Return Mail, Inc. v. United States Postal Service

Return Mail v. the United States Postal Service, decided June 10th, 2019. By a vote of six to three, in an opinion by Justice Sotomayor, the Supreme Court reversed the Federal Circuit and held that a federal agency is not a "person" who may petition for the post-issuance review proceedings created by the America Invents Act. The longstanding presumption that "person" excludes the sovereign controlled, and the Postal Service failed to rebut it. Here's the brief.

Return Mail owns a patent claiming a method for processing undeliverable mail. The Postal Service later introduced an enhanced address-change service to handle undelivered mail, and Return Mail asserted that the service infringed its patent.

The Postal Service first petitioned the Patent Office for ex parte reexamination, 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 again — this time for covered-business-method review, or C-B-M review, one of the three new proceedings the America Invents Act had created. The Patent Trial and Appeal Board agreed that the patent claimed ineligible subject matter and canceled the claims. A divided panel of the Federal Circuit affirmed, holding, over a dissent, that the Government is a "person" eligible to petition for that review. The Supreme Court granted cert to decide whether a federal agency is a "person" capable of petitioning for post-issuance review under the Act.

The America Invents Act created the Patent Trial and Appeal Board and three new post-issuance proceedings that let a "person" other than the patent owner challenge a patent's validity: inter partes review, post-grant review, and covered-business-method review. Each is adjudicatory — with briefing, discovery, a hearing, and appeal rights.

The petitioner bears the burden of proving unpatentability, and any dissatisfied party may appeal to the Federal Circuit. The statute says only "a person" may petition, but the patent statutes never define "person." So the question was whether the Government counts. Against that silence, the Court applied a settled rule.

The presumption is not absolute; it yields only on an affirmative showing that Congress meant to include the sovereign.

So the burden fell on the Postal Service.

The Postal Service offered three arguments. None, the Court said, delivered.

First, consistent usage: other patent provisions use "person" to include the Government, so this one should too. But the Court found no reliable pattern.

Second, history: agencies have obtained patents since 1883 and have used ex parte reexamination. But obtaining a patent, the Court reasoned, says nothing about acting as a third-party challenger, and the Act was only eight years old. Ex parte reexamination is also fundamentally different — internal and hands-off — while an AIA proceeding is a full adversarial adjudication between the petitioner and the patent owner.

Third, anomaly: as an accused infringer, the Postal Service said it deserved the same tools as anyone else. But under section 1498, the Government faces only compensation — no injunction, no jury, no punitive damages — so Congress could reasonably treat agencies differently, and could avoid the awkward prospect of one agency litigating against another before the Patent Office.

Justice Breyer, joined by Justices Ginsburg and Kagan, dissented; he would have read "person" to include the Government.

Return Mail settles that the presumption against treating the sovereign as a statutory "person" governs the America Invents Act's review provisions, and that scattered Government-inclusive uses of "person" elsewhere in the patent laws do not rebut it. Federal agencies accused of infringement defend in the Court of Federal Claims under section 1498; they cannot wield inter partes, post-grant, or covered-business-method review to cancel a private party's patent. The decision sits in a long line — from Cooper to Stevens — reading "person" to exclude the sovereign unless Congress affirmatively says otherwise. The case is as much about how to read the word "person" as it is about patents.

Return Mail v. United States Postal Service, 587 U.S. 618, decided June 10th, 2019. I'm Kyle Coleman. Thanks for watching.