Richard Rainey of Covington & Burling.

Almost anybody can ask the Patent Trial and Appeal Board (PTAB) to review the validity of a patent under the America Invents Act (AIA). Companies that have been sued for patent infringement are the most frequent petitioners, but trade associations, nonprofits, defensive patent aggregators and even hedge funds shorting patent owners’ stock are welcome at the PTAB.

But now the Supreme Court looks poised to exclude one type of AIA petitioner: the U.S. government. On Oct. 26, the justices agreed to hear Return Mail v. United States Postal Service. The justices limited argument to a single question: “Whether the government is a ‘person’ who may petition to institute review proceedings under the AIA.”

The AIA states that a “a person who is not the owner of patent” may petition for inter partes review (IPR) of a patent, and any person sued for infringement may petition for covered business method (CBM) review. Both are administrative procedures for determining patent validity at the PTAB.

Corporations are generally understood to be “persons” under the law. Return Mail Inc., which owns a patent on a method for processing returned mail more efficiently, didn’t even challenge the government’s authority to petition before the PTAB or at the U.S. Court of Appeals for the Federal Circuit.

But Federal Circuit Judge Pauline Newman concluded in Return Mail v. USPS that the PTAB didn’t have statutory jurisdiction to take up the case and invalidate Return Mail’s patent. “The general statutory definition is that a ‘person’ does not include the United States and its agencies unless expressly provided,” Newman wrote.

Newman ended up in dissent, however. Chief Judge Sharon Prost, joined by Judge Evan Wallach, ruled that the overall context of the AIA suggested that Congress intended to include the government as possible petitioners.

Return Mail, which is represented by a Covington & Burling team led by partner Richard Rainey, ran with Newman’s argument in his cert petition. He pointed to a 2000 Supreme Court decision that refers to the court’s “longstanding interpretive presumption that ‘person’ does not include the sovereign.” Justice Antonin Scalia wrote in that case that the presumption may be disregarded “only upon some affirmative showing of statutory intent to the contrary.”

The solicitor general’s office argues that Congress used “person” in other parts of the AIA in ways that were clearly intended to include the government. When the same words are used in different parts of the same statute, they’re presumed to have the same meaning, the SG argues.

The solicitor general also raises a policy argument. When a weak patent is asserted against the government, “Congress’s interest in providing an efficient non-judicial mechanism for reconsidering the patent’s validity is no less implicated than when the patent is asserted against a private party,” the SG argues.

Ropes & Gray patent attorneys Scott McKeown and Matthew Rizzolo, who aren’t involved in the case, note that Return Mail took a similar path to the court as another PTAB case from last term, SAS Institute v. Iancu. Newman dissented in each on a discrete issue of statutory interpretation, followed by a successful cert petition, they point out.

Rizzolo says the impact of this case is likely to be limited. Federal agencies have brought only a handful of AIA petitions over the six years the law’s been in effect.

But, Rizzolo said, if the Supreme Court reads the term “person” to exclude any sovereign, that could theoretically extend to states or foreign countries, or entities affiliated with them.