The America Invents Act (AIA) allows for a “person” to file a covered business method review (CBM) to challenge an issued patent. See AIA Section 18 (because they it is a temporary program, the CBM provisions have not been codified in the United States Code). In Return Mail v. USPS, Docket No. No. 17-1594 (Supreme Court 2018), the CBM petitioner was the U.S. Postal Service – i.e., the U.S. government, and the question on petition is whether the government counts as a “person” under the statute:
1. Whether the government is a “person” who may petition to institute review proceedings under the AIA.
A major portion of the argument here is that the statute generally treats the U.S. government differently — giving it sovereign immunity but for a limited remedy for government use under 28 U.S.C. 1498(a). The argument here is that – if the Government isn’t subject to be treated as a person under the infringement statute section 271(a) (“whoever without authority . . .”), then it also shouldn’t receive the benefit of being treated as a person under the AIA Trial regime.
The second question presented in the petition focuses on the infringement charges limitation for CBM petitions. Unlike IPR and PGR petitions, CBM petitions my only be filed if petitioners — the “person” (or its privy) — “has been sued for infringement of the [challenged] patent or has been charged with infringement under that patent.” On this point, the petition explains that the government is immune from suit for patent infringement — and the section 1498 action is an eminent domain takings claim. As such, the 1498 action does not count as an “infringement” charge sufficient to permit CBM review. Thus, the second question:
2. Whether a section 1498(a) action for the eminent domain taking of a patent license by the government is a suit for “infringement” under the AIA.
The setup here is fairly limited because it is only focused on governmental use, but it is the type of questions likely to receive interest from the Supreme Court. In its decision in the case, the Federal Circuit ruled (over a dissent) that a Section 1498 action counts as an infringement lawsuit for the purposes of the AIA and that the U.S. Government counts as a “person” under the statute — writing that “The AIA does not appear to use the term ‘person’ to exclude the government in other provisions.”