Return Mail: We start from the baseline that the government is not a person

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.

* 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.

 

36 thoughts on “Return Mail: We start from the baseline that the government is not a person

  1. 4

    The closing paragraph of

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

    simply does not go far enough to recognize the rather large elephant in the room that damage has already been done by the Court in their breaking of the he score board by their previous “other sandbox” antics.

    The necessary first step to fixing the score board is admitting that the scoreboard IS broken.

    The Kavanaugh Scissors need be brought to bear.

  2. 3

    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?

    You really get a strong sense of anti-patent bias from her. It is so odd that people like her that know nothing of patent law, science, technology, or business can form such strong anti-patent opinions. She reminds me of the Alt Right and their irrational ha t r e ds. No person that forms these irrational ha t r e ds based on ignorance is a great person and her biography is r i d i c u lous. She should be vilified. Why would an y one trust anything she has to say af ter wa tching her form her opini ons on pa tent s.

    1. 3.1

      Why would an y one trust anything she has to say af ter wa tching her form her opini ons on pa tent s.

      Because like most people, one uses different methods of formulation on different topics.

      Your “one-bucketing” here is no better than Malcolm’s “one-bucketing.”

      I really doubt that Justice Ginsburg applies the same methodology to her reasoning on items that she barely comprehends as to in items that she knows very well.

      1. 3.1.1

        anon, no.

    2. 3.2

      How is this a from of anti-patent bias? Is she wrong that non-novel and obvious claims should never have been issued in the first place?

      1. 3.2.1

        NS II, clearly you are not aware of the maximalist creed:

        Better that ten terrible patents are enforced than one good patent be invalidated.

        I think that’s in the Magna Carta. Or something.

        1. 3.2.1.1

          MS: Magna Carta?

          Um … MAGA Carta!

          Fake President.

          1. 3.2.1.1.1

            Mueller Libertatum

            It would be nice to return to the tax rates that prevailed when America was great.

            I don’t think the redhats take MAGA literally I’m afraid.

        2. 3.2.1.2

          Is that such a bad creed? It says we should view the USA’s incentive to every person on the planet to invent and innovate as our crown jewel. Better to issue 10 “bad” patents than to miss out on the next world-changing/life improving invention.

          Is it any different than our justice system creed that it is better to let 10 guilty men go than to lock up 1 innocent man?

          Better to start with this creed, and then work backwards to systematically weed out weaker patents.

          The alternative (that many on this blog espouse) is that it is better to kill off 10 valid patents than to let one “invalid” patent issue. This is short sighted approach is going to come home to roost as China out innovates the US over the next 20 years.

          1. 3.2.1.2.1

            Better to issue 10 “bad” patents than to miss out on the next world-changing/life improving invention.

            Er, no. I am a big believer in patent rights, but this is so obviously wrong that it is almost hard to know where to start in rebutting it. Not to put too fine a point on it, but patents granted on the prior art (a) at best do nothing to improve anyone’s life and (b) at worst make people’s lives worse.

            I feel robustly confident that we can grant valid patents and prevent patents on the prior art. If I did not believe this, however—if I were convinced that we really could only run the system at a ratio of 10 invalid grants for every 1 legit grant—I would have to reluctantly conclude that the costs outweigh the benefits.

            Is it any different than our justice system creed that it is better to let 10 guilty men go than to lock up 1 innocent man?

            Yes. I feel embarrassed to have to mention this to you, but there are different magnitudes of bad things. Stubbing your toe is bad; losing your leg from the knee down in a tractor accident is worse. In a similar manner, wrongfully losing a time-limited personal property right is bad, but being wrongfully imprisoned is worse.

            It makes sense for society to create more safeguards against wrongful imprisonment than wrongful patent invalidation. There should be safeguards against each, but more safeguards against wrongful imprisonment. The two are not on equal footing. A ratio of 10 wrongful acquittals to every 1 sound conviction is less than ideal, but socially sustainable. A ratio of 10 invalid grants to every 1 valid grants is not.

            1. 3.2.1.2.1.1

              Greg,

              Your view, while more eloquently stated, rests on exactly the same footing of the view that you would counter.

              I will easily grant that there be differences to accord, but I would deny you the right to set your own personal barometer as to any relative weights to the Lockean triumvirate of Life, Liberty and Property.

              10 to 1? Your “is not” is rather meaningless.

              I invite you to explore the site at: link to fee.org

              As well, check out this:

              link to fee.org

            2. 3.2.1.2.1.2

              Greg – thank you for your well thought out reply.

              I would agree that wrongful loss of freedom (incarceration) is “worse” than wrongful loss of property (patent invalidation).

              The point I am trying to make is that wrongful loss of property is still a REALLY big problem.

              If, “A ratio of 10 invalid grants to every 1 valid grants is not (sustainable)”, what ratio of invalid to valid patent grants IS sustainable in your opinion? 5 to 1? 1 to 1?

          2. 3.2.1.2.2

            “Better to issue 10 “bad” patents than to miss out on the next world-changing/life improving invention.

            Is it any different than our justice system creed that it is better to let 10 guilty men go than to lock up 1 innocent man?”

            Yes because the original Blackstone’s ratio suggests erroring on the side on government inaction. Your suggestion is the opposite.

            1. 3.2.1.2.2.1

              Except not.

              Ben, as an examiner IN the system, you have a woeful understanding of its history and relative importance.

              Maybe you can search out some Malcolm posts to “upvote”….?

              1. 3.2.1.2.2.1.1

                “Except not.”

                Because…?

                “Maybe you can search out some Malcolm posts to “upvote”….?”

                I’m flattered that you are willing to look rediculous by suspending common sense (specifically how more than one person can use the same name) in order to insult me.

                1. [Y]ou are willing to look r[i]diculous by suspending common sense…

                  Speaking of common sense, it rather defies common sense to imagine that something worthwhile might come from engaging with bad faith interlocutors.

                2. I installed a filter on my Chrome browser to block out the two most notorious such, and it has vastly improved the experience. I highly recommend this approach (in fact, I am 90% of the way toward deciding to include a few more IDs in the blocked list).

                3. might come from engaging with bad faith interlocutors

                  With all due respect, F you Greg.

                  It’s one thing for you to be an inte11ectual coward in your own right, it’s quite another to accuse someone else of bad faith.

          3. 3.2.1.2.3

            The alternative (that many on this blog espouse) is that it is better to kill off 10 valid patents than to let one “invalid” patent issue. This is short sighted approach is going to come home to roost as China out innovates the US over the next 20 years.

            What if the ten that get invalidated belong to Chinese companies?

            1. 3.2.1.2.3.1

              Locke did not, anywhere, so far as I know equate life to property.

              A triumvirate is not necessarily a right triangle. Only the moral compass of a stooge would equate mere money with executing or imprisoning the innocent.

              Greg’s point is impregnable. My point; that the maximalist’s values are deeply distorted, is amply made.

              1. 3.2.1.2.3.1.1

                Locke did not, anywhere, so far as I know equate life to property.

                I am likewise unaware of any occasion of Locke setting life, liberty, and property on equal footing.

                Imagine, however, that he had. At most, this would prove that Locke was guilty of a distortion or exageration. We are not obliged to accept such an obviously silly notion as correct merely because of Locke’s ipse dixit.

                I dare say that all of us (or at least nearly all of us) are capable of the critical reasoning necessary to see that wrongful imprisonment and wrongful patent claim canceling are not equal harms—either morally or in practical effect. I suppose that those taking up a contrary position are conceivably merely culpable for an innocent mistake, but I am more inclined to suspect intellectual bad faith in the case of such an egregious intimation.

                1. While I agree with you 100% in this regard, you/we are relying on a moral judgment. There are people that kill others for money, so it isn’t hard to imagine a person that values property rights above life and liberty. This is especially easy when someone is comparing their own notion of property to someone else’s life or liberty. All it takes is a lack of empathy.

                2. NS II,

                  “One may well ask: ‘How can you advocate breaking some laws and obeying others?’ The answer lies in the fact that there are two types of laws: just and unjust. I would be the first to advocate obeying just laws. One has not only a legal but a moral responsibility to obey just laws.

                  Conversely, one has a moral responsibility to disobey unjust laws. I would agree with St. Augustine that ‘an unjust law is no law at all.’

                  “Now, what is the difference between the two? How does one determine whether a law is just or unjust?

                  A just law is a man-made code that squares with the moral law or the law of God. An unjust law is a code that is out of harmony with the moral law. To put it in the terms of St. Thomas Aquinas: An unjust law is a human law that is not rooted in eternal law and natural law. Any law that uplifts human personality is just. Any law that degrades human personality is unjust.”

                  ~Martin Luther King
                  April, 1963

              2. 3.2.1.2.3.1.2

                No one said EQUAL – read the flippin material.

            2. 3.2.1.2.3.2

              Which filter do you use?

              1. 3.2.1.2.3.2.1

                LOL – don’t buy his nonsense, NS II – it is more than apparent that he does not use anything to block anything (his using my exact words and phrases in his general posts…)

              2. 3.2.1.2.3.2.2

                Seconded.

            3. 3.2.1.2.3.3

              As I mentioned, a functioning US Patent system provides a Global incentive to innovate and patent new inventions. If Chinese citizens/companies are the ones filing for these inventions first, so be it.

              My point regarding China is that they are moving in a direction where patent rights are gaining strength & certainty while the US has been systematically weakening patent rights & certainty for the past decade. Note that I am not saying that the Chinese patent system is better Today.

              However, if you continue to draw these trend lines out over the next 20 years – China replaces of the USA as the de-facto country in which to patent your idea first, get investment based on your patent, and grow your business.

              1. 3.2.1.2.3.3.1

                >>a functioning US Patent system provides a Global incentive to innovate and patent new inventions. If Chinese citizens/companies are the ones filing for these inventions first, so be it.

                I think PC has destroyed people’s minds. You don’t just be nice. That isn’t enough. The US patent system is not for incentives in other countries. The US Constitution does not provide for that and it would a form of foreign aid if we wanted to do that. The current system is based on Treaty. It says we will allow you to get a patent in our country if you give our inventors a patent in your country. It is a quid-pro-quo of building an international system of incentives. It is built on the President making treaties and the Congress ratifying the treaties and passing patent legislation according to the Constitution.

                Please stop grow up. (Or at least classify the laws properly.)

              2. 3.2.1.2.3.3.2

                functioning US Patent system provides a Global incentive to

                and

                If Chinese citizens/companies are the ones filing

                You confuse two very different aspects here, SP.

                First and foremost, patent law was, is, remains, and shall be, a Sovereign-centric law.

                That is critical to understand, and it is only the Big Corp. transnational mouthpieces that attempt to obfuscate that point.

                To this end, the reply from Night Writer (while not complete), DOES lead you in the correct direction as to how one Sovereign may barter with another Sovereign (treaty power) in order to still advance a particular Sovereign’s desire to advance itself.

                But make no mistake, the be all and end all of patent law is ONLY for a Sovereign’s benefit.

                The second item that becomes jumbled for you is entity identity of a patent right.

                That simply has far LESS to do with anything than you might think. This is because the US patent system was explicitly formed such that the patent right – as a property right – was MEANT to be fully alienable, and in that sense, the “who” that owns the right is simply NOT the driver that some would wish to make it out to be.

  3. 2

    Another good argument that I saw in the briefing was that Section 315(e)(2) of the AIA governs litigation estoppel on a petitioner following an IPR. But that section only applies to a “civil action” in district court (under 28 USC 1338), or an ITC action under Section 337. An action against the United States for patent infringement must be brought in the Court of Federal Claims under 28 USC 1491, which is not mentioned in the AIA estoppel provision.

    And that basically means that, if the government were allowed to file an IPR, it would not be subject to any statutory estoppel in U.S. Claims Court even if it lost at the PTAB. An obviously unfair result, which the government had to respond in briefing by arguing that “common law estoppel” might still apply. But the fact that the AIA only covers civil actions in district court and the ITC is strong evidence that Congress did not contemplate the government being an IPR petitioner.

    1. 2.1

      Good find, and strong position. Lets not muddy up Title 1, sec. 1. It’s is pretty clear there that “a person” does not include the U.S. post office.

      You have a distinct Article 3 court for suing the gov’t for patent infringement. Let the gov’t bring their invalidity arguments in that forum.

      Its not like the gov’t is looking to save litigation dollars by going the IPR route. What is the discretionary budget of the U.S.?? 400 billion?

    2. 2.2

      This is a really good point Lode_Runner.

  4. 1

    More of a nit, but the non-sequotur of “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 …”. ” is easily dismissed given that ONLY a real person (and not even a juristic person) can actually BE an inventor (see Stanford v Roche).

    1. 1.1

      … by the by, even though changes in the AIA made it easier for certain juristic persons to prosecute and own patent applications, nothing in the AIA changed the fundamental nature that only a real person could be the initiator (as inventor) of what will be covered by a patent.

      No juristic person of any sort is allowed (yet) to supplant that very real need for a real person.

      (while not on point to this discussion, this has some interesting “twists” for artificial intelligence and the possibilities that may generate from autonomous self-programming devices)

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