Is the government a person? Sometimes, but not for AIA post-grant patent proceedings

Eversheds Sutherland (US) LLP

Eversheds Sutherland (US) LLPOn June 10, the US Supreme Court ruled 6-31 that the Federal Government is not a “person” entitled to institute post-grant proceedings—inter partes review, post-grant review, or covered business method review (CBM review)—before the Patent Trial and Appeal Board (PTAB) to invalidate a patent under the America Invents Act (AIA). Post-grant proceedings provide petitioners an advantageous venue to invalidate patents because the proceedings apply the preponderance of the evidence standard rather than the higher clear and convincing standard applied in district court litigation. The AIA provisions that created the post-grant proceedings—35 USC §§ 311, 321, and AIA §18(a)(1)(b)—are accessible only to a “person”: “a person” other than the patent owner may seek an inter partes review; “a person who is not the owner of a patent” may petition for post-grant review of that patent; and “a person” may seek CBM review as a defense to a charge of infringement. In Return Mail Inc. v. Postal Service,2 the Court held that the AIA was controlled by the long-standing presumption that “person” does not include the Government, and that the legislative history failed to show an intent by Congress to include the Government as a “person” under the statute.

Background on the Dispute Between Return Mail and the Postal Service

Return Mail, Inc. (Return Mail) developed a method for processing undeliverable mail and obtained US Patent 6,826,548 (the ’548 Patent) covering its technology. After obtaining its patent, Return Mail explored licensing its technology to the US Postal Service (the Postal Service), but the parties never reached a deal. In 2006, the Postal Service introduced a new system to process undeliverable mail, and Return Mail again offered it a license to the ’548 Patent. In view of this new offer to license, the Postal Service petitioned for ex parte reexamination of the ’548 Patent. The original claims were cancelled during reexamination, but validity was confirmed and the ’548 Patent reissued with new claims. Return Mail then sued the Postal Service for infringement of the reissued patent in the Court of Federal Claims and the Postal Service instituted a CBM review before the PTAB. The PTAB invalidated the patent on the basis that it claimed ineligible subject matter—over Return Mail’s objection that the Postal Service was not a “person” and therefore was not able to petition for CBM review. The Federal Circuit affirmed the PTAB’s decision and held that the Government is a “person” eligible for CBM review.

Question Presented and Legal Framework

The question presented to the Court was whether a federal agency is a “person” able to access the PTAB’s three new types of administrative proceedings for challenging issued patents. Because the patent statutes do not define “person,” the Postal Service had to present an “affirmative showing” that Congress meant for “person” to include the Government, and in doing so, overcome the Dictionary Act’s direction that the term does not include the Government. There also is a presumption of statutory interpretation that “person” does not include the Government.

The Majority: No Affirmative Showing the Government Is a Person Under the AIA

Writing for the majority,3 Justice Sotomayor found the Postal Service’s first argument—that the patent statutes consistently used “person” to include the Government—unpersuasive because the context in which the patent statutes use “person” was not uniform or consistent. While Congress typically uses the same word to mean the same thing throughout a statute, context prevails. There are 18 different uses of “person” in the patent statute: some plainly included the Government, others excluded the Government, and the remainder may be read either way. The AIA provision fell in the last of these three buckets and the Court did not find uses including the Government—like the ability to file for patents—analogous to what a federal agency can do following the issuance of someone else’s patent. In other words, the ability to file for patents did not inform whether “person” should mean the same thing for cancellation of a patent under the AIA, because the two rights arise under unrelated parts of the patent statute.

The Court identified the multiple conflicting uses of “person” in the patent statute as the fatal flaw in the Postal Service’s consistent-use argument, thus precluding the Court from narrowing “person” to a set of specific uses and determining what the consistent usage included. Essentially, the Postal Service asked the Court to ignore all uses of “person” excluding the Government and to focus only on uses including the Government when determining consistent use of the term.

The second argument raised by the Postal Service focused on the Government’s many different long-standing uses of the patent system as a “person.” For example, it is well established that the United States Patent and Trademark Office (USPTO) treats the Government as a “person” that can cite prior art to the USPTO or request reexamination of a patent. The Court did not find the USPTO’s interpretation of “person” in the Manual of Patent Examining Procedures (MPEP)—in the context of an ex parte reexamination proceeding—analogous or relevant to AIA review because the two systems of review are meaningfully different. Ex parte reexamination is an internal USPTO process and is initiated only after the USPTO determines it has received information bearing on a patent’s validity. In contrast, AIA post-issuance review proceedings are adversarial and involve briefing, discovery, hearings, and the presentation of evidence. The losing party also has appeal rights in an AIA proceeding. What is more, the Government is a unique infringer. Patent owners can sue the Government only in the Court of Federal Claims and are limited to monetary damages; jury trials and injunctive relief are not available. The Court also noted an absence of legislative history suggesting Congress intended the Government to have access to AIA review proceedings. In sum, the Postal Service failed to present any evidence that Congress had a settled meaning for “person” as it applies to AIA proceedings.

Third, the Court found it was not anomalous for Congress to restrict the Government’s access to the de novo review of AIA proceedings and force district court review of invalidity arguments under a clear and convincing standard. The Postal Service posited that the Government’s susceptibility to civil liability for patent infringement enables it to assert all invalidity defenses. But, exclusion from AIA proceedings does not prevent the Government from defending against infringement: the Government can still assert invalidity, just not in an administrative proceeding. Availability of AIA proceedings to non-governmental actors is supported by public policy because the proceedings are expedient and non-governmental actors face greater risks: injunctive relief, trial by jury, and punitive damages. The Court concluded it was reasonable for Congress to exclude Government access because it faces lower risks for infringing conduct. Also, excluding the Government from AIA proceedings avoids a stacked-deck situation where patent owners must defend their rights against a federal agency in a proceeding overseen by another federal agency. The Court further noted that if the Government were a “person” under the AIA, then it may not be estopped from relitigating arguments because the AIA’s estoppel provisions precluded reraising arguments only in proceedings before the district courts, the International Trade Commission, and the USPTO—not the Court of Federal Claims.

The Dissent: The Presumption That the Government Is Not a Person Is Not Hard and Fast

Justice Breyer’s dissent—joined by Justices Ginsburg and Kagan—latched onto the uses of “person” in the application for patent rights and intervening rights to support the conclusion that the Government is a “person” under the AIA. Much criticism was levied against the majority for its focus on uses of “person” that could not logically include the Government. In other words, pointing to uses that excluded the Government—when those uses logically excluded the Government—did not show inconsistent use, and the instances where the Government was included as a person—obtaining rights and infringement defenses—were more aligned with use in the AIA. The dissent also argued that the AIA’s legislative goals, like improving the quality of patents and making the patent system more efficient, supported characterizing the Government as a “person.” Little credence was afforded to the majority’s concern that a federal agency would evaluate a claim brought against a patent owner by another federal agency—noting how a private party could institute an AIA proceeding against a patent owned by the Government and necessarily require one agency to adjudicate a claim against another agency. Similarly, the dissent did not view the lack of injunctive relief as a reason for Congress to exclude the Government as a “person,” and instead cited to the potential for large damages awards and quick resolution as justification for governmental access to AIA proceedings.

Potential Impacts

The Government has not been particularly active in post-grant proceedings—only 20 were filed since the AIA was enacted—so, before this decision, the threat of the Government initiating an AIA proceeding was relatively low. Now, that threat is nonexistent. The ball is now in Congress’s court, as only Congress can elect to clarify whether it intended a “person” under the AIA to include the Government, and by extension, whether Congress meant for the Government to access AIA proceedings.
1Justice Sotomayor delivered the opinion of the Court, joined by Justices Roberts, Thomas, Alito, Gorsuch, and Kavanaugh. Justice Breyer filed a dissenting opinion, which was joined by Justices Ginsburg and Kagan.
2Return Mail, Inc. v. United States Postal Service, No. 17-1594, 2019 WL 2412904 (US June 10, 2019).
3 Justices Roberts, Thomas, Alito, Gorsuch, and Kavanaugh joined in the majority opinion.

[View source.]

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Eversheds Sutherland (US) LLP | Attorney Advertising

Written by:

Eversheds Sutherland (US) LLP

Eversheds Sutherland (US) LLP on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
- hide

JD Supra Privacy Policy

Updated: May 25, 2018:

JD Supra is a legal publishing service that connects experts and their content with broader audiences of professionals, journalists and associations.

This Privacy Policy describes how JD Supra, LLC ("JD Supra" or "we," "us," or "our") collects, uses and shares personal data collected from visitors to our website (located at (our "Website") who view only publicly-available content as well as subscribers to our services (such as our email digests or author tools)(our "Services"). By using our Website and registering for one of our Services, you are agreeing to the terms of this Privacy Policy.

Please note that if you subscribe to one of our Services, you can make choices about how we collect, use and share your information through our Privacy Center under the "My Account" dashboard (available if you are logged into your JD Supra account).

Collection of Information

Registration Information. When you register with JD Supra for our Website and Services, either as an author or as a subscriber, you will be asked to provide identifying information to create your JD Supra account ("Registration Data"), such as your:

  • Email
  • First Name
  • Last Name
  • Company Name
  • Company Industry
  • Title
  • Country

Other Information: We also collect other information you may voluntarily provide. This may include content you provide for publication. We may also receive your communications with others through our Website and Services (such as contacting an author through our Website) or communications directly with us (such as through email, feedback or other forms or social media). If you are a subscribed user, we will also collect your user preferences, such as the types of articles you would like to read.

Information from third parties (such as, from your employer or LinkedIn): We may also receive information about you from third party sources. For example, your employer may provide your information to us, such as in connection with an article submitted by your employer for publication. If you choose to use LinkedIn to subscribe to our Website and Services, we also collect information related to your LinkedIn account and profile.

Your interactions with our Website and Services: As is true of most websites, we gather certain information automatically. This information includes IP addresses, browser type, Internet service provider (ISP), referring/exit pages, operating system, date/time stamp and clickstream data. We use this information to analyze trends, to administer the Website and our Services, to improve the content and performance of our Website and Services, and to track users' movements around the site. We may also link this automatically-collected data to personal information, for example, to inform authors about who has read their articles. Some of this data is collected through information sent by your web browser. We also use cookies and other tracking technologies to collect this information. To learn more about cookies and other tracking technologies that JD Supra may use on our Website and Services please see our "Cookies Guide" page.

How do we use this information?

We use the information and data we collect principally in order to provide our Website and Services. More specifically, we may use your personal information to:

  • Operate our Website and Services and publish content;
  • Distribute content to you in accordance with your preferences as well as to provide other notifications to you (for example, updates about our policies and terms);
  • Measure readership and usage of the Website and Services;
  • Communicate with you regarding your questions and requests;
  • Authenticate users and to provide for the safety and security of our Website and Services;
  • Conduct research and similar activities to improve our Website and Services; and
  • Comply with our legal and regulatory responsibilities and to enforce our rights.

How is your information shared?

  • Content and other public information (such as an author profile) is shared on our Website and Services, including via email digests and social media feeds, and is accessible to the general public.
  • If you choose to use our Website and Services to communicate directly with a company or individual, such communication may be shared accordingly.
  • Readership information is provided to publishing law firms and authors of content to give them insight into their readership and to help them to improve their content.
  • Our Website may offer you the opportunity to share information through our Website, such as through Facebook's "Like" or Twitter's "Tweet" button. We offer this functionality to help generate interest in our Website and content and to permit you to recommend content to your contacts. You should be aware that sharing through such functionality may result in information being collected by the applicable social media network and possibly being made publicly available (for example, through a search engine). Any such information collection would be subject to such third party social media network's privacy policy.
  • Your information may also be shared to parties who support our business, such as professional advisors as well as web-hosting providers, analytics providers and other information technology providers.
  • Any court, governmental authority, law enforcement agency or other third party where we believe disclosure is necessary to comply with a legal or regulatory obligation, or otherwise to protect our rights, the rights of any third party or individuals' personal safety, or to detect, prevent, or otherwise address fraud, security or safety issues.
  • To our affiliated entities and in connection with the sale, assignment or other transfer of our company or our business.

How We Protect Your Information

JD Supra takes reasonable and appropriate precautions to insure that user information is protected from loss, misuse and unauthorized access, disclosure, alteration and destruction. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. You should keep in mind that no Internet transmission is ever 100% secure or error-free. Where you use log-in credentials (usernames, passwords) on our Website, please remember that it is your responsibility to safeguard them. If you believe that your log-in credentials have been compromised, please contact us at

Children's Information

Our Website and Services are not directed at children under the age of 16 and we do not knowingly collect personal information from children under the age of 16 through our Website and/or Services. If you have reason to believe that a child under the age of 16 has provided personal information to us, please contact us, and we will endeavor to delete that information from our databases.

Links to Other Websites

Our Website and Services may contain links to other websites. The operators of such other websites may collect information about you, including through cookies or other technologies. If you are using our Website or Services and click a link to another site, you will leave our Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We are not responsible for the data collection and use practices of such other sites. This Policy applies solely to the information collected in connection with your use of our Website and Services and does not apply to any practices conducted offline or in connection with any other websites.

Information for EU and Swiss Residents

JD Supra's principal place of business is in the United States. By subscribing to our website, you expressly consent to your information being processed in the United States.

  • Our Legal Basis for Processing: Generally, we rely on our legitimate interests in order to process your personal information. For example, we rely on this legal ground if we use your personal information to manage your Registration Data and administer our relationship with you; to deliver our Website and Services; understand and improve our Website and Services; report reader analytics to our authors; to personalize your experience on our Website and Services; and where necessary to protect or defend our or another's rights or property, or to detect, prevent, or otherwise address fraud, security, safety or privacy issues. Please see Article 6(1)(f) of the E.U. General Data Protection Regulation ("GDPR") In addition, there may be other situations where other grounds for processing may exist, such as where processing is a result of legal requirements (GDPR Article 6(1)(c)) or for reasons of public interest (GDPR Article 6(1)(e)). Please see the "Your Rights" section of this Privacy Policy immediately below for more information about how you may request that we limit or refrain from processing your personal information.
  • Your Rights
    • Right of Access/Portability: You can ask to review details about the information we hold about you and how that information has been used and disclosed. Note that we may request to verify your identification before fulfilling your request. You can also request that your personal information is provided to you in a commonly used electronic format so that you can share it with other organizations.
    • Right to Correct Information: You may ask that we make corrections to any information we hold, if you believe such correction to be necessary.
    • Right to Restrict Our Processing or Erasure of Information: You also have the right in certain circumstances to ask us to restrict processing of your personal information or to erase your personal information. Where you have consented to our use of your personal information, you can withdraw your consent at any time.

You can make a request to exercise any of these rights by emailing us at or by writing to us at:

Privacy Officer
JD Supra, LLC
10 Liberty Ship Way, Suite 300
Sausalito, California 94965

You can also manage your profile and subscriptions through our Privacy Center under the "My Account" dashboard.

We will make all practical efforts to respect your wishes. There may be times, however, where we are not able to fulfill your request, for example, if applicable law prohibits our compliance. Please note that JD Supra does not use "automatic decision making" or "profiling" as those terms are defined in the GDPR.

  • Timeframe for retaining your personal information: We will retain your personal information in a form that identifies you only for as long as it serves the purpose(s) for which it was initially collected as stated in this Privacy Policy, or subsequently authorized. We may continue processing your personal information for longer periods, but only for the time and to the extent such processing reasonably serves the purposes of archiving in the public interest, journalism, literature and art, scientific or historical research and statistical analysis, and subject to the protection of this Privacy Policy. For example, if you are an author, your personal information may continue to be published in connection with your article indefinitely. When we have no ongoing legitimate business need to process your personal information, we will either delete or anonymize it, or, if this is not possible (for example, because your personal information has been stored in backup archives), then we will securely store your personal information and isolate it from any further processing until deletion is possible.
  • Onward Transfer to Third Parties: As noted in the "How We Share Your Data" Section above, JD Supra may share your information with third parties. When JD Supra discloses your personal information to third parties, we have ensured that such third parties have either certified under the EU-U.S. or Swiss Privacy Shield Framework and will process all personal data received from EU member states/Switzerland in reliance on the applicable Privacy Shield Framework or that they have been subjected to strict contractual provisions in their contract with us to guarantee an adequate level of data protection for your data.

California Privacy Rights

Pursuant to Section 1798.83 of the California Civil Code, our customers who are California residents have the right to request certain information regarding our disclosure of personal information to third parties for their direct marketing purposes.

You can make a request for this information by emailing us at or by writing to us at:

Privacy Officer
JD Supra, LLC
10 Liberty Ship Way, Suite 300
Sausalito, California 94965

Some browsers have incorporated a Do Not Track (DNT) feature. These features, when turned on, send a signal that you prefer that the website you are visiting not collect and use data regarding your online searching and browsing activities. As there is not yet a common understanding on how to interpret the DNT signal, we currently do not respond to DNT signals on our site.

Access/Correct/Update/Delete Personal Information

For non-EU/Swiss residents, if you would like to know what personal information we have about you, you can send an e-mail to We will be in contact with you (by mail or otherwise) to verify your identity and provide you the information you request. We will respond within 30 days to your request for access to your personal information. In some cases, we may not be able to remove your personal information, in which case we will let you know if we are unable to do so and why. If you would like to correct or update your personal information, you can manage your profile and subscriptions through our Privacy Center under the "My Account" dashboard. If you would like to delete your account or remove your information from our Website and Services, send an e-mail to

Changes in Our Privacy Policy

We reserve the right to change this Privacy Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our Privacy Policy will become effective upon posting of the revised policy on the Website. By continuing to use our Website and Services following such changes, you will be deemed to have agreed to such changes.

Contacting JD Supra

If you have any questions about this Privacy Policy, the practices of this site, your dealings with our Website or Services, or if you would like to change any of the information you have provided to us, please contact us at:

JD Supra Cookie Guide

As with many websites, JD Supra's website (located at (our "Website") and our services (such as our email article digests)(our "Services") use a standard technology called a "cookie" and other similar technologies (such as, pixels and web beacons), which are small data files that are transferred to your computer when you use our Website and Services. These technologies automatically identify your browser whenever you interact with our Website and Services.

How We Use Cookies and Other Tracking Technologies

We use cookies and other tracking technologies to:

  1. Improve the user experience on our Website and Services;
  2. Store the authorization token that users receive when they login to the private areas of our Website. This token is specific to a user's login session and requires a valid username and password to obtain. It is required to access the user's profile information, subscriptions, and analytics;
  3. Track anonymous site usage; and
  4. Permit connectivity with social media networks to permit content sharing.

There are different types of cookies and other technologies used our Website, notably:

  • "Session cookies" - These cookies only last as long as your online session, and disappear from your computer or device when you close your browser (like Internet Explorer, Google Chrome or Safari).
  • "Persistent cookies" - These cookies stay on your computer or device after your browser has been closed and last for a time specified in the cookie. We use persistent cookies when we need to know who you are for more than one browsing session. For example, we use them to remember your preferences for the next time you visit.
  • "Web Beacons/Pixels" - Some of our web pages and emails may also contain small electronic images known as web beacons, clear GIFs or single-pixel GIFs. These images are placed on a web page or email and typically work in conjunction with cookies to collect data. We use these images to identify our users and user behavior, such as counting the number of users who have visited a web page or acted upon one of our email digests.

JD Supra Cookies. We place our own cookies on your computer to track certain information about you while you are using our Website and Services. For example, we place a session cookie on your computer each time you visit our Website. We use these cookies to allow you to log-in to your subscriber account. In addition, through these cookies we are able to collect information about how you use the Website, including what browser you may be using, your IP address, and the URL address you came from upon visiting our Website and the URL you next visit (even if those URLs are not on our Website). We also utilize email web beacons to monitor whether our emails are being delivered and read. We also use these tools to help deliver reader analytics to our authors to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

Analytics/Performance Cookies. JD Supra also uses the following analytic tools to help us analyze the performance of our Website and Services as well as how visitors use our Website and Services:

  • HubSpot - For more information about HubSpot cookies, please visit
  • New Relic - For more information on New Relic cookies, please visit
  • Google Analytics - For more information on Google Analytics cookies, visit To opt-out of being tracked by Google Analytics across all websites visit This will allow you to download and install a Google Analytics cookie-free web browser.

Facebook, Twitter and other Social Network Cookies. Our content pages allow you to share content appearing on our Website and Services to your social media accounts through the "Like," "Tweet," or similar buttons displayed on such pages. To accomplish this Service, we embed code that such third party social networks provide and that we do not control. These buttons know that you are logged in to your social network account and therefore such social networks could also know that you are viewing the JD Supra Website.

Controlling and Deleting Cookies

If you would like to change how a browser uses cookies, including blocking or deleting cookies from the JD Supra Website and Services you can do so by changing the settings in your web browser. To control cookies, most browsers allow you to either accept or reject all cookies, only accept certain types of cookies, or prompt you every time a site wishes to save a cookie. It's also easy to delete cookies that are already saved on your device by a browser.

The processes for controlling and deleting cookies vary depending on which browser you use. To find out how to do so with a particular browser, you can use your browser's "Help" function or alternatively, you can visit which explains, step-by-step, how to control and delete cookies in most browsers.

Updates to This Policy

We may update this cookie policy and our Privacy Policy from time-to-time, particularly as technology changes. You can always check this page for the latest version. We may also notify you of changes to our privacy policy by email.

Contacting JD Supra

If you have any questions about how we use cookies and other tracking technologies, please contact us at:

- hide

This website uses cookies to improve user experience, track anonymous site usage, store authorization tokens and permit sharing on social media networks. By continuing to browse this website you accept the use of cookies. Click here to read more about how we use cookies.