Return Mail, Inc. v. United States Postal Service
Issues
Is the government a “person” who can petition the United States Patent and Trademark Office to review patent validity under the Leahy-Smith America Invents Act?
The Supreme Court will determine whether the government is a “person” for the purposes of post-issuance review proceedings under the Leahy-Smith America Invents Act (“AIA”). Return Mail, Inc. (“Return Mail”), the owner of a patent for processing undeliverable mail items, argues that Congress intended the AIA to incorporate a specific meaning of the term “person,” supported by statute and judicial precedent, that excluded the government, and would thus prohibit government agencies from initiating AIA review proceedings. The United States Postal Service (“Postal Service”) counters that the statutory context, as supported by historical evidence and statements made by the Supreme Court, reveals Congress’s intent to include government agencies in the term “person” for the purposes of the AIA. The United States Court of Appeals for the Federal Circuit ruled that the term “person” in the AIA did not exclude the government, and that the government could petition for patent review under the AIA. Return Mail is now appealing that decision in a case that will have implications for patent litigation, the estoppel doctrine, and executive agencies.
Questions as Framed for the Court by the Parties
Whether the government is a “person” who may petition to institute review proceedings under the Leahy-Smith America Invents Act.
In this case, the United States Postal Service (“Postal Service”) has challenged the validity of Return Mail, Inc.’s (“Return Mail”) patent for processing undeliverable mail items. Return Mail, Inc. v. United States Postal Serv., 868 F.3d 1350, 1353 (Fed. Cir.
Edited by
Additional Resources
- Rick Bisenius: Supreme Court Grants Return Mail’s Petition for Certiorari in Return Mail, Inc. v. United States Postal Serv., Fish & Richardson Post-Grant Report (Oct. 31, 2018).
- Judy K. He, Defining “Person” in the AIA: SCOTUS Grants Cert in Return Mail, Inc. v. United States Postal Service, et al., The National Law Review (Nov. 12, 2018).
- Steve Brachmann, Supreme Court to Determine if Federal Government Is a ‘Person’ Eligible to Petition the PTAB, IP Watchdog (Oct. 31, 2018).