Argument analysis: Justices seem divided about government right to challenge patents in administrative process

The justices have a light calendar this week, with only two arguments. If the first argument of the week (Return Mail Inc. v. U.S. Postal Service) is any guide, they’ve spent their extra time focusing carefully on the relatively thin session. At first glance, Return Mail is a simple statutory case, involving another in a long line of drafting flaws in the AIA (Congress’ 2011 patent-reform bill, the Leahy-Smith America Invents Act). But the argument presented a highly engaged bench, with all of the justices (except Justice Clarence Thomas) asking pointed questions, several of which seemed to raise the stakes higher than we might expect for a simple patent case.

The case involves a series of provisions in the AIA that establish procedures for “post-grant review” of patents. Those procedures permit any “person” to ask the Patent and Trademark Office to review previously issued patents and invalidate them if the PTO decides that it made a mistake when it issued the patent initially. In this case, for example, the U.S. Postal Service asked the PTO to reconsider a patent previously issued to petitioner Return Mail for an invention involving the use of bar codes in facilitating the processing of undeliverable mail. The question for the justices is whether the Postal Service (or other agencies of the federal government) is a “person” entitled to use those procedures. The Dictionary Act establishes a presumption that “person” is limited to private entities; the question in this case is whether there is any adequate reason to override that presumption.


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