Return Mail, Inc. v. U.S. Postal Serv.
587 U.S. 618
SCOTUS2019Background
- Return Mail owns U.S. Patent No. 6,826,548 claiming a method for processing undeliverable mail; the Postal Service developed a service Return Mail alleged infringed.
- The Postal Service sought ex parte reexamination (Patent Office confirmed validity) and Return Mail sued the Postal Service in the Court of Federal Claims under 28 U.S.C. §1498 for unauthorized use.
- While that suit proceeded, the Postal Service petitioned for a covered-business-method (CBM) review under the America Invents Act (AIA); the Patent Trial and Appeal Board instituted review, found the claims patent-ineligible, and canceled them.
- The Federal Circuit affirmed, holding that the federal government (the Postal Service) is a “person” who may petition for AIA post-issuance review.
- The Supreme Court granted certiorari to decide whether a federal agency is a “person” eligible to institute AIA inter partes review, post-grant review, or CBM review, and reversed the Federal Circuit.
Issues
| Issue | Plaintiff's Argument (Return Mail) | Defendant's Argument (Postal Service) | Held |
|---|---|---|---|
| Whether a federal agency is a “person” who may petition for AIA post-issuance review (inter partes, post-grant, CBM) | "Person" should include the Government so agencies can access the AIA procedures, consistent with other Patent Act uses and to avoid anomalous treatment of government infringers | The Government is a person under the AIA and thus may petition for review; longstanding executive practice (ex parte reexams) and the Government’s exposure to infringement liability support inclusion | A federal agency is not a “person” under the AIA for initiating post-issuance review; presumption excludes the sovereign absent affirmative textual/contextual evidence |
| Whether references elsewhere in the Patent Act (e.g., §207, intervening-rights provisions) compel a Government-inclusive reading of “person” | Related provisions that allow agencies to obtain/maintain patents and invoke defenses show Congress intended “person” to include agencies | Same as plaintiff: consistent usage and related provisions demonstrate inclusion | The Court rejected consistent-usage arguments: the Act uses “person” in varied ways and those Government-inclusive references do not overcome the presumption against including the sovereign |
| Whether historical/executive practice (Patent Office treating agencies as “persons” for ex parte reexamination) demonstrates Congress intended Government inclusion in AIA proceedings | Past administrative practice indicates agencies were treated as persons and Congress would have expected similar access under AIA | Agencies’ ability to request ex parte reexamination supports inclusion | The Court held ex parte reexamination is materially different (non-adversarial) from AIA adjudicatory proceedings; administrative practice for ex parte reexam does not overcome the presumption |
| Whether Government exposure to infringement liability (28 U.S.C. §1498) makes exclusion anomalous | Because agencies can be sued and assert invalidity defenses, denying them AIA review is inconsistent and harms Government interests | Government faces different and generally lower risk (no injunctions; damages limited), so Congress could reasonably treat agencies differently | The Court found no anomaly sufficient to overcome the presumption and accepted Congress could reasonably exclude agencies given §1498’s different remedies |
Key Cases Cited
- Vermont Agency of Natural Resources v. United States ex rel. Stevens, 529 U.S. 765 (2000) (presumption that statutory “person” excludes the sovereign unless context indicates otherwise)
- United States v. Mine Workers, 330 U.S. 258 (1947) (use of “person” generally excludes the Government; Dictionary Act interpretation)
- United States v. Cooper Corp., 312 U.S. 600 (1941) (presumption may be disregarded only upon affirmative showing of intent to include sovereign)
- United States v. Fox, 94 U.S. 315 (1877) (Government not a “person” capable of holding real estate absent express definition)
- Utility Air Regulatory Group v. EPA, 573 U.S. 302 (2014) (consistent-usage canon yields to context when statutory term has distinct characters in different provisions)
- Bragdon v. Abbott, 524 U.S. 624 (1998) (administrative and judicial interpretations of settled statutory language in prior statutes may inform meaning in new statutes)
- Microsoft Corp. v. i4i L. P., 564 U.S. 91 (2011) (in litigation, invalidity defense requires clear and convincing evidence)
- Powerex Corp. v. Reliant Energy Services, 551 U.S. 224 (2007) (consistent-usage canon applied where same term used in related provisions enacted together)