Return Mail v. U.S. Postal Service
The U.S. Postal Service wants to defend its use of a mail sorting method before the Patent and Trademark Office.
A private company, Return Mail, has a patent on a method of dealing with undeliverable mail. The United States Postal Service has been using the same method. Return Mail tried to get the Postal Service to license it (pay for it), but that didn’t work. Then Return Mail sued the Postal Service under a particular provision of patent law that is specific to suits against the government. Now the two are having it out over whether the USPS can get the Patent and Trademark Office to review the patent before engaging in litigation.
Infringement vs. Section 1498(a)
If it had been a private company using the mail sorting method, Return Mail would have sued for infringement. And then the company would have had three options to challenge the patent’s validity before landing in federal court. The America Invents Act (2011) created these three types of agency review, as a way to move patent disputes quickly. Federal court actions are much more time-consuming and costly.
But it’s unclear whether the government can avail itself of the AIA-granted agency review processes. This case is about the “CBM Review.” The Covered Business Methods Review is available when a non-patent owner is sued for infringement on an invention that is a “covered business method.”
Return Mail’s sorting process is a “covered business method.” And the Supreme Court is having us assume that when the government was sued under Section 1498, it counts as being “sued for infringement.” But what the Supreme Court wants to resolve is whether the government counts as a “person” who was sued for infringement. The text of the CBM review provision says “person” specifically.
Return Mail’s Estoppel Argument
Return Mail focuses its pitch to the Supreme Court on how the “estoppel” provisions relating to CBM review function. When a party requests the PTO to review a patent (like in CBM review), the American Invents Act says the party can’t then go to federal court and try to get a different ruling on the same thing. Suppose the party lost in the agency CBM review; it will be “estopped” from making the same arguments in federal court, like in the infringement suit against it.
The AIA makes sure that estoppel applies to private parties because, where the AIA mentions estoppel, it lists the types of federal court actions that private parties may end up in. It does not list the type of federal court action that would apply to the government. Return Mail argues this imbalance shows that CBM review wasn’t ever meant to apply to the government in the first place.
The Postal Service’s Arguments
The U.S. Postal Service looks to the history and purpose of the America Invents Act, as well as its structure, to argue that Congress did not mean to exclude the government from CBM review. The USPS argues that the word “person” is used often in patent law, and its various uses make clear that it always applies to the government — both in the Patent Act and in the America Invents Act.
The government has always made use of U.S. patent law. It invests significantly in advancement of the sciences and arts, and its money is at stake in patent disputes, just like private parties. When Congress sought to provide for efficient review of patent actions, it did not intend to exclude the government.
The Court will hear arguments on February 19, 2019.