Tag Archives: Infringement

Supreme Court Rules That Government is Not a “Person” Under the America Invents Act

ByCarissa T. Howard of Counsel at Houston Harbaugh

Federal law has allowed for third party requests for reexamination of an issued patent on the basis on prior art since the 1980s. Under the America Invents Act of 2011 (AIA), three review processes replaced what was then known as “inter partes reexamination.” These three review proceedings enable a “person” other than the patent owner to challenge the validity of a patent post-issuance: (1) “inter partes review,” §311; (2) “post-grant review,” §321; and (3) “covered-business-method review” (CBM review). As an alternative to or in connection with a patent litigation, an interested third party, an accused infringer, or any “person,” can request one of these types of reviews.

In Return Mail v. Postal Service, the Supreme Court held that “[t]he Government is not a “person” capable of instituting the three AIA review proceedings.” https://www.supremecourt.gov/opinions/18pdf/17-1594_1an2.pdf (June 10, 2019)

Return Mail sued the US Postal Service (part of the US Federal Government) for infringing its mail processing patent and Postal Service petitioned for CBM review under the AIA.  The PTO agreed that the patent claimed ineligible subject matter, and cancelled the claims. On appeal, the Federal Circuit affirmed. Now, the Supreme Court has reversed – holding that the Government is not a person under the statute and therefore cannot petition for AIA review.

Justice Sotomayor led the conservative majority joined by Chief Justice Roberts and Justices Thomas, Alito, Gorsuch and Kavanaugh.  Justice Breyer wrote in a dissent that was joined by Justices Ginsberg and Kagan.

The majority here started with its presumption that congressional statutes are not intended to bind or be directed to U.S. Government activity. Here, the court looked and did not find sufficient textual language to overcome that initial presumption.   In particular, the word “person” is used many times in the Patent Act (at least 18 times) and in several different ways.  There is basically no indication that this particular use of “person” was designed to include the U.S. Government. The majority also noted the awkwardness:

Finally, excluding federal agencies from the AIA review proceedings avoids the awkward situation that might result from forcing a civilian patent owner (such as Return Mail) to defend the patentability of her invention in an adversarial, adjudicatory proceeding initiated by one federal agency (such as the Postal Service) and overseen by a different federal agency (the Patent Office).

The dissent argued that the government-not-a-person presumption is rather weak and was overcome by the Patent Act.  In particular, the majority notes that Federal agencies are authorized to apply for patent protection — even though the statute states that a “person” shall be “entitled to a patent.” See 35 U. S. C. §§ 207(a)(1) and 102(a)(1).

Carissa T. Howard is an intellectual property attorney with over 16 years of experience, Carissa’s practice is focused in federal court intellectual property litigation, patent prosecution, trademark prosecution, intellectual property counseling, and contract drafting. She also has experience in intellectual property licensing and preparing due diligence, infringement and validity opinions. She can be reached at howardct@hh-law.com or 412-288-2213

Is CafePress a Service Provider and Could Its Stripping of Metadata Cost It Safe Harbor Status Under the DMCA?

by Cara Disheroon, attorney at Picadio Sneath Miller & Norton, P.C. ()

The Southern District of California recently grappled with these issues in Steven M. Gardner v. CafePress Inc., Case No. 3:13-cv-1108-GPC-JMA (S.D. Cal. Feb. 26, 2014). The case centered on a copyright infringement claim against the self-publishing site CafePress and provides an interesting analysis of the safe harbor provision of the Digital Millennium Copyright Act (DMCA) at 17 U.S.C. § 512.

The facts regarding the images were undisputed.  Plaintiff, Gardner alleged copyright infringement of various wildlife images which were distributed for sale on the site by CafePress users. Gardner filed suit and CafePress, on the same day they received the complaint, disabled access to the alleged infringing material.  Subsequently, they discovered a second member’s use of the artist’s work and immediately disabled and terminated the second user’s account. Before the material was disabled however, $6,320 worth of products was sold. CafePress then moved for summary judgment based on the safe harbor provision of § 512.

In analyzing whether CafePress could take advantage of the safe harbor provision, the court began with an analysis of the term “service provider” under § 512(c). Noting that the language “a provider of online services or network access, or the operator of facilities therefor” was a broad definition, they then compared CafePress to other vendors such as Amazon and eBay. Unlike these companies however, CafePress’s service differed as they actually determine the prices for retail products, pay users only a royalty or commission, possess the ability to modify designs and determine which products are sold. The court found CafePress’s activities to be beyond a service that “merely facilitates the exchange of information between internet users” and thus the court was unable to find as a matter of law, that CafePress was a “service provider.”

Moreover, § 512(i) requires that the provider must have “adopted and reasonably implemented” a policy to terminate repeat infringers and not interfere with “standard technical measures” used to protect copyrighted works. Plaintiff contended that CafePress interfered with “standard technical measures” by deleting metadata when images are uploaded to the website. The court agreed stating that the deletion created a dispute of material fact thereby precluding judgment as a matter of law and adding “From a logical perspective, metadata appears to be an easy and economical way to attach copyright information to an image.” At this stage, the discussion is only dicta but it is nevertheless important as the court appears to be placing the burden on CafePress and given the fact that many social media sites routinely strip metadata, a ruling on the merits could potentially affect a whole host of sites which conduct the practice.

CafePress did prevail on its Motion for Partial Judgment as to statutory damages and attorney fees given that Gardner had failed to register his images before the alleged infringement. Concluding that the alleged acts constituted the same “series of acts” that commenced prior to registration of the images, the court granted CafePress’s motion. This means that Gardner is limited to his actual damages of $6,320 and may affect whether the case proceeds to trial.

If the case does proceed however, a ruling by the court on the merits could have a huge impact on numerous self-publishing sites with the potential loss of safe harbor status and the risk of significant statutory damages.