SCOTUS hears arguments in US Postal Service case
The US Supreme Court yesterday heard oral arguments in Return Mail v US Postal Service, in which it will consider whether the government is a ‘person’ with the power to institute review proceedings under the America Invents Act (AIA).
Karen Sebaski, counsel at law firm Holwell Shuster & Goldberg in New York, told WIPR that the court had “signalled that it might be time to revisit the relative strength of the default rule of statutory interpretation that ‘person’ does not include the government”.
Much of the court’s questioning focused on Congress’s intention with respect to the law. Justice Stephen Breyer asked why Congress would not want a government agency to be able to use “this fairly efficient method to get rid of what they see as an invalid patent that blocks their way”.
One of the more “interesting” elements of the discussion, according to Scott Simmonds, partner at Barnes & Thornburg, focused on the notion of one executive branch entity asking another to initiate proceedings.
Return Mail argued that government already had “powerful tools” to challenge patents, namely the US Patent and Trademark Office’s (USPTO) ability to initiate ex parte reexamination.
When asked where the Postal Service gets the power to initiate such proceedings, Return Mail suggested that this could be done through a request to the director of the USPTO.
This argument was met with scepticism by some of the judges. Justice Samuel Alito asked whether Congress would “want a federal agency to be able to initiate one of these AIA proceedings in the open, in accordance with the law, or do we want to allow them to pick up the phone to the PTO?”.
Justice Brett Kavanaugh, however, took a different position, expressing concern over a situation in which “you have [government] agency versus agency in federal court”.
“Why should we go down that road when there's ex parte reexamination process available?”, Kavanaugh asked.
One recurring point made by the court was the question of whether Congress had ever even considered the issue of whether the government could be a “person”.
Justice Elena Kagan said: “does anybody really think Congress thinks about this as a default rule and legislates against it? And if not, shouldn’t we just do what strikes us as the thing Congress would have wanted done with respect to any particular statute?”
Simmonds told WIPR that this scepticism seemed to drive the analysis toward assuming that Congress had not affirmatively considered the issue at all.
Sebaski said: “Several justices expressed doubt that, as a practical matter, Congress legislates with this default rule in mind and signalled a desire to focus on the real-world implications of alternative constructions”.
She added: “Against that backdrop, the court’s decision is likely to focus on why Congress would have wanted to treat the government differently from private parties in the context of AIA review proceedings and the practical effects of excluding government agencies from participating in such proceedings”.
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