Petition: Is the government a person and can it infringe?

by Dennis Crouch

The The usa Invents Act (AIA) makes it possible for for a “person” to file a included business technique assessment (CBM) to challenge an issued patent.  See AIA Section 18 (simply because they it is a temporary system, the CBM provisions have not been codified in the United States Code).  In Return Mail v. USPS, Docket No. No. 17-1594 (Supreme Court 2018), the CBM petitioner was the U.S. Postal Service – i.e., the U.S. govt, and the question on petition is no matter if the govt counts as a “person” below the statute:

1. Whether the govt is a “person” who could petition to institute assessment proceedings below the AIA.

(Petition for Writ of Certiorari).

A major portion of the argument here is that the statute usually treats the U.S. govt otherwise — supplying it sovereign immunity but for a confined remedy for govt use under 28 U.S.C. 1498(a).  The argument here is that – if the Authorities is not topic to be handled as a human being below the infringement statute area 271(a) (“whoever without authority . . .”), then it also should not get the profit of staying handled as a human being below the AIA Demo routine.

The 2nd question introduced in the petition focuses on the infringement fees limitation for CBM petitions.  In contrast to IPR and PGR petitions, CBM petitions my only be submitted if petitioners — the “person” (or its privy) — “has been sued for infringement of the [challenged] patent or has been billed with infringement below that patent.”  On this level, the petition clarifies that the govt is immune from go well with for patent infringement — and the area 1498 motion is an eminent domain takings assert. As this kind of, the 1498 motion does not rely as an “infringement” cost sufficient to allow CBM assessment. Consequently, the 2nd question:

2. Whether a area 1498(a) motion for the eminent domain getting of a patent license by the govt is a go well with for “infringement” below the AIA.

The setup here is pretty confined simply because it is only concentrated on governmental use, but it is the type of concerns very likely to get interest from the Supreme Court.  In its decision in the situation, the Federal Circuit ruled (in excess of a dissent) that a Section 1498 motion counts as an infringement lawsuit for the functions of the AIA and that the U.S. Authorities counts as a “person” below the statute — writing that “The AIA does not look to use the term ‘person’ to exclude the govt in other provisions.”



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