Justices to consider ability of government to challenge patents in administrative process

The justices have a light calendar for the first week of the February session, with only two cases set for argument. The first of the pair is Return Mail Inc. v. U.S. Postal Service, the lone Tuesday argument. Return Mail is a simple statutory case asking the justices to resolve another of the seemingly endless flow of drafting problems arising out of Congress’ 2011 patent-reform bill, the Leahy-Smith America Invents Act (usually called the AIA).

The question in this case is whether the United States (specifically, the U.S. Postal Service) is a “person” for purposes of a series of provisions in the AIA stating that “a person who is not the owner of a patent” may petition for post-grant review of an issued patent. The Patent and Trademark Office issued a patent to petitioner Return Mail for an invention involving the use of bar codes in facilitating the processing of undeliverable mail. After Return Mail sued the Postal Service, claiming that Postal Service’s practices infringed the Return Mail patent, the Postal Service filed a petition under the AIA’s procedures for review of business-method patents, asking the PTO to invalidate the patent. In due course, the PTO held the invention unpatentable and invalidated the patent. After the U.S. Court of Appeals for the Federal Circuit affirmed that decision, the Supreme Court agreed to consider whether the PTO properly permitted the government to initiate that review process instead of litigating the validity of the patent in the context of Return Mail’s enforcement suit (which would have proceeded in the U.S. Court of Federal Claims, the prescribed venue for patent infringement suits against the federal government)

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