• Dowd Scheffel

Supreme Court issues Opinion in Return Mail Inc. v. U.S. Postal Service Case

The Supreme Court issued its opinion in Return Mail Inc. v. U.S. Postal Service. Return Mail was a case addressing the interplay between federal agencies and private citizens when it comes to patent rights. In particular, the dispute centered around a patent action in which Return Mail sued the U.S. Postal Service ("USPS") for infringement before the U.S. Court of Claims. Return Mail claimed the USPS infringed its patent directed to use of bar codes to facilitate the processing of undeliverable mail. The USPS, as part of its defense, filed an action at the USPTO for review of the patent under the procedures for Confidential Business Method (CBM) patent review.


The issue in the case for the Supreme Court was whether the USPS qualifies as a "person" under the relevant patent statute (the Leahy-Smith America Invents Act) that allow for challenges to the validity of patents to be made with the PTO.


Dowd Scheffel submitted amicus curiae briefs at both the petition stage and the merits stage on behalf of prominent legal scholars providing important context on whether it is appropriate to allow federal agencies to have both the power of eminent domain in the context of patent rights, as well as the ability to take actions to cancel those property rights, as would a normal person. The Amici argued against federal agencies having the right to take actions to cancel patent rights.


The Court's 6-3 opinion, authored by Justice Sotomayor, determined that a federal agency did not meet the statutory requirement of a "person" for purposes of the relevant patent statute. Specifically, the Court held that in the absence of an express definition of the term “person” in the patent statutes (or other compelling evidence of Congressional intent), the Court applies a “longstanding interpretive presumption that ‘person’ does not include the sovereign,” and thus excludes a federal agency like the Postal Service. Justice Breyer dissented (joined by Justices Ginsberg and Kagan) arguing that the language of other related patent provisions suggests that in the administrative review statutes at issue, the term "person" includes the Government. Justice Breyer's primary argument was that because the Government is authorized to obtain patents, it must be a "person" for purposes of this dispute.


The judgment of the Federal Circuit was reversed and remanded for further proceedings.

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