[17-1594] Return Mail, Inc. v. United States Postal Service

Return Mail, Inc. v. United States Postal Service

Justia (with opinion) · Docket · oyez.org

Argued on Feb 19, 2019.
Decided on Jun 10, 2019.

Petitioner: Return Mail, Inc..
Respondent: United States Postal Service.

Advocates:

• Beth S. Brinkmann (for the petitioner)
• Malcolm L. Stewart (for the respondents)

Facts of the case (from oyez.org)

Return Mail, Inc. owns a US patent directed to the processing of mail items that are undeliverable due to an inaccurate or obsolete address of the intended recipient. Return Mail sought to license the patent to the US Postal Service (“USPS”) and when it was unsuccessful, it filed a lawsuit against USPS alleging unlicensed and unlawful use and infringement of the patent. USPS filed a petition with the Patent and Trademark Office’s Patent Trial and Appeal Board (“Board”) asking that the patent be declared unpatentable on several grounds. In response, Return Mail addressed the unpatentability arguments and further argued that USPS lacked statutory standing to institute review proceedings under the Leahy-Smith America Invents Act (“AIA”).

The Board held that USPS was not statutorily barred from filing the petition for review, and on the merits determined that all of the challenged patent claims were unpatentable under 35 U.S.C. § 101. The US Court of Appeals for the Federal Circuit affirmed.

Question

Is the government a “person” who may institute review proceedings under the Leahy-Smith America Invents Act?

Conclusion

Under the Leahy-Smith America Invents Act (“AIA”), the federal government is not a “person” capable of petitioning the Patent Trial and Appeal Board to institute patent review proceedings. Justice Sonia Sotomayor authored the 6-3 majority opinion.

The Court determined that the AIA does not define “person” and looked instead to the Dictionary Act, which defines “person” as including natural individuals and businesses, but not governments “unless the context indicates otherwise.” The Court then looked to whether anything in the context “indicates otherwise,” thereby rebutting the presumption that governments are not “persons.”

First, the Court cited several examples where it had applied the presumption against treating the government as a statutory person. It then looked to the use of the word “person” elsewhere in the AIA, finding that in some instances, the term plainly included the government and in other instances it plainly excluded the government. The Court found the provision at issue was not so plain and could be read either way. Finding no historic reason to permit the government to participate in post-grant review, “which was enacted just eight years ago,” the Court opined that patent infringement lawsuits against the government are not as onerous as those against non-government actors. Thus, it is reasonable to infer that Congress intentionally treated government actors differently from private actors.

Justice Breyer filed a dissenting opinion, in which Justices Ruth Bader Ginsburg and Elena Kagan joined. The dissent argued that the “purpose, the subject matter, the context, the legislative history, and the executive interpretation” indicate congressional intent to include, not exclude, the government in the term “person.”