Return Mail v. United States Postal Service — Federal Government Cannot Petition for AIA Post-Grant Review

Background

Return Mail, Inc. holds a patent on a method for processing undeliverable mail. It sued the United States Postal Service (USPS) for patent infringement in the Court of Federal Claims, the court where patent suits against the federal government are heard. In response, the USPS filed a petition at PTAB for inter partes review (IPR) of Return Mail’s patent, seeking to have it declared invalid.

Return Mail argued that IPR and related proceedings under the AIA are only available to a “person” — and that the federal government is not a “person” within the meaning of the statute. PTAB rejected this argument, instituted the review, and found the patent’s claims unpatentable. The Federal Circuit affirmed. Return Mail petitioned the Supreme Court on the threshold question.

The Court’s Holding

Justice Sotomayor, writing for a 6-3 majority, held that the federal government is not a “person” for purposes of the AIA’s post-grant review provisions. When Congress uses the word “person” in a statute, there is a longstanding presumption that the sovereign is excluded unless Congress says otherwise. The AIA does not clearly indicate that “person” was intended to include the federal government, and several contextual clues confirm this: the statute’s legislative history, other provisions suggesting only private parties would petition for review, and the AIA’s overall structure focused on the private patent system.

The result: USPS (and any other federal agency) cannot file IPR, PGR, or CBM petitions. If the government is sued for patent infringement in the Court of Federal Claims, it must defend itself there — it cannot resort to PTAB proceedings to cancel the patent administratively.

Key Takeaways

• The federal government — including agencies like the USPS, DOD, or any other federal entity — cannot petition for IPR, PGR, or CBM review at PTAB.
• Patent holders who sue the federal government in the Court of Federal Claims face a defendant that cannot use PTAB post-grant proceedings as a defensive tool.
• The government may still raise invalidity as a defense in Court of Federal Claims litigation; it simply cannot initiate a parallel PTAB challenge.
• Private government contractors sued for patent infringement based on government-directed conduct may still petition for IPR on their own behalf.

Why It Matters

The federal government is one of the largest technology users in the world — and one of the most frequently sued defendants in patent cases. Before this ruling, it had been using IPR petitions as a cost-effective way to attack patents asserted against it. That avenue is now closed.

For patent holders with government-related inventions (medical devices, defense technology, communications systems), this is a meaningful win: the government cannot use the administrative patent challenge system to undermine their patents. Litigation in the Court of Federal Claims remains the arena where these disputes must be resolved.