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 10, 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 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 Government. The 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.