February 19, 2019
WRIT OF CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR
THE FEDERAL CIRCUIT
Leahy-Smith America Invents Act (AIA) of 2011 created the
Trial and Appeal Board, 35 U.S.C. §6(c), and established
three types of administrative review proceedings before the
Board that enable a "person" other than the patent
owner to challenge the validity of a patent post-issuance:
(1) "inter partes review," §311; (2)
"post-grant review," §321; and (3)
"covered-business-method review" (CBM review), note
following §321. After an adjudicatory proceeding, the
Board either confirms the patent claims or cancels some or
all of them, §§318(b), 328(b). Any
"dissatisfied" party may then seek judicial review
in the Federal Circuit, §§319, 329. In addition to
AIA review proceedings, a patent can be reexamined either in
federal court during a defense to an infringement suit,
§282(b), or in an ex parte reexamination by the Patent
Office, §§301(a), 302(a).
Return Mail, Inc., owns a patent that claims a method for
processing undeliverable mail. The Postal Service
subsequently introduced an enhanced address-change service to
process undeliverable mail, which Return Mail asserted
infringed its patent. The Postal Service petitioned for ex
parte reexamination of the patent, but the Patent Office
confirmed the patent's validity. Return Mail then sued
the Postal Service in the Court of Federal Claims, seeking
compensation for the unauthorized use of its invention. While
that suit was pending, the Postal Service petitioned for CBM
review. The Patent Board concluded that the subject matter of
Return Mail's claims was ineligible to be patented and
thus canceled the claims underlying its patent. The Federal
Circuit affirmed, concluding, as relevant here, that the
Government is a "person" eligible to petition for
The Government is not a "person" capable of
instituting the three AIA review proceedings. Pp. 6-18.
(a) In the absence of an express definition of the term
"person" in the patent statutes, the Court applies
a "longstanding interpretive presumption that
'person' does not include the sovereign," and
thus excludes a federal agency like the Postal Service.
Vermont Agency of Natural Resources v. United States ex
rel. Stevens, 529 U.S. 765, 780-781. This presumption
reflects "common usage," United States v. Mine
Workers, 330 U.S. 258, 275, as well as an express
directive from Congress in the Dictionary Act, 1 U.S.C.
§1. The Dictionary Act does not include the Federal
Government among the persons listed in the definition of
"person" that courts use "[i]n determining the
meaning of any Act of Congress, unless the context indicates
otherwise," §1. Contrary to the Postal
Service's contention otherwise, this Court has, in
several instances, applied the presumption against treating
the Government as a statutory person even when, as here,
doing so would exclude the Government or one of its agencies
from accessing a benefit or favorable procedural device. See,
e.g., United States v. Cooper Corp., 312 U.S. 600,
604-605, 614. Thus, the Court here proceeds from the
presumption that the Government is not a "person"
authorized to initiate these proceedings absent an
affirmative showing to the contrary. Pp. 7-9.
(b) The Postal Service must point to some indication in the
AIAs text or context affirmatively showing that Congress
intended to include the Government as a "person,"
but its arguments are unpersuasive. Pp. 9-17.
(1) The Postal Service first argues that the AIAs reference
to a "person" in the context of post-issuance
review proceedings must include the Government because other
references to persons in the patent statutes appear to do so.
The consistent-usage principle-i.e., when Congress
uses a word to mean one thing in one part of the statute, it
will mean the same thing elsewhere in the statute- however,
"'readily yields to context, '" especially
when a statutory term is used throughout a statute and takes
on "distinct characters" in distinct statutory
provisions. Utility Air Regulatory Group v. EPA, 573
U.S. 302, 320. Here, where there are at least 18 references
to "person[s]" in the Patent Act and the AIA, no
clear trend is shown: Sometimes "person" plainly
includes or excludes the Government, but sometimes, as here,
it might be read either way. The mere existence of some
Government-inclusive references cannot make the
"affirmative showing," Stevens, 529 U.S.,
at 781, required to overcome the presumption that the
Government is not a "person" eligible to petition
for AIA review proceedings. Pp. 9-12.
(2) The Postal Service next points to the Federal
Government's longstanding history with the patent system,
arguing that because federal officers have been able to apply
for patents in the name of the United States since 1883,
Congress must have intended to allow the Government access to
AIA review proceedings. But the Government's ability to
obtain a patent does not speak to whether Congress meant for
the Government to participate as a third-party challenger in
AIA proceedings established only eight years ago. Moreover,
even assuming that the Government may petition for ex parte
reexamination of an issued patent, as a 1981 Patent Office
Manual of Patent Examining Procedure (MPEP) indicates, an ex
parte reexamination process is fundamentally different from
an AIA review proceeding. The former process is internal, and
the party challenging the patent may not participate. By
contrast, adversarial, adjudicatory AIA review proceedings
are between the "person" who petitioned for review
and the patent owner; they include briefing, a hearing,
discovery, and the presentation of evidence; and the losing
party has appeal rights. Congress may have had good reason to
authorize the Government to initiate a hands-off ex parte
reexamination but not to become a party to the AIAs
full-blown adversarial proceeding. Nothing suggests that
Congress had the 1981 MPEP statement about ex parte
reexamination in mind when it created the AIA review
proceedings. And because there is no "settled"
meaning of the term "person" with respect to the
newly established AIA review proceedings, see Bragdon v.
Abbott, 524 U.S. 624, 645, the MPEP does not justify
putting aside the presumptive meaning of "person."
(3) Finally, the Postal Service argues that it must be a
"person" who may petition for AIA review
proceedings because, like other potential infringers, it is
subject to civil liability and can assert a defense of patent
invalidity. It would thus be anomalous, the Postal Service
posits, to deny it a benefit afforded to other infringers-
namely, the ability to challenge a patent de novo
before the Patent Office, rather than only with clear and
convincing evidence in defense to an infringement suit.
Federal agencies, however, face lower and more calculable
risks than nongovernmental actors, so it is reasonable for
Congress to have treated them differently. Excluding federal
agencies from AIA review proceedings also avoids the awkward
situation of having a civilian patent owner defend the
patentability of her invention in an adversarial,
adjudicatory proceeding initiated by one federal agency and
overseen by a different federal agency. Pp. 15-17.
868 F.3d 1350, reversed and remanded.
SOTOMAYOR, J., delivered the opinion of the Court, in which
ROBERTS, C. J., and Thomas, Alito, Gorsuch, and Kavanaugh,
JJ., joined. BREYER, J., filed a dissenting opinion, in which
GINSBURG and KAGAN, JJ., joined.
Leahy-Smith America Invents Act of 2011, 35 U.S.C. §100
et seq., Congress created the Patent Trial and
Appeal Board and established three new types of
administrative proceedings before the Board that allow a
"person" other than the patent owner to challenge
the validity of a patent post-issuance. The question
presented in this case is whether a federal agency is a
"person" able to seek such review under the
statute. We conclude that it is not.
Constitution empowers Congress "[t]o promote the
Progress of Science and useful Arts, by securing for limited
Times to Authors and Inventors the exclusive Right to their
respective . . . Discoveries." Art. I, §8, cl. 8.
Pursuant to that authority, Congress established the United
States Patent and Trademark Office (Patent Office) and tasked
it with "the granting and issuing of patents." 35
U.S.C. §§1, 2(a)(1).
obtain a patent, an inventor submits an application
describing the proposed patent claims to the Patent Office.
See §§111(a)(1), 112. A patent examiner then
reviews the application and prior art (the information
available to the public at the time of the application) to
determine whether the claims satisfy the statutory
requirements for patentability, including that the claimed
invention is useful, novel, nonobvious, and contains eligible
subject matter. See §§101, 102, 103. If the Patent
Office accepts the claim and issues a patent, the patent
owner generally obtains exclusive rights to the patented
invention throughout the United States for 20 years.
§§ 154(a)(1), (2).
patent issues, there are several avenues by which its
validity can be revisited. The first is through a defense in
an infringement action. Generally, one who intrudes upon a
patent without authorization "infringes the patent"
and becomes subject to civil suit in the federal district
courts, where the patent owner may demand a jury trial and
seek monetary damages and injunctive relief.
§§271(a), 281-284. If, however, the Federal
Government is the alleged patent infringer, the patent owner
must sue the Government in the United States Court of Federal
Claims and may recover only "reasonable and entire
compensation" for the unauthorized use. 28 U.S.C. §
sued, an accused infringer can attempt to prove by clear and
convincing evidence "that the patent never should have
issued in the first place." Microsoft Corp. v. i4i
L. P., 564 U.S. 91, 96-97 (2011); see 35 U.S.C.
§282(b). If a defendant succeeds in showing that the
claimed invention falls short of one or more patentability
requirements, the court may deem the patent invalid and
absolve the defendant of liability.
Patent Office may also reconsider the validity of issued
patents. Since 1980, the Patent Act has empowered the Patent
Office "to reexamine-and perhaps cancel-a patent claim
that it had previously allowed." Cuozzo Speed
Technologies, LLC v. Lee, 579 U.S.__, __(2016) (slip
op., at 3). This procedure is known as ex parte
reexamination. "Any person at any time" may cite to
the Patent Office certain prior art that may "bea[r] on
the patentability of any claim of a particular patent";
and the person may additionally request that the Patent
Office reexamine the claim on that basis. 35 U.S.C.
§§301(a), 302(a). If the Patent Office concludes
that the prior art raises "a substantial new question of
patentability," the agency may reexamine the patent and,
if warranted, cancel the patent or some of its claims.
§§303(a), 304-307. The Director of the Patent
Office may also, on her "own initiative," initiate
such a proceeding. §303(a).
and 2002, Congress added an "inter partes
reexamination" procedure, which similarly invited
"[a]ny person at any time" to seek reexamination of
a patent on the basis of prior art and allowed the challenger
to participate in the administrative proceedings and any
subsequent appeal. See §311(a) (2000 ed.);
§§314(a), (b) (2006 ed.); Cuozzo Speed
Technologies, 579 U.S., at__(slip op., at 3).
2011, Congress overhauled the patent system by enacting the
America Invents Act (AIA), which created the Patent Trial and
Appeal Board and phased out inter partes reexamination. See
35 U.S.C. §6; H. R. Rep. No. 112-98, pt. 1, pp. 46-47.
In its stead, the AIA tasked the Board with overseeing three
new types of post-issuance review proceedings.
the "inter partes review" provision permits "a
person" other than the patent owner to petition for the
review and cancellation of a patent on the grounds that the
invention lacks novelty or nonobviousness in light of
"patents or printed publications" existing at the
time of the patent application. §311.
the "post-grant review" provision permits "a
person who is not the owner of a patent" to petition for
review and cancellation of a patent on any ground of
patentability. §321; see §§282(b)(2), (b)(3).
Such proceedings must be brought within nine months of the
patent's issuance. §321.
the "covered-business-method review" (CBM review)
provision provides for changes to a patent that claims a
method for performing data processing or other operations
used in the practice or management of a financial product or
service. AIA §§ 18(a)(1), (d)(1), 125 Stat. 329,
note following 35 U.S.C. §321, p. 1442. CBM review
tracks the "standards and procedures of post-grant
review with two notable exceptions: CBM review is not limited
to the nine months following issuance of a patent, and
"[a] person" may file for CBM review only as a
defense against a charge or suit for infringement. §
18(a)(1)(B), 125 Stat. 330.
AIA's three post-issuance review proceedings are
adjudicatory in nature. Review is conducted by a three-member
panel of the Patent Trial and Appeal Board, 35 U.S.C.
§6(c), and the patent owner and challenger may seek
discovery, file affidavits and other written memoranda, and
request an oral hearing, see §§316, 326; AIA §
18(a)(1), 125 Stat. 329; Oil States Energy Services, LLC
v. Greene's Energy Group, LLC, 584 U.S.__, __-__
(2018)(slip op., at 3-4). The petitioner has the burden of
proving unpatentability by a preponderance of the evidence.
§§282, 316(e), 326(e). The Board then either
confirms the patent claims or cancels some or all of the
claims. §§318(b), 328(b). Any party
"dissatisfied" with the Board's final decision
may seek judicial review in the Court of Appeals for the
Federal Circuit, §§319, 329; see § 141(c), and
the Director of the Patent Office may intervene, §143.
in the post-AIA world, a patent can be reexamined either in
federal court during a defense to an infringement action, in
an ex parte reexamination by the Patent Office, or in the
suite of three post-issuance review proceedings before the
Patent Trial and Appeal Board. The central question in this
case is whether the Federal ...