Return To Sender: PTAB Denies Government Contractor IPRs

After the Supreme Court's 2019 decision in Return Mail, Inc. v. United States Postal Service, 139 S. Ct. 1853 (2019), held that federal agencies are not "persons" eligible to challenge a patent at the PTAB, the government was recently dealt another blow. On January 27, 2020, the PTAB denied five inter partes review petitions filed by Microsoft relating to technology Microsoft was developing for the U.S. government, finding that the petitions were barred by 35 U.S.C. § 315(b) because the government had been sued more than one year before Microsoft filed its petitions, and that Microsoft was in privity with the government. Under 35 U.S.C. § 315(b), "[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent."