June 10, 2019

Supreme Court Decides Return Mail, Inc. v. Postal Service

On June 10, 2019, the Supreme Court of the United States decided Return Mail, Inc. v. Postal Service, No. 17-1594, holding that the United States Postal Service is not “a person” able to seek post-issuance review of patentability under the Leahy-Smith America Invents Act (AIA) of 2011.

The AIA allows “a person” other than the patent owner to petition the Patent Office to review an already-issued patent. 35 U.S.C. §§ 311(a), 321(a). The Act created a Patent Trial and Appeal Board to review petitions in adjudicatory-like proceedings. There are three different types of post-issuance review proceedings under the Act, but all must be brought by “a person.”

Return Mail, Inc., owns a patent on a method for processing undeliverable mail. Return Mail and the Postal Service discussed licensing Return Mail’s method for handling the country’s undeliverable mail, but the parties were unable to reach an agreement. Instead, in 2006, the Postal Service introduced an address-change service to process undeliverable mail. Return Mail claimed that the process infringed on its patent and sued the Postal Service in the Court of Federal Claims.

Meanwhile, the Postal Service petitioned for review of Return Mail’s patent under the AIA’s review procedures. The Patent Trial and Appeal Board reviewed the patent, agreed with the Postal Service that Return Mail’s patent was ineligible to be patented, and canceled the claims under its patent. Over a dissent, the Federal Circuit held that the federal government is a “person” eligible to petition for review before the Patent Trial and Appeal Board. The Supreme Court granted certiorari on that question and reversed.

The Court explained that although the patent statutes do not define “person,” there is a “longstanding interpretive presumption that ‘person’ does not include the sovereign.” The Court also considered the Dictionary Act’s definition of person, which notably excludes the federal government from its list of persons. 1 U.S.C. § 1. To overcome the presumption, then, the Court explained that the Postal Service needed to make “some affirmative showing of statutory intent to the contrary.”

The Postal Service offered three reasons for displacing the presumption, but the Court found each of them lacking. The Court first rejected the Postal Service’s argument that statutory context supports interpreting “person” to include federal agencies. The Court acknowledged that the patent statutes and the Act sometimes use “person” to include the government. But it found that there was no clear trend such that the presumption against the sovereign’s inclusion could be overcome.

The Court also rejected the Postal Service’s argument that the government’s history with the patent system demonstrates Congress’ intent to allow it to access the Act’s review proceedings. The Court did not find that history relevant to the Act’s processes, which it described as “meaningfully different.”

Finally, the Court did not think it odd that the Postal Service would not enjoy the same avenues of relief afforded to other infringers.

Justice Sotomayor delivered the opinion of the Court, in which Chief Justice Roberts, and Justices Thomas, Alito, Gorsuch, and Kavanaugh joined. Justice Breyer filed a dissenting opinion.

Download Opinion of the Court. 

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