Return Mail, Inc. v. United States Postal Service

Return Mail, Inc. owned a patent for processing undeliverable mail. It sued the United States Postal Service for patent infringement after USPS introduced a similar system. Instead of litigating only in court, USPS petitioned the Patent Trial and Appeal Board to conduct a covered business method review under the Leahy-Smith America Invents Act, seeking to invalidate the patent. The PTAB agreed and canceled all challenged claims. Return Mail appealed, but the Federal Circuit affirmed, holding that the government is a “person” eligible to petition for review. The Supreme Court reversed, concluding that a federal agency is not a “person” under the AIA’s review provisions, thereby barring the government from using this administrative pathway to challenge patents.

The Supreme Court ruled 6-3 that the United States Postal Service is not a “person” capable of seeking covered business method review, reversed the Federal Circuit’s judgment, and remanded the case.

Whether a federal government agency is a “person” authorized to petition for covered business method patent review under the Leahy-Smith America Invents Act.

The decision affirmed that government agencies cannot exploit AIA administrative patent challenges, protecting patent holders from asymmetric procedural burdens. It reinforced the statutory presumption that the word “person” excludes the sovereign unless Congress expressly states otherwise, shaping future patent litigation and government intellectual property strategies.