Amicus Curiae Brief — Return Mail, Inc. v. U.S. Postal Serv., 139 S. Ct. 1237 (2019) (No. 17-1594)

No. 17-1594

IN THE

Supreme Court of the United States

RETURN MAIL, INC.,

Petitioner,

v.

UNITED STATES POSTAL SERVICE and

UNITED STATES,

Respondents.

On Writ Of Certiorari To

The United States Court of Appeals

For The Federal Circuit

BRIEF FOR THE AMERICAN INTELLECTUAL

PROPERTY LAW ASSOCIATION AS

AMICUS CURIAE IN SUPPORT

OF NEITHER PARTY

SHELDON H. KLEIN BLAIR A. SILVER

President Counsel of Record

AMERICAN INTELLECTUAL BANNER & WITCOFF, LTD.

PROPERTY LAW ASSOCIATION 1100 13th Street, N.W.

1400 Crystal Drive Suite 1200

Suite 600 Washington, DC 20005-4051

Arlington, VA 22202 (202) 824-3000

(703) 415-0780 bsilver@bannerwitcoff.com

DECEMBER 17, 2018

Counsel for Amicus Curiae

TABLE OF CONTENTS

Page

po EEE ES Re as ii

INTEREST OF AMICUS CURIAE .....0.0.........0000000000 1

SUMMARY OF ARGUMENT..................................... 2

I 6

|. A FEDERAL GOVERNMENT AGENCY IS Not A

“PERSON” UNDER THE AIA......................0...... 6

A. The Legislative Backdrop To “Person”

Excludes Federal Government

i ccattncuitiindiiainintaiiicthiinesntamnininicinn 7

B. Congress Did Not Affirmatively Expand

The Statutory Meaning Of “Person” In

Se a eiaciinicaiccdnicettisianiidibineniacia 14

Il. ALLOWING FEDERAL GOVERNMENT AGENCIES

To INITIATE AIA REVIEWS VIOLATES THE

POLICY UNDERLYING THE AIA .................... 16

SO Scccvcnevemsenevensmseniansineninaeneensenmesennsnnien 22

TABLE OF AUTHORITIES

Page(s)

Cases

Bowen v. Massachusetts,

a eetumememenbeinate 7

Circuit City Stores, Inc. v. Adams,

I ac csmenleetnannetie 14

Davis v. United States,

CE Ee 16

Electric Storage Battery Co. v. Shimadzu,

4g ERENT 5 eR AS SERN veo a a 7

Federal Express Corp. v. USPS,

151 F.3d 536 (6th Cir. 1998)..................... 13, 20, 21

GlobalMail Lid. v. USPS,

142 F.3d 208 (4th Cir. 1998)........................... 13, 21

Intl Primate Prot. League v. Adm'rs of

Tulane Educ. Fund,

SE SL ene vere 10

Loeffler v. Frank,

Ee 12

Monell v. Dep't of Social Services,

Sn EE nicccnsotacinnencieezcensdnecenisunsinienseesonsees 8

i

Motorola, Inc. vy. United States,

729 F.3d 765 (Fed. Cir. 1984) ...................c.cccceeeeee 22

Oil States Energy Serus., LLC v. Greene’s

Energy Grp., LLC,

oo nienanennanias 6

OPM v. Richmond,

Ea ee 19

Pennsylvania Dept. of Public Welfare v.

Davenport,

i eenamnnenininenions 14

SAS Inst. Inc. v. lancu,

I I a ceeriarinenianialie 6

Stewart v. Dutra Constr. Co.,

I a eneaniene i)

United States vy. Cooper Corp.,

eis 10, 11, 12

United States v. Fox,

ES AS Cn ene Oe x

United States v. United Mine Workers of

Am

330 U.S. SEE 2, 3, 9, 10, 11, 16

USPS v. Flamingo Indus. (USA) Ltd..,

540 U.S. 736 (2004)........ areas

Vermont Agency of Natural Res. v. United

States ex rel. Stevens,

529 U.S. 766 (2000)...................... 2, 3, 10, 11, 13, 16

~

iv

Wilson v. Omaha Indian Tribe,

ee ee a iricniiciensctiasnirveninasensrsentecitiiomnett 3, 10

Statutes

ED Bectintsccnsaiesianinannsetenncisenieiacensnenedsies 2, 3, 9, 16

SES SEIT ctncisnernsancanctcnnieseusonsnecmneasemnannpnantedioenens 13

Be eo i iiicntecsersnsecsssnsnswrssncmeinenssssnecencennensvenscantin 10

Bee SS SID ccnrtpicesnntnininptnshascinneiapinnnien 5, 17, 21

Ey HD cinicsscicnioriantatinhoeesusipiaanninnnbiaes 4,14,15

NEE Se cccsccrnssmaniennsessicntecteencuniennpinanmasiatecoieal 14

re Be rnincnnsticnesienistorssniccentaninatinndamanans 4,15

ee en rvectsachnvsictmeciinindtilintecniniainnndiinitintneminnininciat 13

Be es ED ecennsenescnseesbescevecenennnonssessvanseneabessiening 13

Be Ee IED ccastcnsnccnennniintveninapenintameteamenganets 4,14

RRR E See ennneer Peto enee nn ene veer UW ET RE ET 21

le Stl tccccredncensctneeneensetssawesaccesonsionnesniniainennians 21

fe scinsonenssncennnenpnnticnaetonmennimmninneaneanineee 22

SI iT sincicsdenincnsanusécinsensscnicanbicsovendasiesiiieeientotensdaid 22

Se es GI cescnsccseniovsmesneneinsimnncentonensniceashanmenasannnane 20

> TEE, TD ccnesvttoresemnenincsinsannsseddesesanssenamnmauinatin 20

Be Cs NE sentennerancciscnntndnecninentsinminsninapeail 3, 6,14

es SIND senetaciniciniiittinsediserkeveitiionimnathdsnieiitiedsisinens 19

Be ee, MTD iicnsactecinsibicnsinhietnndanienpiidenpadiniaiiion 5, 17

I SIRE TTY siciciicinciniciiapiitisniiiadcedneinigediansiisaniian 4,15

Be is CD tctcsesiennnesabninsincacsiniitnnicuinnseoesenine 3, 6, 15

EF Cees SEED cn ccnconneinmecacenediesestannimanenanacnngnennsias 19

a ly I nssthiiiihnisctsiinsnienbabednbainanninaasialinbaniaite 5, 17

ee GE. MEI nisceeccsicinschiianntenonvedstinseciotianeaninnnes 4,15

a SD secintninesicocnicasssnisasitapenesatcenoeaieins 12, 13

Act of April 10, 1790,

re ee i 7

Act of Feb. 25, 1871,

i ee Ss i cncitssinnicecctisitpincpnasntiinerenietiaanins 8

Act of July 30, 1947,

i a 9

Act of June 25, 1948,

OM Ee i)

Leahy-Smith America Invents Act (AIA),

Pub. L. No. 112-29, 125 Stat. 284 (2011)...... passim

vi

Other Authorities

2 J. Kent, Commentaries on American Law

(12th O. W. Holmes ed. 1873)..........................

America Invents Act: Hearing on H.R. 1249

Before the House Comm. On the

Judiciary, 112th Cong. 52-53 (2011)

(statement of Director David Kappos) ............

H.R. Rep. No. 112-96 (2OT)) ................cce0-eseseeees

John Ruggles, Report of the Select

Committee Appointed to Take Into

Consideration the State and Condition of

the Patent Office, S. Doc. No. 24-338

Manual of Patent Examining Procedure

(9th ed. Oct. 2015) § 22038 ..........ccccccceeeeeereeeseees

P.J. Federico, Commentary on the New

Patent Act, 75 J. Pat. & Trademark Off.

By Se i incedecntcicsincsticansiinnininniesimnentetnsoees

Patent Reform Act of 2011, 157 Cong. Rec.

$936-02, S952 (daily ed. Feb. 28, 2011)..........

Patent Reform: The Future of American

Innovation: Hearing before the Senate

Comm. On the Judiciary, 110th Cong. 13

(2007) (statement of Director Jon Dudas).......

INTEREST OF AMICUS CURIAE

The American Intellectual Property Law Associa-

tion (“AIPLA”) is a national bar association of approx-

imately 13,500 members who are primarily lawyers

engaged in private and corporate practice, in govern-

ment service, and in the academic community.’

AIPLA’s members represent a wide and diverse spec-

trum of individuals, companies, and institutions in-

volved directly and indirectly in the practice of pa-

tent, trademark, copyright, trade secret, and unfair

competition law as well as other fields of law affecting

intellectual property. Our members represent both

owners and users of intellectual property. Our mis-

sion includes helping establish and maintain fair and

effective laws and policies that stimulate and reward

invention while balancing the public’s interest in

healthy competition, reasonable costs, and basic fair-

ness.

AIPLA has no stake in any of the parties to this

litigation or in the result of this case.

' In accordance with Supreme Court Rule 37.6, AIPLA states

that this brief was not authored, in whole or in part, by counsel

to a party, and that no monetary contribution to the preparation

or submission of this brief was made by any person or entity

other than AIPLA and its counsel. Specifically, after reasonable

investigation, AIPLA believes that (i) no member of its Board or

Amicus Committee who voted to file this brief, or any attorney

in the law firm or corporation of such a member, represents a

party to the litigation in this matter; (ii) no representative of any

party to this litigation participated in the authorship of this

brief; and (iii) no one other than AIPLA, or its members who au-

thored this brief and their law firms or employers, made a mon-

etary contribution to the preparation or submission of this brief.

2

AIPLA has no stake in the parties to this litigation

or in the result of this case, other than its interest in

the correct and consistent interpretation of the laws

affecting intellectual property.?

SUMMARY OF ARGUMENT

This Court has recognized the “longstanding inter-

pretive presumption” that “person’ does not include

the sovereign” when interpreting statutes. Vermont

Agency of Natural Res. v. United States ex rel. Stevens,

529 U.S. 765, 780 (2000); United States v. United

Mine Workers of Am., 330 U.S. 258, 275 (1947). Con-

gress’s interpretation of “person” is codified in the

U.S. Code, defining the word “person” in “any Act of

Congress” to include “corporations, companies, asso-

ciations, firms, partnerships, societies, and joint stock

companies, as well as individuals,” “unless the con-

text indicates otherwise.” 1 U.S.C. 1. This definition

does not include federal government agencies.

In 2011, Congress enacted the Leahy-Smith Amer-

ica Invents Act (AIA), Pub. L. No. 112-29, 125 Stat.

284 (2011), overhauling the proceedings for reviewing

issued patents at the Patent and Trademark Office.

The AIA created three separate AIA review proceed-

ings to be heard by the Patent Trial & Appeal Board

(Board): inter partes review, post-grant review, and

covered business method review. By Act of Congress,

only a “person” may petition for these proceedings. 35

2 AIPLA has the consent of the parties to file this amicus brief,

pursuant to Supreme Court Rule 37.3(a). Petitioner consented

by counsel in a December 4, 2018 emai! sent to AIPLA. Respond-

ent consented by counsel in a December 7, 2018 letter, which was

received by email on December 10, 2018.

3

U.S.C. 311(a) (inter partes review), 35 U.S.C. 321(a)

(post-grant review); AIA, § 18(a)(1)(B), 125 Stat. 284,

330 (covered business method review).

Contrary to the long-recognized, default meaning

of the term “person,” the government and the Federal

Circuit majority both posit that a “person” who may

petition for AIA review proceedings includes federal

government agencies. This is incorrect. In case after

case, this Court has repeatedly held that “person,” ab-

sent an “affirmative showing of statutory intent to the

contrary,” excludes the government and its agencies.

Vermont Agency, 529 U.S. at 781; United Mine Work-

ers, 330 U.S. at 275; see Wilson v. Omaha Indian

Tribe, 442 U.S. 653, 667 (1979). This Court has even

held that the Postal Service, the respondent in this

case, is not a “person” under the Sherman Act. USPS

v. Flamingo Indus. (USA) Ltd., 540 U.S. 736, 746

(2004).

Congress did not enact the AIA in a legislative vac-

uum. For over two-hundred years, dating back to the

first Patent Act of 1790, “persons” has referred to in-

dividuals (citizens and aliens) and, by virtue of the

Dictionary Act, 1 U.S.C. 1, “corporations, companies,

associations, firms, partnerships, societies, and joint

stock companies, as well as individuals.” P.J.

Frederico, one of the drafters of the modern patent

statutes and former Examiner-in-Chief of the Patent

Office, explicitly quoted the Dictionary Act’s defini-

tion of “person” to aid in interpreting certain sections

of modern patent act. The use of “person” in the pa-

tent statutes has remained largely unchanged since

1952.

4

In tacit recognition of the limited scope of the

meaning of “person,” Congress knew that it had to ex-

plicitly name federal government agencies to allow

them to participate in the patent system. Indeed,

there is an entire chapter dealing with patent rights

for federal government agencies (35 U.S.C. 207(a) (au-

thorizing “[eJach Federal agency” to “apply for, obtain,

and maintain patents”) that would be entirely super-

fluous if federal government agencies were already

“persons” entitled to a patent under the other provi-

sions of the patent statutes, such as under 35 U.S.C.

102(a) (“A person shall be entitled to a patent un-

less”).

There is nothing in the AIA to indicate that Con-

gress meant to deviate from the standard meaning of

“person.” Other sections of the AIA reinforce that pre-

sumption, rather than detract from it, and explicitly

differentiate between “Federal Government agencies”

and “any person,” suggesting that the two are differ-

ent. 35 U.S.C. 317(b), 35 U.S.C. 327(b); see 35 U.S.C.

135(e). Because there is no such affirmative evidence

of statutory intent to redefine “person” in the AIA, the

default definition of “person” must continue to apply,

and, therefore, federal government agencies cannot

initiate AIA reviews.

The fact that Congress did not expand the defini-

tion of “person” in enacting the AIA review proceed-

ings to include federal government agencies is not

only consistent with the statute and legislative back-

drop, but also advances one of the AIA’s purposes.

Congress intended that these AIA review proceedings

would function as an alternative to costly litigation

between private parties in either the district court or

the International Trade Commission by streamlining

5

patent validity disputes. The cornerstone of this

streamlining is the petitioner estoppel that applies

when the Board issues its final written decision in

these proceedings.

Under the AIA, statutory estoppel bars all “peti-

tioner|s]” from asserting challenges that petitioners

“raised or reasonably could have raised” in any ac-

tions at the district court or the International Trade

Commission. 35 U.S.C. 315(e)(2); 35 U.S.C. 325(e)(2);

see AIA, § 18(a)(1)(D), 125 Stat. 284, 330 (covered

business method review) (similar but omitting “rea-

sonably could have raised”). But the exclusive rem-

edy for unauthorized use or manufacture of a pa-

tented invention by the government is in the United

States Court of Federal Claims for the recovery of

“reasonable and entire compensation.”

28 U.S.C. 1498(a). This forum is conspicuously ab-

sent from the estoppel provisions. And, as a result,

the AIA estoppel provisions will never bar a federal

government agency from relitigating invalidity. This

was no accident. Congress did not intend AIA review

proceedings to be available to federal government

agencies in the first place. Instead, these provisions

underscore that Congress intended to keep the exist-

ing process before the Court of Federal Claims in

place as the only mechanism for federal government

agencies to challenge the validity of a patent.

It would be manifestly unfair to private litigants to

allow the government the benefits of AIA review pro-

ceedings but not the corresponding estoppel. The gov-

ernment already enjoys considerable advantages over

private litigants in the patent arena flowing from its

sovereignty and exclusive forum under Section

1498(a), including immunity from injunctions, trebled

6

damages, attorney's fees, and damages limitations

based on a failure to mark. Allowing the government

a further advantage of petitioning for AIA reviews

without any estoppel risk, and absent any evidence of

Congressional intent to do so, tips the scale too far in

the government’s favor. This Court should reverse

the Federal Circuit’s decision.

ARGUMENT

I. A FEDERAL GOVERNMENT AGENCY Is Not A

“PERSON” UNDER THE AIA.

A federal government agency is not a “person” who

may petition for AIA review proceedings. As enacted,

only a “person” may petition for inter partes review,

35 U.S.C. 311(a), and only a “person” may petition for

post-grant review, 35 U.S.C. 321(a). Similarly, Sec-

tion 18(a)(1)(B) of the AIA provides that covered busi-

ness method review petitions are only available to “a

person” who “has been sued for infringement of the

patent or has been charged with infringement under

that patent.” AIA, Pub. L. No. 112-29, § 18(a)(1)(B),

125 Stat. 284, 330 (2011). As this Court acknowl-

edged less than one year ago, the purpose of AIA re-

views is to “allow[] private parties to challenge previ-

ously issued patents claims,” SAS Inst. Inc. v. Iancu,

138 S. Ct. 1348, 1350—51 (2018) (emphasis added); Oil

States Energy Servs., LLC v. Greene’s Energy Grp.,

LLC, 138 S. Ct. 1365, 1378 n.5 (2018) ( “To be sure, a

private party files the petition for review’).

In any Act of Congress—including the AlA—the

word “person” presumptively does not include the gov-

7

ernment, by statute and by this Court’s repeated hold-

ings. And, as explained below, there is nothing in the

AIA, Title 35, or the underlying legislative history

that compels a different conclusion. In short, for the

purposes of AIA reviews, a federal government agency

is simply not a “person.”

A. The Legislative Backdrop To “Person” Ex-

cludes Federal Government Agencies.

Congress is presumed to “understand|] the state of

existing law when it legislates.” Bowen v. Massachu-

setts, 487 U.S. 879 (1988). When Congress enacted

the AIA, the presumption that the term “person” ex-

cluded the government was well-settled.

1. Historically, the use of the phrase “person” in

the patent statutes dates back to the original Patent

Act of 1790. Act of April 10, 1790, ch. 7, § 1, 1 Stat.

109-112. This Court succinctly outlined the statutory

history of those “persons” entitled to patent rights in

Electric Storage Battery Co. v. Shimadzu, 307 U.S. 5

(1939). In that case, the Court noted how the patent

statutes vacillated between authorizing grants of a

patent to “persons” (1790), to citizens (1793), to citi-

zens and aliens with two years of residence (1800),

and back to “persons” (1836). 307 U.S at 11. The “per-

sons” language has remained a part of the patent stat-

utes since 1836.

In this context, the “persons” language of the Pa-

tent Act of 1790 has been long understood as extend-

ing the patent rights both “to aliens” and “to citi-

zens’ —in other words, private individuals:

The first act of Congress on the subject was

passed in 1790... . This act extended the same

8

privilege to aliens as to citizens. In 1793, it

was repealed and another act passed, authoriz-

ing patents to citizens of the United States

only, to be granted by the Secretary of State,

subject to the revision of the Attorney General.

In 1800, the privilege to take out patents was

extended to aliens who have resided two year(s}

in this country, and made oath of their inten-

tion of becoming citizens of the United States.

See John Ruggles, Report of the Select Committee Ap-

pointed to Take Into Consideration the State and Con-

dition of the Patent Office, S. Doc. No. 24-338 (1836)

(describing the shifting language from citizens and al-

iens, to citizens only, and aliens with residence). In-

deed, the motivation to reintroduce “persons” into the

statute in 1836 was to acknowledge reciprocity with

England to allow aliens to secure patent rights with-

out regard to residence. Ibid. With that context, the

removal and reintroduction of “persons” into the pa-

tent statutes over the years has always been in con-

templation of which private individuals were “per-

sons” entitled to patents.

In the Dictionary Act of 1871, Congress explicitly

defined “person” in any of its Acts to extend to “bodies

politic and corporate.” Act of Feb. 25, 1871, ch. 71,

§ 2, 16 Stat. 431. This phrase included municipal cor-

porations, but not the government. Monell v. Dep't of

Social Services, 436 U.S. 658, 688 (1978); see United

States v. Fox, 94 U.S. 315 (1876) (“The term ‘person’

as here used applies to natural persons and also to

artificial persons—bodies politic, deriving their exist-

ence and powers from legislation—but cannot be so

extended as to include within its meaning the Federal

government”); 2 J. Kent, Commentaries on American

9

Law *278-*279 (12th O. W. Holmes ed. 1873). The

word “person” was later revised to omit “bodies polli-

tic” and to include “partnerships and corporations.”

Act of July 30, 1947, ch. 388, § 1, 61 Stat. 633. This

was later changed in 1948 (Act of June 25, 1948, ch.

645, § 6, 62 Stat. 859) to its current incarnation: the

statutory definition of “persons” includes “corpora-

tions, companies, associations, firms, partnerships,

societies, and joint stock companies, as well as indi-

viduals,” “unless the context indicates otherwise.” 1

U.S.C. § 1; see also Stewart v. Dutra Constr. Co., 543

U.S. 481, 489-90 (2005) (1 U.S.C. 1 et seg. contains

the default definitions that apply if Congress fails to

define a particular term).

When Congress enacted the modern Patent Act in

1952, the operative definition of “persons” was this

definition in the Dictionary Act, which included indi-

viduals and other private entities. This reliance on

the Dictionary Act was even noted by one of the 1952

Act’s drafters, P.J. Frederico. Specifically, the Dic-

tionary Act’s definitions “may have application in con-

sidering particular sections of this title” and the Dic-

tionary Act’s definition of “person” was explicitly ref-

erenced as an “aid in interpreting certain sections of

this title.” P.J. Federico, Commentary on the New Pa-

tent Act, 75 J. Pat. & Trademark Off. Soc’y 161, 175

(1993) (reprinted from Title 35, United States Code

Annotated (1954 West Publishing Co. ed.)).

2. This Court repeatedly has interpreted this same

definition of “person” under the Dictionary Act as ex-

cluding a sovereign. United States v. United Mine

Workers of Am., 330 U.S. 258, 275 (1947) (citing the

Dictionary Act and noting that “[i]m common usage,”

person “does not include the sovereign, and statutes

10

employing it will ordinarily not be construed to do

so”). Subsequently, this Court confirmed the

“longstanding interpretive presumption that ‘person’

does not include the sovereign.” Vermont Agency of

Natural Res. v. United States ex rel. Stevens, 529 U.S.

765, 780 (2000). Reading ““person’ to mean the sover-

eign” is “decidedly awkward,” and this Court has been

“reluctant” to do so. Intl Primate Prot. League v.

Adm'rs of Tulane Educ. Fund, 500 U.S. 72, 83 (1991).

In Wilson v. Omaha Indian Tribe, 442 U.S. 653,

666-67 (1979), the Court was asked to determine

whether the term “white persons” in 25 U.S.C. 194 did

not include the state of lowa. The Court first noted:

“(I]n common usage, the term ‘person’ does not in-

clude the sovereign, [and] statutes employing the

phrase are ordinarily construed to exclude it.” /d. at

667 (quoting United States v. Cooper Corp., 312 U.S.

600, 604 (1941) and citing United Mine Workers, 330

U.S. at 275) (brackets in original). The Court then

elaborated that “much depends on the context, the

subject matter, legislative history, and executive in-

terpretation.” Ibid. Even though the legislative his-

tory and executive interpretation were unhelpful, the

dian squatters on Indian lands”—helpful in resolving

this issue. /bid. Because that purpose suggests that

Congress did not intend “person” to include States,

the Court held that the ordinary usage controlled. /d.

at 667-68.

More recently, in Vermont Agency, the Court con-

sidered whether a state agency, the Vermont Agency

of Natural Resources, was a “person” in a qui tam ac-

tion under the False Claims Act. 529 U.S. at 768-70.

11

The False Claims Act specifically imposed “civil liabil-

ity upon ‘any person.” /d. at 770. The Court held that

the state is not a person based on its “longstanding

interpretative presumption that ‘person’ does not in-

clude the sovereign.” Jd. at 780 (citing Cooper Corp.,

312 U.S. at 604 and United Mine Workers, 330 U.S. at

275). The Court found no such affirmative showing in

the False Claims Act to overcome this presumption.

Id. at 780-88. Instead, the Court noted that the stat-

utory scheme suggested otherwise.

In particular, the Court noted that another section

of the False Claims Act expressly defined “person” to

include States, implying that the absence of such a

definition in the section in question indicated that

States should not be included in that section. 529

U.S. at 783-84. In addition, the fact that the False

Claims Act provided for punitive damages also ran

counter to an interpretation that “person” included

States because of the “presumption against imposi-

tion of punitive damages on government entities.” /d.

at 784—86. A sister scheme called the Program Fraud

Civil Remedies Act of 1986 provided for administra-

tive remedies for false claims and, unlike the False

Claims Act, included a definition of “person,” which

did not include States. Id. at 786. The PFCRA also

did not provide for treble damages. Jbid. The Court

thought it incongruent for States to be subject to tre-

ble damages under the False Claims Act, but then ex-

empt from the smaller remedies available under the

PFCRA. Ibid. Accordingly, the Court held the pre-

sumption that a sovereign is not a “person” under the

False Claims Act still applied. Jd. at 787.

12

This is also consistent with this Court’s more re-

cent unanimous holding in USPS v. Flamingo Indus-

tries (USA) Ltd., that the Postal Service is not a “per-

son” for the purposes of the antitrust laws. 540 U.S.

736, 746 (2004). The Sherman Act imposed liability

on “any person,” which it defined ar “corporations and

associations existing under or authorized by the laws

of either the United States [or of States or foreign gov-

ernments].” Jd. at 744—45 (brackets in original); 15

U.S.C. 7. The Court noted that corporate or govern-

mental status, under this definition, did not preclude

liability under the Sherman Act, but then noted that

“it is otherwise, however, when liability is pursued

against the Federal Government.” 540 U.S. at 744—

45 (citing Cooper Corp., 312 U.S. at 614). Applying

Cooper, the Court held that the Postal Service, as an

“establishment of the executive branch” and not a

“corporation,” is not a person for the purposes of the

antitrust laws, even if “independent.” Jd. at 745-47

(distinguishing the Postal Service from private busi-

nesses).

As the government correctly notes, USPS does “dif-

fer{] in many respects from other federal agencies” in

that “[w]hen Congress created the Postal Service in

1970, it empowered the Service ‘to sue and be sued in

its official name.” Br. in Opp. 14 (quoting Loeffler v.

Frank, 486 U.S. 549, 555-56 (1988)); 39 U.S.C. 401(1).

But, as in Flamingo Industries, that difference does

not justify departing from the clear rules of statutory

construction that exclude the government and its

agencies from “persons.”

Instead, the two circuit cases cited by the govern-

ment (Br. in Opp. 14) are anomalies dealing exclu-

sively with the Lanham Act. Federal Express Corp. v.

13

USPS, 151 F.3d 536, 546 (6th Cir. 1998) (the Postal

Service is a “person” within the meaning of the Lan-

ham Act); GlobalMail Lid. v. USPS, 142 F.3d 208, 216

(4th Cir. 1998) (same). But, notably, both of those

cases also predate this Court’s decision in Vermont

Agency, 529 U.S. 765, and Flamingo Industries, 540

U.S. 736.

Furthermore, Federal Express and GlobalMail

both turned on the Lanham Act’s specific, statutory

definition of a “person,” which is not present in the

AIA or the patent statutes. The Lanham Act de-

parted from the Dictionary Act’s definition of “person”

and included “other organization[s] capable of suing

or being sued in a court of law.” 15 U.S.C. 1127. Both

circuits found it dispositive that Congress mandated

that a “general power|]” of USPS was the authority to

“sue or be sued in its official name.” 39 U.S.C. 401(1);

Federal Express Corp, 151 F.3d at 539-40, 544—46;

Global Mail, 142 F.3d. at 216-17.

3. The history of the patent statutes establishes

that Congress knew how to explicitly include federal

government agencies when discussing patents rights.

There is an entire chapter dealing with the patents

rights for federal government agencies, designed “to

ensure that the Government obtains sufficient rights

in federally supported inventions.” 235 U.S.C. 200.

That chapter explicitly defines “Federal agency” to

mean “any executive agency as defined in section 105

of title 5, and the military departments as defined by

section 102 of title 5.” 35 U.S.C. 201(a).

That chapter then authorizes “each Federal

agency” to “apply for, obtain, and maintain patents,”

to “grant licenses under federally owned inventions,”

14

to “undertake all other suitable and necessary steps

to protect and administer rights to federally owned in-

ventions on behalf of the Federal Government either

directly or through contract,” and to “transfer custody

and administration, in whole or in part, to another

Federal agency, of the right, title, or interest in any

federally owned invention.” 35 U.S.C. 207(a) (empha-

sis added). Presumably, there would have been no

need for this provision had federal government agen-

cies already been entitled to the same rights as

granted to a “person” under then-existing Section

102(a) when Section 207(a) was enacted in 1980. 35

U.S.C. 102(a) (“A person shall be entitled to a patent

unless”); accord 35 U.S.C. 118 (A “person” may file on

behalf of an invention by another).

The government’s reading should be rejected be-

cause Section 207(a) would be superfluous if federal

government agencies were already authorized to ap-

ply for, obtain, and maintain patents under Section

102(a) and the other provisions of the patent statutes.

Such a reading runs counter to this Court’s “deep re-

luctance to interpret a statutory provision so as to

render superfluous other provisions in the same en-

actment.” Pennsylvania Dept. of Public Welfare v.

Davenport, 495 U.S. 552, 562 (1990); see Circuit City

Stores, Inc. v. Adams, 532 U.S. 105, 113 (2001).

B. Congress Did Not Affirmatively Expand

The Statutory Meaning Of “Person” In

The AIA.

The AIA also does not define the term “person.”

Only “a person” may petition for inter partes review,

35 U.S.C. 311(a), and only a “person” may petition for

15

post-grant review, 35 U.S.C. 321(a). Similarly, as en-

acted, Section 18(a)(1)(B) of the AIA provides that cov-

ered business method review petitions are only avail-

able to “a person” who “has been sued for infringe-

ment of the patent or has been charged with infringe-

ment under that patent.” AIA, § 18(a)(1)(B), 125 Stat.

330. No other context in the statute warrants deviat-

ing from a standard meaning of “person” that differed

from the use prior to the AIA’s enactment.

Instead, the AIA text and structure continues to

recognize the difference between a “person” and fed-

eral government agencies, just as it did prior to the

enactment of the AIA. Specifically, the release of set-

tlement agreements in AIA proceedings “[sjhall be

made available only to Federal Government agencies

on written request, or to any person on a showing of

good cause.” 35 U.S.C. 317(b), 327(b); see 35

U.S.C. 135(e) (similar in the context of a derivation

proceeding, but omitting the word “Federal”). The

AIA statutory provisions specific to AIA review pro-

ceedings thus explicitly delineate between federal

government agencies and persons just as it had before

the AIA in Section 207(a). And while the government

argues that this is just a recognition of the lesser

threshold for the federal government agency (Br. in

Opp. 11—12), such a reading requires modifying the

statute either by adding “other” (“any other person”)

or rewriting the statutory sentence entirely.

Importantly, Congress did not amend the use of the

term “person” when it amended Section 102(a) in the

AIA. 35 U.S.C. 102(a) (“A person shall be entitled to

a patent unless”). “Congress’ reenactment of the stat-

ute ... using the same language, indicates its appar-

ent satisfaction with the prevailing interpretation of

16

the statute.” See Davis v. United States, 495 U.S. 472,

482 (1990). The more reasoned reading of the statute

is that Congress merely maintained the traditional

interpretation of “person” by choosing to reuse “per-

son” without modification.

“The absence of any comparable provision extend-

ing the term to sovereign governments implies that

Congress did not desire the term to extend to them.”

United Mine Workers, 330 U.S. at 275. In terms of the

AIA review proceedings, there is neither a “compara-

ble provision” extending the term “person” to the “sov-

ereign government” nor an “affirmative showing of

statutory intent” to “broade[n]” the term. United

Mine Workers, 330 U.S. at 275; Vermont Agency, 529

U.S. at 780-82. This implies that Congress “did not

desire the term to extend” to federal government

agencies. United Mine Workers, 330 U.S. at 275.

Thus, a “person” in the context of its usage for AIA

review proceedings must be construed in accordance

with its ordinary, statutory meaning excluding fed-

eral government agencies as prescribed by 1 U.S.C.

§ 1 and this Court’s precedent.

Il. ALLOWING FEDERAL GOVERNMENT AGENCIES TO

INITIATE AIA REVIEWS VIOLATES THE POLICY

UNDERLYING THE AIA.

Under the AIA, statutory estoppel bars all “peti-

tioner[s]” from asserting invalidity challenges that

petitioners “raised or reasonably could have raised” in

an AIA review proceeding in any actions in the dis-

trict court (“a civil action arising in whole or in part

under section 1338 of title 28, United States Code”) or

the International Trade Commission (“under section

337 of the Tariff Act of 1930 (19 U.S.C. 1337)”). 35

17

U.S.C. 315(e)(2) (inter partes review), 325(e)(2) (post-

grant review); see AIA, § 18(a)(1)(D), 125 Stat. 284,

330 (covered business method review) (similar but

omitting “reasonably could have raised”). But a pa-

tent owner’s exclusive remedy for unauthorized use or

manufacture by the government is an action in the

United States Court of Federal Claims for the recov-

ery of its “reasonable and entire compensation.” 28

U.S.C. 1498(a). Thus, these estoppel provisions can-

not apply to a federal government agency. It was no

accident that the estoppel provisions omit the United

States Court of Federal Claims: Congress did not in-

tend AIA review proceedings to be available to federal

government agencies in the first place.

Instead, the legislative history of these provisions

from the AIA underscores that Congress intended to

prevent the same party from asserting the same inva-

lidity challenges against a patent twice. AIA reviews

were designed to “improve patent quality and restore

confidence in the presumption of validity that comes

with issued patents.” H.R. Rep. No. 112-98, at 39—40,

48, 58 (2011).

The AIA’s estoppel provision was key to this goal

because it prevented petitioners from “later asserting

invalidity before the ITC or a Federal court on a

ground that was considered and resulted in a written

decision.” H.R. Rep. No. 112-98, at 80. The estoppel

is designed to “quiet title” for patent owners “to en-

sure continued investment resources” and to avoid

“repeated litigation and administrative attacks on the

validity of a patent.” Jd. at 48. Allowing repeated at-

tacks on validity “would frustrate the purpose of the

section as providing quick and cost effective alterna-

tives to litigation.” Ibid.

18

Indeed, the AIA estoppel provisions sought to “sig-

nificantly reduce the ability to use post-grant proce-

dures for abusive serial challenges to patents,” and

“[t}hese new procedures would also provide faster,

less costly alternatives to civil litigation to chai enge

patents.” Patent Reform Act of 2011, 157 Cong. Rec.

S936-02, S952 (daily ed. Feb. 28, 2011) (statement of

Sen. Grassley). The estoppel was specifically de-

signed to be strong so that “any issue that [petition-

ers] raised or could have raised . . . . [petitioners] can

bring up no place else” as “a complete alternative to

litigation.” Patent Reform: The Future of American

Innovation: Hearing before the Senate Comm. On the

Judiciary, 110th Cong. 13 (2007) (statement of Direc-

tor Jon Dudas). Director David Kappos noted that the

estoppel provisions are designed to confer a “signifi-

cant advantage” because it leaves the patent “largely

unchallengeable by the same party.” America Invents

Act: Hearing on H.R. 1249 Before the House Comm.

On the Judiciary, 112th Cong. 52-53 (2011) (state-

ment of Director David Kappos). Senator Grassley

characterized the purpose as “ensur|ing] that if an in-

ter partes review is instituted while litigation is pend-

ing, that review will completely substitute for at least

the patents-and-printed-publications portion of the

civil litigation.” Patent Reform Act of 2011, 157 Cong.

Rec. $1360-94, $1376 (daily ed. Mar. 8, 2011) (state-

ment of Sen. Grassley).

Despite this strong evidence of Congressional in-

tent, and without citing to any statutory or legislative

history support, the government seeks to enable fed-

eral government agencies to avoid the very corner-

stone of AIA reviews and permit these agencies to

mount multiple attacks on patent validity before the

19

Patent Office and the United States Court of Federal

Claims in a Section 1498(a) proceeding.

In support of its position, the government argues

that federal government agencies can participate in

AIA reviews without estoppel because equitable es-

toppel ordinarily does not apply to federal govern-

ment agencies, citing OPM v. Richmond, 496 U.S.

414, 419 (1990). But this is not a case of equitable

estoppel (a judicial doctrine) in light of statements

from Executive agents “contrary to the wishes of Con-

gress” as in Richmond, 496 U.S. at 415. Instead, this

is statutory estoppel directly enacted by and reflect-

ing the exact wishes of Congress. Thus, Richmond is

inapplicable.

More importantly, even assuming arguendo that

this presumption of no equitable estoppel is applica-

ble to statutory estoppel, the government’s position is

untenable. Under the AIA, estoppel attaches to more

than the district court and International Trade Com-

mission proceedings. There is also an estoppel that

attaches to petitions in pending and future proceed-

ings before the Patent Office after the conclusion of

inter partes and post-grant reviews.* Specifically,

these two proceedings both contain an additional es-

toppel provision that bars the petitioner from “re-

quest[ing] or maintain[ing] a proceeding before the

Office with respect to that claim on any ground that

the petitioner raised or reasonably could have raised

during” the review. 35 U.S.C. 315(e)(1), 325(e)(1).

3 There is no Patent Office estoppel in covered business method

reviews. AIA, § 18(a)(1)(D), 125 Stat. 284, 330

20

Applying the government’s view, there is an estop-

pel against the government, but only before the Pa-

tent Office. Thus, even if the government is correct

that, under Richmond, a statute should presump-

tively not be read to apply estoppel to the government,

the AIA cannot be read to authorize a federal govern-

ment agency to petition for AIA reviews because, to

hold otherwise, would be to recognize just such an es-

toppel.*

The Sixth Circuit in Federal Express noted the

“penchant of some federal government agencies and

officers to proactively seek the benefits and protec-

tions afforded by the law while simultaneously en-

deavoring to avoid the responsibilities and burdens

imposed by legal restraints and standards of conduct

which constrain others.” Federal Express, 151 F.3d at

546 (Under the Lanham Act, the Postal Service has

“elevated the shield of governmental privilege when

accused of competitive wrongdoing,” yet “been quick

to behave as a Lanham Act ‘person’ in protection of its

perceived rights under that enactment”); see Global

4 Interpreting “person” in the AIA to exclude federal government

agencies will potentially impact the ability of those agencies to

request ex parte reexamination under 35 U.S.C. 302 or to cite

prior art or prior Patent Owner statements in written submis-

sions under 35 U.S.C. 301; see Manual of Pat. Exam. Proc. § 2203

(9th ed. Oct. 2015) (“Any person” may be a corporate or govern-

mental entity as well as an individual” under Section 301). But

the government can raise invalidity as a defense in the U.S.

Court of Federal Claims in a Section 1498(a) proceeding. And

the government (via the Director) can always initiate ex parte

reexamination proceedings “on his own initiative,” if the govern-

ment believes an issued patent is invalid, even one that is being

asserted against the government. See 35 U.S.C. 303(a).

21

Mail, 142 F.3d at 215 (“USPS has utilized the Lan-

ham Act to register its marks and to ensure that other

firms do not infringe upon them”).

Yet, once again, the Postal Service as a federal gov-

ernment agency is seeking to secure the benefits of a

supposed Congressional authorization (participation

in AIA reviews) with none of the downsides (estoppel).

As the Sixth Circuit held in Federal Express, “(rjudi-

mentary notions of justice and fair play reinforce the

conclusion, already amply supported by the plain lan-

guage of the operative statutes, legislative history,

and judicial interpretations, that Congress did not in-

tend” for the Postal Service to be considered a person

and “also to immunize [the Postal Service]” from lia-

bility. 151 F.3d at 546 (quoting Global Mail, 142 F.3d

at 215). Similar notions of justice and fair play are

present here: Congress did not intend for the Postal

Service to be a petitioner in AIA reviews yet immun-

ize the Postal Service from the consequence of partic-

ipating in those proceedings, i.e., estoppel.

At present, the government already enjoys consid-

erable advantages over private litigants in the patent

arena flowing from its sovereignty due to specific Con-

gressional authorization. A patentee’s only remedy

against the government for unauthorized use of a pa-

tented invention is in the United States Court of Fed-

eral Claims under Section 1498(a). Unlike a district

court action, the patent owner’s in Section 1498(a)

proceedings are limited to “reasonable and entire

compensation.” 28 U.S.C. 1498(a). There are “nu-

merous examples of where the patent statutes” are in-

applicable to the government in Section 1498(a) ac-

tions, such as injunctive relief (35 U.S.C. 283), treble

damages (35 U.S.C. 284), exceptional case attorney's

22

fees (35 U.S.C. 285), and damages limitations based

on a failure to mark (35 U.S.C. 287). Motorola, Inc. v.

United States, 729 F.3d 765, 768 n.3, 772 (Fed. Cir.

1984).

Allowing the Postal Service the advantage of peti-

tioning for AIA review without the concomitant estop-

pel and without any supporting Congressional intent

or authorization, tips the scale too far in the govern-

ment’s favor without reason and violates the entire

purpose behind the AIA reviews—a result that should

not be countenanced.

CONCLUSION

Without an affirmative showing of statutory intent

otherwise, the longstanding presumption—codified in

the Dictionary Act, the history of the patent statutes,

and in this Court’s precedent—that “person” does not

include federal government agencies like the Postal

Service must stand. As a consequence, the Court

should reverse the Federal Circuit’s judgment below

and find that the Postal Service is not a “person” for

the purposes of filing a petition for AIA review.

Respectfully submitted.

BLAIR A. SILVER

Counsel of Record

BANNER & WITCOFF, LTD.

1100 13th Street, N.W.

Suite 1200

Washington, DC 20005-4051

(202) 824-3000

bsilver@bannerwitcoff.com

Counsel for Amicus Curiae

DECEMBER 17, 2018