Federal Circuit says U.S. government is a ‘person’, can file CBM to challenge patents

By Gene Quinn
August 29, 2017

Yesterday the United States Court of Appeals for the Federal Circuit issued a decision in Return Mail, Inc. v. United States Postal Service, which upheld the invalidity of all challenged claims in a covered business method (CBM) challenge decided by the Patent Trial and Appeal Board (PTAB). In the CBM proceeding the PTAB panel found the claims to be directed to patent ineligible subject matter under 35 U.S.C. § 101.

That patent claims were found to be direct to patent ineligible subject matter in a CBM proceeding is hardly newsworthy. No patent that has entered CBM has done anything other than fall to date. What is newsworthy, however, is that the Federal Circuit also upheld a controversial ruling of the PTAB, which determined that the United States has standing to bring a CBM challenge. Legally speaking, the United States, or in this case the United States Postal Service, is considered a person within the meaning of AIA § 18(a)(1)(B).

To put this into perspective, despite the fact that the America Invents Act (AIA) does not specifically identify the United States as qualifying to be considered a person under AIA § 18(a)(1)(B), and despite the fact that the United States Supreme Court has unequivocally ruled that a sovereign such as the United States government is not a person absent an explicit statement of intent by Congress, the Federal Circuit (over a convincing and persuasive dissent from Judge Newman) decided that the United States federal government can challenge patents issued by the United States federal government in a post grant CBM proceeding.

The Majority Decision

According to the Federal Circuit, in an opinion written by Chief Judge Prost and joined by Judge Wallach, “[b]ecause the PTO is an administrative agency the Article III standing requirement for a ‘case and controversy’ does not apply to matters before it.” Instead, the relevant provision to analyze standing was AIA § 18(a)(1)(B), which says that a person may file a CBM if they have been sued for patent infringement, or has been charged with patent infringement.

The first question the Federal Circuit addressed was whether the court even had the authority to determine whether the PTAB made the proper decision in the first place. “There is no doubt that, despite the AIA’s no-appeal provisions, judicial review remains available on questions of whether the Board exceeded statutory limits on its authority to invalidate,” Prost wrote citing Versata Dev. Grp. v. SAP Am., Inc., 793 F.3d 1306, 1320 (Fed. Cir. 2015). Thus, because the standing question related to whether the PTO had ultimate authority to act, the Federal Circuit held that the appeal bar of 35 U.S.C. § 324(e) did not bar judicial review.

The next issue addressed by the Federal Circuit was an argument by the Return Mail that the action it brought against the government under 28 U.S.C. § 1498(a) was not a patent infringement action and, therefore, the USPS should not have had standing to bring a CBM challenge. The Federal Circuit recognized that there are differences between a §1498(a) claim and the typical patent infringement claim, but at the end of the day the government incurs liability under §1498(a) for engaging in infringing acts without permission and, therefore, explained evidence was “insufficient to compel a conclusion that Congress intended to exclude a government-related party sued under 1498(a) from being able to petition for CBM review.”

With respect to whether the United States qualifies as a person under the meaning of AIA § 18(a)(1)(B), the majority noted that neither party argued that the word was relevant, although Judge Newman in dissent found the word to be extremely relevant. Still, Chief Judge Prost and Judge Wallach were unconvinced. The majority attempted to criticize Judge Newman’s rationale, but seemed largely unpersuasive. According to the majority, when defining the term person there are no hard and fast rules and context matters. Apparently, the majority sees somewhere in the AIA an intent of Congress to allow the United States to either quality as a person or the explicit envisioning that the United States would be allowed to be a party capable of bringing challenges to issued patents. Indeed, although the majority says the AIA does not exclude the government from being a person, all the majority provides for support is citation to other sections that authorize any person not the owner to challenge a patent in an inter partes review (IPR).

“We believe the better reading of ‘person’ in § 18(a)(1)(B) does not exclude the government,” Prost concluded.

The Dissent

In dissent, Judge Newman is again characteristically correct, starting from the very beginning.

“My colleagues hold that the question of whether the government is a ‘person’ subject to the AIA was waived by the parties’ failure to object,” Newman wrote. “Although some issues may be waived, statutory jurisdiction is not subject to waiver.”

Newman is of course 100% correct. The fact that jurisdiction can be challenged at any point of any proceeding and is unwaivable is black-letter law that every first year law student learns in Civil Procedure. Throughout my career I have been shocked at how many times judges in writing will make statements to the contrary. Clearly, when a judge says that a jurisdiction question like this is waivable what they are doing is violating hundreds of years of well-established law because they have determined that a certain desired outcome is preferable to the right legal outcome. Truly disappointing.

Equally persuasive, Judge Newman correctly pointed out that there is nothing in the AIA to suggest that Congress intended the United States government to be considered a person, and there is no mention of the Court of Federal Claims, despite the fact that Congress would well know that the government could be sued for patent infringement in the Court of Federal Claims. Newman wrote:

The general statutory definition is that a “person” does not include the United States and its agencies unless expressly provided. It is at least as reasonable to assume that Congress, and those seeking the improvements provided by the America Invents Act, knew that “person” did not include the United States, lest additional complexities appear in the path of enactment of the America Invents Act.

The legislative record does not explore these potential complexities, but neither is there any suggestion that the standard rule of exclusion of the United States from the definition of “person” was simply legislative inadvertence, as my colleagues appear to believe. The Congress cannot be deemed innocent of knowing that the government can indeed be sued for infringement, but only in the Court of Federal Claims; yet that court is conspicuously absent from the designation of tribunals subject to the America Invents Act. See, e.g., 35 U.S.C. §§ 315(e), 325(e), and AIA § 18(a)(1)(D) (stating provisions applicable to the PTO, the district courts, and the ITC).

Judge Newman also pointed out that according to the United States Supreme Court has spoken on this issue and has said that the United States government is not a person. In United States v. United Mine Workers of Am., 330 U.S. 258 (1947), the Supreme Court explained:

In common usage the term [“person”] does not include the sovereign, and statutes employing it will ordinarily not be construed to do so… The absence of any comparable provision extending the term to sovereign governments implies that Congress did not desire the term to extend to them.

Clearly, Judge Newman is correct and the majority is wrong. Why the majority of the Federal Circuit would reach such a suspect decision that goes directly against the text of the statute and a Supreme Court decision on point is a mystery. This is, however, why the Supreme Court in recent years has been so interested in patent cases. The Federal Circuit as a whole has continued to befuddle and mystify. This decision, while more curious than many no doubt, is just another in a long line of rather inexplicable mistakes from a court that once upon a time used to specialize in getting patent matters correct.

 

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 21 Comments comments. Join the discussion.

  1. John White August 29, 2017 2:17 pm

    Surprising no one …. the CAFC gets another one wrong…..

  2. Tesia Thomas August 29, 2017 2:47 pm

    WTF!!!!

    Well…Uncle Sam should be more easily sued outside of Court of Fed. Claims then.
    And what of the protections for public IP and PTAB?
    Can we institute an IPR against Uncle Sam and whoever it gives money to now?

  3. Tesia Thomas August 29, 2017 3:35 pm

    I just don’t understand how people can be this deceitful and hypocritical.

    There are people who wait for decades to LET the government sue them because the government is not considered a regular person.
    And…now it is.

  4. Tesia Thomas August 29, 2017 3:37 pm

    Correction: to LET them sue the govt

  5. Ken August 29, 2017 4:36 pm

    Thankfully it seems that Judge Newman at least gets on a lot of these panels that end up with such bad decisions, so we at least have some great dissents on the records. (Small comfort, perhaps, but better than not!)

  6. B August 29, 2017 5:49 pm

    “Although some issues may be waived, statutory jurisdiction is not subject to waiver.”

    Judge Newman is correct, and the CAFC is populated by baboons. This is first-semester civil procedure.

  7. step back August 29, 2017 7:30 pm

    Is this “person” guilty of fraud for having enticed the inventor into filing an application that ultimately the same “person” will determine to first be valid and granted and then invalid in a post grant proceeding after the issue and maintenance fees have been paid ?

  8. angry dude August 29, 2017 8:53 pm

    step back@7

    exactly, dude
    try to run your private store like this and you get arrested or shot next day
    but USPTO can sell goodies and then take them back without returning money

  9. Night Writer August 29, 2017 10:15 pm

    @7 step back:

    Seems to meet all the elements. 🙂

  10. Invention Rights August 30, 2017 1:17 am

    @7 step back.

    Yes, it is fraud. But the attorneys are participating, billing the inventors the whole way. Who will take the case against the PTO for fraud?

  11. Anon August 30, 2017 7:32 am

    But the attorneys are participating, billing the inventors the whole way.

    Your aspersion does not carry. ANY agreement with those same attorneys “billing.. the whole way” is one of mutual assent.

    You are directing your venom at the wrong people.

  12. EG August 30, 2017 7:52 am

    Hey Gene,

    As usual, Newman in dissent got it right and accurately characterizes the majority position as a gross misinterpretation of what “person” refers to and it’s not the federal government. Frankly, Prost is a disaster as the Chief Judge.

    And don’t think SCOTUS would necessarily get this right either-remember Citizen’s United and who they said qualified as a “person.”

  13. EG August 30, 2017 8:01 am

    Hey Gene,

    I would also note that if SCOTUS rules in favor of the petitioner in Oil States, this misinterpretation of “person” in the CBM portion of the AIA statute won’t matter-CBM proceedings will be declared just as unconstitutional as IPRs.

  14. Edward Heller August 30, 2017 8:05 am

    Prost.

    Always laboring heavily on the side of the USPTO and against patent owners.

    She wrote Achates. She was on the panel in MCM Portfolio LLC. Her lack of concern over precedent is on display in this case and in Achates.

    If patent owners are ever going to have a decent chance at the Federal Circuit, something must be done about this judge. Perhaps we ought to consider promoting her to some position in the government where she can do some good.

  15. Valuationguy August 30, 2017 8:36 am

    Ned,
    I entirely agree with you that much of the bad law to come out of the CAFC can be traced back to Prost (and Dyk)…neither of which I would voluntarily allow to even arbitrate a dispute of less than $100, let alone create precedence setting patent law. It was Sharon (directly or via an ally to whom she passed the info) which backstabbed Rader by leaking his personal recommendation letter regarding one of the lawyers who practiced before his court to the press (that led to Rader’s ‘voluntary’ resignation) so she could become Chief Justice (since she knew she was the next in-line to become Chief Judge if anything happened to Rader given the internal procedures of the Federal Circuit.)

    From my research, while the actual panels are constituted randomly by computer (from the daily “available Judges”….a list provided by Prost’s office)…there is nothing in IOP#3 of the Federal Circuit Internal Operating Procedures which states the CASES are randomly ASSIGNED to each panel. In fact, the clerks are REQUIRED to ‘balance’ the cases among the Justices by law….so all randomness is thrown out the window. Thus leaving open plenty of room for ‘interpretation’ allowing Prost’s office to assign certain cases to panels on which she, Dyk or her other anti-NPE allies on the Court want to lavish “special attention” (i.e. ream the patent owner).

  16. Night Writer August 30, 2017 8:53 am

    @14, 15: I agree.

    I think the CAFC can best be described as a goon squad.

  17. Bemused August 30, 2017 10:30 am

    Night Writer@16: Calling the CAFC a goon squad is insulting to goons.

  18. B August 30, 2017 11:29 am

    ‘And don’t think SCOTUS would necessarily get this right either-remember Citizen’s United and who they said qualified as a “person.”’
    .
    Citizens United asked a completely different question – namely, whether a company (not the government) is a “person” for the purposes of free speech. This put citizens of modest means who decide to pool their financial resources on par with millionaires and billionaires. Free speech SHOULD be interpreted broadly. In contrast, the present case presents an issue of subject matter jurisdiction. Ergo, I respectfully assert that CU is by no means precedential.

  19. B August 30, 2017 11:31 am

    That said, EG, I agree with everything else you said.

  20. iwasthere August 30, 2017 11:41 am

    Huh. Does anyone know whether the government, as the patent owner, can be hauled into an IPR? Guess so now. And yes, the CAFC, is doing a very poor job of supervising it’s special pet the PTAB. It’s just one expansion and power grab after another with PTAB, and the CAFC coming up with one absurd reason after another to up-hold the PTAB.

  21. B August 30, 2017 12:13 pm

    “And yes, the CAFC, is doing a very poor job of supervising it’s special pet the PTAB.”

    The attorneys at the USPTO Solicitor’s Office are as sleazy as they come. I know this from first-hand knowledge. The case I’m in front of the CAFC now is another 101 rejection based on: (1) The claims use a general purpose computer, and (2) there’s a math formula involved. That’s it. The PTAB didn’t address the claims as a whole under step 1, and ignored an advantage under step 2. How do I lose this one under Section 706 of the APA? I expect the Solicitor’s Office to misrepresent law AGAIN, but this time I’ve promised to file for sanctions if they do. I won’t win no matter how egregious b/c the CAFC does treat the PTO like a favored retarded child.

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