The U.S. Supreme Court is Not Above Delivering a Good Pun

June 25, 2019 – Article

A good pun is always welcome when reading a legal opinion. Recently, in Return Mail v. U.S. Postal Service, neither snow nor rain nor heat nor gloom of night stopped U.S. Supreme Court Justice Sotomayor from dropping a well-placed pun in her majority opinion. Deep in the opinion at Section II(B), Sotomayor outlined the U.S. Postal Service's three arguments in three sentences. Of these arguments, her pithy conclusion is that "None delivers." Brilliant.

Many of us are familiar with some flavor of the "neither snow nor rain..." slogan of the U.S. Postal Service, which I shamelessly used in the paragraph above. However, going back to at least 1990, the U.S. Postal Service ran a series of commercials promoting their Express Mail service with the slogan "We deliver." Here is an example: https://www.youtube.com/watch?v=CaH1FwlPSs4 Later slogans include "We deliver for you." and "Fly like an eagle."

Despite such promising slogans, and to the surprise of few, there remains a problem of handling undelivered mail. Return Mail claimed a method for solving this problem in their U.S. patent.  Perhaps induced by the pressure of their "We deliver." slogan, the U.S. Postal Service was interested in using Return Mail's method. But they did not reach an agreement. A few years later, however, the U.S. Postal Service improved its handling of undelivered mail. You know what happened. After conclusion of a reexamination proceeding, Return Mail ... wait for it ... stamped the U.S. Postal Service with an infringement suit. The U.S. Postal Service then deposited a post-grant CBM petition with the U.S. Patent and Trademark Office (USPTO). The Patent Trial and Appeal Board at the USPTO held that Return Mail's patent claims were ineligible for patenting, and on appeal the Federal Circuit ultimately agreed. Not wanting to get licked, Return Mail petitioned the U.S. Supreme Court to address this case.  

The U.S. Supreme Court picked up the package and addressed the question of whether the Government (e.g., a federal agency) is a "person" who may file a petition for a post-grant review (IPR, PGR, CBM) under the America Invents Act. The Court held that it is not.  

Justice Sotomayor noted that "[t]he patent statutes do not define the term "person."" And, even though "federal officers have been able to apply for patents in the name of the United states since 1883," Justice Sotomayor explained that "the Government's ability to obtain a patent ... does not speak to whether Congress meant for the Government to participate as a third-party challenger in AIA review proceedings." Justice Sotomayor reasoned that "excluding federal agencies from the AIA review proceedings avoids the awkward situation that might result from forcing a civilian patent owner (such as Return Mail) to defend the patentability of her invention in an adversarial, adjudicatory proceeding initiated by one federal agency (such as the Postal Service) and overseen by a different federal agency (the Patent Office)."

In the end, and over a dissent by Justices Breyer, Ginsburg, and Kagan, Justice Sotomayor's majority opinion held "that a federal agency is not a "person" who may petition for post-issuance review under the AIA." The U.S. Supreme court thus reversed the Federal Circuit and "remanded for further proceedings consistent with this opinion." This effectively clipped the wings of the U.S. Postal Service (and other government agencies)--it can no longer fly like an eagle to the USPTO whenever it wishes to challenge a U.S. patent. We will wait to see what the Federal Circuit pens in reply on the remand.

How many puns? :)