Petition: Is the government a person and can it infringe?

by Dennis Crouch

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.

(Petition for Writ of Certiorari).

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.”



32 thoughts on “Petition: Is the government a person and can it infringe?

  1. 6

    Oil States Anomaly #5 – A patent is a private property right for the purpose of the basis of jurisdiction for the Court of Federal Claims, ergo a government Taking, wherein immunity has been partially waived by our benevolent sovereign for money damages. But a patent falls under the ‘public rights’ doctrine for the purpose of that same sovereign to revoke – void ab initio (still an open question? or are we thru that looking glass too?) – an issued patent by the Unitary Executive by a statutory scheme providing only limited and deferential review by an Art III court (and not a court of record, but only an appeals court), ergo not a Taking which would otherwise command only a court of record could otherwise take the property. Check. So we have a “King’s Court” residing at PTAB. #Worst SCOTUSEver.

    1. 6.1

      This is only an “anomaly” if one chooses to call it so. There is nothing necessarily “anomalous” about the outcome.

      A franchise is a grant of the sovereign, freely given. The sovereign does not have to make the grant at all, so the scope of the grant is a matter at the sovereign’s discretion. Once some scope is granted, however, the sovereign has constitutionally bound itself to honor that granted scope. If the sovereign intrudes on that granted scope, then the sovereign must pay for the taking.

      In other words, there are two separate considerations here, only one of which is a public right. The scope is a matter of public right, and can be adjusted—according to law—by means other than Art. III courts. The question of whether or not someone (including the sovereign) intrudes on that granted scope, however, is not a matter of a public right. Intrusion (aka, infringement) vel non is a private dispute that can only be settled by an Art. III court.

      It is not anomalous that one question might be settled in a court and another, separate question may be settled in either a court or an administrative tribunal. Different questions get treated differently. That is the opposite of an “anomaly.”

      1. 6.1.1

        obtuse. Is it deliberate?

        (your scope change runs to the same power as changing what transgresses that scope – or in other words, you attempt a difference that has no distinction to the heart of the matter)

        Choosing to NOT call it an anomaly does not make it NOT so.

    2. 6.2

      As long as the Supreme Court isn’t expanding patent rights, the patent maximalists will never “understand”. They won’t even try.

      It’s all so confusing! Except when fake “structure” is treated the same as actual physical structure because “essence.” That makes total sense.

      So it goes in the pretend universe where patents make the world go round.

      1. 6.2.1

        Are you wanting to use the patent doctrine of inherency with your reference to “fake structure”….?

        Or do you think that the different capability (from different configurations) is somehow “by magic?”

        Your “Accuse Others” meme shows itself with you wanting to Accuse Others of not trying to understand.


          the different capability (from different configurations)

          …which are never described in objective structural terms in the s0 ftie w0 ftie claims. That leaves us with only the different “capabilities” distinguishing the claimed invention from the prior art. Capabilities aren’t eligible subject matter.

          But go ahead and kick up some more dust, “anon.” You’re a very serious person, and totally not wrong about everything.


            in objective structural terms

            Once again, you seek to make an optional claim format into something that it is not: not an option.

            But go ahead and kick up some more dust

            I am not the one doing the kicking – you are.


            Thanks for playing. Come back when you can add something substantive to the discussion.


            Capabilities aren’t eligible subject matter.

            More dust kicking.

            Eligible subject matter is Determined from the claim as a whole (when done properly).

            All you are attempting to do here is parse the claim and evaluate eligibility at an “each element” level.

            No one buys that dust.

    3. 6.3

      I guess I should be more direct about worthless piles of scuzz like “iwasthere” who is really just another example of an “anon, jr.” scurrying around outside of the damp sweaty echo chamber where he gets his script.

      Here’s the deal: these m0uth-breathers are just part of the pattern of drumpfist cancer that the country is saddled with for the moment. The whole game is to simply behave as st 00 pitly and crudely as humanly possible while strutting around with an impossibly huge sense of entitlement, the point being to lower discourse so that every self-serving inanity that dribbles out of their mouths is treated (by their tribe, at least) like solid gold.

      1. 6.3.1

        scurrying around outside of the damp sweaty echo chamber where he gets his script

        LOL – and we know that you do no such scurrying to get your script – it’s the same age-old decrepit one you have had like forever.

        Here’s the deal: these m0uth-breathers are just part of the pattern of drumpfist cancer

        More Accuse Others, seeing as Malcolm is the Trump of these boards.

        whole game is to simply behave as st 00 pitly and crudely as humanly possible… the point being to lower discourse …

        Case in point…. 13 years now.

    4. 6.4

      Is there a distinction between “private property” and a “private property right”? If not, why use “private property right”?

  2. 5

    And there is Newton Minow who was the Chairman of the FCC from 1961-1963. It was Minow who criticized television by calling it a “vast wasteland.”

    I disagree. Television is half-vast.

  3. 3

    Would love to see the claims at issue here.

    Until the consonance between the so-called printed matter doctrine and 101 is recognized, it may be possible (in the worst case scenario, if the petition is granted) for the government to drop the CBM proceeding and go after the claims in an IPR, using the scPMD and (ideally) substantially similar art/arguments.

  4. 2

    As the Court notes, an infringement suit under 28 U.S.C. 1498(a) in the federal claims court is very similar to a D.C. infringement suit. But if J. Newman’s cited case law is correct the Sup. Ct. does not normally presume the Federal Government to be a “person” as the ABA statute also requires for post-grant patentability challenges – a separate issue.
    Also, since the PTO is a Government agency, running several different in rem re-examination proceedings, does it make sense for the Government to also be the initiating party [judge and plaintiff] in such a proceeding? [Unless expressly provided by statute, as some are, but only by the PTO director, not by other agencies.]

  5. 1

    Ok, I will point out the elephant in the room that now that patents are to be considered (merely) a Franchise Right (regardless of any attempted dicta), and any Franchise Right carries with it a franchisor, and the government is that franchisor (the one that provides the public right), does the eminent domain argument still carry any water?

    The (same) aspect of a public right which carries with it the ability to avoid the necessity of Article III forum is precisely the type of thing that nullifies the takings argument. In other words, through the public right, the government ALREADY has their “power to take,” and thus eminent domain is not something that is called upon (eminent domain is when the government takes something that is NOT theirs).

    1. 1.1

      Justice Thomas wrote that patents should be considered to be property (of the patentee) for purpose of the Taking Clause, not a public right franchise, didn’t he?

      1. 1.1.1

        …as I pointed out: (regardless of any attempted dicta),

        As I have ALSO pointed out, if that “dicta” were to have any weight, then in the name of Justice, Thomas should have elevated it into his holding.

        The Court’s desired narrative dictated otherwise.


            nope back atcha – the “Supreme” Court is not above the Constitution.

            Check your state attorney oath there, SVG – let me know what it says.


                You can’t get to the same place with different words and claim a different place.

                What state was that again that you are barred in?


            Naturally, I agree that the Court can have its cake and eat it too. However, that is not what is going on here. The so-called dichotomy between “public right” and “private property” is just a confusion over terminology. There is no actual conflict here if one simply understands what these words mean. Unfortunately, certain parties are strongly committed to maintaining confusion on this point, because it serves propaganda ends.


              Naturally Greg, I disagree with you. Or to be more precise, I would disagree with which party it is that is maintaining confusion (that would be you, as you seek to somehow ignore the path of the public right of the newly asserted Franchise right, and equate that with a term from more than one hundred years ago).

              Your service of propaganda ends is noted.


              Naturally, I agree that the Court can have its cake and eat it too.

              What state are you barred in, Greg?
              What do those states have to say as far as your state attorney oath?

              Do you even recognize that our system of government did NOT envision that the judicial branch was outside of the Constitution?

              Oh, Marie Antoinette would be jealous of you…


            Unfortunately so true. Internal logic to a SCOTUS opinion? We don’t need no stinking logic, your ‘case and controversy’ is just a vessel in which we pour policy. I’ve been saying since the day Oil States issued, the ‘takings’ dicta is just a bone to the claims court – meh, you can still have a job – for now.

      2. 1.1.2

        [P]atents should be considered to be property… for purpose of the Taking Clause, not a public right franchise…

        At the risk of seeming a pedant, I think that confusion in terminology may give rise to confusion in thought if certain points are not kept clearly in mind:

        (1) All franchises are matters of “public right,” so it is somewhat redundant to speak of “public right franchises.” Incidentally, it really makes no sense to say that a patent is “not a public right franchise,” because if a patent is a franchise (and it is), then it is necessarily a “public right” franchise (there is no other kind), although it is just as redundant to say “public right franchise” as it is to say “equilateral square.”

        (2) All franchises are personal property. Harvey v. Harvey, 224 Cal. App. 2d 555, 561 (1964) (“[M]oney has always been considered tangible personal property, as distinguished from intangibles such as franchises and choses in action”). Therefore of course a patent (which is a species of the genus “franchise”) should be “considered to be property (of the patentee) for purposes of the Taking[s] Clause.” Just as all minnows are fish, and all fish are animals, such that all minnows are animals, so too all patents are franchises, and all franchises are personal property, such that all patents are personal property.


          All franchises are matters of “public right”…

          No sooner do I warn of confusion stemming from loose terminology, then I go and create more such confusion by means of loose terminology. Naturally, what I should have said for maximum clarity is that franchises are matters of “public right” as to scope. Franchises are not matters of “public right” as to ownership/enforcement.


            Even the Court (while engaging in its Oil States decision) was more forthright about the “mixed heritage” and lack of clarity that you seem to want to think is ever present, Greg.


            Agreed. Patents are matters of “public right” as to scope. Patents are not matters of “public right” as to ownership/enforcement.


          Just as all minnows are fish, and all fish are animals, such that all minnows are animals,

          You want to apply a one-way logic as if that logic is bilateral….

          And yes, this has been pointed out to you before.

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