In Bozeman Fin. LLC v. Fed. Reserve Bank of Atlanta,1 the Federal Circuit held that Federal Reserve banks will not be thought of authorities entities underneath the America Invents Act (AIA) and might problem patents utilizing the contested proceedings. The Federal Circuit not too long ago denied en banc rehearing and confirmed this holding despite the fact that the Supreme Court docket in Return Mail Inc. v. U.S. Postal Service held that the U.S. Postal Service was thought of a authorities entity that might not file such a petition.2
Bozeman Monetary LLC owned U.S. Patent Nos. 6,754,640 and eight,768,840, overlaying strategies for authorizing and clearing monetary transactions to detect and forestall fraud. Twelve regional Federal Reserve banks filed a petition for lined enterprise technique (CBM) assessment, arguing that each one claims weren’t patent eligible underneath 35 U.S.C. § 101.
The Patent Trial and Enchantment Board (Board) held that each one claims of U.S. Patent Nos. 6,754,640 and eight,768,840 weren’t patent eligible.
On enchantment, Bozeman argued that the Federal Reserve banks weren’t “persons” underneath the AIA, however had been authorities entities. The Federal Circuit disagreed and defined that the Federal Reserve banks will not be a part of an government company, and every bank has its personal board of administrators and will also be sued in any court docket for patent infringement. As well as, the court docket stated the banks are distinct from the federal government as a result of they don’t seem to be structured as authorities companies, they don’t settle for congressionally appropriated funds, and their officers will not be appointed by authorities officers. Accordingly, the court docket concluded the next:
… [T]he Banks are distinct from the federal government for functions of the AIA. We acknowledge that there may be circumstances the place the construction of the Banks doesn’t render them distinct from the federal government for functions of statutes apart from the AIA. For functions of the AIA, nonetheless, we conclude the Banks are “persons” able to petitioning for post-issuance assessment underneath the AIA. The Board due to this fact had authority to determine the CBM petitions at challenge right here.3
This choice permits the Federal Reserve banks to problem the validity of a patent underneath the AIA, whereas the Supreme Court docket Return Mail choice excluded federal companies such because the U.S. Postal Service. Thus, the federal authorities can solely problem the validity of a patent utilizing the ex parte reexamination process on the U.S. Patent Workplace or litigation on the U.S. Court docket of Claims. The precise contours of who’s an individual underneath the AIA proceed to develop. It is very important do not forget that whereas the federal authorities shouldn’t be thought of an individual underneath the AIA, the specter of AIA proceedings shouldn’t be eradicated, since federal authorities contractors or different third events may nonetheless problem the validity of a patent asserted towards the federal authorities underneath the AIA.
1Bozeman Fin. LLC v. Fed. Reserve Bank of Atlanta, 955 F.3d 971, 2020 USPQ2d 10332, 2020 WL 1814311 (Fed. Cir. 2020).
2Return Mail Inc. v. U.S. Postal Service, 139 S.Ct. 1853, 2019 USPQ2d 212999, 2019 WL 2412904 (2019).
3Bozeman Fin., 955 F.3d at 976.
Irah Donner is a associate in Manatt’s mental property observe and is the creator of Patent Prosecution: Regulation, Follow, and Process, Eleventh Version, and Establishing and Deconstructing Patents, Second Version, each printed by Bloomberg Regulation.