The US Supreme Court heard oral arguments Tuesday in Return Mail Inc. v. United States Postal Service, which will determine if the government is able to initiate review proceedings for patents.
Return Mail Inc. had filed a patent infringement suit against the US Postal Service (USPS). USPS initiated a review proceeding with the Patent Trial and Appeal Board to invalidate the patent. Return Mail argues that the USPS cannot initiate the proceeding because the Leahy-Smith America Invents Act (AIA) only allows a “person” to initiate the proceedings, which does not include the government.
Return Mail’s counsel Beth Brinkmann argued that the use of the term “person” in the AIA did not include the government due to the dictionary definition of person, Congress designated the district court and International Trade Commission as jurisdictions for government patent litigation, and the government is still able to attack bad patents. Instead of initiating the review proceedings, Brinkmann argued the government should instead direct the director of the Patent and Trademark Office (PTO) to initiate a reexamination sua sponte. Brinkmann also argued the government is also not prevented from using the patent, and Return Mail would have to initiate court proceedings to receive compensation for the government’s use of the patent. Members of the court asked several questions regarding why the government should not be allowed the same defenses of patent infringement as other persons. They also questioned how exactly a government agency would go about getting the director to initiate a reexamination.
When questioning USPS’s counsel, Malcolm Stewart, members of the court asked several questions regarding how allowing the government to initiate the proceeding would allow potential cases in which a federal agency would challenge the PTO decision in court. This would then result in two executive branch agencies on opposing sides in a court case. Members of the court also called the assumption that “person” does not include the government unless there is evidence showing otherwise.