Patent Reexamination
Post-Issuance Review Proceedings
Defense in an Infringement Action
Ex Parte Reexamination
Inter Partes Reexamination
Inter Partes Review
Post-Grant Review
Covered-Business-Method Review
Leahy-Smith America Invents Act
Interpretation (Statute)
Dictionary Act
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 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.
(…) 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).
Once sued, an accused infringer can attempt to
prove by clear and convincing evidence “that the patent never should have
issued in the first place.” Microsoft Corp. v. i4i L. P., 564 U.
S. 91, 96–97 (2011); see 35 U. S. C. §282(b). If a defendant succeeds in
showing that the claimed invention falls short of one or more patentability
requirements, the court may deem the patent invalid and absolve the defendant
of liability.
The Patent Office may also reconsider the
validity of issued patents. Since 1980, the Patent Act has empowered the
Patent Office “to reexamine—and perhaps cancel—a patent claim that it had previously
allowed.” Cuozzo Speed Technologies, LLC v. Lee, 579 U. S.
___, ___ (2016) (slip op., at 3). This procedure is known as ex parte
reexamination. “Any person at any time” may cite to the Patent Office certain
prior art that may “bear on the patentability of any claim of a particular
patent”; and the person may additionally request that the Patent Office
reexamine the claim on that basis. 35 U. S. C. §§301(a), 302(a). If the Patent
Office concludes that the prior art raises “a substantial new question of
patentability,” the agency may reexamine the patent and, if warranted, cancel
the patent or some of its claims. §§303(a), 304–307. The Director of the Patent
Office may also, on her “own initiative,” initiate such a proceeding. §303(a).
In 1999 and 2002, Congress added an “inter
partes reexamination” procedure, which similarly invited “any person at any
time” to seek reexamination of a patent on the basis of prior art and allowed
the challenger to participate in the administrative proceedings and any subsequent
appeal. See §311(a) (2000 ed.); §§314(a), (b) (2006 ed.); Cuozzo Speed
Technologies, 579 U. S., at ___ (slip op., at 3).
In 2011, Congress overhauled the patent system
by enacting the America Invents Act (AIA), which created the Patent Trial and
Appeal Board and phased out inter partes reexamination. See 35 U. S. C. §6; H.
R. Rep. No. 112–98, pt. 1, pp. 46–47. In its stead, the AIA tasked the Board
with overseeing three new types of post-issuance review proceedings.
First, the “inter partes review” provision
permits “a person” other than the patent owner to petition for the review and
cancellation of a patent on the grounds that the invention lacks novelty or
nonobviousness in light of “patents or printed publications” existing at the
time of the patent application. §311.
Second, the “post-grant review” provision
permits “a person who is not the owner of a patent” to petition for review and
cancellation of a patent on any ground of patentability. §321; see §§282(b)(2),
(b)(3). Such proceedings must be brought within nine months of the patent’s
issuance. §321.
Third, the “covered-business-method review” (CBM
review) provision provides for changes to a patent that claims a method for
performing data processing or other operations used in the practice or
management of a financial product or service. AIA §§18(a)(1), (d)(1), 125
Stat.329, note following 35 U. S. C. §321, p. 1442. CBM review tracks the
“standards and procedures of” post-grant review with two notable exceptions:
CBM review is not limited to the nine months following issuance of a patent,
and “a person” may file for CBM review only as a defense against a charge or
suit for infringement. §18(a)(1)(B),125 Stat. 330.
The CBM review program will stop accepting new
claims in 2020. See AIA §18(a)(3)(A), 125 Stat. 330; 77 Fed. Reg. 48687 (2012).
(…) Any party “dissatisfied” with the Board’s final
decision may seek judicial review in the Court of Appeals for the Federal
Circuit, §§319, 329; see §141(c), and the Director of the Patent Office may
intervene, §143.
In sum, in the post-AIA world, a patent can be
reexamined either in federal court during a defense to an infringement action,
in an ex parte reexamination by the Patent Office, or in the suite of three
post-issuance review proceedings before the Patent Trial and Appeal Board.
(…) The AIA provides that only “a person” other
than the patent owner may file with the Office a petition to institute a
post-grant review or inter partes review of an issued patent. 35 U. S. C.
§§311(a), 321(a). The statute likewise provides that a “person” eligible to
seek CBM review may not do so “unless the person or the person’s real party in
interest or privy has been sued for infringement.” AIA §18(a)(1)(B), 125 Stat.
330. The question in this case is whether the Government is a “person” capable
of instituting the three AIA review proceedings.
The patent statutes do not define the term
“person.” In the absence of an express statutory definition, the Court applies
a “longstanding interpretive presumption that ‘person’ does not include the
sovereign,” and thus excludes a federal agency like the Postal Service.
(…) This presumption reflects “common usage.”
(…) It is also an express directive from Congress: The Dictionary Act has since
1947 provided the definition of “‘person’ ” that courts use “in determining the
meaning of any Act of Congress, unless the context indicates otherwise.” 1 U.
S. C. §1; (…) The Act provides that the word “ ‘person’ . . . includes
corporations, companies, associations, firms, partnerships, societies, and
joint stock companies, as well as individuals.” §1. Notably absent from the
list of “persons” is the Federal Government.
(…) Given the presumption that a statutory
reference to a “person” does not include the Government, the Postal Service
must show that the AIA’s context indicates otherwise. Although the Postal
Service need not cite to “an express contrary definition,” Rowland, 506
U. S., at 200, it must point to some indication in the text or context of the statute
that affirmatively shows Congress intended to include the Government. See Cooper,
312 U. S., at 605.
(…) Patent Office’s Manual of Patent Examining
Procedure (MPEP)
(…) This Court has not decided whether
common-law estoppel applies in §1498 suits (cf. fn. 10).
(U.S. Supreme Court, June 10, 2019, Return Mail,
Inc. v. Postal Service, Docket No. 17-1594, J. Sotomayor)
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