Return Mail, Inc. v. United States Postal Service

Headline: Under the America Invents Act, a federal agency is not a “person” eligible to institute post-issuance review proceedings challenging a patent’s validity.

Petitioner owns a patented method for processing undeliverable mail and claimed that Respondent infringed on that patent. Respondent responded, arguing Petitioner’s method was unpatentable and sought to cancel Petitioner’s patent claims under the review proceedings set forth by the America Invents Act (AIA). Petitioner filed suit in the Court of Federal Claims, and the Court of Appeals for the Federal Circuit affirmed the Patent Board’s holding that a federal agency is a “person” eligible to institute AIA review. On appeal, the Supreme Court reversed, holding that a federal agency is not a “person” able to petition for post-issuance review under the AIA. The Court reasoned that the use of “person” to include federal agencies in some provisions cannot overcome the general presumption against doing so when the term is used inconsistently throughout the statute. The Court further stated that it is not appropriate to refer to other provisions for a “settled” meaning of “person”. Because the AIA is too newly established to have its own executive interpretation, looking outside of the AIA would result in applying a meaning derived from a fundamentally different proceeding. Finally, the Court instructed that because federal agencies are not subject to the same penalties as non-governmental actors in infringement suits, it is not unreasonable for Congress not to afford them the same ability to petition for review. Therefore, Respondent is not a “person” eligible to institute patent review proceedings under the AIA. REVERSED and REMANDED.