Here’s another reminder of limitations that exist when there is a third party claim of infringement against a U.S. Government agency. In such a case, the patent owner must sue in the United States Court of Federal Claims and may recover only “reasonable and entire compensation” for the unauthorized use. See 28 U.S.C. Section 1498(a). No injunctive relief is afforded the plaintiff. Within the context of that proceeding, the Government agency is free to seek a determination that the patent is invalid, and if the claimed invention does not meet one or more of the patentability requirements, the Government agency will have no liability.
In this recent Supreme Court case, Return Mail, Inc. v. United States Postal Service et al., Case No. 17-1594 (June 10, 2019), the Government agency (in this case, the U.S. Postal Service) sought to take advantage of the streamlined administrative proceedings offered by America Invents Act of 2011 (35 U.S.C. Section 100 et seq.) allowing an alleged infringer to challenge the validity of the patent before the Patent Office. However, in this case, limitations were placed on the Government agency in terms of its remedies and avenues for relief when it is the alleged infringer. The U.S. Supreme Court found that U.S. Government agencies were not within the definition of “person[s]” with standing to bring AIA Patent Office proceedings challenging the validity of a patent, including inter partes review (IPR), post-grant review (PGR), and covered business method patent review (CBM).
Click to read the full McCarter & English Patent Alert: “Oh Yes, Wait a Minute, Mr. Postman” — Supreme Court Says Post Office (and the Government) Can’t Challenge Patents in Patent Office Proceedings