Return Mail, Inc. v. U.S. Postal Serv.
The Supreme Court ruled that the Postal Service and other federal agencies cannot use the Patent Office's three newer review procedures to challenge a patent's validity, because the law's word "person" does not include the government.
The decision means agencies accused of using someone else's invention must fight the validity question the old-fashioned way, in an infringement lawsuit, rather than through the faster and cheaper administrative process Congress created in 2011.
“This presumption reflects “common usage,””
Explaining why courts normally assume the word 'person' in a statute excludes the government.
How it got here: The Patent Board canceled Return Mail's patent claims and the Federal Circuit affirmed, ruling the Postal Service qualified as a "person" who could seek that review.
The Case in Depth
What happened
Return Mail owns a patent on a method for processing undeliverable mail. The Postal Service developed its own system to handle such mail, and Return Mail said this infringed its patent. After the Patent Office confirmed the patent's validity through one process, the Postal Service tried a newer, faster review process created by a 2011 law to get the patent's claims canceled instead.
The question before the Court
Can a federal agency like the Postal Service use special patent office reviews to challenge someone else's patent?
Why it matters
Federal agencies that use technology covered by private patents will have fewer tools to challenge those patents cheaply. They must instead defend infringement suits in court, facing a tougher evidence standard, while private companies retain access to the faster Patent Office review process the government cannot use.
What changes now
The case goes back to the Federal Circuit for further proceedings consistent with the ruling, meaning the Postal Service's cancellation of Return Mail's patent claims through this review process cannot stand. This is a final decision on the legal question of whether federal agencies can use these review procedures; any future defense the Postal Service raises must come through the ordinary infringement lawsuit process instead.
What this does not decide
The Court did not decide whether federal agencies count as "persons" for the older ex parte reexamination process, since that question was not before it. It also left open, without resolving, a separate dispute about whether lawsuits against the government under a specific compensation statute count as "infringement" suits.
Concurrences and dissents
Dissent — Justice Breyer
“Why, then, would Congress have declined to give federal agencies the power to invoke these same administrative procedures?”Breyer's central objection questioning the majority's reasoning for excluding agencies.
Justice Breyer argued that the government should count as a "person" able to use these review procedures. He pointed to related patent provisions that already treat agencies as persons, argued the presumption against including the government is weakest when no liability or immunity is at stake, and said the law's purpose of cheaply weeding out bad patents applies equally to government and private challengers. He would have affirmed the Federal Circuit.
How the Court got there
The legal reasoning, step by step
- The Court began from a longstanding interpretive presumption that when a federal law uses the word "person" without defining it, that word does not include the government itself, unless something in the law's text clearly shows otherwise.
- The Court found support for that presumption in the Dictionary Act, a general law telling courts how to read undefined terms in federal statutes, which lists corporations and individuals as "persons" but does not mention the federal government.
- The Postal Service pointed to other places in the patent laws where "person" clearly includes the government, arguing the word should be read consistently throughout the statute. The Court rejected this, explaining that a repeated word can carry different meanings in different parts of a law when the surrounding context differs, and here the word "person" was used inconsistently across at least 18 provisions.
- The Court also rejected the argument that the government's long history of applying for patents, or a decades-old Patent Office practice allowing agencies to request an older, more limited kind of review, showed that Congress meant to let agencies use the newer, adversarial review procedures created in 2011.
- Finally, the Court reasoned that Congress could sensibly treat government agencies differently from private companies, since agencies already face a more limited, predictable form of liability for patent infringement and do not need the extra tool the newer procedures provide.
- Because nothing in the law affirmatively showed Congress meant to include the government, the presumption controlled and the government did not count as a "person" who could seek this review.