Supreme Court Says Government Can't Challenge Patents Through AIA Proceedings

A federal agency is not a "person" who may petition for post-issuance review under the Leahy-Smith America Invents Act (AIA) of 2011, the Supreme Court held June 6, 2019. Return Mail Inc. v. United States Postal Service, U.S., No. 17-1594, 06/10/2019.

Writing for the 6-3 majority, Justice Sotomayor explained that the AIA provides that only "a person" may file a petition for one of the three post-issuance review proceedings before the Patent Trial and Appeal Board (PTAB). She went on to state that since the patent statutes do not define the term "person," the Court must apply the presumption that the term "person" does not include the U.S. Government. The United States Postal Service, she says, failed to rebut this presumption. Justice Breyer's dissenting opinion (joined by Justices Ginsburg and Kagan) argued that the legislative history, among other things, demonstrates that Congress intended for the word "person" to include the Federal Government.

The decision is consistent with the position advocated in AIPLA's amicus brief filed in this case.

Presumption

Citing several cases as precedent, the Court stated that the absence of an express definition for "person" in the patent statutes lead the Court to apply the "interpretive presumption that 'person' does not include the sovereign[.]" Further, the Court noted that this presumption reflects "common usage[,]" that the Dictionary Act's definition of "person" does not include the Federal Government, and that the presumption may be disregarded only if there is an "affirmative showing of statutory intent to the contrary[.]"

Consistent-Usage Principle

Justice Sotomayor addressed the Postal Service's contention that the AIA's reference to "person" in the context at issue includes the Federal Government because references to persons in other parts of the patent statutes appear to do so. This argument, known as the Consistent-Usage Principle, yields to context, says Sotomayor. She points out that in the 18 different places where the patent statutes reference "person[s]," there is no unifying thread. Thus, there is "no reason to think that 'person' must mean the same thing" in two different parts of the statute. Justice Sotomayor went on to say that the mere existence of some of the statutes' Government-inclusive references fails to make the affirmative showing necessary to rebut the presumption that the Government is not a person eligible to petition for AIA review proceedings.

Government's History with Patent System

The Postal Service then argued that because federal officers have been able to apply for patents in the name of the United States for over a century, Congress intended to allow the Government access to AIA review proceedings. However, the Court determined that this had no bearing on whether Congress meant for the Government to participate as a third-party challenger in AIA review proceedings.

Finally, the Postal Service argued that it must be a "person" who may petition for AIA review since it is subject to civil liability and can assert a defense of patent invalidity. The Postal Service explained that it would be incongruous to deny it the ability to "challenge a patent de novo before the Patent Office" while allowing it to challenge a patent as an infringement defense. However, the Court countered that it was reasonable to believe that Congress offered non-governmental actors an expedient route for heading off potential infringement suits, while denying this same route to the Government, because federal agencies "face lower risks" as compared to non-governmental actors.  

Dissenting Opinion

In his dissenting opinion, Justice Breyer argued that the presumption that the term "person" does not include the Federal Government was overcome because the purpose, subject matter, context, and legislative history of the patent statutes indicated that Congress intended the term "person" to include the Government.