AIA Post Issuance Proceedings – Patent Owner Challenges Standing of United States Entities to Bring PGR Review of CBM Patent

The United States Court of Federal Claims recently deferred decision on whether to stay a litigation brought in 2011 by a patent owner against the United States.

In the case, captioned Return Mail, Inc. v. United States, patent owner Return Mail seeks compensation under 28 U.S.C. § 1498(a) for what it alleges to be use and manufacture by or for the U.S. Postal Service (USPS) of its patent related to methods and systems for providing address change services. The government’s stay motion in the Return Mail litigation was filed on the same day that it filed a petition with the Patent Trial and Appeal Board (PTAB) for post-grant review (PGR) of the patent-in-suit, which it claims is a covered business method (CBM) patent under the America Invents Act. The government’s petition and related stay motion come more than three years into the litigation.

Interestingly, in the PTAB proceeding, the patent owner argues that the Postal Service lacks standing to seek CBM review because Return Mail’s lawsuit based on 28 U.S.C § 1498 does not charge the United States with patent infringement. In the Claims Court litigation, the patent owner further asserts that no evidence exists that CBM Review was ever intended to include government entities. The Court of Federal Claims has suspended proceedings on the stay motion until the PTAB issues a decision on whether to institute the requested review.

The United States has been the petitioner in at least one other PGR proceeding, IPR 2014-00714, filed by the United States Department of Homeland Security. That proceeding relates to Larry Golden v. United States, which does contain allegations of patent infringement.

Gibbons will continue to monitor these proceedings and related developments.

You may also like...