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Return Mail, Inc. v. United States Postal Service, et al.

Paid petition · United States Court of Appeals for the Federal Circuit, No. 2016-1502 · judgment August 28, 2017

Decided · June 10, 2019
Pre-decision estimate: 1% cert probability

Before the decision, well below the 4.1% base rate, with no standout signals pointing toward a grant.

Questions presented

The government cannot be sued for patent infringement under the Patent Act, 35 U.S.C. §§ 1 et seq., because it can take "a license to use the inventio[n]" by "exert[ing] the power of eminent domain." Crozier v. Fried. Krupp Aktiengesellschaft, 224 U.S. 290, 305 (1912). Thus, a patent owner's exclusive remedy for governmental use is to pursue a compensation action under 28 U.S.C. § 1498(a) at the U.S. Court of Federal Claims. In 2011, Congress enacted the Leahy-Smith America Invents Act (AIA), which allows a "person" who has been sued for patent "infringement" to challenge the patent's validity through a covered business method (CBM) review before the Patent Trial and Appeal Board. Respondent, the U.S. Postal Service, petitioned for CBM review of Petitioner's patent after Petitioner filed suit under§ 1498(a). The Board instituted the review, concluding that it has authority to adjudicate proceedings initiated by the government, and later issued a final decision invaliding Petitioner's patent. The Federal Circuit affirmed, over a dissenting opinion. The questions presented are:

  1. Whether the government is a "person" who may petition to institute review proceedings under the AIA.

  2. Whether a§ 1498(a) action for the eminent domain taking of a patent license by the government is a suit for patent "infringement" under the AIA. LIMITED TO QUESTION 1 PRESENTED BY THE PETITION.

Counsel of record

For petitioner
Richard L. Rainey
Covington and Burling LLP

For respondent
Noel John Francisco
Jones Day

Case

Conference history
Distributed for 2 conferences

Amicus briefs
2 cert-stage · 9 merits
(7 supporting pet./neither, 2 respondent)

Argument & decision

Argued February 19, 2019 — Beth S. Brinkmann · Malcolm L. Stewart. Audio and transcript

Decided June 10, 2019. Opinion by Sotomayor.

Proceedings

  1. Jul 12 2019
    JUDGMENT ISSUED.
  2. Jun 10 2019
    Judgment REVERSED and case REMANDED. Sotomayor, J., delivered the opinion of the Court, in which Roberts, C. J., and Thomas, Alito, Gorsuch, and Kavanaugh, JJ., joined. Breyer, J., filed a dissenting opinion, in which Ginsburg and Kagan, JJ., joined.
  3. Feb 19 2019
    Motion for leave to file amicus brief filed by Electronic Frontier Foundation GRANTED.
  4. Feb 19 2019
    Argued. For petitioner: Beth S. Brinkmann, Washington, D. C. For respondents: Malcolm L. Stewart, Deputy Solicitor General, Department of Justice, Washington, D. C.
  5. Feb 08 2019
    Reply of petitioner Return Mail, Inc. filed. (Distributed)
  6. Jan 23 2019
    RESCHEDULED FOR ARGUMENT ON Tuesday, February 19, 2019.
  7. Jan 23 2019
    Record from the U.S.C.A. Federal Circuit is electronic and located on PACER. The record is complete.
  8. Jan 16 2019
    Brief amicus curiae of Professor Tejas N. Narechania filed. (Distributed)
  9. Jan 16 2019
    Motion for leave to file amicus brief filed by Electronic Frontier Foundation.
  10. Jan 15 2019
    CIRCULATED
  11. Jan 15 2019
    Brief amicus curiae of R Street Institute filed. (Distributed)
  12. Jan 15 2019
    Record from the U.S. Patent and Trademark Office is located on the U.S. Patent and Trademark Office web site. Instructions to access the record is electronic. The record is complete.
  13. Jan 11 2019
    Record requested from the U.S.C.A. Federal Circuit.
  14. Jan 09 2019
    Brief of respondents United States Postal Service, et al. filed.
  15. Dec 21 2018
    SET FOR ARGUMENT on Wednesday, February 20, 2019.
  16. Dec 17 2018
    Brief amicus curiae of Pharmaceutical Research and Manufacturers of America filed.
  17. Dec 17 2018
    Brief amici curiae of The Cato Institute and Professor Gregory Dolin filed.
  18. Dec 17 2018
    Brief amicus curiae of Intellectual Property Owners Association in support of neither party filed.
  19. Dec 17 2018
    Brief amicus curiae of New York Intellectual Property Law Association in support of neither party filed.
  20. Dec 17 2018
    Brief amicus curiae of American Intellectual Property Law Association in support of neither party filed.
  21. Dec 17 2018
    Brief amici curiae of Seven Law Professors filed.
  22. Dec 17 2018
    Brief amicus curiae of Chamber of Commerce of the United States of America filed.
  23. Dec 10 2018
    Motion to dispense with printing the joint appendix filed by petitioner GRANTED.
  24. Dec 10 2018
    Brief of petitioner Return Mail, Inc. filed.
  25. Nov 26 2018
    Motion to dispense with printing the joint appendix filed by petitioner Return Mail, Inc.
  26. Oct 26 2018
    Petition GRANTED limited to Question 1 presented by the petition.
  27. Oct 22 2018
    DISTRIBUTED for Conference of 10/26/2018.
  28. Sep 26 2018
    DISTRIBUTED for Conference of 10/12/2018.
  29. Sep 21 2018
    Reply of petitioner Return Mail, Inc. filed.
  30. Sep 07 2018
    Brief of respondents United States Postal Service, et al. in opposition filed.
  31. Aug 13 2018
    Motion to extend the time to file a response from August 24, 2018 to September 7, 2018, submitted to The Clerk.
  32. Aug 13 2018
    Motion to extend the time to file a response is granted and the time is further extended to and including September 7, 2018.
  33. Jul 18 2018
    Motion to extend the time to file a response is granted and the time is further extended to and including August 24, 2018.
  34. Jul 17 2018
    Motion to extend the time to file a response from July 25, 2018 to August 24, 2018, submitted to The Clerk.
  35. Jun 25 2018
    Brief amicus curiae of Kenneth O. Simon filed.
  36. Jun 25 2018
    Brief amici curiae of 15 Law Professors filed.
  37. Jun 22 2018
    Motion to extend the time to file a response from June 25, 2018 to July 25, 2018, submitted to The Clerk.
  38. Jun 22 2018
    Motion to extend the time to file a response is granted and the time is extended to and including July 25, 2018.
  39. Jun 12 2018
    Blanket Consent filed by Petitioner, Return Mail, Inc..
  40. May 14 2018
    Petition for a writ of certiorari filed. (Response due June 25, 2018)
  41. Feb 28 2018
    Application (17A879) granted by The Chief Justice extending the time to file until May 14, 2018.
  42. Feb 16 2018
    Application (17A879) to extend the time to file a petition for a writ of certiorari from March 15, 2018 to May 14, 2018, submitted to The Chief Justice.
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