Return Mail: Government is Not a “Person” and Therefore Cannot File AIA Review Petitions

Return Mail, Inc. v. United States Postal Service (Supreme Court 2019) [Return Mail, Inc. v. Postal Service]

In a 6-3 decision, the Supreme Court has decided the U.S. Government is not a “person” capable of petitioning for institution of AIA review proceedings.

Under the statute, a “person” other than the patent owner may petition for AIA Review (IPR, PRG, or CBM). See 35 U.S.C. 311 (for IPR).

In the case, Return Mail sued the US Postal Service (part of the US Federal Government) for infringing its address processing patent and USPS petitioned for CBM review.   The PTO agreed that the patent claimed ineligible subject matter and cancelled the claims. On appeal, the Federal Circuit affirmed. Now, the Supreme Court has reversed – holding that the Government is not a person under the statute and therefore cannot petition for AIA review.

The overall outcome here is that the Federal Government is more likely to have to pay royalty fees when it uses someone’s patented invention. 

The decision does not address an important background issue of the status of state and foreign governments. Also Companies are still people; but not monkeys.

= = = = =

Justice Sotomayor led the conservative majority joined by Chief Justice Roberts and Justices Thomas, Alito, Gorsuch and Kavanaugh.  Justice Breyer wrote in a dissent that was joined by Justices Ginsberg and Kagan.

The majority here started with its presumption that congressional statutes are not intended to bind or be directed to U.S. Government activity. See Rules are For Other People.  Here, the court looked and did not find sufficient textual language to overcome that initial presumption.   In particular, the word “person” is used many times in the Patent Act (at least 18 times) and in several different ways.  There is basically no indication that this particular use of “person” was designed to include the U.S. Government.   The majority also noted the awkwardness:

Finally, excluding federal agencies from the AIA review proceedings avoids the awkward situation that might result from forcing a civilian patent owner (such as Return Mail) to defend the patentability of her invention in an adversarial, adjudicatory proceeding initiated by one federal agency (such as the Postal Service) and overseen by a different federal agency (the Patent Office).

The dissent argued that the government-not-a-person presumption is rather weak and was overcome by the Patent Act.  In particular, the majority notes that Federal agencies are authorized to apply for patent protection — even though the statute states that a “person” shall be “entitled to a patent.” See 35 U. S. C. §§ 207(a)(1) and 102(a)(1).

The dissent’s policy argument is hard to follow:

[T]he statutes help maintain a robust patent system in another way: They allow B, a patent holder who might be sued for infringing A’s (related) patent, to protect B’s own patent by more easily proving the invalidity of A’s patent. Insofar as this objective underlies the statutes at issue here, it applies to the same extent whether B is a private person or a Government agency.

Can someone help me out here on this one.

90 thoughts on “Return Mail: Government is Not a “Person” and Therefore Cannot File AIA Review Petitions

  1. 16

    Is there an apparent reason why Justice Sotomayor broke ranks with Breyer, Ginsburg, and Kagan on this one?

    1. 16.1

      What “ranks” are those? Do you mean to imply that the “liberal” justices always vote as a bloc? This is demonstrably untrue. The whole idea of “liberal” justices and “conservative” justices only works in contexts in which the issue at stake has a clear liberal/conservative valence. The overwhelming majority of cases (including patent cases) break down along lines that have nothing to do with “liberal” or “conservative.”

      1. 16.1.1

        The “ranks” being “patent-related.”

        There IS a rather obvious pairings that do occur in those occasions in which the Court splits their votes.

        Not sure why you did not understand this from the question, Greg.

      2. 16.1.2

        This is a collection of all SCotUS cases since 2015 taking cert. to the CAFC. I defy anyone to identify a consistent bloc of justices who reliably vote with each other in these case, except to say that the majority of them are unanimous.

      3. 16.1.3

        Yes, most patent decisions of the Supremes in recent years have been unanimous or nearly unanimous.
        Contrast the Supremes vote on this decision that the government is not a person with their prior vote that a corporation is a person.

        1. 16.1.3.1

          Clearly the point presented was NOT including unanimous cases.

          How does the data look when you remove that which was clearly not within the context of the post presented?

      4. 16.1.4

        Patent cases frequently have a liberal or conservative bias. That’s why I was wondering why Sotomayor ended up with the conservatives. Maybe as a matter of law? Meaning the result was likely correct?

        The liberals begin with the bias that intellectual property should belong to everybody (i.e., “the people”) because everybody’s equal. The conservatives, on the other hand, are (usually) strong on property rights. But there’s an extra incentive here for the conservatives in Return Mail because, as a result of the statutory construction, the administrative state is reigned in to some small extent. The conservative Rehnquist court helped create the modern administrative state. But the conservatives of today (notably, Gorsuch and Kavanaugh) are more about the separation of powers.

        1. 16.1.4.1

          The liberals begin with the bias that intellectual property should belong to everybody (i.e., “the people”) because everybody’s equal.

          LOL

          What?

          My politics are progressive, and I know tons of other progressives (lawyers and non-lawyers) and none of them start from this viewpoint. Certainly none of the “liberals” on the Supreme Court subscribe to the view you proposed (at least not to any degree more or less than the “conservative” judges). No serious jurist on the planet (that I’m aware of) presumes some sort of “natural” “patent right” (because it’s an absurd proposition).

          The only relevant “biases” that are out there are (1) the “bias” that it’s better to have a system where invalid patents should be both much harder to obtain AND much easier to invalidate than they are to enforce/”monetize”; and (2) the “bias” against “owning”/controlling abstractions (information, logic) and natural phenomenon through use of the patent system. At least recently, as we all know, these “biases” appear to be shared by all of the Justices. I think I know why that’s the case but it seems so obvious I won’t even mention it. I’ll let someone else drop the other shoe.

          1. 16.1.4.1.1

            No serious jurist on the planet (that I’m aware of) presumes some sort of “natural” “patent right” (because it’s an absurd proposition).

            You realize that THAT has no bearing on the position advanced by TP, right?

            Additionally, maybe you should note that what you consider “absurd” has a very real historical tie to the Lockean nature that patents are understood to carry.

            I can attribute this to either your cognitive dissonance, plain 1g nor ance, or both.

            As to “dropping shoes,” that merely reflects your “internet tough guy” routine (after 14 years of blight from you, when will that “awesome” book of yours be coming out?)

          2. 16.1.4.1.2

            Yeah, you got me. The liberals do _not_ begin with the bias that intellectual property should belong to everybody (i.e., “the people”) because everybody’s equal.

            The liberals begin with the bias that intellectual property should belong to everybody (i.e., “the people”) because everybody _should_ be equal.

            1. 16.1.4.1.2.1

              Except for them, of course.

              1. 16.1.4.1.2.1.1

                Except for them, of course.

                A classic point: + 1,000.

          3. 16.1.4.1.3

            I was talking about liberals before you changed the subject. What is a progressive?

            1. 16.1.4.1.3.1

              I had to look up “progressive.” I understand, do not agree.

              “I think that we’re in late phase capitalism and we know it doesn’t work and we have to move into something new, and I believe in community ownership of land, labor, resources and distribution of those resources.”

              1. 16.1.4.1.3.1.1

                …the commune….?

      5. 16.1.5

        The other thing to appreciate is that when it gets to the Supremes level it’s not patent law or tax law or maritime law. It’s just . . . law. It’s not accurate to say they do not understand “patent” law. They do not defer to the “specialty” courts.

        1. 16.1.5.1

          Suffice it to say, I do not really agree with the points asserted in either 16.1.4 or 16.1.5. I do not expect, however, that these points could be carried in an argument concise enough to make it through the dialog filter. Therefore, I will content myself to register the disagreement in a weak but congenial fashion and leave it at that.

          1. 16.1.5.1.1

            An alternative explanation would be more useful than a rebuttal. But your alternative seems to be that it’s mere happenstance that all five conservatives voted one way and 3 of 4 liberals voted the other, meaning the case was content and results-neutral with respect to liberal vs. conservative bias. To that, sir, I would have to register a very strong poppycock. Poppycock!

            1. 16.1.5.1.1.1

              [Y]our alternative seems to be that it’s mere happenstance that all five conservatives voted one way and 3 of 4 liberals voted the other… To that, sir, I would have to register a very strong poppycock. Poppycock!

              Fair enough. You correctly interpret my response. I answer your “poppycock” with an insouciant shrug and a genial grin.

              1. 16.1.5.1.1.1.1

                Translation for Greg: “I have nothing intelligent to say to your counter point.

                TP, get used to it.

        2. 16.1.5.2

          Greg’s choices are his own (even as they exhibit a degree of inte11ectual cowardice), but I would largely agree with my historical pseudonym friend at 16.1.4, leastwise to the extent that what I have called the Left aligns with a “personal property is bad” theme that TP alights upon.

          I would, however, modify his view of what I have called the Right somewhat in order to “make room” for the fact that the large established entities very much ALSO want a weak patent system in order to preserve their established dominance. Strong patent systems tend to promote disruptive innovation, and patents held by disrupters tend to negate the type of Armageddon “war chest” approach to stock-piling patents that some of the Large Corp players engaged in.

          This version of “the Right” believes in property rights, but is willing to sacrifice “strong belief” when that “strong” property is the property of another, and there are many other ways that the established company would rather compete than compete through innovation.

        3. 16.1.5.3

          I would also disagree with TP at 16.1.5 in so far as the view that to the Supremes, “all” is just “Law.”

          This view diminishes the fact that the Supreme Court very much has their set of policies that they would prefer to imprint on “the law.” This policy-legislating-from-the-bench necessarily means that different flavors of the law ARE paid attention to.

          In fact, TP’s other comments detract from this type of “blind justice,” as he points out that certain justices have different philosophies in regards to such things as the Administrative State and Separation of Powers. Different “flavors” of Law will carry different levels of impact for the different aspects that Justices are interested in, and thus, the Justices will NOT view any flavor as equal to another flavor.

          1. 16.1.5.3.1

            the Supreme Court very much has their set of policies that they would prefer to imprint on “the law.”

            Wow, some really deep insights here today. [eye roll]

            Yes, the Supreme Court engages in politics. And the sky is blue. And it was always the case in the US and it always will be absent some major changes to the manner in which Justices are appointed and the length of time during which they are allowed to serve. News flash: there are many possible alternatives which would be much less politicized and harder to “game”! News flash 2: the diseased Re pu k k k e party has put pretty much all of its marbles into the concept that if they can own the judiciary, they can “govern” this country in any manner they please.

            1. 16.1.5.3.1.1

              What point are you trying to make with that [eye roll]?

              Clearly, the point I present is on target with the conversation with TP and quite meaningful in that context.

              Maybe YOU need to recognize the difference of when Common Law law writing is appropriate and when it is not. Then again, such would mean that you would actually be paying attention to the Means, and not just justifying an Ends because you happen to feel that you like that Ends.

              As far as your Trump-like one-sided blindness, there is an equal “News flash (that happens to be as plain as the first point of mine that you whined about) with your:

              News flash 2: the diseased Re pu k k k e party has put pretty much all of its marbles into the concept that if they can own the judiciary,

              That would be BOTH SIDES think the same thing when it comes to “owning the judiciary.”

  2. 15

    I think just about everyone here predicted that the Supreme Court would come out this way, and it was the right call legally. The arguments against the government’s position were much stronger. I guess what really bothers me is that this wasn’t a 9-0 decision. Three justices were willing to disregard some pretty basic canons of statutory interpretation to further some and and amorphous policy goal about the patent system, a policy that really doesn’t have anything to do with the particular question of whether the government can file IPR petitions.

  3. 14

    Justice Stephen Breyer >>> The pharaohs were the government and they were people ergo, the government is a person. Additionally, the pharaohs could challenge the land measurements taken by the surveyors to challenge the ownership of land.

    1. 14.1

      The pharaohs were not people, they were gods.

      Hmm, maybe that is why Breyer believes that he has found kinship…

  4. 13

    It’s very clear. The Government is not a “person,” it’s a “people.” See, United States Constitution, Preamble (“We the People”).

    1. 13.1

      (anyone want to bother with the distinction between real person and juristic person…?)

  5. 12

    “Can someone help me out here on this one.”

    No, because Breyer proves yet again that he understands nothing about patents.

    If you stop pretending that there’s coherent logic to scotus decisions (notwithstanding the fact that the majority got it right in this case), it will go a lot easier for you.

    1. 12.1

      +1

    2. 12.2

    3. 12.3

      LOL. The sage from the hills of Vermont is not to be understood as he is so high above us. He whom calls a patent license – “like a ticket on a ferris wheel” – and disputes the notion of an inherent right.

      Anyways, this is just priceless:

      [Finally, excluding federal agencies from the AIA review proceedings avoids the awkward situation that might result from forcing a civilian patent owner (such as Return Mail) to defend the patentability of her invention in an adversarial, adjudicatory proceeding initiated by one federal agency (such as the Postal Service) and overseen by a different federal agency (the Patent Office).]

      “Awkward situation” pfft. Would it be better if they wore powered wigs in that star chamber you approved SCOTUS? The star chamber where all challenged patents get mangled or die? Long live the King. The experiment is dead for patents.

      1. 12.3.1

        >>The experiment is dead for patents.

        I tend to agree. The Trump era is bringing minor gains back to patents, but they are swamped by the Obama stacked CAFC and the myriad of SV firms that have hired an army of lobbyists to defeat any pro-patent legislation.

        Patents are continuing their slow decline to be less and less relevant.

        1. 12.3.1.1

          May I suggest that the “don’t bother” attitude be sh 1tcanned long enough to provide the groundswell to grow?

          Take a listen to the Tillis Congressional hearings. The vast majority there sound out the path back to making the US patent to be the strong innovation protection system that served as the Gold Standard.

          The “don’t bother” mantra is exactly what the Efficient Infringers want you to be engaging in.

          Why are you helping them?

          Sure, it is one thing to point out the difficulty of the task, and the various reasons why there are difficulties. But it is quite another to effectively say: “Just don’t bother.”

          1. 12.3.1.1.1

            Just being real anon.

            1. 12.3.1.1.1.1

              As I stated, there is a difference between “being real” and noting the difficulties and being a turncoat advocate for the Efficient Infringer and spreading their message of “Don’t Bother.”

              I do not begrudge anyone that feeling of being sooo overwhelmed at the forces arrayed against a Strong Patent view, as I have noted, there ARE multiple philosophies (as I have labeled them, from both the Left and the Right), but I do take issue with a capitulation attitude that merely comes across as an advocacy of “no one else should even try because of the way that I feel.”

              Mind the message that you partake in.

              If you want to sulk and feel defeated, by all means go ahead and go off to some corner and do so. Do not — however — climb up on a soapbox and advocate for “no action” and infect others to the detriment of those still willing to put in a fight.

              THAT is NOT “being real.”

              That is being a t001.

              1. 12.3.1.1.1.1.1

                >> a turncoat advocate for the Efficient Infringer and spreading their message of “Don’t Bother.”

                I am not spreading “their message.” I am continuing to express my estimation of the situation. There is a big difference.

              2. 12.3.1.1.1.1.2

                anon <<THAT is NOT “being real.”
                That is being a t001.

                anon, your ridiculous arrogance is showing again. I am doing what I have done on here for over 14 years and that is honestly express my views. You are asking me to not be honest.

                1. Night Writer,

                  Turning to ad hominem just because you do not agree with the plain and direct facts I present only makes my case stronger.

                  Try reading what I stated without losing your ability to reason because your emotions get out of hand.

  6. 11

    The Postal Service defendant has not yet actually l0st. It cannot use a CBM to attack the patent per this decision, but it can still defend itself in the Court of Federal Claims suit.

    1. 11.1

      The Postal Service defendant has not yet actually l0st.

      That is exactly what I was just thinking.

      This was a Pyrrhic victory, as the patent still has been rendered unenforceable (want to enforce it? Take me to court – we’ll just find it ineligible again).

    2. 11.2

      Well duh. But thinking about the Court of Claims, and the partial waiver of sovereign immunity which underpins it’s creation and purpose, makes one think about the sovereign invalidating a right – a right otherwise judicable in a Art III court – in that anomaly of that privy court. Probably the thought that caused Breyer’s brain to short circuit as he grasps for some logic in how that might work in his ‘optimal outcome’ alternate universe.

      1. 11.2.1

        The late Ned Heller would smile at the use of the phrase “Privy Court.”

  7. 10

    35 U.S. Code § 101 (Inventions patentable) makes no reference to Person and instead uses Whoever. Thus a Sovereign may obtain a patent just as a Person can. If Congress had meant to give the Sovereign the right to petition for a post grant review proceeding, language comparable to that in § 101 could have been used.

    1. 10.1

      Not so fast – a real person must still be the original entity at bottom (only real people may invent). See Stanford v Roche.

      1. 10.1.1

        Then use of Person in § 102 and the more general phraseology of § 101 is irrelevant to determining whether the Sovereign can be a petitioner for institution of a post grant review proceeding.

        I suppose (1) that Person in § 102 is an inventive entity (§ 100 (f) & (g)) consisting of at least one natural person and (2) that a legal person cannot be a member of the inventive entity unless the legal person is a natural person.

        1. 10.1.1.1

          unless the legal person is a natural person

          Not to pick a nit, but your terminology is too sloppy.

          You have a real person, a juristic person, and a legal fiction person, each of which means different things.

          Juristic persons may own property.
          Legal fiction persons cannot own property.
          Juristic persons may not START the invention process (they cannot BE inventors).
          Of course, legal fiction persons cannot be inventors either.

          But to be precise, neither juristic persons nor legal fiction persons ARE real people.

          1. 10.1.1.1.1

            And, presumably, 102 or 103 prior art could even be personless, such as a computer generated publication, or a computer generated machine or a machine using computer generated software, in public use?

            1. 10.1.1.1.1.1

              Joachim was talking about the person – NOT about the art.

  8. 9

    Of the Supremes, Sotomayor is probably the best versed in patent law. Interesting that she sided with the conservatives here.

    1. 9.1

      “Best versed in patent law among the justices” is faint praise indeed. I agree that Justice Sotomayor ranks alongside Justices Alito and Kagan in the “has not grossly embarrassed himself or herself in writing about patents” category. This is still a far cry from really brilliant patent jurists, such as Learned Hand.

      1. 9.1.1

        I think he meant that her ex-husband is a patent attorney who writes and speaks frequently about patent issues.

        1. 9.1.1.1

          ohhhh – you went there!

          1. 9.1.1.1.1

            Sotomayor made the right choice. If Noonan is 10% of the willfully ignorant obfuscator in his personal life than he is his blog, then he’s a truly horrible human being.

            1. 9.1.1.1.1.1

              Considering the source, the irony is stultifying.

  9. 8

    Actually, Dennis (and everyone), the amazingly prescient Abbott and Costello provided the exact, detailed explanation for the dissent’s reasoning … way back in good ol’ 1953:

    link to youtube.com

    And; while more sad than funny; Moonbeam’s comment at #6: “… I see other commenters below going off the rails.” is nonetheless worthy of at least a hearty chuckle or two … given how often he goes off the comment rails so far … that the rails are nowhere in sight.

  10. 7

    I’m not sure why you chose the quote that you did. The summary is much better suited:

    >”Government agencies can apply for and obtain patents; they can maintain patents; they can sue other parties for infringing their patents; they can be sued for infringing patents held by private parties; they can invoke certain defenses to an infringement lawsuit on the same terms as private parties; they can invoke one of the pre-existing administrative procedures for challenging the validity of a private party’s patents; and they can be forced to defend their own patents when a private party invokes one of the three procedures established by the America Invents Act. Why, then, would Congress have declined to give federal agencies the power to invoke these same administrative procedures?”

  11. 6

    I’m going to try again here because I see other commenters below going off the rails. There’s a big difference between “completely not understanding patents”, on one hand, and “overthinking something” on the other hand.

    One plausible explanation for the quote that confused Dennis is the following:

    If B proves the invalidity of A’s patent under the preponderance standard (the AIA inter partes standard) it might (arguably?) leave B’s own “related” patent “in better shape” compared to where it would be had A’s patent had been proven invalid under the higher “clear and convincing” standard at trial. Remember: the patents are related, presumably by subject matter. That means the same prior art is going to be relevant to both patents. It’s possible, even, that a 103 argument over the same exact reference needed to be overcome during examination of both patents.

    In this rather specific scenario, the dissent is arguing (I think!) that the lower standard under the AIA makes it marginally easier for A to invalidate B’s patent. That’s because the lower standard for invalidation puts A’s patent on slightly less shaky ground should A be ultimately successful in invalidating B’s patent. Looking at it another way, use of the AIA makes it harder for someone to disparage A’s rights by saying “Hey, you argued in court that B’s patent — which is nearly identical — was clearly invalid. Seems like your patent is probably invalid, too.” By using the AIA inter partes system instead of defending itself in court, A can reassure itself (and others) of the validity of its own patent if/when asserted in court by reference to the fact that B’s patent was invalidated under a lower standard.

    Note also that the dissent makes it perfectly clear that this “policy”/result is not specific to the “government is not a person” determination. It applies to private citizens as well.

    Caveat: I’m not arguing that this explanation is airtight, or even watertight. All I’m saying is that it’s plausible and, rather than evincing a complete lack of understanding of patent law it is just as likely that it’s a relatively harmless example of being “too clever by half”.

    1. 6.1

      “it’s plausible and, rather than evincing a complete lack of understanding of patent law it is just as likely that it’s a relatively harmless example of being “too clever by half”.”

      Maybe you’ve hit the nail on the head. But even if so, while I expect to see the execs I work with (even those I think of as “patent savvy”) make similarly loose statements, and have to gently reel them back in, it’s pretty unappealing to see something like this from Justices Breyer and Kagan.

      1. 6.1.1

        I find the majority’s opinion far, far more unappealing.

        The “presumption” in this context should have been easily overcome, given that the government is otherwise involved in every aspect of the patent game.

        1. 6.1.1.1

          I agree that the government should be able to file IPRs given that they are doing pretty much everything else. The fact is that IPRs are part of the game and the government is playing the game.

  12. 5

    Probably makes sense. If you own a patent B and another company owns a patent A that is related, then it might make sense to file an IPRP to invalidate their patent. For example, if you want to license patent B, then invalidating patent A would make patent B more valuable.

    Could happen. Pretty weak, though.

    1. 5.1

      Another plausible take.

    2. 5.2

      This was my initial thought too, but thinking through it I can’t make it work.
      Let’s assume that invalidity of A doesn’t mean invalidity of B (seems required for the Court’s argument). Assume A and B claim two paths to reach a solution.

      If A and B overlap, then a 3rd party would initially need to license both. Invalidating A means that a 3rd party now needs to license just B. But I’m not sure that makes B more valuable.

      If A and B do not overlap, then a 3rd party could initially choose to license either. Invalidating A means that a 3rd party now can choose to license B or use the now unpatented (assuming no other patents exist) technique of A. Again, I’m not sure that makes B more valuable.

      1. 5.2.1

        You are reading in an argument that is not there. The dissent does not talk about “mak[ing] more valuable.” The dissent talks about “protect[ing] B’s own patent by more easily proving the invalidity of A’s patent.”

        It is hard to avoid the conclusion that the dissent is reasoning from a flawed understanding of how patent law works.

        1. 5.2.1.1

          I had read “protect B’s own patent” as implying “protect [the monopoly of] B’s own patent. I still think that’s a reasonable reading in view of the other logical gaps–I think that reading “protect B’s own patent” as “protect B’s own patent [from invalidation]” assumes a higher knowledge of patent law than can be inferred from the remainder of the argument.

          That said, perhaps you’re right and I’m reading what is not there.

  13. 4

    Looks like a fundamental misunderstanding of patents.

    The error is similar to the kind of thinking that gives rise to the idea that one patent can “infringe” another patent. It’s as if the author does not recognize that patents have overlapping scope and do not exclude each other. that patents as such directly duke it out with each other.

    Infringing A’s patent has nothing to do with B’s patent, let alone its protection.

    This might be a side effect of the troll narrative’s conflation between a patentee’s freedoms of action (to practice the invention… not NOT) versus a patentee’s rights to exclude others from making using or selling.

    It just doesn’t make sense.

    1. 4.1

      I’m going to try again because I see other commenters below going off the rails. There’s a big difference between “completely not understanding patents”, on one hand, and “overthinking something” on the other hand.

      One plausible explanation for the quote that confused Dennis is the following:

      If B proves the invalidity of A’s patent under the preponderance standard (the AIA inter partes standard) it might (arguably?) leave B’s own “related” patent “in better shape” compared to where it would be had A’s patent had been proven invalid under the higher “clear and convincing” standard at trial. Remember: the patents are related, presumably by subject matter. That means the same prior art is going to be relevant to both patents. It’s possible, even, that a 103 argument over the same exact reference needed to be overcome during examination of both patents.

      In this rather specific scenario, the dissent is arguing (I think!) that the lower standard under the AIA makes it marginally easier for A to invalidate B’s patent. That’s because the lower standard for invalidation puts A’s patent on slightly less shaky ground should A be ultimately successful in invalidating B’s patent. Looking at it another way, use of the AIA makes it harder for someone to disparage A’s rights by saying “Hey, you argued in court that B’s patent — which is nearly identical — was clearly invalid. Seems like your patent is probably invalid, too.” By using the AIA inter partes system instead of defending itself in court, A can reassure itself (and others) of the validity of its own patent if/when asserted in court by reference to the fact that B’s patent was invalidated under a lower standard.

      Note also that the dissent makes it perfectly clear that this “policy”/result is not specific to the “government is not a person” determination. It applies to private citizens as well.

      Caveat: I’m not arguing that this explanation is airtight, or even watertight. All I’m saying is that it’s plausible and, rather than evincing a complete lack of understanding of patent law it is just as likely that it’s a relatively harmless example of being “too clever by half”.

      1. 4.1.1

        Interesting, the different standards is where where the “more easily proving” part comes in (that language seemed out of place on a first reading).

        Good point.

  14. 3

    “[T]he statutes help maintain a robust patent system in another way: They allow B, a patent holder who might be sued for infringing A’s (related) patent, to protect B’s own patent by more easily proving the invalidity of A’s patent. Insofar as this objective underlies the statutes at issue here, it applies to the same extent whether B is a private person or a Government agency.”

    I’m having a lot of trouble with the quoted argument as well. It is premised on B (the government) owning a patent “related” (in the same field?) to A’s patent. I don’t see how the issue of whether the petitioner B owns a patent has any bearing on standing to bring an IPR against patent owner A. The argument also assumes that a finding of invalidity as to A’s patent would somehow “protect” (bolster the validity of?) B’s patent. I think the opposite would be the case, particularly if the two patents are closely “related.”

    1. 3.1

      I believe that the answer is that the SCotUS does not understand the first thing about patent law. This is evident in KSR, and Myriad, and a host of other decisions. The dissent sincerely thinks that A & B cannot both own patents that each cover embodiment X. Therefore, if—in the minds of the dissenting justices—such a situation exists where A’s patent reads on X and B’s patent also reads on X, then one of A’s or B’s patent must be invalid. They imagine that the CBM provides a forum where this “only one can survive” style fight can take place (like Highlander, only much less interesting).

      Of course, the premise of this argument is nonsense, without the merest whisper of support in U.S. patent law. The fact that the dissent builds an argument on this nonsense is just exhibit #1,245,678 in the case for why the SCotUS should not have certiorari jurisdiction over patent appeals.

      1. 3.1.1

        I have to agree with you, Greg. The S.Ct. has repeatedly demonstrated that it really does not have a good understanding of patent law or the patent system in general. And that is very disappointing.

        That being said, I think the majority reached the right decision here.

        Breyer, Ginsberg, and Kagan, on the other hand . . . .

        1. 3.1.1.1

          The S.Ct. has repeatedly demonstrated that it really does not have a good understanding of patent law or the patent system in general.

          Generally speaking, the Supreme Court has the understanding that is provided to it by the attorneys who are making arguments before it. And as we all know very well, there is a substantial contingent of patent attorneys out there who’s “understanding” of the patent system begins and ends with “more patents is better”.

          On top of that, there are plenty of examples of the Supreme Court “getting it right” where the CAFC (supposedly an “expert” court) got it completely and disastrously wrong. Mayo is a prime example, and Promega v. Lifetech is another great example. Nothing wrong with Alice or Bilski except they didn’t go far enough. Warner Jenkinson got it right, too.

          1. 3.1.1.1.1

            The Ends do not justify the Means.

            EVEN IF you claim to have arrived at a “correct ends,” GETTING there properly is critical.

            This is a basic axiom that attorneys should easily recognize.

      2. 3.1.2

        the SCotUS should not have certiorari jurisdiction over patent appeals.

        Yes, but those five religious guys are totally qualified to determine when a women becomes an incubator for the state.

        LOL

        1. 3.1.2.1

          becomes an incubator for the state

          W T F ?

          1. 3.1.2.1.1

            p. 35: where possible, cast the policies of your opponent in the most demonic fashion possible

            1. 3.1.2.1.1.1

              Well, I am responding to a somewhat (LOL) reactionary position here.

              1. 3.1.2.1.1.1.1

                Well, I am responding…

                Because YOUR being mindlessly over-reactionary in a completely unrelated context is some sort of “justification” for anything…?

                And what is worse is that you appear to actually believe your own justification.

      3. 3.1.3

        “The fact that the dissent builds an argument on this nonsense”

        Hi Greg – even given your invocation of KSR/Myriad as background, it still seems unusual for you to paint 9 with a brush dipped into the sins of 3.

        I liked the Highlander quip, though.

        1. 3.1.3.1

          paint 9 with a brush dipped into the sins of 3

          Fair enough. I will confine my present “do not understand the meanest basics” critique to the 3 dissenters. Please consider the charge withdrawn as to the majority justices. I stand by my assertion that everyone (the Court, the PTO, the regulated public, etc) would be better off if the judiciary act were amended to remove the SCotUS’ certiorari review to the CAFC.

          1. 3.1.3.1.1

            everyone (the Court, the PTO, the regulated public, etc) would be better off if the judiciary act were amended to remove the SCotUS’ certiorari review to the CAFC.

            Thankfully this extreme (and extremely bizarre) minority opinion is not shared by most normal people.

            1. 3.1.3.1.1.1

              All three branches of the government are on record as noting the Mess that the Supreme Court has made (following closely to the very words I have used for quite some time now).

              Further, the Court itself has started fashioning a “way out” as I have also noted (and coined as the Kavanaugh Scissors).

              Maybe you should try to control those feelings of yours and actually pay attention to the cogent legal points being expressed…

            2. 3.1.3.1.1.2

              ..pssst, Malcolm, here is a hint: this is a counterpoint that you should feel free to actually discuss…

              1. 3.1.3.1.1.2.1

                … maybe Malcolm is saving all of his actual discussions for that “scalding” book that he is writing…

  15. 2

    I don’t know if this helps with the last bit but …. if B proves the invalidity of A’s patent under the preponderance standard (the AIA inter partes standard) it might (arguably?) leave B’s own “related” patent in better shape compared to where it would be had A’s patent had been proven invalid under the higher “clear and convincing” standard at trial.

    Definitely there’s a gap in the reasoning here, the size of which corresponding to the degree to which A’s patent and B’s patent are “related”…

  16. 1

    Ha, this makes no sense. “[A] patent can be reexamined either in federal courtduring a defense to an infringement suit, §282(b), or in an ex parte reexamination by the Patent Office, §§301(a), 302(a).” I guess an invalidity defense in court is now a “reexamination.”

    1. 1.1

      Frequently the trial is the first time the patent has ever really been “examined”. Definitely true in a lot of software cases.

    2. 1.2

      See 3.1 above. The SCotUS does not understand the first thing about patent law. They are in over their heads. It would be doing them a kindness to take away their appellate jurisdiction to review patent cases.

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