by Dennis Crouch

[Oral Arguments Transcript]

Today, the Supreme Court heard oral arguments in the business method review case of Return Mail Inc. v. U.S. Postal Service. The basic question in the case is whether the United States government (here the USPS) counts as “a person who is not the owner of a patent.” If the US is a person, then it has standing to file a petition for inter partes review, post grant review, covered business method review. See 35 U.S. Code § 321.* Question presented:

Whether the government is a “person” who may petition to institute review proceedings under the Leahy-Smith America Invents Act.

The patentee (Return Mail) owns patents covering ways to more efficiently sort mail — and the prime potential infringer/licensee is the USPS. For their part, the USPTO and Federal Circuit both concluded that the US is a “person” in this context, while noting that there is “no hard and fast rule of exclusion, and much depends on the context, the subject matter, legislative history, and executive interpretation.”

The AIA does not define “person,” but Title 1 of the U.S.Code does have a definition that extends to companies, but does not appear to include governments.

The words ‘person’ and ‘whoever’ include corporations, companies, associations, firms, partnerships, societies, and joint stock companies, as well as individuals.

1 U.S.C. § 1 (the Dictionary Act). Although the definition does not expressly include governments, it also does not expressly exclude them either. In 2000, the Supreme Court stated that the sovereign is usually not treated as a “person” in U.S. law. Vt. Agency of Nat. Res. v. US ex rel. Stevens, 528 U.S. 765 (2000). The flip-side of this is we’re really clear on the fact that a government can obtain a patent even though Section 102 of the patent act states that “A person shall be entitled to a patent …”. At other points, the patent act uses “person” to refer only to humans. See 35 U.S.C. 3 (“The Director shall be a person.”).

Covington attorney Beth Brinkman argued for the petitioner Return Mail and Deputy SG Malcolm Stewart on behalf of the US Postal Service.

Ms. Brinkman began as follows:

MS. BRINKMANN: The term “person” in this case does not extend to include the government for three reasons. First, the other branches rely on the Dictionary Act definition of person and this Court’s presumptive definition of “person” to not include the government. That is a stable framework that’s critical to that communication between the branches. Second, the estoppel that was enacted by Congress specifically references the jurisdiction of the district court and the International Trade Commission, not the Court of Federal Claims, where the government’s patent litigation takes place, reinforcing the definition of “person” not to include the government. . . . And the third point I wanted to make, Your Honor, was that this does not exclude the government from going after bad patents. To the contrary, the government … [already] has the most powerful tools to do that.

Justice Ginsberg took an active role in oral arguments — and quickly got to the point of why:

JUSTICE GINSBURG: Why would Congress want to leave a government agency out of this second look if the idea is to weed out patents that never should have been given in the first place? MS. BRINKMANN: Because the government already has opportunities through both the reexamination and through challenging the validity. All of the grounds for validity can be challenged in the Court of Federal Claims.

For its part, the Government argued that the Dictionary Act definition does not hold sway here because of the context — however, the Justices did not appear to really buy into his arguments.

MR. STEWART: I would say that the strongest contextual evidence [for defining person to include gov’t] is that the word “person” in the provisions that define IPR and CBM review is used to make available to the general public a procedural mechanism, an advantage. It’s made available on a widespread basis. JUSTICE GORSUCH: Isn’t that flipping the presumption? I mean, the presumption is that “person” doesn’t include the government, and you’re suggesting, well, because “person” is broad and it’s a big term, it includes the government. MR. STEWART: I think there are at least two or three different prerequisites to my theory about the context. The first is that it is making available a benefit as opposed to imposing a disadvantage. And that goes all the way back to Dollar Savings Bank in the 19th Century. The second is that the benefit is broadly available. . . . The third is that there is no evident reason that Congress — that Congress would have wanted to exclude federal agencies because the rationales for creating these mechanisms in the first place apply equally when the federal agency is the

requestor. JUSTICE KAGAN: I guess what I was hoping for was that you would have an argument from particular statutory provisions.

JUSTICE KAVANAUGH: Because we start from the baseline of the government’s not a person, is you need the context to strongly support you.

Ms. Brinkman chimed-in on the not-a-person presumption — rhetorically asking:

MS. BRINKMANN: The question is, is there anything affirmative to indicate that the government was included?

Although I enjoy the theoretical debate about whether a government is a person. I don’t see this as one of the important burning questions in patent law. Justice Kavanaugh focused on that issue in his discussion with the Mr. Stewart:

JUSTICE KAVANAUGH: If you were not to prevail here, what would the real world problems be for the government? MR. STEWART: You know, I’m told by the PTO that in the years since the AIA was enacted, federal agencies have submitted 20 requests for all forms of AIA post-issuance review combined.

I mean, if you look at it from the standpoint of the government’s overall litigation efforts across all subject matters, it’s pretty small.

As some have suggested, perhaps it is best for the Court to play in this sandbox rather than addressing core patent law issues.

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* Note, Section 321 applies to Post-Grant Review, but the Business Method Review (CBM) program follows the same requirements as indicated by Section 18 of the AIA. Section 18 is not codified in the U.S.Code because it is a sun-setting provision rather than permanent.