Term: 2018
Docket: 17-1594
Return Mail Inc. v. U.s. Postal Service
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17-1594 RETURN MAIL, INC. V. UNITED STATES POSTAL SERVICE DECISION BELOW: 868 F3d 1350 LIMITED TO QUESTION 1 PRESENTED BY THE PETITION. CERT. GRANTED 10/26/2018 QUESTION PRESENTED: The government cannot be sued for patent infringement under the Patent Act, 35 U.S.C. §§ 1 et seq., because it can take "a license to use the inventio[n]" by "exert[ing] the power of eminent domain." Crozier v. Fried. Krupp Aktiengesellschaft, 224 U.S. 290, 305 (1912). Thus, a patent owner's exclusive remedy for governmental use is to pursue a compensation action under 28 U.S.C. § 1498(a) at the U.S. Court of Federal Claims. In 2011, Congress enacted the Leahy-Smith America Invents Act (AIA), which allows a "person" who has been sued for patent "infringement" to challenge the patent's validity through a covered business method (CBM) review before the Patent Trial and Appeal Board. Respondent, the U.S. Postal Service, petitioned for CBM review of Petitioner's patent after Petitioner filed suit under§ 1498(a). The Board instituted the review, concluding that it has authority to adjudicate proceedings initiated by the government, and later issued a final decision invaliding Petitioner's patent. The Federal Circuit affirmed, over a dissenting opinion. The questions presented are: 1. Whether the government is a "person" who may petition to institute review proceedings under the AIA. 2. Whether a§ 1498(a) action for the eminent domain taking of a patent license by the government is a suit for patent "infringement" under the AIA. LOWER COURT CASE NUMBER: 2016-1502
In the case of Return Mail Inc. v. U.S. Postal Service, 2018, the Supreme Court ruled that a federal agency like USPS does not qualify as a "person" who can challenge the validity of a patent under America Invents Act (AIA). The dispute began when Return Mail Inc., which held a patent for processing undeliverable mail, sued USPS for infringement after it introduced an enhanced address change service system without obtaining license from them. In response to this lawsuit, USPS petitioned for review of Return Mail's patent under AIA’s covered business method review procedure - designed to weed out patents that should never have been granted because they claimed non-patentable subject matter or were obvious in light of prior art - and won at both Patent Trial and Appeal Board and Federal Circuit level leading to invalidation of Return Mail's patent claim. However, on appeal by Return Mail Inc., Supreme Court reversed these decisions stating that government is not included in definition of 'person' capable to institute such proceedings.
In the dissenting opinion for Return Mail Inc. v. U.S. Postal Service, Justice Sotomayor argued that the majority's interpretation of "person" in the America Invents Act (AIA) was too narrow and inconsistent with its usage throughout patent law history. She contended that there is no clear indication from Congress to exclude federal agencies from being considered a 'person' under AIA, especially when they can be sued for infringement and have been granted patents themselves before this ruling. Furthermore, she pointed out that excluding federal agencies could potentially hinder their ability to challenge patents which may obstruct their operations or public services delivery due to alleged infringements.
