Jun 12 2019

BALTIMORE—In Return Mail, Inc. v. United States Postal Service, the US Supreme Court ruled that the US government doesn’t qualify as a “person” for petitioning the Patent Trial and Appeal Board to institute inter partes review proceedings under the America Invents Act (AIA).

Womble Bond Dickinson patent litigation attorney Barry Herman discussed the Supreme Court’s decision with IP Watchdog. Herman tells IP Watchdog, “I think the dissent got it right. The majority states that allowing the government to invoke post-grant review procedures would create an “awkward situation” because one Government agency (the USPTO) would end up adjudicating the rights of another government agency (here, the Postal Service). How is that any more awkward than post-grant review procedures themselves, where a portion of the USPTO (the patent examiners) allows a patent, but then another portion of the USPTO (PTAB judges) routinely invalidates those same patents?”

“Judge Breyer correctly dismissed the majority’s reliance on the fact that a government entity does not face the threat of a preliminary injunction, stating “infringement suits against the government can threaten to injure government interests even absent the threat of injunctive relief.” In my opinion, if the government can be sued for patent infringement and face the possibility of being responsible for a large damages award, it should be allowed to petition the USPTO to invalidate that patent, just like other accused infringers.”

Click here to read “Patent Attorneys Address Implications of SCOTUS’ Return Mail Ruling” at IP Watchdog.

Barry Herman is a Chambers-ranked IP litigator who tries cases in district courts throughout the country, at the USPTO, and at the ITC. A chemical engineer by training, Herman litigates patent disputes in the chemical, mechanical and electrical arts, and has significant experience with trademark and antitrust litigation. Outside of the courtroom, he assists clients with due diligence, opinions and strategic procurement of new technologies. He is Managing Partner of Womble Bond Dickinson’s Baltimore office.