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SUPREME COURT OF THE UNITED STATES
_________________
No. 17–1594
_________________
RETURN MAIL, INC., PETITIONER
v. UNITED
STATES POSTAL SERVICE, et al.
on writ of certiorari to the united states
court of appeals for the federal circuit
[June 10, 2019]
Justice Sotomayor delivered the opinion of the
Court.
In the Leahy-Smith America Invents Act of 2011,
35 U. S. C. §100
et seq., Congress created
the Patent Trial and Appeal Board and established three new types
of administrative proceedings before the Board that allow a
“person” other than the patent owner to challenge the validity of a
patent post-issuance. The question presented in this case is
whether a federal agency is a “person” able to seek such review
under the statute. We conclude that it is not.
I
A
The Constitution empowers Congress “[t]o
promote the Progress of Science and useful Arts, by securing for
limited Times to Authors and Inventors the exclusive Right to their
respective . . . Discoveries.” Art. I, §8, cl. 8.
Pursuant to that authority, Congress established the United States
Patent and Trademark Office (Patent Office) and tasked it with “the
granting and issuing of patents.” 35 U. S. C. §§1,
2(a)(1).
To obtain a patent, an inventor submits an
application describing the proposed patent claims to the Patent
Office. See §§111(a)(1), 112. A patent examiner then reviews the
application and prior art (the information available to the public
at the time of the application) to determine whether the claims
satisfy the statutory requirements for patent- ability, including
that the claimed invention is useful, novel, nonobvious, and
contains eligible subject matter. See §§101, 102, 103. If the
Patent Office accepts the claim and issues a patent, the patent
owner generally obtains exclusive rights to the patented invention
throughout the United States for 20 years. §§154(a)(1), (2).
After a patent issues, there are several avenues
by which its validity can be revisited. The first is through a
defense in an infringement action. Generally, one who intrudes upon
a patent without authorization “infringes the patent” and becomes
subject to civil suit in the federal district courts, where the
patent owner may demand a jury trial and seek monetary damages and
injunctive relief. §§271(a), 281–284. If, however, the Federal
Government is the alleged patent infringer, the patent owner must
sue the Government in the United States Court of Federal Claims and
may recover only “reasonable and entire compensation” for the
unauthorized use. 28 U. S. C. §1498(a).
Once sued, an accused infringer can attempt to
prove by clear and convincing evidence “that the patent never
should have issued in the first place.”
Microsoft Corp. v.
i4i L. P.,
564 U.S.
91, 96–97 (2011); see 35 U. S. C. §282(b). If a
defendant succeeds in showing that the claimed invention falls
short of one or more patentability requirements, the court may deem
the patent invalid and absolve the defendant of liability.
The Patent Office may also reconsider the
validity of issued patents. Since 1980, the Patent Act has
empowered the Patent Office “to reexamine—and perhaps cancel—a
patent claim that it had previously allowed.”
Cuozzo Speed
Technologies,
LLC v.
Lee, 579 U. S. ___, ___
(2016) (slip op., at 3). This procedure is known as ex parte
reexamination. “Any person at any time” may cite to the Patent
Office certain prior art that may “bea[r] on the patentability of
any claim of a particular patent”; and the person may additionally
request that the Patent Office reexamine the claim on that basis.
35 U. S. C. §§301(a), 302(a). If the Patent Office
concludes that the prior art raises “a substantial new question of
patentability,” the agency may reexamine the patent and, if
warranted, cancel the patent or some of its claims. §§303(a),
304–307. The Director of the Patent Office may also, on her “own
initiative,” initiate such a proceeding. §303(a).
In 1999 and 2002, Congress added an “inter
partes reexamination” procedure, which similarly invited “[a]ny
person at any time” to seek reexamination of a patent on the basis
of prior art and allowed the challenger to participate in the
administrative proceedings and any subsequent appeal. See §311(a)
(2000 ed.); §§314(a), (b) (2006 ed.);
Cuozzo Speed
Technologies, 579 U. S., at ___ (slip op., at 3).
B
In 2011, Congress overhauled the patent system
by enacting the America Invents Act (AIA), which created the Patent
Trial and Appeal Board and phased out inter partes reexamination.
See 35 U. S. C. §6; H. R. Rep. No. 112–98, pt. 1,
pp. 46–47. In its stead, the AIA tasked the Board with
overseeing three new types of post-issuance review proceedings.
First, the “inter partes review” provision
permits “a person” other than the patent owner to petition for the
review and cancellation of a patent on the grounds that the
invention lacks novelty or nonobviousness in light of “patents or
printed publications” existing at the time of the patent
application. §311.
Second, the “post-grant review” provision
permits “a person who is not the owner of a patent” to petition for
review and cancellation of a patent on any ground of pat-
entability. §321; see §§282(b)(2), (b)(3). Such proceedings must be
brought within nine months of the patent’s issuance. §321.
Third, the “covered-business-method review” (CBM
review) provision provides for changes to a patent that claims a
method for performing data processing or other operations used in
the practice or management of a financial product or service. AIA
§§18(a)(1), (d)(1), 125Stat. 329, note following 35
U. S. C. §321, p. 1442. CBM review tracks the
“standards and procedures of” post-grant review with two notable
exceptions: CBM review is not limited to the nine months following
issuance of a patent, and “[a] person” may file for CBM review only
as a defense against a charge or suit for infringement.
§18(a)(1)(B), 125Stat. 330.[
1]
The AIA’s three post-issuance review proceedings
are adjudicatory in nature. Review is conducted by a three-member
panel of the Patent Trial and Appeal Board, 35 U. S. C.
§6(c), and the patent owner and challenger may seek discovery, file
affidavits and other written memo- randa, and request an oral
hearing, see §§316, 326; AIA §18(a)(1), 125Stat. 329;
Oil States
Energy Services,
LLC v.
Greene’s Energy Group,
LLC, 584 U. S. ___, ___–___ (2018) (slip op., at 3–4).
The petitioner has the burden of proving unpatentability by a
preponderance of the evidence. §§282, 316(e), 326(e). The Board
then either confirms the patent claims or cancels some or all of
the claims. §§318(b), 328(b). Any party “dissatisfied” with the
Board’s final decision may seek judicial review in the Court of
Appeals for the Federal Circuit, §§319, 329; see
§141(c), and the Director of the Patent Office may intervene,
§143.
In sum, in the post-AIA world, a patent can be
reexamined either in federal court during a defense to an
infringement action, in an ex parte reexamination by the
Patent Office, or in the suite of three post-issuance review
proceedings before the Patent Trial and Appeal Board. The central
question in this case is whether the Federal Government can avail
itself of the three post-issuance review proceedings, including CBM
review.
C
Return Mail, Inc., owns U. S. Patent No.
6,826,548 (’548 patent), which claims a method for processing mail
that is undeliverable. Beginning in 2003, the United States Postal
Service allegedly began exploring the possibility of licensing
Return Mail’s invention for use in handling the country’s
undelivered mail. But the parties never reached an agreement.
In 2006, the Postal Service introduced an
enhanced address-change service to process undeliverable mail.
Return Mail’s representatives asserted that the new service
infringed the ’548 patent, and the company renewed its offer to
license the claimed invention to the Postal Service. In response,
the Postal Service petitioned for ex parte reexamination of
the ’548 patent. The Patent Office canceled the original claims but
issued several new ones, confirming the validity of the ’548
patent. Return Mail then sued the Postal Service in the Court of
Federal Claims, seeking compensation for the Postal Service’s
unauthorized use of its invention, as reissued by the Pat- ent
Office.
While the lawsuit was pending, the Postal
Service again petitioned the Patent Office to review the ’548
patent, this time seeking CBM review. The Patent Board instituted
review. The Board agreed with the Postal Service that Return Mail’s
patent claims subject matter that was ineligible to be patented,
and it canceled the claims underlying the ’548 patent. A divided
panel of the Court of Appeals for the Federal Circuit affirmed. See
868 F.3d 1350 (2017). As relevant here, the Federal Circuit held,
over a dissent, that the Government is a “person” eligible to
petition for CBM review.
Id., at 1366; see AIA §18(a)(1)(B),
125Stat. 330 (only a qualifying “person” may petition for CBM
review). The court then affirmed the Patent Board’s decision on the
merits, invalidating Return Mail’s patent claims.
We granted certiorari to determine whether a
federal agency is a “person” capable of petitioning for
post-issuance review under the AIA.[
2] 586 U. S. ___ (2018).
II
The AIA provides that only “a person” other
than the patent owner may file with the Office a petition to
institute a post-grant review or inter partes review of an issued
patent. 35 U. S. C. §§311(a), 321(a). The statute
likewise provides that a “person” eligible to seek CBM review may
not do so “unless the person or the person’s real party in interest
or privy has been sued for infringement.” AIA §18(a)(1)(B),
125Stat. 330. The question in this case is whether the Government
is a “person” capable of instituting the three AIA review
proceedings.
A
The patent statutes do not define the term
“person.” In
the absence of an express statutory
definition, the Court applies a “longstanding interpretive
presumption that ‘person’ does not include the sovereign,” and thus
excludes a federal agency like the Postal Service.
Vermont
Agency of Natural Resources v.
United States ex rel.
Stevens,
529 U.S.
765, 780–781 (2000); see
United States v.
Mine
Workers,
330 U.S.
258, 275 (1947);
United States v.
Cooper Corp.,
312 U.S.
600, 603–605 (1941);
United States v.
Fox,
94 U.S.
315, 321 (1877).
This presumption reflects “common usage.”
Mine Workers, 330 U. S., at 275. It is also an express
directive from Congress: The Dictionary Act has since 1947 provided
the definition of “ ‘person’ ” that courts use “[i]n
determining the meaning of any Act of Congress, unless the context
indicates otherwise.” 1 U. S. C. §1; see
Rowland
v.
California Men’s Colony,
Unit II Men’s Advisory
Council,
506 U.S.
194, 199–200 (1993). The Act provides that the word “ ‘person’
. . . include[s] corporations, companies, associations,
firms, partnerships, societies, and joint stock companies, as well
as individuals.” §1. Notably absent from the list of “person[s]” is
the Federal Government. See
Mine Workers, 330 U. S., at
275 (reasoning that Congress’ express inclusion of partnerships and
corporations in §1 implies that Congress did not intend to include
the Government). Thus, although the presumption is not a “hard and
fast rule of exclusion,”
Cooper, 312 U. S., at 604–605,
“it may be disregarded only upon some affirmative showing of
statutory intent to the contrary,”
Stevens, 529 U. S.,
at 781.
The Postal Service contends that the presumption
is strongest where interpreting the word “person” to include the
Government imposes liability on the Government, and is weakest
where (as here) interpreting “person” in that way benefits the
Government. In support of this argument, the Postal Service points
to a different interpretive canon: that Congress must unequivocally
express any waiver of sovereign immunity for that waiver to be
effective. See
FAA v.
Cooper,
566
U.S. 284, 290 (2012). That clear-statement rule inherently
applies only when a party seeks to hold the Government liable for
its actions; otherwise immunity is generally irrelevant. In the
Postal Service’s view, the presumption against treating the
Government as a statutory person works in tandem with the
clear-statement rule regarding immunity, such that both apply only
when a statute would subject the Government to liability.
Our precedents teach otherwise. In several
instances, this Court has applied the presumption against treating
the Government as a statutory person when there was no question of
immunity, and doing so would instead exclude the Federal Government
or one of its agencies from accessing a benefit or favorable
procedural device. In
Cooper, 312 U. S., at 604–605,
614, for example, the Court held that the Federal Government was
not “ ‘[a]ny person’ ” who could sue for treble damages
under §7 of the Sherman Anti-Trust Act. Accord,
International
Primate Protection League v.
Administrators of Tulane Ed.
Fund,
500 U.S.
72, 82–84 (1991) (concluding that the National Institutes of
Health was not authorized to remove an action as a “ ‘person
acting under [a federal]’ officer” pursuant to 28
U. S. C. §1442(a)(1));
Davis v.
Pringle,
268 U.S.
315, 317–318 (1925) (reasoning that “normal usages of speech”
indicated that the Government was not a “person” entitled to
priority under the Bankruptcy Act);
Fox, 94 U. S., at
321 (holding that the Federal Government was not a “ ‘person
capable by law of holding real estate,’ ” absent “an express
definition to that effect”).
Thus, although the presumption against treating
the Government as a statutory person is “ ‘particularly
applicable where it is claimed that Congress has subjected the
[sovereign] to liability to which they had not been subject
before,’ ”
Stevens, 529 U. S., at 781, it is
hardly confined to such cases. Here, too, we proceed from the
presumption that the Government is not a “person” authorized to
initiate these proceedings absent an affirmative showing to the
contrary.
B
Given the presumption that a statutory
reference to a “person” does not include the Government, the Postal
Service must show that the AIA’s context indicates otherwise.
Although the Postal Service need not cite to “an express contrary
definition,”
Rowland, 506 U. S., at 200, it must point
to some indication in the text or context of the statute that
affirmatively shows Congress intended to include the Government.
See
Cooper, 312 U. S., at 605.
The Postal Service makes three arguments for
displacing the presumption. First, the Postal Service argues that
the statutory text and context offer sufficient evidence that the
Government is a “person” with the power to petition for AIA review
proceedings. Second, the Postal Service contends that federal
agencies’ long history of participation in the patent system
suggests that Congress intended for the Government to participate
in AIA review proceedings as well. Third, the Postal Service
maintains that the statute must permit it to petition for AIA
review because §1498 subjects the Government to liability for
infringement. None delivers.
1
The Postal Service first argues that the AIA’s
reference to a “person” in the context of post-issuance review
proceedings must include the Government because other references to
persons in the patent statutes appear to do so. Indeed, it is often
true that when Congress uses a word to mean one thing in one part
of the statute, it will mean the same thing elsewhere in the
statute. See
Merrill Lynch,
Pierce,
Fenner &
Smith Inc. v.
Dabit,
547 U.S.
71, 86 (2006). This principle, however, “readily yields to
context,” especially when a statutory term is used throughout a
statute and takes on “distinct characters” in distinct statutory
provisions. See
Utility Air Regulatory Group v.
EPA,
573 U.S. 302, 320 (2014) (internal quotation marks omitted). That
is the case here. The Patent Act and the AIA refer to “person[s]”
in at least 18 different places, and there is no clear trend:
Sometimes “person” plainly includes the Government,[
3] sometimes it plainly excludes the
Government,[
4] and sometimes—as
here—it might be read either way.
Looking on the bright side, the Postal Service
and the dissent, see
post, at 2, focus on §207(a)(1), which
authorizes “[e]ach [f]ederal agency” to “apply for, obtain, and
maintain patents or other forms of protection . . . on
inventions in which the Federal Government owns a right, title, or
interest.” It follows from §207(a)(1)’s express inclusion of
federal agencies among those eligible to apply
for patents that the statute’s references to “person[s]” in the
subsections governing the patent-application process and questions
of patentability (§§102(a), 118, and 119) must also include federal
agencies.[
5] In other words,
the right described in §207(a)(1) provides a sufficient contextual
clue that the word “person”—when used in the other provisions
governing the application process §207(a)(1) makes available to
federal agencies—includes the Government.
But §207(a)(1) provides no such clue as to the
interpretation of the AIA review provisions because it implies
nothing about what a federal agency may or may not do following the
issuance of someone else’s patent. Conversely, reading the review
provisions to exclude the Govern- ment has no bearing on a federal
agency’s right to obtain a patent under §207(a)(1). An agency may
still apply for and obtain patents whether or not it may petition
for a review proceeding under the AIA seeking cancellation of a
patent it does not own. There is thus no reason to think that
“person” must mean the same thing in these two different parts of
the statute. See
Utility Air, 573 U. S., at
320.[
6]
The Postal Service cites other provisions that
may refer to the Government—namely, the “intervening rights”
provisions that offer certain protections for “any person” who is
lawfully making or using an invention when the Patent Office
modifies an existing patent claim in a way that deems the person’s
(previously lawful) use to be infringement. See §§252, 307(b),
318(c), 328(c). The Postal Service argues that the Government must
be among those protected by these provisions and from there deduces
that it must also be permitted to petition for AIA review
proceedings because the review provisions and the
intervening-rights provisions were all added to the Patent Act by
the AIA at the same time. See
Powerex Corp. v.
Reliant
Energy Services,
Inc.,
551 U.S.
224, 232 (2007) (invoking the consistent-usage canon where the
same term was used in related provisions enacted at the same
time).
But regardless of whether the intervening-rights
provisions apply to the Government (a separate interpretive
question that we have no occasion to answer here), the Postal
Service’s chain of inferences overlooks a confounding link: The
consistent-usage canon breaks down where Congress uses the same
word in a statute in multiple conflicting ways. As noted, that is
the case here. In the face of such inconsistency, the mere
existence of some Government-inclusive references cannot make the
“affirmative showing,”
Stevens, 529 U. S., at 781,
required to overcome the presumption that Congress did not intend
to include the Government among those “person[s]” eligible to
petition for AIA review proceedings.[
7]
2
The Postal Service next points to the Federal
Government’s longstanding history with the patent system. It
reminds us that federal officers have been able to apply for
patents in the name of the United States since 1883, see Act of
Mar. 3, 1883, 22Stat. 625—which, in the Postal Service’s view,
suggests that Congress intended to allow the Government access to
AIA review proceedings as well. But, as already explained, the
Government’s ability to obtain a patent under §207(a)(1) does not
speak to whether Congress meant for the Government to participate
as a third-party challenger in AIA review proceedings. As to those
proceedings, there is no longstanding practice: The AIA was enacted
just eight years ago.[
8]
More pertinently, the Postal Service and the
dissent both note that the Patent Office since 1981 has treated
federal agencies as “persons” who may cite prior art to the agency
or request an ex parte reexamination of an issued patent. See
post, at 5. Recall that §301(a) provides that “[a]ny person
at any time may cite to the Office in writing . . . prior
art . . . which that person believes to have a bearing on
the patentability of any claim of a particular patent.” As
memorialized in the Patent Office’s Manual of Patent Examining
Procedure (MPEP), the agency has understood §301’s reference to
“any person” to include “governmental entit[ies].” Dept. of
Commerce, Patent and Trademark Office, MPEP §§2203, 2212 (4th rev.
ed., July 1981).
We might take account of this “executive
interpretation”
if we were determining whether Congress meant to
include the Government as a “person” for purposes of the
ex parte reexamination procedures themselves. See,
e.g.,
United States v.
Hermanos y Compañia,
209 U.S.
337, 339 (1908). Here, however, the Patent Office’s statement
in the 1981 MPEP has no direct relevance. Even assuming that the
Government may petition for ex parte reexamination,
ex parte reexamination is a fundamentally different process
than an AIA post-issuance review proceeding.[
9] Both share the common purpose of allowing
non-patent owners to bring questions of patent validity to the
Patent Office’s attention, but they do so in meaningfully different
ways.
In an ex parte reexamination, the third
party sends information to the Patent Office that the party
believes bears on the patent’s validity, and the Patent Office
decides whether to reexamine the patent. If it decides to do so,
the reexamination process is internal; the challenger is not
permitted to participate in the Patent Office’s process. See 35
U. S. C. §§302, 303. By contrast, the AIA post-issuance
review proceedings are adversarial, adjudicatory proceedings
between the “person” who petitioned for review and the patent
owner: There is briefing, a hearing, discovery, and the
presentation of evidence, and the losing party has appeal rights.
See
supra, at 4–5. Thus, there are good reasons Congress
might have authorized the Government to initiate a hands-off
ex parte reexamination but not to become a party to a
full-blown adversarial proceeding before the Patent Office and any
subsequent
appeal. After all, the Government is already in
a unique position among alleged infringers given that 28
U. S. C. §1498 limits patent owners to bench trials
before the Court of Federal Claims and monetary damages, whereas 35
U. S. C. §271 permits patent owners to demand jury trials
in the federal district courts and seek other types of relief.
Thus, there is nothing to suggest that Congress
had the 1981 MPEP statement in mind when it enacted the AIA. It is
true that this Court has often said, “[w]hen administrative and
judicial interpretations have settled the meaning of an existing
statutory provision, repetition of the same language in a new
statute indicates, as a general matter, the intent to incorporate
its administrative and judicial interpretations as well.”
Bragdon v.
Abbott,
524 U.S.
624, 645 (1998). But there is no “settled” meaning of the term
“person” with respect to the newly established AIA review
proceedings. Accordingly, the MPEP does not justify putting aside
the presumptive meaning of “person” here.
3
Finally, the Postal Service argues that it
must be a “person” who may petition for AIA review proceedings
because, like other potential infringers, it is subject to civil
liability and can assert a defense of patent invalidity. See
§§282(b)(2)–(3). In the Postal Service’s view, it is anomalous to
deny it a benefit afforded to other infringers—the ability to
challenge a patent
de novo before the Patent Office,
rather than only as an infringement defense that must be proved by
clear and convincing evidence. See
ibid.;
Microsoft
Corp., 564 U. S., at 95 (holding that §282’s presumption
of validity in litigation imposes a clear and convincing evidence
standard on defendants seeking to prove invalidity).
The Postal Service overstates the asymmetry.
Agencies retain the ability under §282 to assert defenses to
infringement. Once sued, an agency may, like any other accused
infringer, argue that the patent is invalid, and the agency faces
the same burden of proof as a defendant in any other infringement
suit. The Postal Service lacks only the additional tool of
petitioning for the initiation of an administrative proceeding
before the Patent Office under the AIA, a process separate from
defending an infringement suit.
We see no oddity, however, in Congress’
affording nongovernmental actors an expedient route that the
Government does not also enjoy for heading off potential
infringement suits. Those other actors face greater and more
uncertain risks if they misjudge their right to use technology that
is subject to potentially invalid patents. Most notably, §1498
restricts a patent owner who sues the Government to her “reasonable
and entire compensation” for the Government’s infringing use; she
cannot seek an injunction, demand a jury trial, or ask for punitive
damages, all of which are available in infringement suits against
nongovernmental actors under §271(e)(4). Thus, although federal
agencies remain subject to damages for impermissible uses, they do
not face the threat of preliminary injunctive relief that could
suddenly halt their use of a patented invention, and they enjoy a
degree of certainty about the extent of their potential liability
that ordinary accused infringers do not. Because federal agencies
face lower risks, it is reasonable for Congress to have treated
them differently.[
10]
Finally, excluding federal agencies from the AIA
review proceedings avoids the awkward situation that might result
from forcing a civilian patent owner (such as Return Mail) to
defend the patentability of her invention in an adversarial,
adjudicatory proceeding initiated by one federal agency (such as
the Postal Service) and overseen by a different federal agency (the
Patent Office). We are therefore unpersuaded that the Government’s
exclusion from the AIA review proceedings is sufficiently anomalous
to overcome the presumption that the Government is not a “person”
under the Act.[
11]
III
For the foregoing reasons, we hold that a
federal agency is not a “person” who may petition for post-issuance
re-
view under the AIA. The judgment of the United
States Court of Appeals for the Federal Circuit is therefore
reversed, and the case is remanded for further proceedings
consistent with this opinion.
It is so ordered.