(1)(B), and reverses/remands Federal Circuit’s contrary determination (868 F.3d 1350 (Fed. Cir. 2017)). Per Vermont Agency of Natural Resources, 529 U.S. 765 (2000), there is a “longstanding interpretive presumption that ‘person’ does not include the sovereign [which would include the Postal Service as a federal agency].” The opinion rejects the Postal Service’s argument that this general presumption should have less application here, where treating the government as a “person” would confer a benefit (i.e., access to AIA post-grant proceedings). It also rejects the Postal Service’s argument that there is sufficient contextual support in the AIA to upend the presumption. That the government may apply for and obtain patents of its own “implies nothing about what a federal agency may or may not do following the issuance of someone else’s patent.” Op. at 11. Similarly, provisions that might permit the government to possess intervening rights against infringement claims do not establish the government’s access to AIA post-grant proceedings. The opinion also rejects the Postal Service’s citation to MPEP statements treating the government as a person who may request ex parte reexamination, finding those statements to have “no direct relevance” because “ex parte reexamination is a fundamentally different process than an AIA post-issuance review proceeding.” Op. at 14. The opinion also sees “no oddity” in an outcome that permits the government to be a defendant in a patent suit, but not to have access to AIA post-issuance review.

Dissent: Justice Breyer would have held that the context surrounding the AIA indicated an intent that the government be a “person” for purposes of access to AIA post-issuance review.

KEYWORDS: STATUTORY INTERPRETATION; AMERICA INVENTS ACT; COVERED BUSINESS METHOD; INTER PARTES REVIEW; POST-GRANT REVIEW