Return Mail, Inc v. United States Postal Service and the United States

Whether the government is a “person” who may petition to institute review proceedings under the America Invents Act, 112 P.L. 29, 125 Stat. 284.

Petitioners sued the United States Postal Service for patent infringement. The United States responded by challenging the validity of the patent, and the Patent Office upheld the patent's validity in an ex parte proceeding. Under the America Invents Act, The Patent Trial and Appeals Board has authority to review patent challenges, and after a final written order is administered, parties are estopped from seeking further review of the patent validity by Federal Courts or the International Trade Commission using the same challenges previously addressed by the Board. The AIA contains an exception for reviews of Covered Business Methods patent appellants who are (1) "persons" (2) sued for patent infringement or charged with patent infringement. The United States sought such review by the Board after the Patent Office upheld the validity of Petitioner's Patent. The Board invalidated Petitioner's patent in a CBM proceeding, and the decision was upheld by the Federal Circuit. Petitioners sought review in order to determine whether the definition of "person" within the AIA excludes the United States government and therefore prohibits the United States from seeking review of a decision in the Patent Trial and Appeals Board.