Federal Government Prohibited from Raising AIA Patent Challenges

Originally published by Peggy Keene.

 

 

Earlier this week, the United States Supreme Court decided that the federal government may not challenge the validity of U.S. patents using the three patent review processes (inter partes, post-grant, and covered business method review) introduced by the America Invents Act (“AIA”) in 2012.  In Return Main, Inc. v. United States Postal Service, the Supreme Court held that the U.S. federal government does not qualify as a “person” as necessitated by 35 U.S.C. Section 311 or 35 U.S.C Section 321.

Return Main v. USPS Holds Government Not A “Person” Per AIA Challenge Requirements

Although the federal government has rarely initiated AIA patent review proceedings since the introduction of the AIA patent review, experts predict that patent holders will likely welcome the Supreme Court’s recent holding with open arms because it will minimize the ability of an actor as powerful as the United States from challenging patents via this avenue.

In Return Main v. USPS, the Supreme Court specifically held that the U.S. Postal Service was not able to demonstrate that it, and consequently the federal government, could overcome the presumption that “person” as dictated by U.S. code does not include the sovereign.  Further, the Supreme Court held that despite the long history of federal participation in the patent system, such activity was not sufficiently persuasive to prove that Congress intended for the federal government to be able to participate in AIA patent review proceedings as a “person.”

Court in Return Main v. USPS Reasons that U.S. Government Enjoys Sovereign Immunity, So Can’t Qualify as a Person

Despite the allowance of the federal government’s ability to request ex parte reexamination of patents, the Supreme Court declined to extend further power to the federal government to allow it to initiate AIA patent proceedings that the Supreme Court described as much more adversarial and extensive because the federal government already had access to several other methods and tools to challenge the validity of patents.  Likewise, the Supreme Court in Return Main v. USPS held that it was proper for the Court to limit the government’s ability to raise AIA patent challenges because the federal government already enjoys limited liability in patent infringement lawsuits that specifically protects the U.S. government from injunctions, jury trials, and punitive damages.  As the normal person does not enjoy such immunity, the Supreme Court held this as further evidence that the sovereign did not qualify as a person as dictated by AIA patent language.

What Precedent Might Return Main v. USPS Create in Future Litigation?

While such a decision does set interesting precedent in prohibiting the U.S. government as acting as a “person” in intellectual property law, many experts say that the Supreme Court’s decision is unlikely to have significant impact on the U.S. government’s patent interests. The government rarely utilizes AIA patent review proceedings, having only initiated six since the AIA went into effect. Instead, intellectual property attorneys should focus on whether this Return Main v. USPS decision will be used to prohibit the government from raising challenges as a “person” in other avenues of intellectual property law.

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