Return Mail v. USPS: A Federal Agency Is Not a 'Person' at the PTAB

Return Mail, Inc. v. United States Postal Service, 587 U.S. 618, 139 S. Ct. 1853 (2019), decided June 10, 2019, answers a deceptively simple question with an unusually clean statutory-interpretation lesson: is a federal agency a “person” that may petition for administrative review of a patent under the America Invents Act? In a 6-3 opinion by Justice Sotomayor, the Supreme Court said no. Because the AIA opens its post-issuance review proceedings only to a “person” other than the patent owner, and because a longstanding presumption holds that the word “person” excludes the sovereign, the United States Postal Service could not use inter partes review, post-grant review, or covered business method review to attack a patent it was accused of infringing.

The decision is a favorite teaching vehicle because it isolates a single word and works through the interpretive tools that decide its meaning. It also carries a practical punch: it fixes the outer boundary of who may invoke the Patent Trial and Appeal Board at all.

At a glance

• Case: Return Mail, Inc. v. United States Postal Service, 587 U.S. 618, 139 S. Ct. 1853 (2019)
• Decided: June 10, 2019, United States Supreme Court, 6-3, opinion by Justice Sotomayor; Justice Breyer dissenting, joined by Justices Ginsburg and Kagan
• Holding: A federal agency is not a “person” capable of petitioning for AIA post-issuance review, because the presumption that “person” excludes the sovereign was not overcome.
• Significance: Sets a threshold standing rule for the PTAB and models the sovereign-exclusion canon of statutory interpretation.

The setup

Return Mail, Inc. owned a patent claiming a method for processing undeliverable mail. The Postal Service later introduced an enhanced address-change service to handle undeliverable mail, and Return Mail asserted that the service infringed its patent. When the parties could not resolve the dispute, Return Mail sued the Postal Service in the Court of Federal Claims under 28 U.S.C. Section 1498, the statute that channels patent claims against the United States. While that suit was pending, the Postal Service went on the offensive at the agency, petitioning for covered business method review of the patent under the AIA’s transitional CBM program. The Board instituted review and ultimately found the claims patent-ineligible, and the Federal Circuit affirmed.

Return Mail’s challenge cut deeper than the merits. It argued that the Postal Service was never eligible to file the CBM petition in the first place, because a federal agency is not a “person” as the AIA uses that term. The Supreme Court granted certiorari to resolve that threshold question.

The statutory text and the canon

The AIA’s review provisions all speak of a “person.” Section 311(a) allows “a person who is not the owner of a patent” to file for inter partes review, Section 321(a) uses parallel language for post-grant review, and the CBM program borrowed the same framing. The Patent Act does not define “person,” and that silence is where the case turned.

Justice Sotomayor invoked a settled interpretive presumption: absent an affirmative showing of statutory intent to the contrary, the word “person” does not include the sovereign. That presumption reflects ordinary usage and is reinforced by the Dictionary Act, 1 U.S.C. Section 1, which supplies default definitions for federal statutes and, in the Court’s reading, does not sweep federal agencies into the category of persons. The presumption is not irrebuttable; Congress can make the government a “person” when it wants to. But the burden rests on the party seeking to include the sovereign, and here the Postal Service had to show that the AIA overcame the default. It could not.

Rejecting the Postal Service’s theories

The Postal Service offered several arguments that the AIA context rebutted the presumption, and the Court addressed them in turn. It pointed to other provisions of the Patent Act that use “person” in ways that seem to include the government, such as provisions allowing federal agencies to obtain patents, arguing that the term should carry a consistent, government-inclusive meaning throughout the statute. The Court found the cited provisions too varied and context-dependent to establish a uniform usage strong enough to displace the presumption. The government also argued that it made little sense to let federal agencies be sued for infringement yet deny them the same efficient administrative tools that private defendants enjoy. The Court answered that the asymmetry was neither absurd nor unprecedented. Federal agencies face patent infringement exposure under Section 1498 in a distinctive forum with distinctive remedies, and Congress could rationally give private parties, but not the government, access to the AIA’s adversarial review proceedings. The Court also pointed to the awkward situation that inclusion would create: a civilian patent owner forced to defend the patentability of her invention in an adversarial, adjudicatory proceeding initiated by one federal agency and overseen by a different federal agency.

Justice Breyer, joined by Justices Ginsburg and Kagan, dissented. He read the surrounding patent provisions as strong evidence that Congress used “person” to include the federal government, and he saw no good reason to bar agencies from a streamlined review mechanism open to everyone else they might be litigating against. The majority’s careful marshaling of the presumption prevailed.

Open questions

Return Mail drew a bright line, but it left neighboring questions for later. The decision does not address whether state entities, which sometimes claim sovereign immunity but are not the federal sovereign, are “persons” for AIA purposes, an issue that intersects with the Eleventh Amendment questions the Federal Circuit has confronted separately. It also leaves open how the sovereign-exclusion presumption applies to hybrid or quasi-governmental entities and to government contractors acting on the government’s behalf. And because the covered business method program has since sunset, the practical footprint of the ruling now falls on inter partes and post-grant review, where the same exclusion applies but the volume of potential government petitioners is uncertain. The broader interpretive lesson, that “person” presumptively excludes the sovereign, will keep surfacing in unrelated statutes.

Implications for inventors and businesses

• The government cannot come at your patent through the PTAB. If a federal agency is accused of infringing your patent, it cannot retaliate with an IPR, PGR, or CBM petition, which removes one avenue of administrative attack a private defendant would have.
• Suits against the government run through Section 1498. Patent owners asserting rights against the United States should plan for the Court of Federal Claims and its remedial limits, where the government defends on invalidity rather than by petitioning the Board.
• Statutory silence is not neutral. Return Mail is a reminder that when a statute uses “person” without defining it, courts start from the premise that the sovereign is excluded, which matters whenever a party tries to fit the government into a private-party framework.
• Watch the entity’s exact status. The holding turns on federal-sovereign status, so parties dealing with state universities, quasi-public bodies, or contractors should not assume the same exclusion applies without separate analysis.

Frequently asked questions

What did Return Mail v. USPS hold? The Supreme Court held 6-3 that a federal agency is not a “person” within the meaning of the America Invents Act, so the United States Postal Service could not petition for inter partes review, post-grant review, or covered business method review of a patent. Federal agencies are therefore excluded from the AIA’s administrative validity proceedings.

Why does the word ‘person’ matter so much? The AIA authorizes only a “person” who is not the patent owner to file for post-issuance review. The Court applied a longstanding interpretive presumption, reinforced by the Dictionary Act, that a statutory “person” does not include the sovereign unless Congress says otherwise. Because nothing in the AIA overcame that presumption, the government fell outside the class of eligible petitioners.

Can a federal agency still challenge a patent it is accused of infringing? Yes, but through a different route. Patent infringement claims against the United States are brought under 28 U.S.C. Section 1498 in the Court of Federal Claims, where the government can raise invalidity as a defense. Return Mail only closed the door to the AIA’s administrative review proceedings, not to defending an infringement suit.

Authorities and sources

• Return Mail, Inc. v. United States Postal Service, 587 U.S. 618 (2019) (slip opinion, supremecourt.gov)
• 35 U.S.C. Section 311, Inter partes review (“a person who is not the owner of a patent”) (Cornell LII)
• Cornell LII, “Return Mail, Inc. v. Postal Service” full text
• Dennis Crouch, “Return Mail: Government is Not a ‘Person’” (Patently-O)
• Venable LLP, “Supreme Court Holds That Federal Agencies Cannot Petition for Post-Issuance Review of Patents under the AIA”
• 28 U.S.C. Section 1498, Patent and copyright cases against the United States (Cornell LII)