Return Mail V USPS
Return Mail V USPS
Syllabus
Syllabus
Syllabus
Syllabus
No. 17–1594
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1 The CBM review program will stop accepting new claims in 2020.
See AIA §18(a)(3)(A), 125 Stat. 330; 77 Fed. Reg. 48687 (2012).
Cite as: 587 U. S. ____ (2019) 5
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2 The Federal Circuit rejected Return Mail’s argument that the Postal
Service cannot petition for CBM review for the independent reason that
a suit against the Government under 28 U. S. C. §1498 is not a suit for
infringement. 868 F. 3d 1350, 1366 (2017). We denied Return Mail’s
petition for certiorari on this question and therefore have no occasion to
resolve it in this case. Accordingly, we assume that a §1498 suit is one
for infringement and refer to it as the same.
Cite as: 587 U. S. ____ (2019) 7
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3 For example, the statute expressly includes the Government as a
2
The Postal Service next points to the Federal Govern-
ment’s longstanding history with the patent system. It
reminds us that federal officers have been able to apply for
patents in the name of the United States since 1883, see
Act of Mar. 3, 1883, 22 Stat. 625—which, in the Postal
Service’s view, suggests that Congress intended to allow
the Government access to AIA review proceedings as well.
But, as already explained, the Government’s ability to
obtain a patent under §207(a)(1) does not speak to whether
Congress meant for the Government to participate as a
third-party challenger in AIA review proceedings. As to
those proceedings, there is no longstanding practice: The
AIA was enacted just eight years ago.8
More pertinently, the Postal Service and the dissent
both note that the Patent Office since 1981 has treated
federal agencies as “persons” who may cite prior art to the
agency or request an ex parte reexamination of an issued
patent. See post, at 5. Recall that §301(a) provides that
“[a]ny person at any time may cite to the Office in writing
. . . prior art . . . which that person believes to have a
bearing on the patentability of any claim of a particular
patent.” As memorialized in the Patent Office’s Manual of
Patent Examining Procedure (MPEP), the agency has
understood §301’s reference to “any person” to include
“governmental entit[ies].” Dept. of Commerce, Patent and
Trademark Office, MPEP §§2203, 2212 (4th rev. ed., July
1981).
We might take account of this “executive interpretation”
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Service invokes is to ascertain the meaning of a statutory term from its
consistent usage in other parts of the statute, not to pick sides among
differing uses.
8 Moreover, for those of us who consider legislative history, there is
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9 As discussed above, see supra, at 2–4, ex parte reexamination is not
one of the three new proceedings added by the AIA, and therefore the
question whether its reference to a “person” includes the Government is
beyond the scope of the question presented. Moreover, neither party
contests that a federal agency may cite prior art to the Patent Office
and ask for ex parte reexamination.
Cite as: 587 U. S. ____ (2019) 15
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§18(a)(1)(D), 125 Stat. 330. Because infringement suits against the
Government must be brought in the Court of Federal Claims—which is
not named in the estoppel provisions—the Government might not be
precluded by statute from relitigating claims raised before the Patent
Office if it were able to institute post-issuance review under the AIA.
See 28 U. S. C. §1498(a). Although Return Mail cites this asymmetry
in support of its interpretation, we need not rely on it, because Return
Mail already prevails for the reasons given above. At any rate, the
practical effect of the estoppel provisions’ potential inapplicability to
the Government is uncertain given that this Court has not decided
whether common-law estoppel applies in §1498 suits.
11 Nor do we find persuasive the dissent’s argument that the Postal
No. 17–1594
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