Federal Government agencies not entitled to file IPR petitions

IPR petitionsPrecedential patent case law Return Mail, Inc. v. United States Postal Service, 17–1594 (6/10/2019)

The PTAB held that Postal Service had statutory “standing” and that the challenged claims were patent ineligible under 35 USC 101. Return Mail appealed. A majority of the Federal Circuit panel, consisting of Judges Prost and Wallach affirmed. Judge Newman dissented. See Return Mail, Inc. v. United States Postal Service, 2016-1502 (Fed. Cir. 8/28/2017). A six to three majority of the Supreme Court reversed and remanded.

Legal issue: 35 USC 311, statutory construction of “a person,” in 35 USC 311’s recitation “a person who is not the owner of a patent may file with the Office a petition.”

The Supreme Court majority concluded that 35 USC 311’s “person” did not include a federal agency, and therefore a federal agency was not entitled to file an IPR.

In the Leahy-Smith America Invents Act of 2011, 35 U. S. C. §100 et seq., Congress created the Patent Trial and Appeal Board and established three new types of administrative proceedings before the Board that allow a “person” other than the patent owner to challenge the validity of a patent post-issuance. The question presented in this case is whether a federal agency is a “person” able to seek such review under the statute. We conclude that it is not. [Return Mail, Inc.v. United States Postal Service, 17–1594, 587 U. S. ____ (6/10/2019).]

For the foregoing reasons, we hold that a federal agency is not a “person “who may petition for post-issuance review under the AIA. The judgment of the United States Court of Appeals for the Federal Circuit is therefore reversed, and the case is remanded for further proceedings consistent with this opinion. [Return Mail, Inc. v. United States Postal Service, 17–1594, 587 U. S. ____ (6/10/2019).]

The Supreme Court majority relied upon the definition of a person in 1 USC 1, which does not expressly include the Federal government in its definition of a “person” and the Court’s corresponding interpretive presumption that statutory recitations of a “person” excluded the Federal government.

The patent statutes do not define the term “person.” In the absence of an express statutory definition, the Court applies a “longstanding interpretive presumption that ‘person’ does not include the sovereign,” and thus excludes a federal agency like the Postal Service. Vermont Agency of Natural Resources v.United States ex rel. Stevens, 529 U. S. 765, 780–781 (2000); see United States v.Mine Workers, 330 U. S. 258, 275 (1947); United States v. Cooper Corp., 312 U.S. 600, 603–605 (1941); United States v. Fox, 94 U. S. 315, 321 (1877). [Return Mail, Inc. v. United States Postal Service, 17–1594, 587 U. S. ____ (6/10/2019).]

This presumption reflects “common usage.” Mine Workers, 330 U. S., at275. It is also an express directive from Congress: The Dictionary Act has since 1947 provided the definition of “‘person’ ” that courts use “[i]n determining the meaning of any Act of Congress, unless the context indicates otherwise.” 1 U. S.C. §1; see Rowland v. California Men’s Colony, Unit II Men’s Advisory Council, 506 U. S. 194, 199–200 (1993). The Act provides that the word “ ‘person’ . . .include[s] corporations, companies, associations, firms, partnerships, societies, and joint stock companies, as well as individuals.” §1. Notably absent from the list of “person[s]” is the Federal Government. See Mine Workers, 330 U. S., at 275 (reasoning that Congress’ express inclusion of partnerships and corporationsin §1 implies that Congress did not intend to include the Government). Thus, although the presumption is not a “hard and fast rule of exclusion,” Cooper, 312U. S., at 604–605, “it maybe disregarded only upon some affirmative showing of statutory intent to the contrary,” Stevens, 529 U. S., at 781. [Return Mail, Inc. v.United States Postal Service, 17–1594, 587 U. S. ____ (6/10/2019).]

 Author: Rick Neifeld, Neifeld IP Law, PC
5400 Shawnee Road, Suite 310
Alexandria, VA 22312-2300 USA