Return Mail Inc. v. U.S. Postal Service

U.S. Supreme Court · decided June 10, 2019 · Supreme Court Database (Spaeth)

Decided
June 10, 2019
Term
October Term 2018
Vote
6–3
Majority author
Justice Sotomayor
Issue area
Economic Activity
Disposition
Reversed and remanded
Outcome
Petitioning party won
Ideological direction
Conservative

Opinion excerpt

Justice SOTOMAYOR delivered the opinion of the Court. In the Leahy-Smith America Invents Act of 2011, 35 U.S.C. § 100 et seq. , Congress created the Patent Trial and Appeal Board and established three new types of administrative proceedings before the Board that allow a "person" other than the patent owner to challenge the validity of a patent post-issuance. The question presented in this case is whether a federal agency is a "person" able to seek such review under the statute. We conclude that it is not. I A The Constitution empowers Congress "[t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective ... Discoveries." Art. I, § 8, cl. 8. Pursuant to that authority, Congress established the United States Patent and Trademark Office (Patent Office) and tasked it with "the granting and issuing of patents." 35 U.S.C. §§ 1, 2(a)(1). To obtain a patent, an inventor submits an application describing the proposed patent claims to the Patent Office. See §§ 111(a)(1), 112. A patent examiner then reviews the application and prior art (the information available to the public at the time of the application) to determine whether the claims satisfy the statutory requirements for patentability, including that the claimed invention is useful, novel, nonobvious, and contains eligible subject matter. See…

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