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Return Mail, Inc. v. United States Postal Serv.

Supreme Court of the United States

February 19, 2019, Argued; June 10, 2019, Decided

No. 17-1594.

Opinion

Justice Sotomayor delivered the [***7]  opinion of the Court.

In the Leahy-Smith America Invents Act of 2011, 35 U. S. C. §100 et seq., Congress created the Patent Trial and Appeal Board and established three new types of  [*1859]  administrative proceedings before the Board that allow a “person” other than the patent owner to challenge the validity of a patent post-issuance. The question presented in this case is whether a federal agency is a “person” able to seek such review under the statute. We conclude that it is not.

The Constitution empowers Congress “[t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective . . . Discoveries.” Art. I, §8, cl. 8. Pursuant to that authority, Congress established the United States Patent and Trademark Office (Patent Office) and tasked it with “the granting and issuing of patents.” 35 U. S. C. §§1, 2(a)(1).

To obtain a patent, an inventor submits an application describing the proposed patent claims to the Patent Office. See §§111(a)(1), 112. A patent examiner then reviews the application and prior art (the information available to the public at the time of the application) to determine whether the claims satisfy the statutory requirements for patentability, including [***8]  that the claimed invention is useful, novel, nonobvious, and contains eligible subject matter. See §§101, 102, 103. If the Patent Office accepts the claim and issues a patent, the patent owner generally obtains exclusive rights to the patented invention throughout the United States for 20 years. §§154(a)(1), (2).

After a patent issues, there are several avenues by which its validity can be revisited. The first is through a defense in an infringement action. Generally, one who intrudes upon a patent without authorization “infringes the patent” and becomes subject to civil suit in the federal district courts, where the patent owner may demand a jury trial and seek monetary damages and injunctive relief. §§271(a), 281-284. If, however, the Federal Government is the alleged patent infringer, the patent owner must sue the Government in the United States Court of Federal Claims and may recover only “reasonable and entire compensation” for the unauthorized use. 28 U. S. C. §1498(a).

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139 S. Ct. 1853 *; 204 L. Ed. 2d 179 **; 2019 U.S. LEXIS 4028 ***; 27 Fla. L. Weekly Fed. S 893; 2019 WL 2412904

RETURN MAIL, INC., Petitioner v. UNITED STATES POSTAL SERVICE, et al.

Notice: The LEXIS pagination of this document is subject to change pending release of the final published version.

Prior History:  [***1] ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT

Return Mail, Inc. v. United States Postal Serv., 868 F.3d 1350, 2017 U.S. App. LEXIS 16364 (Fed. Cir., Aug. 28, 2017)

Disposition: 868 F. 3d 1350, reversed and remanded.

CORE TERMS

patent, infringement, provisions, review a proceeding, reexamination, invention, federal agency, invoke, administrative procedures, word person, invalid, post-issuance, Mail’s, ex parte, agencies, cancellation, private party, proceedings, initiate, rights, prior art, damages, administrative review, longstanding, challenger, injunctive, petitioned, references, eligible, entities

Business & Corporate Compliance, Patent Law, US Patent & Trademark Office Proceedings, Reexamination Proceedings, Patent Law, Appeals, Evidence, Burdens of Proof, Preponderance of Evidence, Governments, Legislation, Interpretation