The Supreme Court has granted a writ of certiorari in the Return Mail v. U.S. Postal Service, but only as to the first question petitioned:
Whether the government is a “person” who may petition to institute review proceedings under the Leahy-Smith America Invents Act.
Over the last few years, we have learned that a person is a person, a corporation is a person, and a monkey is not a person. The question here is whether the U.S. Government is a person.
The setup here is that the statute allows for a “person” to file an AIA Trial petition (usually this is an inter partes review petition, but this case involves a covered business method review petition). In SAS, the Supreme Court explained the process as allowing “private parties to challenge previously issued patent claims in an adversarial process before the Patent Office.”
Here, the CBM filer is the U.S. Government (US Postal Service). One of the major arguments in this case involves a balancing: If the U.S. government sheltered as a non-person for the purposes of patent infringement, then it also shouldn’t receive the benefit of being able to file AIA Trial petitions.
The outcome here is an open question: The AIA doe not define the term; nor has the PTO through rulemaking; nor is there any real legislative history on point. The petition cites to the 2000 Supreme Court decision of Vt. Agency of Nat. Res. v. US ex rel. Stevens, 528 U.S. 765, for the proposition that “person” does not ordinarily include the “sovereign.”
In considering the issue, the Federal Circuit first noted that “Return Mail has waived reliance on the term “person” because it failed to make any arguments in that regard in its opening brief.” The court then went on to explain that – if the issue is somehow “not waivable” then the correct interpretation of “person” in this context would include the Government — noting that there is “no hard and fast rule of exclusion, and much depends on the context, the subject matter, legislative history, and executive interpretation.” Wilson v. Omaha Indian Tribe,
442 U.S. 653, 667 (1979). In general though the Federal Circuit’s statutory construction analysis in this case is quite lacking.