United States: Return Mail Argued Before The Supreme Court

On February 19, the Supreme Court heard oral argument in Return Mail, Inc. v. United States Postal Service, No. 17-1594 (U.S.).  This case raises an interesting question of statutory interpretation:  whether the government is a "person" who may invoke the AIA proceedings to review an issued patent.

Under the AIA, "a person who is not the owner of a patent" may petition the PTAB to institute review of that patent in adversarial proceedings, such as inter partes reviews, post-grant reviews, and covered business method reviews.  35 U.S.C. §§ 311(a), 321(a); AIA § 18(a)(1).  The AIA itself does not define "person"—whether it would include the government.

Patent owner Return Mail challenged the ability of a government agency (the U.S. Postal Service) to petition for covered business method review of its patent before the Patent Office (another government agency).  The oral argument demonstrates that several arguments presented in the briefs of Return Mail and amici supporting it have garnered the close attention of the Justices.  We summarize three main arguments here.

First, the Dictionary Act, 1 U.S.C. § 1, provides that, "[i]n determining the meaning of any Act of Congress, unless the context indicates otherwise . . . the words 'person' and 'whoever' include corporations, companies, associations, firms, partnerships, societies, and joint stock companies, as well as individuals."  That default definition does not include the government.  Under the Supreme Court's precedent, moreover, "person" is presumed to exclude the government unless there is a clear contrary showing by Congress.  For example, certain provisions of the patent statute, such as 35 U.S.C. § 207(a)(1), explicitly reference the government.  But that is missing from the AIA review provisions at issue here.  As Justice Kagan observed, "you have a presumption running against you," and "we can argue about how strong the presumption is, but there's at least some presumption coming from the Dictionary Act, coming from just our cases on this topic, which says that the government isn't a person unless we see evidence that it is a person."

Second, the estoppel provisions of the AIA seem to suggest that Congress may not have intended the government to petition for AIA reviews.  35 U.S.C. §§ 315(e) and 325(e) specify the estoppel effects of a final written decision against an unsuccessful petitioner in future proceedings at the PTAB, in district courts, and before the ITC, but those provisions are completely silent on any estoppel effects in the Court of Federal Claims.  Because a patent owner may not sue the federal government in district courts for patent infringement, a suit filed under 28 U.S.C. § 1498(a) in the Court of Federal Claims is the only remedy for a patent owner against the government or its contractors for unauthorized use of a patented invention.  Thus, the government as a petitioner does not face the same statutory estoppel as a private party.  This in theory allows the government to potentially re-litigate validity in a § 1498(a) suit, taking a "second bite of the apple."  In Justice Kavanaugh's words, this is not "the bargain that seems to have been part of what Congress put in place."

Third, allowing the government to petition for AIA reviews could also lead to the odd situation where one government agency is adverse to another agency in the federal court.  A party participating in an AIA review has a statutory right to appeal an adverse decision of the PTAB.  Here, had the PTAB upheld the patentability of Return Mail's patent, the U.S. Postal Service could appeal to the Federal Circuit, and the Patent Office could intervene to defend its decision (as it often does in other appeals from AIA reviews).  If so, two Executive Branch agencies would be directly adverse to each other before the federal court.

Justice Sotomayor specifically cited the amicus brief of the Cato Institute and Professor Dolin (authored by Jones Day), which raises intra-Executive conflict as a central issue.  She noted that this is "a special situation that requires a closer look and a more express statement" from Congress.  Justice Sotomayor observed that in allowing a government agency to petition for AIA reviews, "the deck is stacked against a private citizen who is dragged into these proceedings," with one "executive agency acting as [the] judge" and "another government agency being the prosecutor."

Justice Gorsuch likewise observed that this is "a really important question," as normally "we think of the Executive Branch as able to resolve its own disputes and speak with one voice," but here, "the government [could] speak[ ] out of both sides of its mouth potentially."  He questioned, "shouldn't we, as Justice Sotomayor suggested, at least expect some sort of clarity from Congress when it wants that unusual arrangement to reign?"

Justice Kavanaugh similarly noted that such a scenario of one agency litigating against another agency in the federal court, while "not unprecedented," is "unusual."  He asked whether the government could instead utilize ex parte reexamination, which would not lead to the "anomaly" of intra-Executive conflict.  Towards the end of the argument session, Justice Kavanaugh summarized the above three main arguments as the "contextual points that . . . cut against [the government]."

On the other hand, several Justices, including Justice Breyer, appeared to be concerned about interpreting the statute as not allowing the government to petition for AIA reviews as an efficient and cost-effective way to cancel weak patents.  Interpreting "person" in the AIA review provisions as excluding the government would place the government in a worse position than private parties.

A decision in this case is expected before the end of June.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Sign Up
Gain free access to lawyers expertise from more than 250 countries.
Email Address
Company Name
Confirm Password
Mondaq Newsalert
Select Topics
Select Regions
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions