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,

Vv.

UNITED STATES POSTAL SERVICE AND UNITED STATES

Respondents.

On Writ of Certiorari to the

United States Court of Appeals

for the Federal Circuit

BRIEF OF AMICUS CURIAE INTELLECTUAL

PROPERTY OWNERS ASSOCIATION IN SUPPORT

OF NEITHER PARTY

HENRY HADAD LAUREN A. DEGNAN

President Counsel of Record

JAMES TRUSSELL FISH & RICHARDSON P.C.

Chair, Amicus Brief Committee 1000 Maine Avenue S.W.

MARK W. LAUROESCH Suite 1000

Executive Director Washington, DC 20024

INTELLECTUAL PROPERTY (202) 783-5070

OWNERS ASSOCIATION degnan@fr.com

1501 M Street, N.W.

Washington, DC 20005

(202) 507-4500

Counsel for Amicus Curiae

QUESTION PRESENTED

Whether the government is a “person” who

may petition to institute review proceedings

under the America Invents Act (AIA).

TABLE OF CONTENTS

Page

Se TIED dnnsscsicsnncenecesvescnscsncenansesnanens I

TABLE OF AUTHORITIES ......................ccceeeeeeeeeees IV

STATEMENT OF IDENTITY AND INTEREST OF

THE AMICUS CURIAE......0...............:ccecceeeees |

SUMMARY OF ARGUMENT.....................2000---0c00000 2

SIE cisnihinnntatepsisiintintsniimistienintenitaiemmuienaine 4

I. In the AIA, as Elsewhere, the Ordinary

Meaning of “Person” Excludes the

CR i ictteeann A

I. The AIA’s Legislative History Does Not

Contain Indicia that Congress Intended

“Person” To Include the Government ......... 7

A. The AILA’s Estoppel Provisions Do Not

Extend to the Government....................... x

B. Interpreting “Person” to Include the

Government Thwarts Congress's Careful!

Balance of Providing an Efficient Forum

for Challenging Patent Validity While

Avoiding Abusive, Repetitive Validity

1. Prior to the AIA, Congress Relied on

Estoppel to Avoid Repetitive Attacks on

PIE WI cicnesicsensitntaiinnicacersitiimdamidiadinpeensees 1

2. Consistent with Earlier Legislative Acts,

Congress Preserved Estoppel in the AlA’s

Post-Grant Proceedings as an Important

Check on Abusive Litigation......................... 18

Ill. There Is No Per Se Rule Against Estopping

ee I a iccictnsenicnntniicnnisdinninicnints 23

1V. The Government's Other Patent Rights Do

Not Overcome the Presumption That

“Person” Excludes the Government.......... 25

RRS RES A a Se Es SB oA SAR ES 29

EE IRRTRE RSs oa oP bot SE OEE ee MER S la

€

IV

TABLE OF AUTHORITIES

CASES

Ardestani v. INS,

ae Bt Ci icecccesccncccssenssessesonescesss

Aqua Prods., Inc. v. Matal,

872, F.3d 1290 (Fed. Cir. 2017)...............

BIC Leisure Prods., Inc. v. Windsurfing

Int'l, Inc.,

1 F.3d 1214 (Fed. Cir. 1993)....................

Burwell v. Hobby Lobby Stores, Inc.,

SS B,C, Fe Ga i rcencsectescencecscrsevsccnsess

Credit Acceptance Corp. v. Westlake

Servs.,

859 F.3d 1044 (Fed. Cir. 2017)................

Crozier vu. Fried Krupp

Aktiengesellschaft,

Se Wiis Ge Se isescccvccascssccsscsesentavereses

Int'l Primate Prot. League v. Adm’rs of

Tulane Educ. Fund,

is Bee ee iecnccncnensscrcciescssccossesenes

Inyo Cty., Cal. v. Paiute-Shoshone

Indians of Bishop Cmty. of Bishop

Colony,

a eee

Leatherman v. Tarrant Cty. Narcotics

Intelligence & Coordination Unit,

gg RE a ee 28

Merrill Lynch, Pierce, Fenner & Smith,

Inc. v. Curran,

I inincsirsepeiinociiingnanneneceneitit 17, 22

Mohamad v. Palestinian Auth.,

I, nn iesemsnmoonannones 4, 5, 29

Motorola, Inc. v. United States,

729 F.2d 765 (Fed. Cir. 1984).......................++. 9, 26

Office of Pers. Mgmt. v. Richmond,

ee ry Ce i cdccctescecsucsescncsecccess 23, 24, 25

Petrella v. Metro-Goldwyn-Mayer, Inc.,

ER Sn a ne 24

Return Mail, Inc. v. United States

Postal Serv.,

868 F.3d 1350 (Fed. Cir. 2017).................... passim

Synopsys, Inc. v. Mentor Graphics

Corp.,

814 F.3d 1309 (Fed. Cir. 2016)......................00000 11

Tenn. Valley Auth. v. Hill,

cas senhicioneesenns 28

United States v. Am. Trucking Ass’ns,

ee Se icc diicinccisitindsnedmbeninimniiasis 4, 5, 22

Utah Power & Light Co. v. United

NN, SEP ie CINE GI Pi siencicericcncecccintscsccesosnces 23

Vi

Vi. Agency of Nat. Res. v. United States

ex rel. Stevens,

aan Ace OE 7

Will v. Michigan Dep't State Police,

Te NG aera sieciecnininictenctobarntcoorsiecoviies 5

STATUTORY PROVISIONS

SR Re ae a 5, 6

I a a es 22

eR CR i 8, 12

28 U.S.C. § 1498 (1906) ...-...........0..sccsccsccsecsees- passim

ne ELITE ARLE NAT TEN 27

Ee I ii i es 27

i I oni ereccetesscedetiacsancces 27

I oi si irciectdiccmrcieaare 26

OT OI inet tetercecectes 26, 27

I I cicero iceicdaveccntsceoron 28

I I a ississccictstnicnaisciahioeninmines 28

OU IE, RG I isis ecccersenn 6, 12

I I sorts occnintiencecesmeebenesoniasint 12

SET 8, 19, 21

OR OF II snicniceteccsseecncesserenencssiseicrentes 21

Vil

ee te: Oe i iteiacscdesccsonniccioussccicniciemnins 25, 27

ee Sits Oy Se Se crescesecevccseicisenssincoesennocsnnenseneneapitl 6

SD rele Fe See sce cinscnccnnesesenieecscsssesncees 8, 19, 21

a els Oe ee ictrnrtnsineedcnvenncanticiesesnsneinasinins 25, 26

LEGISLATIVE ACTS AND HISTORY

An Act to Provide Additional Protection

for Owners of Patents of the United

States, and for Other Purposes, Pub.

a ny ili iis egcnclinicnbectietgastinseneccnenictcioiciioces 26

Consolidated Appropriations Act, 2000,

OR 8 RE 11

Intellectual Property and

Communications Omnibus Reform

Act of 1999, S. 1948, 106th Cong.

Leahy-Smith America Invents Act, Pub.

ia ets Eee testrinstihasnctinnidantintnethbeahinicnnsinneeatiostiunds passim

Patent Quality Assistance Act of 2004,

H.R. 5299, 108th Cong. (2004) ...................... 14,15

Patent Reexamination Enhancement

Act of 2001, H.R. 2231, 107th Cong.

ERT EE RE ce aren Lec wooo 13, 14

Patent Reform Act of 2009, S. 515,

eS SS Ree 16, 17

Vill

Patent Quality Assistance Act of 2004,

Sata TI iniictiideidiintsdibindsidpndtlentaaienatioenintatiinenéedsda 14,15

145 CONG. REC. (daily ed. Nov. 9, 1999)....... 10, 12,13

147 CONG. REC. (daily ed. June 25,

Sail hietinitenbcsnakabevnbitbabissummabinbiehibeininintemsnnessunseneeies 14

150 Conc. REC. (daily ed. Oct. 11, 2004).................. 14

154 CONG. REC. (daily ed. Sept. 27,

ual cintidehicetddntinusbetiineddutiumnnictudseuseinesinennnsiapeteben 22

157 CONG. REC. (daily ed. Feb. 28, 2011) .....18, 19, 20

157 CONG. REC. (daily ed. Mar. 1, 2011) .................. 20

157 CONG. REC. (daily ed. Mar. 7, 2011) ...............-.- 20

157 CONG. REC.

(daily ed. Mar. 8, 2011)..............000000-- 18, 19, 20, 21

157 CONG. REC. (daily ed. Sept. 6, 2011).................. 18

Fi Bs i, he rt SI cnnccncenesecseusvensocscnsecsnane 16, 17

America Invents Act: Hearing before the

Subcommittee on Intellectual

Property, Competition, and the

Internet of the H. Comm. on the

Judiciary, 112th Cong. (2011)................. 19, 20, 21

IX

Patent Quality Improvement: Post-

Grant Opposition: Hearing before the

Subcommittee on Courts, the

Internet, and Intellectual Property,

H. Comm. on the Judiciary, 108th

ee 15

Patent Reform Act of 2007: Hearing on

H.R. 1908 Before the Subcomm. on

Courts, the Internet, and Intellectual

ge ee 11

Revisor’s Notes, 28 U.S.C. § 1498 (1973) ................. 26

OTHER AUTHORITIES

is I i caer nt daeannmneenanianaenanls 28

Joe Matal, A Guide to the Legislative

History of the America Invents Act:

Part I of Il, 21 Fep. Cir. B.J. 435,

SENET aE a ER Sa a Cc 11

Jeffrey Kushan, The Fruits of the

Convoluted Road to Patent Reform:

The New Invalidity Proceedings of

the Patent & Trademark Office, 30

YALE L. & POL. REV. 385 (2012)......................0225 13

STATEMENT OF IDENTITY AND INTEREST

OF THE AMICUS CURIAE

Amicus curiae Intellectual Property Owners

Association (IPO) is an _ international trade

association representing companies and individuals

in all industries and fields of technology that own or

are interested in intellectual property rights.! [PO's

membership includes roughly 200 companies and

more than 12,000 individuals who are involved in the

association either through their companies or as an

inventor, author, executive, law firm, or attorney

member. Founded in 1972, IPO represents the

interests of its members before Congress and the

USPTO and has filed amicus curiae briefs in this

Court and other courts on significant issues of

intellectual property law. The members of [PO's

Board of Directors, which approved the filing of this

brief, are listed in the Appendix.”

' No counsel for a party authored this brief in whole or in part,

and no such counsel or party made a monetary contribution

intended to fund the preparation or submission of this brief. No

person other than the amicus curiae or its counsel made a

monetary contribution to its preparation or submission. Both

parties have consented to the filing of this brief.

2 IPO procedures require approval of positions in briefs by a

two-thirds majority of directors present and voting.

2

SUMMARY OF ARGUMENT

The Federal Circuit concluded that “the better

reading of ‘person” in the Leahy-Smith America

Invents Act, Pub. L. No. 112-29 (2011) (“AIA”) §

18(a)(1)(B), “does not exclude the government.”

Return Mail, Inc. v. United States Postal Serv., 868

F.3d 1350, 1366 (Fed. Cir. 2017). Yet there is no basis,

in statute or otherwise, to conclude the United States

and its operatives, including Federal agencies (i.e.,

the “government”), is a “person” that can seek to

invalidate a patent by petitioning to institute various

post-grant proceedings enacted in the AIA.

Congress chose the term “person” to identify

those who may seek patent review under the AlA’s

post-grant procedures. Although not a universal

construction, the term “person” has long been

presumed to exclude the sovereign. To overcome this

presumption, one must find clear legislative intent to

the contrary. Here, neither the statutory context nor

the legislative history of the AIA overcomes this

presumption. The plain meaning of “person” is

consistent with the expressed intent of the AlA’s

drafters and the statutory scheme. In contrast,

adopting a more expansive definition of “person”

would thwart legislative intent because it would give

the government two bites at the invalidity apple, in

different fora, wasting time and resources in

contravention of the protections that Congress

carefully balanced and implemented in the AIA. See

Return Mail, 868 F.3d at 1375 (Newman, J.,

dissenting).

3

Congress has long sought to avoid such

repetitive challenges, recognizing it as an abusive

litigation tactic. The AIA’s post-grant proceedings

were designed to expedite and streamline challenges

to patent validity, enabling speedy invalidation of

improperly-granted patents while also avoiding

serial, wasteful attacks. On this latter point, the

application of estoppel, among other checks, is an

important component of the policy considerations

carefully balanced in post-grant review. In crafting

the ALA’s post-grant proceedings, as for earlier patent

reform efforts, Congress incorporated estoppel

provisions that would bar a post-grant petitioner from

bringing duplicative invalidity challenges in a later

forum. To this end, the AIA’s estoppel provisions

retain protections similar to those first enacted in

inter partes reexamination, despite subsequent bills’

proposals to narrow the scope of post-grant estoppel,

indicating that Congress intended to preserve broad

estoppel in the AIA.

Despite the importance of estoppel in the AIA,

however, the Federal Circuit found that the

“government would enjoy the unique advantage of not

being estopped . . . from relitigating grounds raised

during a CBM review proceeding.” Return Mail, 868

F.3d at 1364. Under the Federal Circuit's

interpretation of “person,” the government would not

be estopped from mounting serial patent validity

challenges in post-grant review and again in the

Court of Federal Claims, the only forum in which a

patentee can bring a patent infringement suit against

the government. 28 U.S.C. § 1498(a). This outcome,

dubbed an “oddity” by the Return Mail court, 868 F.3d

A

at 1364, arises because the ALA’s estoppel provisions

extend to subsequent proceedings in only specified

fora, which do not include the Court of Federal

Claims. Such a wasteful and inefficient result is

contrary to Congress’s intent in enacting the AIA,

which requires accused infringers to bring an

invalidity challenge in only one forum. Because the

Federal Circuit’s interpretation runs counter to both

the plain language of the AIA and its underlying

statutory scheme, it is incorrect.

ARGUMENT

1. In the AIA, as Elsewhere, the Ordinary

Meaning of “Person” Excludes the

Government

In determining the meaning of “person” in the

AIA, Congress’ choice of words is of paramount

importance. “There is, of course, no more persuasive

evidence of the purpose of a statute than the words by

which the legislature undertook to give expression to

its wishes.” United States v. Am. Trucking Ass’ns, 310

U.S. 534, 543 (1940) (Am. Trucking”). “Often these

words are sufficient in and of themselves to determine

the purpose of the legislation.” Jd. “Congress remains

free . . . to give the word a broader or different

meaning. But before we will assume it has done so,

there must be some indication Congress intended

such a result.” Mohamad v. Palestinian Auth., 566

U.S. 449, 455 (2012) (emphasis in original).

Accordingly, there is a “strong presumption

that the plain language of the statute expresses

5

congressional intent.” Ardestani v. INS, 502 U.S. 129,

135 (1991) (internal quotation marks omitted); see

also id. at 138 (declining to extend entitlement to fees

and costs under Equal Access to Justice Act to

administrative deportation proceedings in

contravention of statute’s plain language). This

strong presumption “is rebutted only in rare and

exceptional circumstances,” id. at 135 (internal

quotations marks omitted)—namely, “when a

contrary legislative intent is clearly expressed.” /d.;

see also Will v. Michigan Dep't State Police, 491 U.S.

58, 65-66 (1989) (‘Our conclusion that a State is not

a ‘person’ within the meaning of [42 U.S.C.] § 1983 is

reinforced by Congress’ purpose in enacting the

statute.”); Am. Trucking, 310 U.S. at 546-47 (“We are

especially hesitant to conclude that Congress

intended to grant the [Interstate Commerce

Commission] other than the customary power . . . in

view of the absence in the legislative history of the Act

of any discussion of the desirability of giving the

Commission broad and unusual powers .. .”).

Because Congress used the term “person” in

the AIA without providing a special definition, this

Court must presume that Congress intended the term

“person” in the Act to have its plain meaning. See,

e.g., Mohamad, 566 U.S. at 455. The Dictionary Act,

1 U.S.C. § 1 et seq., sets forth the customary meaning

of the term “person,” as used in federal statutes. See,

e.g., Inyo Cty., Cal. v. Paiute-Shoshone Indians of

Bishop Cmty. of Bishop Colony, 538 U.S. 701, 713

(2003) (Stevens, J., concurring). The Dictionary Act

provides that, “unless the context indicates

otherwise,” the term “persor” means “corporations,

6

companies, associations, firms, partnerships,

societies, and joint stock companies, as well as

individuals.” 1 U.S.C. § 1 (2012). Therefore, unless

the context “indicates otherwise,” id., the ordinary

meaning of “person”—-which does not include the

government—must control. Burwell v. Hobby Lobby

Stores, Inc., 134 S. Ct. 2751, 2768 (2014) (“[U]nless

there is something about the [statuvory] context that

‘indicates otherwise,’ the Dictionary Act provides a

quick, clear, and affirmative answer to the question”

of the scope of the term “person”) (quoting 1 U.S.C. §

1). Moreover, because Congress provided that a

“person” could petition for inter partes review, post-

grant review, and covered business method (CBM)

proceedings, the meaning of this term should be

consistent across all AIA patent review proceedings.*

No statutory context, legislative history, or other

evidence indicates that “person” has a meaning other

than its customary definition. See generally Section

B, infra. To the contrary, Congress intended to

preserve estoppel in the AIA’s post-grant proceedings

as a check on wasteful litigation.

® See 35 U.S.C. § 311 (2012) ([A] person who is not the owner of

a patent may file with the Office a petition to institute an inter

partes review of the patent.”); id. § 321 (2012) ([A] person who

is not the owner of a patent may file with the Office a petition to

institute a post-grant review of the patent.”); AIA § 18(a)(1)(B)

CA person may not file a petition for a transitional proceeding

with respect to a covered business method patent unless the

person or the person's real party in interest or privy has been

sued for infringement of the patent or has been charged with

infringement under that patent.”).

Il. The AIA’s Legislative History Does Not

Contain Indicia that Congress Intended

“Person” To Include the Government

This Court’s “conventional reading of ‘person’

may ... be disregarded if the purpose, the subject

matter, the context, the legislative history, or the

executive interpretation of the statute indicate an

intent .. . to bring state or nation within the scope of

the law.” Intl Primate Prot. League v. Adm'rs of

Tulane Educ. Fund, 500 U.S. 72, 83 (1991) (internal

alterations omitted); see also Vi. Agency of Nat. Res.

v. United States ex rel. Stevens, 529 U.S. 765, 781

(2000) (noting the presumption “may be disregarded

only upon some affirmative showing of statutory

intent to the contrary”). Here, there is no statutory

context dictating a meaning of “person” other than its

customary meaning, and construing “person” in this

manner implements Congressional intent. The AlA’s

legislative history demonstrates Congress’s long-

standing interest in preventing serial identical

attacks on patent validity. Congress’s solution to this

problem—in the AIA as well as in prior bills and

statutes—includes strong estoppel provisions. There

is simply no indication that Congress intended the

government to avoid the restrictions that the AIA

imposes on all others. Affirming the Federal Circuit’s

interpretation and permitting the government to

circumvent these protections would frustrate the

AIA’s statutory scheme. Therefore, the term “person”

in the Act should be given its usual meaning.

A. The AIA’s Estoppel Provisions Do Not

Extend to the Government

The AIA’s estoppel provisions dictate that

estoppel arising from post-grant challenges will

attach later in proceedings before the Patent Office,

35 U.S.C. §§ 315(e)(1), 325(e)(1), or “other

proceedings.” Id. §§ 315(e)(2), 325(e)(2) (2012). These

“other proceedings” are clearly specified:

The petitioner . . . of a claim in a patent

under this chapter that results in a final

written decision . . . may not assert

either in a civil action arising in whole or

in part under section 1338 of title 28 or

in a proceeding before the International

Trade Commission .. . that the claim is

invalid... .

Id. § 315(e)(2) (inter partes review); see also id. §

325(e)(2) (post-grant review). Congress therefore

explicitly identified only three fora in which estoppel

against a “person” would lie: the Patent Office, a

“district court| |” under 28 U.S.C. § 1338 (2011), or the

International Trade Commission. Not included in

this list is the Court of Federal Claims. Its absence is

significant because section 1498 provides that the

Court of Federal Claims is the only forum in which a

patentee can seek recourse against the government

for the use or manufacture of a claimed invention. 28

9

U.S.C. § 1498(a) (1996).4 Because the AIA’s estoppel

provisions do not identify the Court of Federal

Claims, the government is not subject to estoppel in

that forum. Return Mail, 868 F.3d at 1364. The

operation of the AIA’s estoppel is consistent with the

usual meaning of “person.” The fora enumerated in

the AIA do not, and need not, include the Court of

Federal Claims, because a “person” does not typically

include the government.

B. Interpreting “Person” to Include the

Government Thwarts Congress’s Careful

Balance of Providing an Efficient Forum

for Challenging Patent Validity While

Avoiding Abusive, Repetitive Validity

Attacks

The Federal Circuit's interpretation of “person”

creates negative consequences for patentees that are

* “Whenever an invention described in and covered by a patent

of the United States is used or manufactured by or for the United

States without license of the owner thereof or lawful right to use

or manufacture the same, the owner's remedy shall be by action

against the United States in the United States Court of Federal

Claims for the recovery of his reasonable and entire

compensation for such use and manufacture.” 28 U.S.C. §

1498(a) (1996). The basis for a patentee’s recovery under Section

1498(a) “is the doctrine of eminent domain.” Motorola, Inc. v.

United States, 729 F.2d 765, 768 (Fed. Cir. 1984) (citing Crozier

v. Fried Krupp Aktiengesellschaft, 224 U.S. 290 (1912)). As the

Federal Circuit recognized, section 1498 “creates ita own

independent cause of action, which is only parallel and not

identical to an infringement action under the Patent Act.”

Return Mail, 868 F.3d at 1361 (internal quotation marks

omitted).

10

plainly at odds with the policies underlying

enactment of the AIA. Congress long sought to

promote patent law reform by creating comparatively

efficient and cost-effective proceedings to invalidate

patents that should not have been granted.® Although

this particular goal, absent more, might not bar

government agencies or operatives from chalienging

patent validity at the Patent Office, the AIA’s drafters

also recognized the importance of precluding

repetitive, wasteful attacks on patents. They built

various protections into the post-grant proceedings —

including estoppel—to avoid such challenges.

The Return Mail court found that that the

government is a “person” in part because, in its view,

no policy reason justified precluding the government

from seeking post-grant review under the AIA.

Return Mail, 868 F.3d at 1366 (“There does not

appear to be any reason . . . to curtail the ability of the

government to initiate a CBM proceeding when, like

a party sued in federal district court or the ITC, it has

interests at stake with respect to the patent it has

been accused of infringing.”). But the court

overlooked a key policy reason why the government

should be excluded from the scope of “person.”

Permitting the government to institute post-grant

review would flout the AIA’s carefully-chosen estoppel

5 In enacting the inter partes reexamination proceeding, the

House Committee noted that “[njJumerous witnesses have

suggested that the volume of lawsuits in district courts will be

reduced if third parties can be encouraged to use reexamination

by giving them an opportunity to argue their case for patent

invalidity in the USPTO.” 145 CONG. Rec. H11804 (daily ed.

Nov. 9, 1999) (Joint Explanatory Statement of the Committee of

Conference).

11

protections, and is inconsistent with Congressional

intent.

1. Prior to the AIA, Congress

Relied on Estoppel to Avoid

Repetitive Attacks on Patent

Validity

A review of the legislative record leading up to

the AIA reveals Congress’s long-standing interest in

preventing serial patent challenges in different fora.

Broad post-grant review, without appropriate checks,

could “subject patent owners to ‘serial post-grant

challenges’ and would deny patent owners the ‘right

to expect quiet title at some point without facing an

endless series of challenges.” See, e.g., Joe Matal, A

Guide to the Legislative History of the America Invents

Act: Part Il of II, 21 Fep. Cir. B.J. 435, 603 (2011)

(quoting Patent Reform Act of 2007: Hearing on H.R.

1908 Before the Subcomm. on Courts, the Internet,

and Intellectual Prop., 110th Cong. 55 (2007)); see also

Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d

1309, 1327 (Fed. Cir. 2016) (Newman, J., dissenting)

(reviewing legislative history of AIA), overruled on

other grounds by Aqua Prods., Inc. v. Matal, 872 F.3d

1290 (Fed. Cir. 2017).

To avoid this outcome, estoppel—-specifically,

estoppel of a “person”—has been an important

component of patent invalidity proceedings for more

than a decade prior to the AIA, as seen in the 1999

enactment of the inter partes reexamination

12

procedure.® Inter partes reexamination was created

nearly 20 years ago as an avenue for “[a]ny person” to

challenge patent validity. 35 U.S.C. § 311(a) (1999).

To counterbalance a third party’s right to bring this

challenge, the third party would be subject to

estoppel:

A third-party requester . . . is estopped

from asserting at a later time, in any

civil action arising in whole or in part

under section 1338 of title 28 [U.S.C]

the invalidity of any claim finally

determined to be valid and patentable on

any ground which the _ third-party

requester raised or could have raised

during the inter partes reexamination

proceedings.

35 U.S.C. § 315(c) (1999). Notably, Congress intended

the accompanying estoppel to attach broadly because

it covered challenges that the petitioner “could have

raised” as well as those actually raised in the

proceeding. /d. Broad estoppel was a critical

mechanism to effect the balance of concerns raised

during debate over inter partes reexamination. In

introducing this proceeding, members of the House of

Representatives explained that “[t]o prevent

harassment, anyone who requests inter partes

® The inter partes reexamination provisions are set forth in the

Intellectual Property and Communications Omnibus Reform Act

of 1999, S. 1948, 106th Cong. (1999), incorporated by cross-

reference in the conference report to the Consolidated

Appropriations Act, 2000, Pub. L. 106-113 (1999).

13

reexamination must identify the real party in

interest’ and third-party requesters . . . are estopped

from raising in a subsequent court action or inter

partes reexamination any issue of patent validity that

they raised or could have raised during such inter

partes reexamination.” 145 CONG. REC. H11805

(daily ed. Nov. 9, 1999) (Joint Explanatory Statement

of the Committee of Conference). Congress therefore

included estoppel in inter partes reexamination to

prevent patent owners from harassment via serial

identical attacks on patent validity.

Although legislative views on the structure of

patent validity proceedings continued to evolve in the

years leading up to the enactment of the AIA, the

proposed bills consistently reflect the long-standing

importance of maintaining estoppel protections.

When subsequent bills were introduced to reshape

the inter partes reexamination proceeding (among

other parts of the Patent Act) or otherwise change the

scope of post-grant review,® they included estoppel

provisions in some form. Notably, multiple bills

proposed (but not ultimately enacted) leading up to

the AIA contained estoppel provisions that were

narrowed in some respect compared to the protections

in inter partes reexamination. Although these

proposals sought to decrease the scope of estoppel,

broad estoppel was ultimately retained in the

7 35 U.S.C. § 311(b)(1) (1999) (request for inter partes

reexamination must include identity of real party in interest).

® See, e.g., Jeffrey Kushan, The Fruits of the Convoluied Road to

Patent Reform: The New Invalidity Proceedings of the Patent &

Trademark Office, 30 YALE L. & POL. REV. 385, 396-403 (201 2)

(reviewing legislative history of invalidity proceedings reform).

14

proposed post-grant proceedings as a means to

prevent harassing litigation, which was a continuing

concern of lawmakers.

As an_ early example, the Patent

Reexamination Enhancement Act of 2001 (“2001 Act”)

was introduced with a goal of amending the inter

partes reexamination proceeding so that, inter alia,

estoppel would attach after the Patent Office reached

a final determination of patent validity. Patent

Reexamination Enhancement Act of 2001, H.R. 2231,

107th Cong. § 2(c) (2001). Although this proposed

amendment would narrow estoppel in the proceeding,

a requester would, “at the conclusion of

[reexamination] be barred (estopped) from

challenging the patent in any other judicial or [Patent

Office] proceeding. Any issue actually raised or that

could have been raised based on the evidence . . .

before the Patent Office will still be barred...” 147

CONG. REC. E1191 (daily ed. June 25, 2001)

(statement of Rep. Lofgren). Rep. Lofgren, sponsor of

the 2001 Act, noted that the bill was designed to

“ensure that the reexamination procedure retains

important safeguards to prevent third parties from

using the procedure to harass patent owners who hold

valid patents. . . . [A]s noted, the estoppel imposed on

unsuccessful challengers should prevent frivolous

challenges. Those who challenge the patent in the

[Patent Office] will not be able to challenge the patent

later in a court on validity issues.” Id.

A few years later, the Patent Quality

Assistance Act of 2004 (“2004 Act”) was introduced to

expand the scope of post-grant invalidation

15

proceedings by, among other amendments, “relaxing .

estoppel provisions” of the inter partes

reexamination procedure by eliminating estoppel for

arguments the challenger “could have raised” in

reexamination. See 150 CONG. REC. E1936 (daily ed.

Oct. 11, 2004) (statement of Rep. Berman); see also

Patent Quality Assistance Act of 2004, H.R. 5299,

108th Cong. § 7 (2004).9 Despite intending to weaken

the scope of estoppel in _ post-grant review

proceedings, contemporaneous policymakers

nevertheless recognized the importance of

maintaining estoppel in some form. Patent Quality

Improvement: Post-Grant Opposition: Hearing before

the Subcommittee on Courts, the Internet, and

Intellectual Property, H. Comm. on the Judiciary,

108th Cong. 32 (2004) (statement of Michael Kirk,

Executive Director, American Intellectual Property

Law Association) (“A very important aspect of any

post-grant-opposition proceeding is the effect the

decision will have on the parties. If the estoppel

provision is too harsh, no one will use the procedure .

® The 2004 Act also created a new patent opposition proceeding

which permitted broad challenges within nine months of a

patent’s issuance. See 2004 Act §§ 2, 323-24. The new opposition

proceeding incorporated a fairly narrow estoppel provision that

was designed to bar an opposer “from raising, in any subsequent

proceeding involving that opposer . . . any issue of fact or law

actually decided and necessary to the determination of that

issue,” id. § 336(a)(1), with a limited exception for additional

factual evidence necessary and material to the final

determination “that could not reasonably been discovered or

presented ... by that opposer.” Id. § 336(a)(2). The 2004 Act

also would have barred an opposer from bringing an inter partes

reexamination proceeding “on the same claim and on the same

issue” as in the opposition. Id. § 340(a).

16

. If it is too lenient, patentees may be subject to

needless repetitive challenges by the same party.”).'°

Thus, as before, estoppel was recognized as an

important mechanism to curb harassing litigation

tactics, although finding the right balance of

protections remained a challenge.

Similarly, the drafters of the Patent Reform

Act of 2009 (“2009 Act”) sought to re-shape inter

partes reexamination by making the procedure more

robust and efficient while retaining estoppel, albeit

comparatively narrowed. See Patent Reform Act of

2009, S. 515, 111th Cong. (2009).'' Similar to the

© See also id. at 13 (statement of Jeffrey Kushan on behalf of

Genentech, Inc.) (‘The challenge for Congress . . . is to devise a

system that not only provides a rigorous inquiry into the validity

of the patent but is also structured to prevent harassment of the

owners of valid patents. A system that allows frivolous

challenges to be made or which can be used to tie up a patent in

a long and endless administrative proceeding would fail to meet

the needs of those users of the patents community and the needs

of the public.”).

'! As observed by Senator Leahy, under the 2009 Act, a “third

party requester is still estopped from reasserting patent

invalidity in court on any ground actually raised in an inter

partes reexamination, but the ‘or could have raised’ bar is struck.

With respect to serial requests for inter partes reexamination by

the same third party requester or its privies, a final decision . .

will continue to have claim-preclusive effect against subsequent

requests.” S. Rep. NO. 111-18, at 17 (2009). The 2009 Act also

created a new post-grant opposition procedure for use within the

first twelve months after a patent issued. Similar to the 2004

Act’s post-grant review proceeding, this opposition contained

estoppel provisions that precluded a petitioner “from improperly

mounting multiple challenges of a patent or initiating a

challenge after an unfavorable final decision in a civil action

based on grounds the petitioner raised or could have raised.” /d.

17

amendments proposed in the 2004 Act, the 2009 Act

drafters removed validity challenges that “could have

raised” from the scope of the estoppel. The underlying

policy considerations guiding the 2009 Act’s structure

remain familiar. In recommending passage of the

2009 Act, Senator Leahy cautioned that, although its

amendments were intended to remove disincentives

to the current reexamination procedure, “the changes

... are not to be used as tools for harassment .. .

through repeated litigation and administrative

attacks on the validity of a patent. Doing so would

frustrate the purpose of the section as providing quick

and cost effective alternatives to litigation.” S. REP.

No. 111-18, at 18 (2009).

Although these exemplary patent reform bills

were not enacted, they reflect long-standing

legislative interests in preventing repetitive identical

attacks on patent validity. This observation is

significant for a statutory interpretation analysis,

such as in the case at bar, because “the initial focus

must be on the state of the law at the time the

legislation was enacted.” Merrill Lynch, Pierce,

Fenner & Smith, Inc. v. Curran, 456 U.S. 353, 378

(1982) (“More precisely, we must examine Congress’

perception of the law that it was shaping or

reshaping.”). Lawmakers first recognized the

importance of strong estoppel protections in enacting

inter partes reexamination. These subsequent

proposed acts demonstrate estoppel’s continuing

importance as a tool regularly used by Congress to

achieve its policy goals in crafting patent review

proceedings. In its efforts to improve the inter partes

reexamination procedure and to create new post-

18

grant review mechanisms, Congress preserved

estoppel as an important safeguard against abusive

litigation tactics against patent holders. It is little

surprise, therefore, that Congress also recognized the

importance of estoppel when enacting the AIA, and

incorporated it into all AIA post-grant proceedings.

2. Consistent with Earlier

Legislative Acts, Congress

Preserved Estoppel in the

AIA’s Post-Grant Proceedings

as an Important Check on

Abusive Litigation

In general, the policies and considerations

implemented in the AIA’s post-grant proceedings echo

those of earlier bills. See supra Section (I1(B)(1).

Critically, estoppel remained essential to achieving

these legislative goals. Return Mail, 868 F.3d at 1374

(Newman, J., dissenting) (“The estoppel provision is

the backbone of the AIA, for it is through estoppel that

the AIA achieves its purpose of expeditious and

economical resolution of patent disputes without

resort to the courts.”).

Congress intended the AIA’s post-grant

proceedings to reduce abusive litigation tactics,

including serial, repetitive attacks on patent validity.

In describing the “overarching purpose and effect” of

the AIA, Senator Kyl noted that the act would

“ultimately reduce litigation costs” and “cure some

very clear litigation abuses that have arisen under

the current rules, abuses that have done serious harm

to American businesses.” 157 CONG. Rec. $5319

19

(daily ed. Sept. 6, 2011) (statement of Sen. Kyl); see

also 157 CONG. Rec. $1380 (daily ed. Mar. 8, 2011)

(statement of Sen. Grassley) (recognizing need to

“curb litigation abuses”). On this point, the post-

grant review proceedings created in the Act were

intended to “enable early challenges to patents, but

also protect the rights of inventors and patent owners

against endless litigation,” and in front of different

tribunals. 157 CONG. Rec. 8952 (daily ed. Feb. 28,

2011) (statement of Sen. Grassley); see also 157 CONG.

REc. $1364 (daily ed. Mar. 8, 2011) (statement of Sen.

Schumer) (“Too many district courts have been

content to allow litigation to grind on while a

reexamination is being conducted, forcing the parties

to fight in two fora at the same time. This is

unacceptable, and would be contrary to the

fundamental purpose of . . . provid[ing] a cost efficient

alternative to litigation.”).

To achieve this balance, as in previous bills,

estoppel provisions featured as a crucial part of the

AILA’s patent review proceedings. '?

'2 Congress recognized estoppel’s value for the various types of

post-grant proceedings, including covered business method

(CBM) reviews. 35 U.S.C. §§ 315(e) (inter partes review), 325(e)

(post-grant review); Credit Acceptance Corp. v. Westlake Servs.,

859 F.3d 1044, 1049 (Fed. Cir. 2017) (noting that post-grant

review estoppel “also governs CBM review proceedings under

AIA § 18"). As one witness noted, because “[wje don’t want to

have legitimate inventions given to infringers to have second,

third, and fourth bites at the apple. . . | think it’s a good idea . .

. to look at building an estoppel [into CBM proceedings], just like

re-exam procedure.” America Invents Act: Hearing before the

Subcommittee on Intellectual Property, Competition, and the

20

[The ALA was designed to] include a

strengthened estoppel standard to

prevent petitioners from raising in a

subsequent challenge the same patent

issues that were raised or reasonably

could have been raised in a prior

challenge. The bill would significantly

reduce the ability to use post-grant

procedures for abusive serial challenges

to patents. These new procedures would

also provide faster, less costly

alternatives to civil litigation to

challenge patents.

157 CONG. REC. S952 (Feb. 28, 2011) (statement of

Sen. Grassley).'* These estoppel protections were

widely recognized for their value in _ limiting

harassing litigation.'* According to the Patent Office

Internet of the H. Comm. on the Judiciary, 112th Cong. 119

(2011) (2011 AIA Hearing”) (statement of Steven Miller, VP.

and Genera! Counsel, Procter & Gamble Co.).

'§ Other policymakers expressed similar appreciation for

estoppel protections. See 157 CONG. REC. S1041-—42 (Mar. 1,

2011) (statement of Sen. Kyl) (“The present bill does . . . impose

estoppel will effectively bar a third party or related parties from

invoking ex parte reexamination against a patent if that third

party has already employed post-grant or inter partes review

against that patent. Also, the bill allows the Patent Office to

reject any request for a proceeding ... if the same or

substantially the same prior art or arguments previously were

presented to the Office with respect to that patent.”).

'* 157 CONG. REC. $1367 (daily ed. Mar. 8, 2011) (statement of

Sen. Kohl) (recognizing that “[p]atent protection will be stronger

21

Director, David Kappos, “I believe there are

significant advantages for patentees who successfully

go through the post grant system— in this case, inter

partes review——because of those estoppel provisions.

Those estoppel provisions mean that your patent is

largely unchallengeable again by the same party.”

2011 AIA Hearing 52-53.

As further protection, estoppel in the AIA’s

post-grant proceedings was designed to bar those in

privity with the challenger from bringing the same

claims subsequently at the Patent Office or in other

proceedings. 35 U.S.C. §§ 315(e)(1—2), 325(e)(1—2).

|A] party that uses inter partes or post-

grant review is estopped from raising in

a subsequent PTO proceeding any issue

that he raised or reasonably could have

raised in the post-grant or inter partes

review. This effectively bars such a

party or his real parties in interest or

privies from later using inter partes

review.

with the inclusion of ‘could have raised’ estoppel, strong

administrative estoppel, and . . . authority for the [Patent Office]

to reject petitions by third parties and order joinder of related

parties.”); 157 CONG. REC. 81326 (daily ed. Mar. 7, 2011)

(statement of Sen. Sessions) (‘The bill also includes many

protections that were long sought by inventors and patent

owners. It preserves estoppel against relitigating in court those

issues that an inter partes challenger reasonably could have

raised in his administrative challenge.”); see also 2011 AIA

Hearing 93 (statement of John Vaughn, Executive V.P. of

Association of American Universities) (noting such provisions

“reduce the prospect of using the inter partes procedure to mount

harassing serial challenges”).

22

157 CONG. Rec. 81376 (daily ed. Mar. 8, 2011)

(statement of Sen. Kyl) (citing 35 U.S.C. §§ 315(e)(1),

325(e)(1)); accord 35 U.S.C. § 317 (1999) (prohibiting

inter partes reexamination of any claim “on the basis

of issues which that party or its privies raised or could

have raised” in civil litigation or a previous inter

partes reexamination).

The continued inclusion of estoppel provisions

in patent review proceedings, enacted or otherwise,

indicates that estoppel was “part of the contemporary

legal context in which Congress legislated” when

crafting the AIA’s post-grant proceedings. Merrill

Lynch, 456 U.S. at 381. The Merrill Lynch rationale

is instructive. In that case, the Court addressed the

question of whether a private cause of action is

implicit in a federal statutory scheme (the Commodity

Exchange Act (CEA), codified at 7 U.S.C. § 1 (1976) et

seq.) “when the statute by its terms is silent on that

issue.” Jd. at 378. In concluding that a private cause

of action was implied, the Merrill Lynch Court

observed that “the fact that a comprehensive

reexamination and significant amendment of’ the

CEA “left intact the statutory provisions under which

the federal courts had implied a cause of action is

itself evidence that Congress affirmatively intended

to preserve that remedy.” /d. at 381—82. A review of

the CEA’s legislative history “persuasively indicates

that preservation of the remedy was indeed what

Congress actually intended.” /d. at 382.

In the present case, the Federal Circuit

recognized that “absence of Congressional guidance”

23

created a silence as to whether “person” was intended

to apply to the government. Return Mail, 868 F.3d at

1366; see also id. at 1374 (Newman, J., dissenting).

However, preserving estoppel provisions in the AIA’s

post-grant statutes, consistent with the long-standing

use of estoppel in similar proceedings, demonstrate

that Congress intended to not limit the scope of these

protections. This Court should not adopt an

interpretation of “person” that would be at variance

with this legislative policy. See Am. Trucking, 310

U.S. at 543; see also id. at 546-47 (expressing

“hesitan[cy]” about giving federal commission more

than usual power in absence of legislative intent).

Ill. There Is No Per Se Rule Against

Estopping the Government

The Federal Circuit acknowledges that the

government will not be subject to estoppel after an

unsuccessful CBM proceeding. Return Mail, 868 F.3d

at 1364. Although the Government has not been

subject to estoppel in other contexts, see Office of Pers.

Mgmt. v. Richmond, 496 U.S. 414, 421—22 (1990)

(‘Richmond’), the unavailability in one context does

not show that Congress intended for the government

to be free from the estoppel flowing from AIA post-

grant proceedings. Richmond stands for the

unremarkable proposition that the government is not

equitably estopped from denying statutory benefits to

a claimant seeking public funds even if a government

employee misapplies a statute. See id. at 434. The

overarching premise supporting the Richmond

decision is that “the United States is neither bound

nor estopped by acts of its officers or agents in

24

entering into an arrangement or agreement to do or

cause to be done what the law does not sanction or

permit.” /d. (quoting Utah Power & Light Co. v.

United States, 243 U.S. 389, 408-09 (1917)).

The Richmond Court recognized that there was

no per se rule precluding government estoppel.

Richmond, 496 U.S. at 423 (“We leave for another day

whether an estoppel claim could ever succeed against

the Government.”). There is no basis in Richmond to

conclude that the AIA’s estoppel should not operate

against the government. Indeed, the Richmond

opinion expressly leaves that door open. See 496 U.S.

at 426 (“[W]e decline today to accept the . . . argument

for an across-the-board no-estoppel rule.”); see also id.

at 426 (“In our cases . . . reserving the possibility that

estoppel might lie on some facts, we have held only

that the particular facts presented were

insufficient.”). Neither the Return Mail court nor the

United States Postal Service has identified legislative

history or sound policy to explain why Congress would

have intended for the government to be able to make

repeated identical patent validity attacks, and

Richmond does not lead to a different conclusion.

The question of whether the government can be

estopped due to the improper actions of its employees

is not an issue in the present case at all. Here, no

governmental entity misapplied a statute in such a

way as to bind the government to an outcome that

would otherwise run afoul of what the statute

dictates. Furthermore, the nature of the estoppel

considered in Richmond is materially different than

the estoppel built directly into the AIA provisions.

25

The equitable estoppel at issue in Richmond “rests on

misleading.” Petrella v. Metro-Goldwyn-Mayer, Inc.,

572 U.S. 663, 685 (2014). Unlike the federal employee

in Richmond who provided misinformation to the

benefits claimant, there are no wrongful activities at

play here—only the scope and meaning of a statutory

term, “person,” and whether certain patent

challenges are permissible. Moreover, Richmond

narrowly relates to the disbursement of public fur's

to claimants, and, in denying that estoppel attached,

the Richmond Court observed that it took “a most

strict approach to estoppel claims involving public

funds.” Jd. at 426. The ramifications of the only

question before this Court is whether the government

should be exempted from the estoppel that Congress

expressly included in the AIA to bind any “person”

attempting to challenge patent validity.

The Richmond Court was also concerned about

“operation of estoppel against the Government in the

context of payment of money from the Treasury” on

the grounds that it “could in fact render the

Appropriations Clause a nullity.” Richmond, 496

U.S. at 428. But concerns over statutory nullification

actually favor Petitioner Return Mail’s position in

this case. If this Court affirms the Federal Circuit's

statutory interpretation, which abrogates the

statutory estoppel provisions for a particular class of

petitioner, Congress's careful balance’ of

considerations in enacting the AIA will be frustrated.

IV. The Government's Other Patent Rights

Do Not Overcome the Presumption That

“Person” Excludes the Government

26

The Federal Circuit justified its interpretation

by reasoning, inter alia, that “[t]he AIA does not

appear to use the term ‘person’ to exclude the

government in other provisions,” such as _ those

bestowing intervening rights on certain “persons.”

Return Mail, 868 F.3d at 1365 (citing 35 U.S.C. §§

318(c), 328(c) (2012))."®

The legislative history of section 1498 reveals

that Congress intended for the government to have

the defense of intervening rights. Specifically, in

enacting section 1498, Congress intended that the

government have the ability to plead any defense to

patent infringement that would be available to a

private party. See Motorola, 729 F.2d at 769. The

original version of section 1498 expressly provided

that “the United States may avail itself of any and

all defenses, general or special, which might be

pleaded by a defendant in an action for

infringement.” Id. (emphases added).'6 This

language was “omitted as unnecessary” in later

versions of section 1498, but, “[iJn absence of a

'S These provisions refer to the intervening rights “of any person

who made, purchased, or used within the United States, or

imported into the United States, anything patented” by an

amended or new claim following a post-grant proceeding. 35

U.S.C. §§ 318(c), 328(c) (2012); see also id. § 252 (1999)

(governing effect of reissued patents).

‘6 The Motorola court quoted ch. 423, 36 Stat. 851 (cited herein

as An Act to Provide Additional Protection for Owners of Patents

of the United States, and for Other Purposes, Pub. L. No. 305

(1910), noting that this statute was originally codified in Title 35

but later removed and re-codified in Title 28. 729 F.2d at 769 &

n.5.

27

statutory restriction, any defense available to a

private party is equally available to the United

States.” Id. (quoting Revisor’s Notes to 28 U.S.C. §

1498,at 467 (1973)).

Intervening rights is a defense to patent

infringement. See BIC Leisure Prods., Inc. v.

Windsurfing Int'l, Inc., 1 F.3d 1214, 1220 (Fed. Cir.

1993) (“The accused infringer may raise the defense

of intervening rights only when none of the infringed

claims of the reissue patent were present in the

original patent.” (citing 35 U.S.C. § 252 (1988))).

Therefore, in section 1498 actions, the government

may avail itself of the intervening right defense. The

legislative history of section 1498 thus demonstrates

affirmative Congressional intent to overcome the

presumption that a “person” in the particular context

of 35 U.S.C. §§ 252, 318, and 328 does not include the

government.

Section 207 of the Patent Act also reflects

affirmative legislative intent to overcome this

presumption with respect to certain rights of a

“person” in 35 U.S.C. § 102 (2015) (a “person” can be

entitled to a patent if certain conditions are met) and

§ 118 (2012) (a “person” may, under specified

circumstances, “make an application for patent”).

Section 207 empowers the government to protect,

develop, and commercialize patent rights. 35 U.S.C.

§ 207 (2012). In addition to allowing “Federal

agenclies]” to “apply for, obtain, and maintain”

patents, section 207 authorizes the agencies to grant

various kinds of licenses, to transfer title of

inventions, and to “undertake all other suitable and

28

necessary steps to protect and administer rights to

federally owned inventions.” 35 U.S.C. § 207(a;(1-4).

Because the government has the affirmative right to

apply for a patent, interpreting sections 102 and 118

to exclude the government would conflict with section

207. Under these circumstances, the presumption

that “person” in sections 102 and 118 is overcome.

Importantly, section 207 does not contain or

imply provisions by which a Federal agency can seek

to invalidate patents and itself does not use the term

“person” when granting the right, for example, to

apply for, obtain, and maintain” patents. 35 U.S.C. §

207(a)(1). Instead, it uses the term “Federal

agencfies].” Jd. § 207(a). As a result, section 207 does

not demonstrate that “person” in the AIA includes the

government.

Section 303 of the Patent Act likewise does not

overcome the presumption that “person” does not

include the government. Under section 303, the

Patent Office Director “[o]n his own initiative . .. may

determine whether a substantial new question orf

patentability is raised” that would require patent

reexamination. See 35 U.S.C. §§ 303-04 (2012).

Congress explicitly allowed the Patent Office Director

to bring a challenge to patent validity under specified

circumstances. When a statute or rule enumerates

specific actions, it should not ordinarily be extended

to cover possibilities not explicitly addressed therein.

E.g., Leatherman v. Tarrant Cty. Narcotics

Intelligence & Coordination Unit, 507 U.S. 163, 167—

68 (1993) (declining to require heightened pleading

for claims other than exceptions listed in FED. R. Ctv.

29

P. 9(b), on the grounds that “le|xpressio unius est

exclusio alterius”). The explicit authorization in

Section 303 indicates that Federal agencies do not

otherwise have the right to initiate post-grant

proceedings under the AIA. See Tenn. Valley Auth. v.

Hill, 437 U.S. 153, 188, 195 (1978) (although

Endangered Species Act (ESA) created “a number of

limited ‘hardship exceptions,” “there are no

exemptions in the [ESA] for federal agencies,

meaning that under the maxim expressio unius est

exclusio alterius, we must presume that these were

the only ‘hardship cases’ Congress intended to

exempt.”) (affirming injunction of expensive dam

project threatening endangered species).

Considering these statutes together, in light of

traditional principles of statutory construction, “the

statutory context strengthens—not undermines—the

conclusion that Congress intended to create a cause of

action” to invalidate a patent using the AIA’s

procedures by a “person” in the customary sense,

rather than under an expansive interpretation of that

term that would include the government. Mohamad,

566 U.S. at 455.

CONCLUSION

The term “person” in the AIA should be

givenits customary meaning of not including the

government because Congress never explicitly

suggested such a meaning and such interpretation

would frustrate the AIA’s overall structure and

purpose. Allowing the government to take two

identical bites at the invalidity apple—in post-grant

30

proceedings and in the Court of Federal Claims-—

would upset the careful balance Congress struck

when it enacted the AIA. Accordingly, the term

“person” in the AIA should be construed to exclude the

government.

Respectfully submitted,

HENRY HADAD LAUREN A. DEGNAN

President Counsel of Record

JAMES TRUSSELL FISH & RICHARDSON P.C.

Chair, Amicus Brief Committee 1000 Maine Avenue S. W.

MARK W. LAUROESCH Suite 1000

Executive Director Washington, DC 20024

INTELLECTUAL PROPERTY (202) 783-5070

OWNERS ASSOCIATION degnan@fr.com

1501 M Street, N.W.

Washington, DC 20005

(202) 507-4500

Counsel for Amicus Curiae

December 17, 2018

APPENDIX

la

APPENDIX' — MEMBERS OF THE BOARD

OF DIRECTORS INTELLECTUAL PROPERTY

OWNERS ASSOCIATION

Brett Alten Karen Cochran

Hewlett Packard Shell International! B.V.

Enterprise

John D. Conway

Ron Antush Sanofi

Nokia Inc.

Buckmaster de Wolf

Estelle Bakun General Electric Co.

Exxon Mobil Corp.

Robert DeBerardine

Scott Barker Johnson & Johnson

Micron Technology, Inc.

Anthony DiBartolomeo

Edward Blocker SAP AG

Koninklijke Philips NV.

Daniel Enebo

Amelia Buharin Cargill, Ine.

Intellectual Ventures,

LLC Louis Foreman

Enventys

John J. Cheek

Tenneco Inc. Scott M. Frank

AT&T

Cara Coburn

Roche Ince. Darryl P. Frickey

Dow Chemical Co.

1. IPO procedures require approval of positions in briefs by

a two-thirds majority of directors present and voting.

Appendiz

Paik Saber James J. Trussell

Medtronic, Inc BP America, Inc

Matthew Sarboraria Mark Wadrzyk

Oracle USA Inc. Qualcomm Inc

Manny Schecter BJ Watrous

IBM Corp. Apple Inc

Jessica Sinnott Stuart L. Watt

DuPont Amgen, Inc

Thomas Smith Bryan Zielinski

GlaxoSmithKline Pfizer Inc

Todd N. Spalding

Alexion Pharmaceuticals

Daniel Staudt

Siemens Corp

Brian Suffredini

United Technologies

Corp.

Gillian Thackray

Thermo Fisher Scientific

Ine.

Joerg Thomaier

Bayer Intellectual

Property GmbH