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Supreme Court to Address Whether Government Can Petition for AIA Post-Grant Review

The Supreme Court of the United States granted, in part, Return Mail’s petition for certiorari to address whether the federal government has standing to challenge patents using post-grant proceedings under the America Invents Act (AIA). Return Mail, Inc. v. United States Postal Serv., Case No. 17-1594(Supr. Ct. Oct. 26, 2018). The question presented is:

Whether the government is a “person” who may petition to institute review proceedings under the AIA.

Return Mail owns a patent directed to processing mail that is undeliverable due to an inaccurate or obsolete address for the intended recipient. Return Mail sued the US Postal Service for patent infringement. The Postal Service subsequently filed a petition for covered business method review of the patent. Return Mail opposed, arguing that the Postal Service lacked standing because it was a government entity and not a person as required by the relevant statutory provisions. The Patent Trial and Appeal Board (PTAB) disagreed, finding that the Postal Service was not statutorily barred from filing the petition. On the merits, the PTAB determined that the challenged patent claims were directed to ineligible subject matter. Return Mail appealed, and the US Court of Appeals for the Federal Circuit affirmed the PTAB’s decision (IP Update, Vol. 20, No. 9). Return Mail appealed to the Supreme Court, which granted certiorari in part.

© 2020 McDermott Will & Emery


About this Author

Amol Parikh, McDermott Will Emery, Chicago, patent lawyer, Intellectual Property Litigation Attorney

Amol Parikh is an associate in the law firm of McDermott Will & Emery LLP and is based in the Firm's Chicago office.  He focuses his practice on IP litigation, counseling and prosecution. Amol has been recognized as a 2011 Illinois Rising Star in Intellectual Property by Law & Politics.  Rising Stars are lawyers under the age of 40 that have been in practice for 10 years or less.  No more than 2.5 percent of the lawyers in Illinois are named as Rising Stars.

Amol has...