Discretionary Consideration Bars ReturnMail Side-Step Via Intervenor

Last fall, I explained that the Patent Trial & Appeal Board (PTAB) was considering the relationship of government contractors in Court of Federal Claim (COFC) patent disputes against the U.S. government. That is, given the typical existence of a contract between the government and the contractor, what such a relationship meant for RPI/privy determinations.

Perhaps not surprisingly, the PTAB has found privity to exist between the government and its contractors in common contractual scenarios. For example, where the contractor intervenes in the COFC matter. And that the later AIA petition of the contractor (outside the 315(b) window of the government) is barred.

Perhaps more surprisingly, however, is the discretionary consideration under 314(a) relative to ReturnMail that would effectively close the PTAB to patent disputes at the COFC.

In last week’s Microsoft Corp. v. Science Applications International Corp. (IPR2019-01311-12 & IPR01359-62) decisions, the Board explained in (here):

" Even if Petitioner and the government were not in privity, we would exercise our discretion to deny review to avoid any concerns that the government is obtaining a benefit to which it is not permitted under Return Mail.

As a reminder, ReturnMail found the government was not a “person” that would be qualified to file an AIA trial petition. Thus, while COFC litigants might hope to distinguish the particular facts here, or file early to avoid the 315(b) window of the government, it seems as though the PTAB will not be receptive to such disputes as a matter of discretion.

As the Board has made an effort to designate 314(a) decisions precedential (especially where new factors are utilized), this one may be added to the growing list.

Scott A. McKeown is an author of the Patents Post Grant