Federal Agencies are not "Persons" under the America Invents Act

By: Katherine E. Ruiz Díaz, Esq. and Francisco Dox, Esq.

July 16, 2019

In its latest term, the Supreme Court of the United States ("SCOTUS") issued several opinions on different issues on matters of intellectual property law. These issues range from the interpretation of specific language of a statute to the infringement of constitutional rights. As summarized below, federal agencies may not pursue the registration of a patent under any of the three (3) proceedings provided by the America Invents Act ("AIA") because federal agencies do not fall under the definition of a "person."

After the enactment of the AIA in 2011, Congress created the Patent Trial and Appeal Board and instituted three (3) types of proceedings that a person may resort to after the issuance or grant of a patent: (i) the inter partes review; (ii) the post-grant review; and (iii) the covered-business-method review ("CBM review"). The CBM review provision provides for changes to a patent that claims a method for performing data processing or other operations used in the practice or management of a financial product or service. In each of these proceedings, the petitioner has the burden of proving unpatentability before the Board by a preponderance of the evidence. The AIA provides that only "a person" other than the patent owner may file with the U.S. Patent and Trademark Office ("USPTO") a petition to institute a post-grant review or inter partes review of an issued patent.

In Return Mail, Inc. v. United States Postal Service, Return Mail, Inc., owned a patent that claimed a method for processing undeliverable mail. Subsequently, the United States Postal Service ("USPS") introduced an enhanced address-change service to process undeliverable mail, which Return Mail asserted infringed its patent. The USPS petitioned for ex parte reexamination of the patent, but the USPTO confirmed the patent's validity. Return Mail then sued the USPS in the Court of Federal Claims, seeking compensation for the unauthorized use of its invention. While that suit was pending, the USPS petitioned for CBM review. The Patent Board concluded that the subject matter of Return Mail's claims was ineligible to be patented and thus canceled the claims underlying its patent. The Court of Appeals for the Federal Circuit affirmed, concluding that the government is a "person" eligible to petition for CBM review.

In a 6-3 decision, SCOTUS reversed the Federal Circuit and held that the government is not a "person" capable of instituting the three AIA review proceedings. In the absence of an express definition of the term "person" in the patent statutes, the Court applied a longstanding interpretive presumption that "person" does not include the sovereign, and thus excludes federal agencies like the USPS. The USPS brought forth three main arguments. First, they argued that the AIA's reference to a "person" in the context of post-issuance review proceedings must include the government because other references to persons in the patent statutes do so. Second, they also argued that because federal officers have been able to apply for patents in the name of the United States since 1883, Congress must have intended to allow the government access to AIA review proceedings. Third, the USPS maintained that it must be a "person" under the AIA because, like other potential infringers, it is subject to civil liability and can assert a defense of patent invalidity. The Court rejected all three arguments.

On the first argument, the Court concluded that the mere existence of some government-inclusive references cannot make the affirmative showing required to overcome the presumption that the government is not a "person" eligible to petition for AIA review proceedings. On the second argument, the Court's view was that the government's ability to obtain a patent does not speak to whether Congress meant for federal agencies to participate as third-party challengers in AIA proceedings established only a few years ago. On the third argument, the Court found that federal agencies face lower and more calculable risks than nongovernmental actors, so it is reasonable for Congress to have treated them differently. The Court also noted that excluding federal agencies from AIA review proceedings also avoids the awkward situation of having a civilian patent owner defend their invention's patentability in a proceeding initiated by one federal agency and overseen by a different federal agency.

Goldman Antonetti & Córdova, LLC stands ready to assist you with any patent litigation proceeding, whether it be against government agencies and public entities, or against private individuals and/or entities. If you need further assistance in this area, please contact the following members of our firm:

Katherine E. Ruiz Díaz, Esq. 787.759-4108
Carlos Rodríguez Vidal, Esq. 787.759.4117
Rossell Barrios Amy, Esq. 787.759.4139
Solymar Castillo, Esq. 787.759.4213
Edgardo Colón, Esq. 787.759.4141
Annette Cortés, Esq. 787.759.4131
Rosanna Rivero, Esq. 787.759.4119
Wilda Rodríguez, Esq. 787.759.4214
Francisco Dox, Esq. 787.75 9.4220
Alicia Lamboy, Esq. 787.759.4144
Myrna Lozada, Esq. 787.759.4149
Gretchen Méndez, Esq. 787.759.4207
William Morales, Esq. 787.759.4103
Thelma Rivera, Esq. 787.759.4104
Arnaldo Villamil, Esq. 787.759.4148

Disclaimer:

Although the information included in this document may concern legal issues, it is not a legal opinion or professional advice and clients shall not use it as such. We assume no responsibility or liability of any kind for any information contained herein, and we expressly disclaim all liability for any claim for damages arising from the use, reference to, or reliance on, such information. If legal or other expert assistance is required, the services of a competent professional should be sought.

Goldman Antonetti & Córdova, LLC | 787-759-8000 | www.gaclaw.com