Tuesday Oral Argument Report

On Tuesday, February 19, the Court heard oral arguments in Return Mail, Inc. v. USPS. The issue in the case is whether, under the America Invents Act (AIA),  the government is a “person” who can petition the United States Patent and Trademark Office to review patent validity. Return Mail, the petitioner, owns a patent involving the processing of undeliverable mail items due to incorrect or obsolete addresses for the intended recipient. After Return Mail unsuccessfully attempted to license the patent to the US Postal Service, Return Mail filed suit against USPS alleging “unlicensed and unlawful use and infringement of the patent.”

In response, USPS filed a petition to the Patent and Trademark Office’s Patent Trial and Appeal Board asking for the Board to void the patent. Return Mail countered that USPS lacked statutory standing to establish any review proceedings under the AIA. Return Mail argues that the AIA intended a meaning of “person” that excludes the government and therefore government agencies cannot initiate AIA review proceedings. USPS contends that historical evidence and Supreme Court statements show that Congress intended to include government agencies as a person, at least in the context of the AIA. The United States Court of Appeals for the Federal Circuit held that “person” under the AIA did not exclude government agencies and therefore the government could petition for a patent review. Return Mail is appealing that Court of Appeals decision.

Oral argument was lively, with Justice Ginsburg, back on the bench for the first time since undergoing cancer surgery, asking the first question. It was hard to tell from oral argument which way the Court is likely to come out in the case. Recaps of oral argument can be found at SCOTUSBlog and  IPWatchdog has a

This Post was Written by ISCOTUS Fellow Breana Brill, Chicago-Kent Class of 2021, edited by ISCOTUS Editorial Coordinator Matthew Webber, Chicago-Kent Class of 2019, and ISCOTUS Co-Director and Chicago-Kent Faculty Member Christopher W. Schmidt.


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