Return Mail, Inc. v. United States Postal Service

THE TEXT, STRUCTURE, AND PURPOSE OF THE AIA

Return Mail argues that when Congress enacted the AIA, it did so against the backdrop of a specific, well-rooted definition of the term “person.” Return Mail claims that this definition, established by statute and judicial precedent, has been understood for over a hundred years to exclude the government. Return Mail contends that though the review provisions of the AIA do not explicitly define the term “person,” the Dictionary Act, which is “generally applicable to any act of Congress,” does define the term, and it does not include the government in its definition. Return Mail notes that the express purpose of the Dictionary Act is to stipulate controlling definitions for terms in acts of Congress that may not necessarily be defined in the acts themselves. Return Mail also asserts that the Trademark Act—which includes firms, corporations, and other organizations capable of suing or being sued as “juristic persons”—provides no guidance here, as no comparable language is found in the AIA itself.

Return Mail further argues that the Supreme Court has long echoed the common presumption that a sovereign is not a person, and has stated in a number of cases that this presumption may not be overcome absent “some affirmative showing of statutory intent to the contrary.” Return Mail contends that no such showing has been made in the present case, as neither Congress nor the President has given any indication that they intended to depart from this definition in drafting and signing the AIA. According to Return Mail, in separate instances where Congress has intended to broaden the definition of “person” to include certain governmental entities, Congress has made this intention explicit. In these instances, Return Mail asserts, Congress included statutory language that unambiguously lists the government among entities that may be considered persons in some specific context—language that is distinctly absent from the review provisions of the AIA.

The Postal Service counters that the legislative context and certain pieces of historical evidence demonstrate that Congress intended the term “person” in the review provisions of the AIA to include federal agencies. The Postal Service points to Congress’s authorization in other Patent Act provisions—as codified in several sections of Title 35—concerning federal agencies applying for and obtaining patents. The provisions, including 35 U.S.C. § 118, according to the Postal Service, direct federal agencies to do so by meeting the requirements for “person[s] other than inventors.” The Postal Service contends that government agencies should likewise be included in the definition of the term “person” in the review provisions of the AIA, pointing to the Supreme Court’s statement that “[i]dentical words used in different parts of the same statute are generally presumed to have the same meaning.” Addressing the Dictionary Act, the Postal Service notes that the Dictionary Act lists various entities that the term “person” includes, and argues that this use of the term “includes” signals that this list was intended not to be exhaustive, but merely illustrative. The Postal Service also claims that definitions stipulated by the Dictionary Act do not apply when “the context indicates otherwise,” which the Postal Service maintains is the case here.

Moreover, the Postal Service asserts that the Supreme Court—rather than having adopted some “hard and fast” rule that the definition of “person” necessarily excludes sovereigns—has instead stated that this definition can shift depending on the context, legislative history, and subject matter at hand. The Postal Service points to several cases in which this Court held that a state was a “person” for the purposes of the Sherman Act and that a foreign government was a “person” under the Clayton Act. The Postal Service also contends that Congress has historically intended for the government to participate in the patent system—a system that from the first Patent Act has described entities who could apply for, obtain, and maintain a patent as “persons.” The Postal Service notes that the federal government has long participated in this system, and federal agencies have regularly invoked forms of review that Congress had made available to “[a]ny person.”

THE ROLE OF THE AIA’S ESTOPPEL PROVISIONS

Return Mail argues that the foundation of the AIA is the balance that Congress sought to strike between improving patent quality and preventing repetitive, unnecessary litigation. And according to Return Mail, this balance is effectuated by the estoppel provisions of the AIA, which bar petitioners from seeking cancellation of a patent by challenging that patent’s validity on any ground that the petitioner had already raised during the Board’s review proceedings. Return Mail notes, however, that the sole forum where a petitioner may sue the government for unlawful use or manufacture of a patented invention is the Court of Federal Claims, where petitioners are not precluded from litigating issues that had already been subject to AIA review. As such, Return Mail claims that if the government were to be considered a “person” under the AIA—and thus an eligible petitioner—it would be able to pursue duplicative patent challenges unabated, giving it a unique advantage over private patent owners. Return Mail argues that because Congress’s intent in implementing the estoppel provisions was to limit precisely this kind of repetitive litigation, such a framework could not have been what Congress had contemplated in passing the AIA. Return Mail further points to this Court’s statements that Congress “does not alter the fundamental details of a regulatory scheme in vague terms or ancillary provisions,” and that in defining the scope of federal power, it must be “certain that Congress has conferred authority” on the relevant agency. Return Mail asserts that the review provisions of the AIA offer none of the requisite clarity or certainty on this point.

Lastly, Return Mail claims that because the AIA’s estoppel provisions are statutory rather than equitable, the Postal Service’s invocation of the principle that “equitable estoppel will not lie against the Government as it lies against private litigants” is misplaced. Return Mail asserts that the doctrine of equitable estoppel—that is, estoppel with a basis in considerations of fairness rather than legal rules—does not inform the scope of statutory estoppel provisions. Rather, according to Return Mail, equitable estoppel becomes irrelevant where prohibitions or privileges enshrined in statute begin. Return Mail further argues that the equitable estoppel doctrine is doubly irrelevant here because of Congress’s invocation of mutual collateral estoppel—a form of estoppel where parties are prohibited from relitigating an issue decided in a prior action in which both of the parties had participated—in crafting the AIA’s estoppel provisions. Return Mail notes that this type of estoppel is a form of res judicata that does apply against the government.

By contrast, the Postal Service contends that Return Mail overstates the importance of the AIA’s estoppel provisions. Postal Service claims that rather than specifically intending to bar repetitive litigation, Congress’s main priorities in enacting the review provisions were to establish a scheme for eliminating low-quality patents and to preclude the need for certain unnecessarily expensive patent infringement claims. The Postal Service argues that these interests are fully implicated when the party petitioning for review under the AIA is a federal agency. The Postal Service posits that this is because such agencies are highly experienced with the patent system, and are unlikely to bring low-quality or frivolous patent claims. The Postal Service further asserts that the inapplicability of the estoppel provisions to federal agencies does not give the government the ability to litigate the same patent challenges over and over, as mutual collateral estoppel would prevent the government from relitigating an issue where the parties to the current suit and the former suit are the same.

The Postal Service, countering Return Mail’s assertion that equitable estoppel does not inform the scope of statutory estoppel provisions, states that the dispute in the present case is not about the scope of the estoppel provisions. The estoppel provisions simply do not apply here at all, according to the Postal Service. The Postal Service notes that though mutual collateral estoppel does apply against the government, collateral estoppel generally only applies to issues that were “actually litigated and determined.” The Postal Service contrasts this doctrine with the AIA’s more expansive estoppel provisions, which preclude litigating any grounds for a patent’s invalidity that a petitioner “raised or reasonably could have raised” in the prior action. The Postal Service points to the Supreme Court’s statement that due to the government’s more restrained approach to pursuing appeals, as compared to private litigants, “courts should be careful when they seek to apply expanding rules of collateral estoppel to Government litigation.”