Can a government agency challenge a patent in the United States? Return Mail v. USPS

A patent is a set of exclusive rights granted to the inventor of a new invention. To be granted a patent in the United States an inventor must file a patent application with the United States Patent and Trademark Office. The patent application must demonstrate that the invention disclosed in the application meets all the requirements for a patent to be granted. If the patent application demonstrates that the invention disclosed in the application is new useful and not obvious, the United States Patent and Trademark Office will grant the inventor a patent on the invention. A patent gives the owner of the patent exclusive right to make, use, sell or import the invention into the United States. A patent will typically last 20 years from the earliest filing date, however even after a patent is granted the validity of the patent can be challenged.

The Leahy–Smith America Invents Act is a United States federal statute that was signed into law on September 16, 2011. The America Invents Act introduced created several new quasi-adjudicatory proceedings before the United States Patent and Trademark Office for determining the patentability of issued patent claims. These proceedings include inter partes review (“IPR”), post-grant review (“PGR”), and review of Covered Business Method patents (“CBM review”). Prior to this someone who wanted to challenge the validity of a patent had more limited options.

Like any new law in the United States, people that disagree with the law challenge the definition of every term that is ambiguous. A point of contention in the America Invents Act is who may challenge the validity of a patent. The law states that “a person” may institute an action to challenge the validity of a patent. United States law generally recognizes “a person” to mean both a private individual and a corporation, but is the United States government, or one of its agencies, considered a person under the law?

This question is the heart of the case Return Mail, Inc. v. U.S. Postal Service 868 F.3d 1350 (Fed. Cir. 2017). Return Mail owns U.S. Patent No. 6,826,548 (“‘548 patent”) which is directed to the processing of mail items that cannot be delivered due to an inaccurate or obsolete address for the intended recipient.

In February 2011, after trying unsuccessfully to license the ‘548 patent to the United States Postal Service, Return Mail filed suit in the Claims Court against the United States. It alleged under 28 U.S.C. § 1498(a) that the United States, through the Postal Service’s actions, had engaged in the unlicensed and unlawful use and infringement of the invention claimed in the ‘548 patent. In April 2014, the Postal Service filed a petition with the United States Patent and Trademark Office for CBM review of the ‘548 patent. The Patent Trial and Appeal Board of the United States Patent and Trademark Office held that the ‘548 patent was invalid because the invention was ineligible subject matter under 35 U.S.C. § 101.

Return Mail appealed to the Court of Appeals for the Federal Circuit on various grounds including that the government does not have standing to institute a CBM review. America Invents Act § 18(a)(1)(B) provides that “[a] person may not file a petition for [CBM review] unless the person or the person’s real party in interest or privy has been sued for infringement of the patent or has been charged with infringement under that patent.” Return Mail argued that it did not sue for patent infringement under 35 U.S.C. § 271(a), but rather governmental taking under 28 U.S.C. § 1498(a), therefore the America Invents Act § 18 does not apply. The Federal Circuit held that being sued under § 1498(a) is broad enough to be sued for infringement under § 18, therefore the Postal Service did have standing to institute a CBM review. The Federal Circuit then went on to say that the definition of a person in § 18 included the government.

Return Mail appealed this decision the United States Supreme Court. Arguments were heard in February 2019, the Supreme Court’s decision will determine whether the United States government or its agencies can use the America Invents Act to invalidate patents.

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