RETURN MAIL, INC. v. UNITED STATES POSTAL SERVICE ET AL.
No. 17–1594
Supreme Court of the United States
Decided June 10, 2019
(Slip Opinion) OCTOBER TERM, 2018 1
Syllabus
NOTE: Where it is feasible, a syllabus (headnote) will be released, as is being done in connection with this case, at the time the opinion is issued. The syllabus constitutes no part of the opinion of the Court but has been prepared by the Reporter of Decisions for the convenience of the reader. See United States v. Detroit Timber & Lumber Co., 200 U. S. 321, 337.
SUPREME COURT OF THE UNITED STATES
Syllabus
RETURN MAIL, INC. v. UNITED STATES POSTAL SERVICE ET AL.
CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
No. 17–1594. Argued February 19, 2019—Decided June 10, 2019
Return Mail, Inc., owns a patent that claims a method for processing undeliverable mail. The Postal Service subsequently introduced an enhanced address-change service to process undeliverable mail, which Return Mail asserted infringed its patent. The Postal Service petitioned for ex parte reexamination of the patent, but the Patent Office confirmed the patent’s validity. Return Mail then sued the Postal Service in the Court of Federal Claims, seeking compensation for the unauthorized use of its invention. While that suit was pending, the Postal Service petitioned for CBM review. The Patent Board concluded that the subject matter of Return Mail’s claims was ineligible to be patented and
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Syllabus
Held: The Government is not a “person” capable of instituting the three AIA review proceedings. Pp. 6–18.
(a) In the absence of an express definition of the term “person” in the patent statutes, the Court applies a “longstanding interpretive presumption that ‘person’ does not include the sovereign,” and thus excludes a federal agency like the Postal Service. Vermont Agency of Natural Resources v. United States ex rel. Stevens, 529 U. S. 765, 780–781. This presumption reflects “common usage,” United States v. Mine Workers, 330 U. S. 258, 275, as well as an express directive from Congress in the Dictionary Act,
(b) The Postal Service must point to some indication in the AIA’s text or context affirmatively showing that Congress intended to include the Government as a “person,” but its arguments are unpersuasive. Pp. 9–17.
(1) The Postal Service first argues that the AIA’s reference to a “person” in the context of post-issuance review proceedings must include the Government because other references to persons in the patent statutes appear to do so. The consistent-usage principle—i.e., when Congress uses a word to mean one thing in one part of the statute, it will mean the same thing elsewhere in the statute—however, “ ‘readily yields to context,’ ” especially when a statutory term is used throughout a statute and takes on “distinct characters” in distinct statutory provisions. Utility Air Regulatory Group v. EPA, 573 U. S. 302, 320. Here, where there are at least 18 references to “person[s]” in the Patent Act and the AIA, no clear trend is shown: Sometimes “person” plainly includes or excludes the Government, but sometimes, as here, it might be read either way. The mere existence of some Government-inclusive references cannot make the “affirmative showing,” Stevens, 529 U. S., at 781, required to overcome the presumption that the Government is not a “person” eligible to petition for AIA review proceedings. Pp. 9–12.
(2) The Postal Service next points to the Federal Government’s
Cite as: 587 U. S. ____ (2019) 3
Syllabus
longstanding history with the patent system, arguing that because federal officers have been able to apply for patents in the name of the United States since 1883, Congress must have intended to allow the Government access to AIA review proceedings. But the Government’s ability to obtain a patent does not speak to whether Congress meant for the Government to participate as a third-party challenger in AIA proceedings established only eight years ago. Moreover, even assuming that the
(3) Finally, the Postal Service argues that it must be a “person” who may petition for AIA review proceedings because, like other potential infringers, it is subject to civil liability and can assert a defense of patent invalidity. It would thus be anomalous, the Postal Service posits, to deny it a benefit afforded to other infringers—namely, the ability to challenge a patent de novo before the Patent Office, rather than only with clear and convincing evidence in defense to an infringement suit. Federal agencies, however, face lower and more calculable risks than nongovernmental actors, so it is reasonable for Congress to have treated them differently. Excluding federal agencies from AIA review proceedings also avoids the awkward situation of having a civilian patent owner defend the patentability of her invention in an adversarial, adjudicatory proceeding initiated by one federal agency and overseen by a different federal agency. Pp. 15–17.
868 F. 3d 1350, reversed and remanded.
SOTOMAYOR, J., delivered the opinion of the Court, in which ROBERTS, C. J., and THOMAS, ALITO, GORSUCH, and KAVANAUGH, JJ., joined. BREYER, J., filed a dissenting opinion, in which GINSBURG and KAGAN, JJ., joined.
RETURN MAIL, INC., PETITIONER v. UNITED STATES POSTAL SERVICE, ET AL.
No. 17–1594
Supreme Court of the United States
June 10, 2019
_________________
_________________
Cite as: 587 U. S. ____ (2019) 1
Opinion of the Court
NOTICE: This opinion is subject to formal revision before publication in the preliminary print of the United States Reports. Readers are requested to notify the Reporter of Decisions, Supreme Court of the United States, Washington, D. C. 20543, of any typographical or other formal errors, in order that corrections may be made before the preliminary print goes to press.
SUPREME COURT OF THE UNITED STATES
No. 17–1594
RETURN MAIL, INC., PETITIONER v. UNITED STATES POSTAL SERVICE, ET AL.
ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
[June 10, 2019]
JUSTICE SOTOMAYOR delivered the opinion of the Court.
In the Leahy-Smith America Invents Act of 2011,
I
A
The Constitution empowers Congress “[t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective . . . Discoveries.”
To obtain a patent, an inventor submits an application
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Opinion of the Court
describing the proposed patent claims to the Patent Office. See
After a patent issues, there are several avenues by which its validity can be revisited. The first is through a defense in an infringement action. Generally, one who intrudes upon a patent without authorization “infringes the patent” and becomes subject to civil suit in the federal district courts, where the patent owner may demand a jury trial and seek monetary damages and injunctive relief.
Once sued, an accused infringer can attempt to prove by clear and convincing evidence “that the patent never should have issued in the first place.” Microsoft Corp. v. i4i L. P., 564 U. S. 91, 96–97 (2011); see
The Patent Office may also reconsider the validity of issued patents. Since 1980, the Patent Act has empowered the Patent Office “to reexamine—and perhaps cancel—a patent claim that it had previously allowed.”
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Opinion of the Court
Cuozzo Speed Technologies, LLC v. Lee, 579 U. S. 261, 265 (2016) (slip op., at 3). This procedure is known as ex parte reexamination. “Any person at any time” may cite to the Patent Office certain prior art that may “bea[r] on the patentability of any claim of a particular patent”; and the person may additionally request that the Patent Office reexamine the claim on that basis.
In 1999 and 2002, Congress added an “inter partes reexamination” procedure, which similarly invited “[a]ny person at any time” to seek reexamination of a patent on the basis of prior art and allowed the challenger to participate in the administrative proceedings and any subsequent appeal. See
B
In 2011, Congress overhauled the patent system by enacting the America Invents Act (AIA), which created the Patent Trial and Appeal Board and phased out inter partes reexamination. See
First, the “inter partes review” provision permits “a person” other than the patent owner to petition for the review and cancellation of a patent on the grounds that the invention lacks novelty or nonobviousness in light of “patents or printed publications” existing at the time of the patent application.
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Second, the “post-grant review” provision permits “a person who is not the owner of a patent” to petition for review and cancellation of a patent on any ground of patentability.
Third, the “covered-business-method review” (CBM review) provision provides for changes to a patent that claims a method for performing data processing or other operations used in the practice or management of a financial product or service. AIA
The AIA’s three post-issuance review proceedings are adjudicatory in nature. Review is conducted by a three-member panel of the Patent Trial and Appeal Board,
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Opinion of the Court
Appeals for the Federal Circuit,
In sum, in the post-AIA world, a patent can be reexamined either in federal court during a defense to an infringement action, in an ex parte reexamination by the Patent Office, or in the suite of three post-issuance review proceedings before the Patent Trial and Appeal Board. The central question
C
Return Mail, Inc., owns U. S. Patent No. 6,826,548 (’548 patent), which claims a method for processing mail that is undeliverable. Beginning in 2003, the United States Postal Service allegedly began exploring the possibility of licensing Return Mail’s invention for use in handling the country’s undelivered mail. But the parties never reached an agreement.
In 2006, the Postal Service introduced an enhanced address-change service to process undeliverable mail. Return Mail’s representatives asserted that the new service infringed the ’548 patent, and the company renewed its offer to license the claimed invention to the Postal Service. In response, the Postal Service petitioned for ex parte reexamination of the ’548 patent. The Patent Office canceled the original claims but issued several new ones, confirming the validity of the ’548 patent. Return Mail then sued the Postal Service in the Court of Federal Claims, seeking compensation for the Postal Service’s unauthorized use of its invention, as reissued by the Patent Office.
While the lawsuit was pending, the Postal Service again petitioned the Patent Office to review the ’548 patent, this time seeking CBM review. The Patent Board instituted review. The Board agreed with the Postal Service that
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Opinion of the Court
Return Mail’s patent claims subject matter that was ineligible to be patented, and it canceled the claims underlying the ’548 patent. A divided panel of the Court of Appeals for the Federal Circuit affirmed. See 868 F. 3d 1350 (2017). As relevant here, the Federal Circuit held, over a dissent, that the Government is a “person” eligible to petition for CBM review. Id., at 1366; see AIA
We granted certiorari to determine whether a federal agency is a “person” capable of petitioning for post-issuance review under the AIA.2 586 U. S. ___ (2018).
II
The AIA provides that only “a person” other than the patent owner may file with the Office a petition to institute a post-grant review or inter partes review of an issued patent.
A
The patent statutes do not define the term “person.” In
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Opinion of the Court
the absence of an express statutory definition, the Court applies a “longstanding interpretive presumption that ‘person’ does not include the
This presumption reflects “common usage.” Mine Workers, 330 U. S., at 275. It is also an express directive from Congress: The Dictionary Act has since 1947 provided the definition of “‘person’ ” that courts use “[i]n determining the meaning of any Act of Congress, unless the context indicates otherwise.”
The Postal Service contends that the presumption is strongest where interpreting the word “person” to include the Government imposes liability on the Government, and is weakest where (as here) interpreting “person” in that way benefits the Government. In support of this argument, the Postal Service points to a different interpretive canon: that Congress must unequivocally express any
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Opinion of the Court
waiver of sovereign immunity for that waiver to be effective. See FAA v. Cooper, 566 U. S. 284, 290 (2012). That clear-statement rule inherently applies only when a party seeks to hold the Government liable for its actions; otherwise immunity is generally irrelevant. In the Postal Service’s view, the presumption against treating the Government as a statutory person works in tandem with the clear-statement rule regarding immunity, such that both apply only when a statute would subject the Government to liability.
Our precedents teach otherwise. In several instances, this Court has applied the presumption against treating the Government as a statutory person when there was no question of immunity, and doing so would instead exclude the Federal Government or one of its agencies from accessing a benefit or favorable procedural device. In Cooper, 312 U. S., at 604–605, 614, for example, the Court held that the Federal Government was not “‘[a]ny person’” who could sue for treble damages under
Thus, although the presumption against treating the Government as a statutory person is “‘particularly applicable where it is claimed that Congress has subjected the [sovereign] to liability to which they had not been subject before,’” Stevens, 529 U. S., at 781, it is hardly confined to
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Opinion of the Court
such cases. Here, too, we proceed from the presumption that the Government is not a “person” authorized to initiate these proceedings absent an affirmative showing to the contrary.
B
Given the presumption that a statutory reference to a “person” does not include the Government, the Postal Service must show that the AIA’s context indicates otherwise. Although the Postal Service need not cite to “an express contrary definition,” Rowland, 506 U. S., at 200, it must point to some indication in the text or context of the statute that affirmatively shows Congress intended to include the Government. See Cooper, 312 U. S., at 605.
The Postal Service makes three arguments for displacing the presumption. First, the Postal Service argues that the statutory text and context offer sufficient evidence that the Government is a “person” with the power to petition for AIA review proceedings. Second, the Postal Service contends that federal agencies’ long history of participation in the patent system suggests that Congress intended for the Government to participate in AIA review proceedings as well. Third, the Postal Service maintains that the statute must permit it to petition for AIA review because
1
The Postal Service first argues that the AIA’s reference to a “person” in the context of post-issuance review proceedings must include the Government because other references to persons in the patent statutes appear to do so. Indeed, it is often true that when Congress uses a word to mean one thing in one part of the statute, it will mean the same thing elsewhere in the statute. See Merrill Lynch, Pierce, Fenner & Smith Inc. v. Dabit, 547 U. S. 71,
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Opinion of the Court
86 (2006). This principle, however, “readily yields to context,” especially when a statutory term is used throughout a statute and takes on “distinct characters” in distinct statutory provisions. See Utility Air Regulatory Group v. EPA, 573 U. S. 302, 320 (2014) (internal quotation marks omitted). That is the case here. The Patent Act and the AIA refer to “person[s]” in at least 18 different places, and there is no clear trend: Sometimes “person” plainly includes the Government,3 sometimes it plainly excludes the Government,4 and sometimes—as here—it might be read either way.
Cite as: 587 U. S. ____ (2019) 11
Opinion of the Court
federal agencies among those eligible to apply for patents that the statute’s references to “person[s]” in the subsections governing the patent-application process and questions of patentability (
But
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The Postal Service cites other provisions that may refer to the Government—namely, the “intervening rights” provisions that offer certain protections for “any person” who is lawfully making or using an invention when the Patent Office modifies an existing patent claim in a way that deems the person’s (previously lawful) use to be infringement. See
But regardless of whether the intervening-rights provisions apply to the Government (a separate interpretive question that we have no occasion to answer here), the Postal Service’s chain of inferences overlooks a confounding link: The consistent-usage canon breaks down where Congress uses the same word in a statute in multiple conflicting ways. As noted, that is the case here. In the face of such inconsistency, the mere existence of some Government-inclusive references cannot make the “affirmative showing,” Stevens, 529 U. S., at 781, required to overcome the presumption that Congress did not intend to include the Government among those “person[s]” eligible to petition for AIA review proceedings.7
Cite as: 587 U. S. ____ (2019) 13
Opinion of the Court
2
The Postal Service next points to the Federal Government’s longstanding history with the patent system. It reminds us that federal officers have been able to apply for patents in the name of the United States since 1883, see
More pertinently, the Postal Service and the dissent both note that the Patent Office since 1981 has treated federal agencies as “persons” who may cite prior art to the agency or request an ex parte reexamination of an issued patent. See post, at 5. Recall that
We might take account of this “executive interpretation”
Service invokes is to ascertain the meaning of a statutory term from its consistent usage in other parts of the statute, not to pick sides among differing uses. 8Moreover, for those of us who consider legislative history, there is none that suggests Congress considered whether the Federal Government or its agencies would have access to the AIA review proceedings.
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Opinion of the Court
if we were determining whether Congress meant to include the Government as a “person” for purposes of the ex parte reexamination procedures themselves. See, e.g., United States v. Hermanos y Compañia, 209 U. S. 337, 339 (1908). Here, however, the Patent Office’s statement in the 1981 MPEP has no direct relevance. Even assuming that the Government may petition for ex parte reexamination, ex parte reexamination is a fundamentally different process than an AIA post-issuance review proceeding.9
Both share the common purpose
In an ex parte reexamination, the third party sends information to the Patent Office that the party believes bears on the patent’s validity, and the Patent Office decides whether to reexamine the patent. If it decides to do so, the reexamination process is internal; the challenger is not permitted to participate in the Patent Office’s process. See
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Opinion of the Court
appeal. After all, the Government is already in a unique position among alleged infringers given that
Thus, there is nothing to suggest that Congress had the 1981 MPEP statement in mind when it enacted the AIA. It is true that this Court has often said, “[w]hen administrative and judicial interpretations have settled the meaning of an existing statutory provision, repetition of the same language in a new statute indicates, as a general matter, the intent to incorporate its administrative and judicial interpretations as well.” Bragdon v. Abbott, 524 U. S. 624, 645 (1998). But there is no “settled” meaning of the term “person” with respect to the newly established AIA review proceedings. Accordingly, the MPEP does not justify putting aside the presumptive meaning of “person” here.
3
Finally, the Postal Service argues that it must be a “person” who may petition for AIA review proceedings because, like other potential infringers, it is subject to civil liability and can assert a defense of patent invalidity. See
The Postal Service overstates the asymmetry. Agencies
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retain the ability under
We see no oddity, however, in Congress’ affording nongovernmental actors an expedient route that the Government does not also enjoy for heading off potential infringement suits. Those other actors face greater and more uncertain risks if they misjudge their right to use technology that is subject to potentially invalid patents. Most notably,
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Opinion of the Court
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). We are therefore unpersuaded that the Government’s exclusion from the AIA review proceedings is sufficiently anomalous to overcome the presumption that the Government is not a “person” under the Act.11
III
For the foregoing reasons, we hold that a federal agency is not a “person” who may petition for post-issuance re-
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view under the AIA. The judgment of the United States Court of Appeals for the Federal
It is so ordered.
RETURN MAIL, INC., PETITIONER v. UNITED STATES POSTAL SERVICE, ET AL.
No. 17–1594
Supreme Court of the United States
June 10, 2019
_________________
_________________
Cite as: 587 U. S. ____ (2019) 1
BREYER, J., dissenting
SUPREME COURT OF THE UNITED STATES
No. 17–1594
RETURN MAIL, INC., PETITIONER v. UNITED STATES POSTAL SERVICE, ET AL.
ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
[June 10, 2019]
JUSTICE BREYER, with whom JUSTICE GINSBURG and JUSTICE KAGAN join, dissenting.
When A sues B for patent infringement, B may defend against the lawsuit by claiming that A’s patent is invalid. In court, B must prove the invalidity of A’s patent by “clear and convincing evidence.” Microsoft Corp. v. i4i L. P., 564 U. S. 91, 95 (2011). Congress, however, has also established a variety of administrative procedures that B may use to challenge the validity of A’s patent. Although some of the statutes setting forth these administrative procedures have existed for several decades, we consider here the three administrative procedures that Congress established in the Leahy-Smith America Invents Act of 2011. See ante, at 3–5. All three involve hearings before the Patent Trial and Appeal Board, which is part of the Patent and Trademark Office. And all three involve a lower burden of proof: B need only prove by a preponderance of the evidence that A’s patent is invalid.
The America Invents Act states that all three administrative procedures may be invoked only by a “person.”
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BREYER, J., dissenting
son.” Are federal agencies entitled to invoke these administrative procedures on the same terms as private parties? In my view, the answer is “yes.” For purposes of these statutes, Government agencies count as “persons” and so may invoke these procedures to challenge the validity of a patent.
The Court reaches the opposite conclusion based on the interpretive presumption that the word “person” excludes the Government. See ante, at 7. This presumption, however, is “no hard and fast rule of exclusion.” United States v. Cooper Corp., 312 U. S. 600, 604–605 (1941). We have long said that this presumption may be overcome when “‘[t]he purpose, the subject matter, the context, the legislative history, [or] the executive interpretation . . . indicate an intent’” to include the Government. International Primate Protection League v. Administrators of Tulane Ed. Fund, 500 U. S. 72, 83 (1991) (quoting Cooper, supra, at 605). And here these factors indicate that very intent.
I
The language of other related patent provisions strongly suggests that, in the administrative review statutes at issue here, the term “person” includes the Government.
The Patent Act states that “[e]ach Federal agency is authorized” to “apply for, obtain, and maintain patents or other forms of protection . . . on inventions in which the Federal Government owns a right, title, or interest.”
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BREYER, J., dissenting
Now consider a few of the statutory provisions that help those accused of infringing a patent. Suppose A obtains a patent in Year One, modifies this patent in Year Three, and then accuses B of infringing the patent as modified in Year Five. What if B’s conduct infringes the modified patent but did not infringe A’s patent as it originally stood in Year One? In these circumstances, Congress has provided that A generally cannot win an infringement suit against B. The relevant statutes, known as the “intervening rights” provisions, state that B is entitled to a defense that his conduct did not violate the original, unmodified patent.
The majority refers to several patent-related provisions that use the word “person” but that do not include the Government within the scope of that term. See ante, at 10, and n. 4. These provisions, however, concern details of administration that, almost by definition, could not involve an entity such as the Government. The first provision cited by the majority says that administrative patent judges must be “persons of competent legal knowledge and scientific ability.”
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BREYER, J., dissenting
dential a referral to the Attorney General of possible fraud unless the Government charges “a person” with a related criminal offense.
The fact that the word “person” does not apply to the Government where that application is close to logically impossible proves nothing at all about the word’s application here. On the one hand, Congress has used the word “person” to refer to Government agencies when the statute concerns the criteria for obtaining patents, or when the statute concerns the availability of certain infringement defenses. On the other, Congress has not used the word “person” to refer to Government agencies when doing so would be close to logically impossible, or where the context otherwise makes plain that the Government is not a “person.” The provisions at issue here, which establish administrative procedures for the benefit of parties accused of infringement, are much closer to the former category than the latter. It therefore
II
The statutes’ purposes, as illuminated by the legislative
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BREYER, J., dissenting
history and longstanding executive interpretation, show even more clearly that Congress intended the term “person” to include the Government in this context.
Congress enacted the new administrative review procedures for two basic reasons. First, Congress sought to “improve the quality of patents” and “make the patent system more efficient” by making it easier to challenge “questionable patents.” H. R. Rep. No. 112–98, pt. 1, pp. 39, 48 (2011); see id., at 39 (noting the “growing sense that questionable patents are too easily obtained and are too difficult to challenge”); id., at 45 (explaining that pre-existing administrative procedures were “less viable alternativ[es] to litigation . . . than Congress intended”). Congress’ goal of providing an easier way for parties to challenge “questionable patents” is implicated to the same extent whether the Government or a private party is the one accused of infringing an invalid patent. That is perhaps why the Executive Branch has long indicated that Government agencies count as “perso[ns]” who are entitled to invoke the administrative review procedures that predate the America Invents Act. See
Second, the statutes help maintain a robust patent system in another way: They allow B, a patent holder who might be sued for infringing A’s (related) patent, to protect B’s own patent by more easily proving the invalidity of A’s patent. Insofar as this objective underlies the statutes at issue here, it applies to the same extent whether B is a private person or a Government agency. Indeed, the Patent Act explicitly states that the Government may “maintain” patents and “undertake all other suitable and necessary steps to protect and administer rights to federally owned inventions on behalf of the Federal Government.”
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claims of infringement (by clearing away conflicting patents that cover the same or similar ground) would seem to be “suitable and necessary” whether a private person or a Government agency invokes these procedures. Cf. Halo Electronics, Inc. v. Pulse Electronics, Inc., 579 U. S. 93, 98 (2016) (slip op., at 14) (noting that a third-party patent covering part of an invention may be used to exact “licensing fees” from the inventor); Acorda Therapeutics, Inc. v. Roxane Laboratories, Inc., 903 F. 3d 1310, 1337 (CA Fed. 2018) (explaining that a third-party patent covering part of an invention may be used to deter or curtail the inventor’s use of the invention).
The majority responds that allowing a Government agency to invoke these administrative procedures would create an “awkward situation,” as one Government agency—namely, the Patent Office—would end up adjudicating the patent rights of another Government agency. Ante, at 17. But why is that “awkward”? In the field of patent law, a Government agency facing a possible infringement suit has long been thought legally capable of invoking other forms of administrative review. See
The majority also says that because federal agencies “do not face the threat of preliminary injunctive relief ” when they are sued for patent infringement, Congress could have reasonably concluded that it was not necessary for the Government to be able to use the administrative procedures at issue here. Ante, at 16; see
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BREYER, J., dissenting
infringement suits against the Government still threaten to impose large damages awards. See, e.g., Hughes Aircraft Co. v. United States, 31 Fed. Cl. 481, 488 (1994) (indicating that the value of the infringing technologies developed by the Government exceeded $3.5 billion); Pet. for Cert. in United States v. Hughes Aircraft Co., O. T. 1998, No. 98–871, p. 8 (noting that damages ultimately exceeded $100 million). That fact can create a strong need for speedy resolution of a dispute over patent validity.
When, for example, the Department of Homeland Security recently instituted a research initiative to equip cell phones with hazardous-materials sensors in order to mitigate the risk of terrorist attacks, it faced an infringement lawsuit that threatened to interfere with the project. See Golden v. United States, 129 Fed. Cl. 630 (2016); Brief for Prof. Tejas N. Narechania as Amicus Curiae 9. When the Federal Communications Commission tried to ensure that cell phones would be able to provide their current location automatically to 911 operators, the threat of infringement litigation delayed the deployment of technologies designed to comply with that requirement. Narechania, Patent Conflicts, 103 Geo. L. J. 1483, 1498–1501 (2015). And when Congress enacted statutes requiring the examination of electronic passports at airports, the Government faced the threat of an infringement suit because airlines could not “comply with [their] legal obligations” without engaging in activities that would allegedly infringe an existing patent. IRIS Corp. v. Japan Airlines Corp., 769 F. 3d 1359, 1362 (CA Fed. 2014); see id., at 1363 (concluding that the Government may be sued based on the infringing activities of airlines).
I express no view on the merits of these actions. I simply point out that infringement suits against the Government can threaten to injure Government interests even absent the threat of injunctive relief. That fact runs counter to the majority’s efforts to find an explanation for why
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Congress would have wanted to deny Government agencies the ability to invoke the speedier administrative procedures established by the America Invents Act.
* * *
That, in my view, is the basic question: Why? Government agencies can apply for and obtain patents; they can maintain patents; they can sue other parties for infringing their patents; they can be sued for infringing patents held by private parties; they can invoke certain defenses to an infringement lawsuit on the same terms as private parties; they can invoke one of the pre-existing administrative procedures for challenging the validity of a private party’s patents; and they can be forced to defend their own patents when a private party invokes one of the three procedures established by the America Invents Act. Why, then, would Congress have declined to give federal agencies the power to invoke these same administrative procedures?
I see no good answer to that question. Here, the statutes’ “purpos[es],” the “subject
Consequently, with respect, I dissent.