On June 10, the Supreme Court issued its latest decision involving a dispute over the meaning of America Invents Act (AIA)—a 2011 statute that radically reworked the patent system for the first time in half a century.
The case, Return Mail v. U.S. Postal Service, involved a dispute over whether the federal government is a “person” within the meaning of the AIA. The AIA permits “any person” to petition the Patent Office to conduct another round of review (in a form of a quasi-trial) on an already-issued patent. If the Court were to find that the federal government is a “person” then any government agency would be able to take advantage of these processes.
Conversely, if the government isn’t a person, it would be limited to defending itself against patent infringement in the U.S. Court of Federal Claims. While on the surface it appeared that the resolution of this question would be interesting only to patent attorneys, there were significant constitutional overtones that may be important in many subsequent cases.
The case arrived at the Supreme Court after an owner of a patent on methods of sorting and rerouting undeliverable mail attempted to license his invention to the Post Office, but was rebuffed. The patent owner then sued the Postal Service for royalties. (Because Return Mail was suing the federal government, the law limited it solely to money damages and foreclosed injunctive relief, which is a remedy available in patent suits between private parties). Instead of litigating the matter, the Postal Service turned to the Patent Office and requested that the patent be invalidated. The PTO agreed and cancelled Return Mail’s patent, which action the U.S. Court of Appeals for the Federal Circuit affirmed. In its petition to the Supreme Court, Return Mail argued that the Postal Service wasn’t authorized to seek Patent Office’s intervention because it wasn’t a “person” under the AIA. The justices ultimately agreed in a 6–3 decision by Justice Sonia Sotomayor. (Justices Stephen Breyer, joined by Justices Ruth Bader Ginsburg and Elena Kagan dissented).