# United States **Court of A**  **p peals**  **for the Federal Circuit**

______________________ RETURN MAIL, INC., Appellant

v.

UNITED STATES POSTAL SERVICE, UNITED STATES, Appellees

______________________

2016

- 1502

______________________ Appeal from the United States Patent and Trad e mark Office, Patent Trial and Appeal Board in No. CBM2014

- 00116.

______________________

Decided: August 28, 2017

______________________

R ICHARD L. R AINEY , Covington & Burling LLP, Was hington, DC, argued for appellant. Also repr e sented by M ICHAEL S. S AWYER ; E RIC M ICHAEL A DAMS , D OUGLAS H. E LLIOTT , The Elliott Law Firm, PLLC, Bellaire, TX; L EE L ANDA K APLAN , J EFFREY P OTTS , Smyser, Kaplan & Ves e lka, LLP, Hou ston, TX.

D AVID A LLEN F OLEY , J R ., Commercial Litigation Branch, Civil Division, United States Department of Justice, Washington, DC, argued for appellees. Also represented by B ENJAMIN C. M IZER , J OHN F ARGO

.RETURN MAIL , INC

. v. USPS 2

______________________

Before P ROST , Chief Judge, N EWMAN and W ALLACH , Circuit Judges.
Opinion for the court filed by Chief Judge P ROST

. Dissenting opinion filed by Circuit Judge N EWMAN

. P ROST , Chief Judge

. Patent assignee Return Mail, Inc. (“Return Mail”) a ppeals from the final written decision of the U.S. Patent and Trademark Office’s (“PTO”) Patent Trial and Appeal Board (“Board”) in a review of a covered busi ness method (“CBM”) patent . The Board held that the U.S. Postal Service and the United States (collectively, “the Postal Service ”) were not statutorily barred from filing the underlying petition for review

. O n the merits, the Board determined that all of the challenged patent claims were directed to i neligible subject matter under 35 U.S.C. § 101. We affirm.

I. B ACKGROUND

A
In 2011, Congress enacted the Leahy

- Smith Amer i ca Invents Act (“AIA”), Pub. L. No. 112

- 29, 125 Stat. 284

, which created several new quasi

- adjudicatory proceedings before the PTO for determining the p a tentability of issued patent claims

. These proceedings include inter partes review (“IPR”), post

- grant review (“PGR”) , and review of CBM patents (“CBM review”)

. See 35 U.S.C. §§ 311

– 319 (IPR); id. §§ 321

– 329 (PGR); AIA § 18, Pub. L. No. 112

- 29, 125 Stat. 284, 329

– 31 (2011) (CBM review).

Th is appeal arises from a CBM review , which u n like IPR or PGR , is limited to CBM pa tents

— i.e., p a tents “that claim[] a method or corresponding apparatus for perfor ming data processing or other operations used in the pra ctice, administration, or management of a financialRETURN MAIL , INC

. v. USPS 3

product or service, ” with the exception of “technological inventions.” AIA § 18(d)(1). CBM review is also a “trans itional” pr o gram, currently scheduled to sunset in Se ptember 2020. AIA § 18(a)(3). It is governed by AIA § 18 and, with certain exceptions, “employ [s] the standards and procedures of [] a [PGR] under [ 35 U.S.C. §§ 321

– 329 ]. ” AIA § 18(a)(1). 1 CBM review proceeds in two stages. In the first stage, the PTO Director m akes a threshold de termin a tion of whether to institute the proceeding , which requires a determination that “it is more likely than not that at least 1 of the claims challenged in the pet i tion is unpatentable” or that “the petition raises a novel or unsettled legal question t hat is important to other patents or patent applications. ” 35 U.S.C. § 324 (a) , (b)

. This task has been delegated to the Board by regulation. 37 C.F.R. §§ 42.4(a), 42.300(a). If review is instituted, the parties then proceed to the second stage, which i nvolves disco very , the submi s sion of additional information, and the opportunity for an oral hearing. See, e.g.

, 35 U.S.C. § 326 (a)(3), (5), (8), (10) , (12)

. Absent dismissal , the proceeding cu l minates with the Board’s issuance of a “final written decision” regarding the patentability of “ any patent claim challenged by the petitioner ,” as well as of

“ any new claim added ” during the proceeding. Id. § 328(a). T he Board must issue its final written decision within one year after th e institution of CBM review

, except in narrow circumstances

. Id. § 326(a)(11). Ult imat e ly, Congress intended CBM review, like the pr ograms for IPR and PGR , “to provide [a] ‘quick and cost effe c tive alter native[] ’ to litigation in the courts.” PPC

1 AIA § 18 has not been codified in the U.S. Code and can be found at 125 Stat. at 329

– 31. For simplic i ty, we cite directly to portions of the U.S. Code that AIA § 18 employs.RETURN MAIL , INC

. v. USPS 4

Broadband, Inc. v. Corning Optical Commc’ns RF, LLC

, 815 F.3d 734, 741 (Fed. Cir. 2016) (quoting H.R. Rep. No. 112

- 98, pt. 1, at 48 (2011)

, reprinted in 2011 U.S.C.C

. A.N. 67, 78 ).

B

Return Mail owns U.S. Patent No. 6,826,548 (“’548 patent”), which is the subject of the und erlying CBM review as well as related litigation in the U.S. Court of Federal Claims (“Claims Court”). The ’548 patent is directed to the processing of mail items that are und e li verable due to an inaccurate or obsolete address for the in tended recipient. ’548 patent col. 1 ll. 20

– 24. The patent underwent ex parte reexamination, resul t ing in the cancellation of all original claims and the issuance of

new claim s 39

– 63 in January 2011

. 2 Ex Parte Reexam ination Certificate 6,826,548 C1

. According to its specification , “[t]he processing of mail that is returned to sender historically has been a time

consuming labor

- intensive process for high vo l ume mail users.” ’548 patent col. 1 ll. 39

– 42. For i n stance, “ [e] ven with the availability of address updating services to aid in researching for the correct address, ” the process of ha ndling returned mail “ [wa]s substantially a manual one subject to human error and delays.” Id. at col. 1 ll. 39

– 51.

The claim ed invention of the ’ 548 patent purporte d ly “overcomes the historical problems with prior art manual handling” and “does so quickly, more acc u rately, and at substantially less cost. ” Id. at col. 1 ll. 55

– 59. It teaches encoding useful information, such as the name and a ddress of intend ed recipient s , on mail items in the form of a
two

- dimensional bar code. Id. at col. 2 ll. 4 –5, col. 2 l. 66

– col. 3 l. 15. Undeliver a ble mail items are returned to a

2 R eferences to the ’548 patent throughout this opinion include the Ex Parte Reexamination Certif i cate.RETURN MAIL , INC

. v. USPS 5

processing location , where the barcodes are scanned

. Id. at col. 2 ll. 14

– 20, col. 3 ll. 15

– 51. The scanned info rmation is then pr o cessed

, such as by obtaining corr esponding updated address data from a computer or database, and the updated information is then electron ically provided to the sender to be used as the sender deems appropr i ate

. Id. at col. 2 ll. 19

– 27

, col. 3 l. 52

– col. 4 l. 33

. In other words, the claimed invention allows returned mail to be processed “virtually entirely automat ically through the exchange of data files between

compu t ers.” Id. at col. 6 ll. 61

– 64.

C
In February 2011, after trying unsuccessfully to l icense the ’548 patent to the Postal Service, Return Mail filed suit in the Claims Court against the United States

. It alleged under 28 U.S.C. § 1498(a) that the United States , through the Postal Service ’s actions, h ad “e ngage[d] in the unlicensed and unlawful use and infring ement of the invention claimed in the ’548 patent .” 3 J.A. 3302. Return Mail sought relief in the form of “reason able and entire compensa tion.” J.A. 3297.
In April 2014, the Postal Service filed a petition with the PTO for CBM review of claims 39

– 44 ( the “ challenged claims ”) of the reexamined ’548 pa tent

. It raised several grounds for unpatentability , including patent

- ineligible subject matter under § 101, anticip a tion under § 102, and

3 If “an invention described in and covered by a p atent 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

own er may obtain a remedy by filing an “ action against the United States in the [Claims Court] .

. . for the reco very of his reasonable and e n tire compensation for such use and manufacture. ” 28 U.S.C. § 1498(a).RETURN MAIL , INC

. v. USPS 6

obviousness under § 103.
In response, Return Mail not only raised patent a bility arguments but also contested the Postal Se r vice’ s ability under the AIA to peti tion for CBM review

. T he Board held that the Postal Service had statutory “standing” and instit uted re view of all of the challenged claims under § 101 for in eligible subject matter

. 4 I n its final written decision, the Board later reiterated its standing determ ination and held that the challenged claims were drawn to ineligible subject matter under § 101. 5

Re turn Mail timely appealed. Section 329 of the AIA authorizes a party dissatisfied with the Board’s final written decision to appeal to this court under 35 U.S.C. § 141(c). We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).

II. D ISCUSSION On appeal, Return Mail argues that we should v a cate the Board ’s decision because the Postal Service failed to

me e t the statutory standing requirement to petition for CBM review

. It also argues in the alte r native that we should reverse the Board’s decision that the ’548 patent claims 42

– 44 are directed to § 101 ineligible subject

4 As explained below, the concept of judicial stan ding is distinct from that of whether a party is properly before an agency. W e will refer to AIA § 18(a)(1)(B) as a “standing” provision in the sense that it sets forth a statutory prerequisite for a party to petition the PTO for CBM review.

5 The Board also instit uted CBM review und er § 102 but held in the final written decision that the cha llenged claims were not anticipated . Anticipation is not at issue in this appeal.RETURN MAIL , INC

. v. USPS 7

matter. 6 Return Mail does not cha l lenge any other a spects of the CBM review procee d ing.

A

T he “starting point” for determining whether a part y is properly before an agency is “the statut e that confers standing before that agency .” Ritchie v. Simpson , 170 F.3d 1092, 1095 (Fed. Cir. 1999). Be cause the PTO is an administrative agency, the Article III standing requir ement for a “case or controversy” does not apply to matters before it. Id. at 1094; see also Koniag, Inc. v. Andrus , 580 F.2d 601, 612 (D.C. Cir. 1978) (“Congress, in its discr etion, can require that any person be admitted to admini strative pr o ceedings, whether or not that person .

. . has satisfied the .

. . constitutional standing requirements

reco g nized by the Supreme Court.”). Relevant to CBM review , AIA § 18 (a)(1)(B) provides that “[a] person may not file a petition for [CBM review] unless the person or the per son’ s real party in interest or privy has been sued for infringement of the patent or has been charged with infringement under that patent. ” (Emphase s added).
Here, the Board in its institution decision held that the Postal Service had standing because it had been sued for infringement within the meaning of AIA § 18 . The Board reasoned that Return Mail filed its § 1498(a) action to hold the Postal Service “ liable for its use or manu fa cture of a patented invention wit h out license or lawful right

, which falls within the def i nition of patent infring ement. ” J.A. 50. It further held that the PTO , through regulation regarding the meaning of “charged with i nfringement ,” has made it “ clear that it is the ability to

6 Return Mail does “not directly appeal[]” the Board’s determination that claims 39

– 41 of the ’548 patent are also directed to § 101 patent

- ineligible su b ject matter. Appellant’s Opening Br. 48 n.3.RETURN MAIL , INC

. v. USPS 8

seek relief in Federal court that is important to the stan ding inquiry.” 7 J.A. 51.

After the Board instituted the underlying procee d ing

, Return Mail contin ued to submit that the Postal Service lacked standing to seek CBM review

. T he Board again rejected that contention and “ incorp o rate[d]” i ts pr evious standing analysis into the final written decision

. J.A. 12.

1
As a threshold matter, we first consider whether we have authority to review the Board’s determin ation that the Postal Service had standing to petition for CBM review , a question that we have never prev i ously a nswered

. The AIA authorizes appeals from the Board’s final written decision in a CBM review pr o ceeding . 35 U.S.C. § 329. But the statute also in cludes a “No Appeal” provision

, 35 U.S.C. § 324(e), stat ing that “ [t]he de term ination by the Director whether to insti tute

. . . review under this section ” is “ final and nonapp ealable.” (E mph asis added)

. The Postal Service argues that § 324(e) bars this court from revisiting whether “the Board erred in institu t ing th e proceeding in the first place, ” based in part on the determination that the Postal Service had § 18(a)(1)(B) standing. Appel lees’ Br. 17

. As the Supreme Court recently reiterated, there is a “‘strong presumption’ in favor of judicial review ” when interpr eting “statutes that may limit or pr e clude review.” Cuozzo Speed Techs., LLC v. Lee , 136 S. Ct. 2131, 2140 (2016) (quoting Mach Mining, LLC v. EEOC , 135 S. Ct.

7 The relevant regulation provides that “[c]harged with infringement means a real and substantial co n tr oversy regarding infringement of a [CBM] patent exists such that the petitioner would have standing to bring a declaratory judgment action in Federal court.” 37 C.F.R. § 42.302(a).RETURN MAIL , INC

. v. USPS 9

1645, 1650

– 51 (2015)). As the party “seeking to overcome this strong presumption,” the Postal Service “faces a ‘heavy burden’”

— it must demonstrate a contrary legisl ative intent “by ‘clear and convincing’ evidence.” Versata Dev. Grp. v. SAP Am., Inc. , 793 F.3d 1306, 1320 (Fed. Cir. 2015) (quo t ing Bowen v. Mich. Acad. of Family Phys icians , 476 U.S. 667, 671

– 72 (1986)). To the extent any “doubt about congressional intent exists, the general

pr e sumption favoring judicial review of rights

- changing administrative action is controll ing.” Id.

E ven though the Board initially determined in its i nstitution decision that the Postal Service had stan d ing, that fact alone does not preclude judicial review

. T he AIA draw s a “clear and common

- sense distin c tion” between a final written decisio n by the Board and an earlier decision whether to institute CBM review. GTNX, Inc. v. INTTRA, Inc. , 789 F.3d 1309, 1312 (Fed. Cir. 2015). But not all issues fall neatly into that dichotomy . S ome issues are not necessarily confined to one stage of CBM review or the other, and the Board may later decide , as it did here, to revisit a determination previous ly made at the instit ution phase. We have held that t he availability of judicial review does not hinge on such “timing” or “[o]verlap” of issues. Versat a , 79 3 F.3d at 1319. Thus , even if § 18(a)(1)(B) standing is best ad dressed at the instit u tion stage so as to avoid unneces sary proceedings, that the Board first decided it at the institution stage in this case is not enough, by itself, to bar judicial r e view.

The Postal Service submits that the Supreme Court’s decision in Cuozzo and this court’s decision in Achates Reference Publishing, Inc. v. Apple Inc. , 803 F.3d 652 (Fed. Cir. 2015)

, 8 confirm that the Board’s determination

8 The en banc court is currently considering the continued viability of Achates in Wi

- Fi One, LLC v. Broadcom Corp. , 2015

- 1944,

- 1945,

- 1946.RETURN MAIL , INC

. v. USPS 10

that the Postal Service had s tanding to petition for CBM review is no t reviewable. Both cases interpreted the scope of 35 U.S.C. § 314(d), an anal og ous no

- appeal provision for the IPR program

. Be cause the pertinent language of § 314(d) is identical to that of § 324(e), case law interpre ting the scope of § 314(d) bears on the scope of § 324(e). See CBOCS W

. , Inc. v. Humphries , 553 U.S. 442, 457 (2008) (“[C]onsiderations of stare decisis strongly support our adherence to [precedent] and the long line of r e lated cases where we inte rpret [related statutory pr o visions] similarly.”). Nevertheless, we conclude that Cuozzo and Achates are distinguishable and do not dictate the avail ability of judicial review in this case

. In Cuozzo , the Supreme Court interpreted § 314(d) to bar judicial review of determination s under 35 U.S.C. § 314(a) regarding the “ reasonable likelihood ” of success of an IPR petition, as well as challenges grounded “in a statute closely related to that decision to institute [IPR].” 136 S. Ct. at 2142 (internal quot a tion marks omitted). The Court held that the dispute at issue

— whether the petitioner met a statutory r e quirement to set forth grounds for an IPR petition with particularity

— was barred by § 314(d) from jud i cial review because it merely

amou nted to an “ordi nary dispute” about the PTO’s dec ision to institute and was grounded in “a statute closely related to th[e] decision to insti tute .” Id. at 2139, 2142. Here, i n co n trast, whether a party is statutorily allowed
to petition for CBM review do es not amount to “little more than a challenge to the [PTO ’s ] conclusion” about the pet i tion’s likelihood of success on the merits. 9 Id. at 2142

.

9 As noted above, a CBM petition must show that, if unrebutted, it is “more likely than not” that the petitioner would prevail. 35 U.S.C. § 324(a). That the threshold for instituting an IPR is, instead, “reason a ble likelihood” ofRETURN MAIL , INC

. v. USPS 11

Nor is it a “minor statutory technicality” that can be cured by a more precise or fulsome filing. Id. at 2140. T he Board’s determination of whether a party is qual i fied under § 18(a)(1)(B) to petition for CBM review is a cond ition precedent independent from a threshold analysis regarding the likelihood of success of the information contained in the petition. See City of Arlington v. FCC

, 133 S. Ct. 1863, 1869 (2013) (e x plaining that federal agencies’ “ power to act and how they are to act is author itatively prescribed by Co n gress, so that when they act improperly,

. . . what they do is ultra vires ”)

. The Postal Service’s reliance on Achates is also un availing. There, we held that the PTO’s determination that a petitioner ha s satis fied 35 U.S.C. § 315(b)’s statut ory time bar to petition for IPR is unreviewable because that requirement “does not impact the Board’s authority to invalidate a patent claim

— it only bars particular petitioners from challenging the claim.” Achates

, 803 F.3d at 657. The Postal Service argues that § 18(a)(1)(B) similarly affects only who can file a petition

— i. e., as long as a proper petitioner requests CBM review of a patent, the Board’s author i ty to cancel that patent is unaffected

. We disagree.

Achates is distinguishable based on d ifference s in the statutory framework for IPR and CBM review

. First, f or IP R proceedings, a ny “person who is not the owner of [the chal lenged] patent ” can petition for review of a patent

. 35 U.S.C. § 311(a). Put another way, “ [p] arties that initiate the [IPR] proceeding need not have a concrete stake in the
outcome .” Cuozzo , 1 36 S. Ct. at 2143. In contrast, by requiring a pet i tioner for CBM review to have been sued for or charged with infringement of the underlying patent, § 18(a)(1)(B) ensures that CBM review is limited to pa r-

success under 35 U.S.C. § 314(a) is immaterial for pu rposes of this case.RETURN MAIL , INC

. v. USPS 12

ties who have some stake in the outcome. I f a party is barred by § 18(a)(1)(B) from petitioning for CBM review of a patent, i t cannot be assumed that the same patent could be challenged by an unrelated third party. 10 To treat these distinct grants of authority as coterminous would require us to ignore the plain terms of the respective statutes. We may not do so. See Dep’t of Homeland Sec. v. MacLean , 135 S. Ct. 913, 919 (2015) (“Congress gene rally acts intentionally when it uses particular language in one section of a statute but omits it another.” ( citation omitted)); see also Conn. Nat’l Bank v. Germain , 503 U.S. 249, 253

– 54 (1992) (“ [C]ourts must presume that a legi slature says in a statute what it means and means in a statute what it says there.”)

. Second, the IPR time bar,

10 For example, Return Mail represents that it has only ever asserted the ’548 patent against the Postal Service, such that no other party has an arguable basis under § 18(a)(1)(B) to challenge the pa tent through CBM

revew. Although the PTAB may issue a final written dec i sion in a CBM review if no petitioner remains, this does not mean that we do not have the authority to review the government’s standing to file the petition. It is true that
t he PTA B “may terminate the [CBM] review or proceed to a final written decision” if “no petitioner remains in the post

- grant review.” 35 U.S.C. § 327(a). However, that does not mean that the PTAB may proceed to a final written decision if the party filing the p etition lacked standing to do so, for it would render meaningless the conditions precedent for PTO action in § 18(a)(1) and license the PTO to act ultra vires

. See Astoria Fed. Sav. & Loan Ass’n v. Solimino , 501 U.S. 104, 112 (1991) (holding that courts should avoid constructions that would render
statut o ry text “superfluous” ); see also City of Arlington

, 133 S. Ct. at 1869 (explaining that federal agencies may act only pursuant to the authority conferred by Co n gress).RETURN MAIL , INC

. v. USPS 13

“like other ‘[f]iling deadlines,’ .

. . is merely a ‘rule[] that seek[s] to promote the orderly progress of litigation by requiring that the parties take certain procedural steps at certain specified times.’” Achates , 803 F.3d at 658 (alter ations in original) (quoting Henderso n ex rel. Henderson v. Shinseki , 562 U.S. 428, 435 (2011) ). U nlike the IPR time bar w hich is simply a procedural requirement that rights be exercised in a timely ma n ner , § 18(a)(1)(B) relates to a party’s right to seek CBM review in the first instance.

T here is no doubt that , despite the AIA’s no

- appeal provisions, judicial review remains available on que s tions of “whether the [Board] exceeded statutory li m its on its authority to invalidate.” Versata

, 793 F.3d at 1319; se e also Cuozzo , 136 S. Ct. at 2141 (holding that § 314(d) does not preclude judicial review when the PTO “act[s] outside its statutory limits” ). As we have explained, to hold otherwise would “run counter” to both the language of the

no

- appeal provisions (r e stricted to determinations of wh ether to institute) and “our long tradition of judicial review of government actions that alter the legal rights of an affected pe r son.” Versata , 793 F.3d at 1319. F or example, in Ve r sata we held that this court could review the Board’s determination of whether a patent is a CBM patent under AIA § 18(a)(1)(E) because that statutory

prov i sion limits the Board’s authority to invalidate a pa tent. Id. at 1320. The § 18(a)(1)(B) standing requir ement at issue here appears in the same subse ction and similarly limit s the Board’s authority to i n validate a patent through CBM review. Even though it is not phrased in terms of what the Director can or cannot do

, Co ng ress placed an express limitation on the reach of the CBM review program, a “special r e view regime” t hat is only available for an eight

- year transitional period. Id. W here determinations are “fundamental or ‘jurisdictio nal,’ in the sense that their existence is a condition prec edent to the operation of the statutory scheme[,] [such] fundamental requir em ents are .

. . indispensable to theRETURN MAIL , INC

. v. USPS 14

application of the statute .

. . because the Congress has so provided e x plicitly.” Crowell v. Benson , 285 U.S. 22, 54

– 55 (1932) (footnote omitted)

. The legislative history of the AIA supports our co n cl usion that questions related to a party’s standing touch upon the PTO’s ultimate authority to act. Co n gress explained that the PTO’s ability to conduct CBM review “is limited in certain respects ” and highlighted that the PTO “cannot” grant a petition “ unle ss the petitioner or his real party in interest has been sued for infringement of the patent or has been charged with infringement. ” H.R. Rep. No. 112

- 98, at 80 (2011), reprinted in 2011 U.S.C.C.A.N. 67, 105. That Congress did not intend the PTO to act a bsent a pet i tion filed by a party with the requisite standing co n firms that § 18(a)(1)(B) provides a fundamental limitation on the PTO’s authority

. F or the foregoing reasons, we hold that § 324(e) does not bar judicial review of the Board’s decision that a party satisfies § 18(a)(1)(B) ’s requirements to petition for CBM review.

2

We turn now to the Board’s determination that the Postal Service had standing to petition for CBM r e view because it had been “ sued for infringement ” of the ’ 548 patent within the meaning of § 18(a)(1)(B)

. At the outset, the parties disagree on the applicable standard of review. The Postal Service argues that the Board’s determination is subject to arbitrary

- and

capricious review under the Administrative Procedure Act (“APA”) , while Return Mail contends that de novo review applies. It is true that we review PTO dec i sions under the standards set forth in the APA, but those standards allow us to also set aside agency a c tions that are “not in accor dance with law.” 5 U.S.C. § 706(2); see Pride Mobility Prods. Corp. v. Permobil, Inc. , 818 F.3d 1307, 1313 (Fed.RETURN MAIL , INC

. v. USPS 15

Cir. 2016) (reciting APA standards). Accordingly, where, as here, the parties’ arguments raise a purely legal que stion of statutory interpretation, we apply de novo r eview. 11 In re Affinity Labs of Tex., LLC , 856 F.3d 883, 889 (Fed. Cir. 2017); Secure Axcess, LLC v. PNC Bank Nat’l Ass’n , 848 F.3d 1370, 1377 (2017).

Re turn Mail makes several cogent argu ments why a § 1498(a) suit, in some sense, is not one for “i n fring ement.” But while we recognize there are i m portant difference s between § 1498(a) suits against the gover nment and suits for infringement against private parties, these differences, along with Return Mail’s other arg uments, are insufficient to compel a conclusion that Co ngress intended to exclude a go v ernment

- related party sued under § 1498(a) from being able to petition for CBM review.

11 The Postal Service submits that the Board’s i nterpretation of “sued for infringement” “comports with previous guidance provided in rulemaking from the PTO.” Appellees’ Br. 27

– 28 (citing 77 Fed. Reg. 48,734, 48,742; 77 Fed. Reg. 48,680, 47,726). But there is no assertion that we should def er to those PTO remarks under Che vron, U.S.A. v. Nat ural Res ources Defense Council, Inc.

, 467 U.S. 837 (1984), or Auer v. Robbins , 519 U.S. 452 (1997). Indeed, the PTO’s rulemaking on § 18(a)(1)(B) repeats the statute’s “sued for infringement” language wi thout interpreting it. See 37 C.F.R. § 42.302(a) (stating that a petitioner for CBM review must have been “sued for infring e ment or .

. . charged with infringement” and then defining only “charged with infringement”). We do not give deference to an agenc y regulation that merely “parrot[s]” statutory language. Gonzales v. Oregon , 546 U.S. 243, 257 (2006).RETURN MAIL , INC

. v. USPS 16

a
Before discussing whether being sued under § 1498(a) constitutes being “sued for infringement” under § 18(a)(1)(B ), we provide an overview of the nature of a § 1498(a) suit.
Prior to the enactment of § 1498(a), the Supreme Court held that the government had not waived so vereign immunity for patent infringement actions sounding in
tort. Schillinger v. United States , 155 U.S. 163, 170 (1894) ; see also United States v. Berdan Fire

- Arms M fg. Co. , 156 U.S. 552, 565

– 66 (1895) (“Even if there were findings sufficient to show that the government had in any manner infringed upon this patent, .

. . a mere i nfringement, which is only a tort, creates no cause of action cognizable in the court of claims.” ) . In other words, a bsent a contractual relationship with the government, “a patent holder lacked a remedy for infringement by the United States.” Zoltek Corp. v. United States , 672 F.3d 1309 , 1315 (Fed. Cir. 2012) (en banc in relevant part)

. Co n gress responded in 1910 by enacting the precursor to § 1498(a), under which the government assumes li a bi l ity for the “ use or manufacture” of a claimed inve ntion “ by or for the United States without li cense of the owner thereof or lawful righ t to use or manufacture the same.” 28 U.S.C. § 1498(a).
Section 1498(a) “is an eminent domain stat ute, ” wherein the government “has consented thereunder only to be sued for its taking of a patent license.” Decca L td. v. United States , 640 F.2d 1156, 1167 (Ct. Cl. 1980); see also Leesona Corp. v. United States , 599 F.2d 958, 964 ( Ct. Cl. 1979) (discussing § 1498’s basis in eminent domain); Tektronix, Inc. v. United States , 552 F.2d 343, 346 ( Ct. Cl. 1977) (“It is se ttled that recovery of reasonable compens ation under § 1498 is premised on a theory of an eminent domain taking under the Fifth Amendment.”). T he go vernment th erefore remains immune from suit u nder theRETURN MAIL , INC

. v. USPS 17

Patent Act , which provides that “[a] patentee shall h ave

re m edy by civil action for infringement of his patent.” 35 U.S.C. § 281.

Return Mail submits that because § 1498(a) is grounded in eminent domain, it cannot be a suit for “infringe ment.” We disagree. It is true that this pr ov ision “creates its own independent cause of action,” which is “‘only parallel and not identical’” to an i n fringement action under the Patent Act. Zoltek , 672 F.3d at 1321 (quoting Motorola, Inc. v. United States , 729 F.2d 765, 768 (Fed. Cir. 1984) ). We have he ld that certain r elief othe rwise available to a patentee under the Patent Act is unavailable in § 1498(a) actions, such as § 283 injunctive relief, § 284 treble damages, § 285 exceptional case atto rney fees, and § 287 dama g es limitations based on a failure
to mark. Motorola , 729 F.2d at 768 n.3, 772. None of those distinctions, however, relates to the underlying basis of liability in a § 1498(a) suit.
Return Mail selectively quotes from Motorola

, rel y ing
on our statement that the government “is not a puta tive infringer but is deemed a licen see. ” Motorola , 729 F.2d at 772 (emphasis added). But Motorola says that the government is “not in the pos i tion of an ordinary infringer,” not that the govern ment can not infringe . 7 29 F.2d at 768 (emphasis added). In fact

, Motorola has language tying § 1498(a) to infringement, stating that “the Government can only be sued for any direct infringement of a patent

. ” I

d. at 768 n.3 (em phasis added). And, to be sure, we and our predecessor c ourt have often described § 1498(a) suits as alleging “infringement.” See, e.g.

, Zoltek , 672 F.3d at 1327 (“[Section] 1498(a) creates a[] .

. . cause of action for direct infringement by the Go v ernment or its contra ctors.

. . . [U]nder § 1498(a) the Government has waived its

sove reign immunity for direct infringement [] .

. . .”); Decca , 640 F.2d at 1167 (characterizing § 1498(a) as a waiver of sovereign immunity “with respect to a direct governmental i n fringement of a patent” (footnote omi t-RETURN MAIL , INC

. v. USPS 18

ted)).
Return Mail separately points out that the word “i nfringement” is absent from the text of § 1498(a), whereas neighboring provisions in 28 U.S.C. §§ 1498(b) and 1498(d) expressly refer to, respectively, copyright “i nfringement” and “ infringement ” of certi f ic ate of plant variety protection. See Plant Variety Protection Act, Pub. L. 91

- 577, 84 Stat. 1542, 1559 (1970) (adding 28 U.S.C. § 1498(d)); Act of September 8, 1960, Pub. L. 86

- 726, 74 Stat. 855, 856 (adding § 1498(b)); Act of June 25, 1910, Pub. L. No. 61

- 305, 36 Stat. 851 (enacting pre cursor to § 1498(a)). We are not persuaded that the absence of the word “infring e ment” from § 1498(a), which was enacted before both §§ 1498(b) and 1498 (d) , carries dispositive weight. Indeed, that Congress subsequently characterized governmental encroachment on other rights as “i n fringement” may actually support a reading that Co n gress also understood infringement to be the basis for governmental liability in the patent context

. The legisl ative history of § 1498(a) can be credibly i nte r pre ted to support this understanding

. See, e.g.

, H.R. Rep. No. 61

- 1288, at 1 (1910) (noting that the precu r sor to § 1498(a) was intended “to enlarge the jurisdi c tion of the Court of Claims so that said court may entertain suits against the United Stat es for the i n fringement or unauthorized use of a patented inve ntion , in certain cases, and award reaso nable compensation to the owner of the patent” (emphasis added) ) ; H.R. Rep. No. 82

- 1726 , at 3 (1952) (referring to § 1498(a) suits as “suit[s] for patent infringement ” when amending the statute ).
Return Mail appears to argue that the government cannot infringe because infringement requires action without authority, and the government has an implied license to practice patented inventions. Appellant’s Openi ng Br. 43 (arguing that the government “has ‘u ndoubted authority .

. . to exert the power of em i nent domain’ over a patented invention”). B ut the text ofRETURN MAIL , INC

. v. USPS 19

§ 1498(a) provides that l iabilit y attaches when the government acts “without license .

. . or lawful right.” In other words, when the government uses or manufactures a patented invention, it is not presumed to have a pre

existing license or lawful right to do so. Cf. Leesona , 599 F.2d at 965 (“W hen the government has infringed , it is deemed to have ‘taken’ [a] patent license under an em inent domain theory.”).

b We turn next to the scope of the term “sued for i nfringement” in § 18(a)(1)(B). Again, this subsection provides that a person may not file a petition for CBM review of a patent unless the person, or the person’s real party in interest or privy

, has been “ sued for in fringement of the patent” or “charged with infring e ment under that patent .” Section 18 does not define the term “infring ement.” 12
The Postal Service argues th at in normal usage the word “infringement” “is used to describe a claim under a

12 Neither party discusses the significance, if any, of the term “person” in § 18(a)(1)(B). We note that “[i] n common usage th[e] term [‘persons’] does not include the sovereign, and statutes employing it will ordinarily not be construed to do so.” United States v. United Mine Workers of Am. , 330 U.S. 258, 275 (1947). At the same, however, there is “no hard and fast rule of exclusion, and much depends o n the context, the subject matter, legislative history, and executive i n terpretation.” Wilson v. Omaha Indian Tribe , 442 U.S. 653, 667 (1979). Return Mail has waived reliance on the term “person” because it failed to make any arguments in that regard in its opening brief. See SmithKline Beecham Corp. v. Apotex Corp. , 439 F.3d 1312, 1319 (Fed. Cir. 2006) (“Our law is well esta b lished that argum ents not raised in the opening brief are waived.”).RETURN MAIL , INC

. v. USPS 20

§ 1498 action.” Appellees’ Br. 29. Return Mail a p pears to acknowledge that the ordinary meaning of “infringement” is broad. See Appellant’s Opening Br. 44 (“[T]he term ‘infr ingement’ is often shorthand for whether the accused activity meets all the limitations of a patent claim.”). 13 But Return Mail argues that Congress used the term “infringement” more narrowly to refer to infringement under the Patent Act , Title 35 of the U.S. Code . Under 35 U.S.C. § 271(a), direct infringement occurs when someone “without authority makes, uses, offers to sell, or sells any patented inve n tion, within the United States or imports into the United States any patented invention.” Because the government is immune from suit under the Patent Act , Return Mail contends that the government ca n not be sued for “infringement” as defined in that sta t ute. Applying fundamental canons of statutory co n struction, we agree with the Postal Service th at being s ued under § 1498(a) is broad enough to encompass being sued for “infringement” as that term is used in § 18(a)(1)(B)

. It is well

- established that when a statute does not d efine a term, “words will be interpreted as taking their ordinary, contemporary, comm on meaning” at the time that Congress enacted the statute. Perrin v. United States , 444 U.S. 37, 42 (1979). Court s may look to dictionaries in use when Congress enacted a statute to inform the ordinary meaning of a term. See Taniguchi v. Kan Pac. Saipan , Ltd. , 132 S. Ct. 1997, 2002

– 04 (2012) (surveying relevant dictionaries to interpret a statute). Common usage of the term “i n fringement” in the patent law context refers to “[a]n act that interferes with one of the exclusive rights of a patent[] .

. . ow ner.” Infring ement , Black’s Law Di c tionary ( 9th ed. 2009). Those rights

13 Return Mail’s § 1498(a) complaint accused the Postal Service of “infringing” the ’548 patent in mult i ple instances. See, e.g.

, J. A

. 3297 ¶ 1, J. A

. 3302 ¶ 21.RETURN MAIL , INC

. v. USPS 21

include “the right to exclude others from making, using, offering for sale, or selling [the claimed] invention throughout the United States or importing the invention into the United States.” 35 U.S.C. § 154(a)(1); see also Impre s sion Prods., Inc. v. Lexmark Int’l., Inc. , 137 S. Ct. 1523, 1534 (2017) (“What a patent adds

— and grants exclusively to the patentee

— is a limited right to pr e vent others from [using, selling, or importing an item].”). Accordingly, patent infringement enco m passes “[t]he unauthorized making, using, offering to sell, selling, or importing into the United States of any patented inve ntion,” which, not surprisingly, closely tracks the language of the Patent Act

. P atent I n fringement , Black’s Law Dictionary ( 9th ed. 2009) (citing 35 U.S.C. § 271(a))

. But n othing in the text of § 18(a)(1)(B) indicates an intent to restrict “infringement” to suits that fall u n der the Patent Act . C ongress is presumed to be “aware of existing law when it passes legislation.” Mississippi ex rel. Hood v. AU Optronics Corp. , 134 S. Ct. 736, 742 (2014). When Congress enacted the AIA in 2011, the law did not preclude § 1498(a) suits from being suits for infringeme nt. Congress could have easily specified the phrase “sued for infringement” to require being sued for infringement under 35 U.S.C. § 271 or otherwise excluded § 1498 suits from the definition of “sued for infringement ,” but it did not do so. 14 We may not rewrite the statute on

14 Return Mail notes that in Suprema , Inc. v. I n te rnational Trade Commission , 796 F.3d 1338 (Fed. Cir. 2015) (en banc), we referred to § 271 as “the sta t utory provision defining patent infringement.” Id. at 1346. We made that comment in the context of 19 U.S.C. § 1337

, which makes it unlawful to i mport i n fringing articles and, like the Patent Act, does not apply to the government. See 19 U.S.C. § 1337(l). Our statement in Suprema was not a global conclusion that only § 271 suits allege i n-RETURN MAIL , INC

. v. USPS 22

Congress’s behalf. See United States v. Fausto , 484 U.S. 439, 453 (1988) (“[I]t can be strongly presumed that Congress will specifically address language on the statute books that it wishes to change.”). And adopting Return Mail’s preferred construction of § 18(a)(1)(B) as li m ited to infringement under § 271 would impose add i tional cond itions not present in the statute’s text

. S ee Norfolk Dredging Co. v. United States , 375 F.3d 1106, 1111 (Fed. Cir. 2004) (holding that c ourts must avoid “add[ing] cond itions” to the applicability of a statute that do not appear in the provision’ s text ). Precedent counsels against us doing so. Under the ordinary meaning of “infringement,” a § 1498(a) suit is squarely one for government infring ement of a patent. W hen a patent owner brings a § 1498(a) suit, it alleges that the government has unlawfully inte rfered with its right s by manufacturing or using the p atented inve n tion. Those activities “come[] within the scope of the right to exclude grante d in 35 U.S.C. § 154(a)(1).” Zoltek

, 672 F.3d at 1327. Indeed, in Zoltek

, w e “d e fined ‘without lawful right’ for purposes of § 1498(a)” to overlap with direct infringement

— i.e., “use of an invention that, if done by a private party, would di rectly infrin ge the patent.” Id. at 1323. Liability u n der this provision, like liability under § 271(a), requires a showing that “each limitation is present in the accused product or process,” such that the go vernment “ would be liable for direct infringement of the p atent right for such use or manufacture if [it] was a private party.” Id. at 1319 (emphasis added). Accordingly, § 1498 encompasses “any direct i n fringement that would normally require a license by a private party.” Id. at 1320. Infringement is a

prere q uisite to § 1498(a) liability; the government’s i nfringement triggers its obligation to pay just compens ation. See James v. Campbell , 104 U.S. 356, 357

– 58 (1881)

fringement, and it was not related to construing the
statut e at issue here.RETURN MAIL , INC

. v. USPS 23

(holding that a patent “confers upon the patentee an exclusive property in the patented inve n tion which cannot be appropriated or used by the go v ernment itself, without just compensation”) ; see also Crozier v. Fried Krupp Aktiengesellschaft , 224 U.S. 290, 303 (1912) (interpreting an earlier iteration of § 1498 and explaining that “[t] he
text of this statute leaves no room to doubt that it was adopted in co n templation of the contingency of the asse rtion by a patentee that rights secured to him by a patent had been invaded for the benefit of the United States by one of its officers; that is, that such officer, under the conditions stated, had infringed a patent .” (emphasis added))

. We acknowledge Return Mail’s argument that a l lo wing the government, when sued under § 1498(a), to pet ition for CBM review may create tension with the estoppel provisi on for CBM review. AIA § 18(a)(1)(D) provides:

T he petitioner in a transitional proceeding that

re sults in a final written decision under [35 U.S.C. § 328(a)] with respect to a claim in a [CBM] p atent, or the petitioner’ s real party in interest, may
not assert, either in a civil action arising in whole or in part under [28 U.S.C. § 1338], or in a pr oceeding before the International Trade Commi ssion under [19 U.S.C. § 1337] , that the claim is invalid on any ground that the petitioner raised during that tra n sitional proceeding.
(Emphasis added). This estoppel provision applies to petitioners litigating in district court or the ITC, but it is silent as to petitioners litigating in the Claims Court.
Return Mail argues that the legislative history demonstrates that Congress intended estoppel to be the cornerstone of the post

- grant review process, as it “reco gnize[d] the importance of quiet title to patent owners to ensure continued investment resources.” Appellant’s Reply Br. 24

– 25 (alteration in original) (quoti ng H.R. Rep.RETURN MAIL , INC

. v. USPS 24

No. 112

- 98, pt. 1, at 48 (2011)). Yet construing § 18(a)(1)(B) to allow the government to peti tion for CBM review , as we do today, means that the government would enjoy the unique advantage of not being estopped in the Claims Court from re

- litigating grounds raised during a CBM review pr o ceeding

. The Postal Service does not dispute the oddity of this result and acknowledges that the government would not be subject to estoppel under this constru ction

. Ap pellees’ Br. 32 & n.9. Although this raises certain policy concerns, Congress is better suited to address them by revising the estoppel provisions for CBM review should it see fit

. Thus, w e leave the soundness of exempting the gover nment from the estoppel provision to Congress , as prec edent demands

. See Blount v. Rizzi , 400 U.S. 410 , 419 (1971) (“ [I]it is for Congress, not this Court, to rewrite the statute.”); see also Office of Pers. Mgmt. v. Richmond , 496 U.S. 414, 434 (1990) (“[T] his Court has never upheld an assertion of estoppel against the Government by a clai mant seeking public funds. ”).

The dissent does not disagree with our interpret a tion of “sued for infringement” but, instead, believes that the word “person” dictates a different result

. We respectfully disagree. First, n either Return Mail nor the Postal Se rvice discusses the significance, if any, of the word “person” as used in § 18(a)(1)(B). This issue is disti nc t and ind ependent from the dispute before us regarding the mea ning of th e phrase “sued for i n fringe ment .” Return Mail’s failure to develop any arguments on this issue would typically constitute waiver. See SmithKline Beecham , 439 F.3d at 1319 (“Our law is well established that arguments not raised in the opening brief are wa ived.”); see also Nat. Res. Def

. Council, Inc. v. EPA , 25 F.3d 1063, 1074 (D.C. Cir. 1994) (“[F]ailure to raise a particular que s tion of statutory construction before an agency const i tutes wai v-RETURN MAIL , INC

. v. USPS 25

er of the argument in court.”). 15
Second, even assuming the issu e is not waiv able or is importa nt enough to address without the benefit of the parties’ briefing, we are not persuaded that the word “person” upends the applicability of § 18(a)(1)(B) to the government. The dissent relies on a presum p tion that “[i] n common usage th[e] term [‘persons’] does not include the sovereign, and statutes emplo y ing it will ordinarily not be construed to do so.” Uni t ed Mine Workers of Am.

, 330 U.S. at 275. But w hen determining the scope of the term “per son,” there is “no har d and fast rule of exclusion, and much depends on the context, the subject matter, legislative history, and executive interpretation.” Wilson

, 442 U.S. at 667

. And a ny presumption that the term “person” excludes the government carries less weight here be cause the statute “confer[s] a benefit or advantage” to the government, rather than “a burden or limit a tion.” Id. ; see also Will v. Mich. Dep’t of State Police , 491 U.S. 58, 64 (1989) (stating that the exclusion of sov ereigns from “person” “is particularl y applicable where it is claimed

15 The dissent characterizes these statements as the majority having “h[e]ld” that this issue was waived. Dissenting Op. 1–2

. Not so. We observe that the failure to brief an issue ordinarily constitutes waiver under our precedent. The d issent, in contrast, declares

— unequivocally

— that the issue cannot be waived. Id . at 3. Yet the cases it relies on in support do not sustain its conclusion, but rather merely a d dress waiver in the Article III context or implicate our case

- by

- case discretion
to entertain a waived issue in spite of our well established precedent to the contrary. Although we express our doubts regarding the di s sent’s analysis and conclusions on waiver, we respond to its concerns in the paragraphs that follow working from its own assumption that the issue cannot be waived.RETURN MAIL , INC

. v. USPS 2 6

that Congress has subjected the States to liability to which they had not been subject before”).
Contrary to the dissent’s allegation that we i m properly construe this provision “in isolation ” from the context of the whole Act, Dissenting Op. 8– 9 n.1

, w e apply the “premise that [a] term should be construed, if possible, to give it a consist ent meaning throughout [an] Act. ” Gu stafson v. Alloyd Co. , 513 U.S. 561, 568 (1995)

. The AIA does not appear to use the term “pe r son” to exclude the government in other provisions. For exam ple, its prov ision s on intervening rights pr o vide that “[a]ny proposed amended or new claim de termined to be patentable and incorporated into a patent ” after a n IPR, PGR

, or CBM review has “ the same effect as that specified in [35 U.S.C. § 252] for reissued pa tents on the right of any person who made, purchased, or used within the United States, or im ported into the United States, anything patented by such proposed amended or new claim .” 35 U.S.C. §§ 318(c), 328 (c) ; see also, e.g.

, id. § 311 (a) (making IPR available to any “person who is not the owner of [the challenged] patent”).
The dissent, on the other hand, places great e m phasis on the “statutory balance” Congress created through the A IA’s estoppel provisions to support its interpretation of this statute. Dissenting Op. 7–9

. Yet it relies on these estoppel provisions

— a policy consi deration— to inform the construction of a word for which it

, itself

, concedes the legislative history does not directly address. 16 Id . at 4. In

16 Specifically, the dissent argues that it is reaso n able to assume that Congress did not intend to include the United States because it would have complicated enac tment of the AIA. Dissenting Op. 4. Yet it co n cedes that the legislative record does not explore what the dissent characterizes as these “potential complex i ties,” nor does it even attempt to define what they entail

. Id

.RETURN MAIL , INC

. v. USPS 27

doing so, and in the absence of briefing, the dissent e ngages in mere spe c ulation that Congress intended to exclude the go v ernment from filing petitions despite the lack of a record or a ny indication that it intended this result

. Indeed, it is not our role to speculate on these

po licy concerns in the absence of Congressional guidance and rely on them to justify rewriting the plain la n guage of
a statute

. To do so would be the classic e x ample of letting the tail wag th e dog. 17 For the reasons set forth above, w e believe the better reading of “pe r son” in § 18(a)(1)(B) does not exclude the g overnment.

The creation of the CBM review framework stemmed from a “general concern, including within the halls of Congress, regardin g litigation abuse over business met hod patents.” Versata , 793 F.3d at 1325. Congress ther efore created CBM review as a “special review regime, over and above any other authority the [Board] might have,” for quickly reviewing such p a tents viewed to be es pecially prone to litigation abuse

. Id. at 1320. This regime was so unusual that Co n gress placed an eight

- year time limit on it. Id. It is not surprising, then, that § 18(a)(1)(B) e nsures that the CBM patent being challenged is the subject of an existing infringement controversy. There does not appear to be any reason, and Return Mail has provi ded none, to curtail the ability of the government to initiate a CBM proceeding when, like a party sued in federal di s-

17 To further support its estoppel argument , t he di ssent observes that the CBM statute makes no me n tion of infringement litigation in the Claims Court

— the principal reason why the government can circu m vent the se esto ppel provisions under our interpret ation

. Dissenting Op. 7. But again, the solution to the dissent’s con cern is for Congress to “correct” this im balance should it see fit

, r ather than allow this pote n tial inequity to drive o ur interpretation of the plain language of the statute.RETURN MAIL , INC

. v. USPS 28

trict court or the ITC, it has interests at stake with r espect to the patent it has been accused of infringing. 18

We therefore conclude that the Postal Service was “sued for infringement” within the meaning of § 18(a)(1)(B) when Return Mail filed th e Claims Court suit against it under § 1498(a). Because § 18(a)(1)(B)’s requirements to be either “sued for infringement” or “charged with infringement” are disjunctive, we do not reach whether the Postal Service was also “charged with in fringement.”

B

Ne xt , we address whether the Board erred in hol d ing that claims 42

– 44 of the ’548 patent are directed to § 101 patent

- eligible subject matter. We apply de novo review
to “questions concerning compliance with the doctrinal requirements of § 101. ” Versata

, 793 F.3d at 1331

. Return Mail emphasizes that the claims at issue on appeal for purposes of § 101

— claims 42

– 44 of the ’548 patent

— recite encoding a particular type of info r mation: information “indicating whether the sender wants a corrected address to be provided for the a d dressee.” Ex Parte Reexamination Certificate, ’548 patent col. 2 ll. 4

– 6. If the sender wan ts updated a d dress information, that information is transferred to the sender to enable it to update its mailing address files. Id. at col. 2 l l. 17

– 20. If not, information regar d ing the returned mail is neverth eless posted on a ne t work so that the sender can access it. Id. at col. 2 ll. 21

– 24.
The parties treat claim 42 of the ’548 patent as re pre-

18 T he parties have not pointed to any evidence in the legislative history that compels us to reach a di fferent statutory interpretation

.RETURN MAIL , INC

. v. USPS 29

sentative for purposes of the § 101 inquiry : 19
42. A method for processing a plurality of und eli v erable mail items, comprising:
receiving from a sender a plurality of mail items, each including i) a written addressee, and ii)

en coded data indicating whether the sender wants a corrected address to be provided for the ad dressee ; identifying, as undeliverable mail items, mail items of the plurality of mail items that are r eturned subsequent to mailing as undeliverable;
decoding the encoded data incorporated in at least one of the undeliverable mail it ems; creating output data that includes a customer number of the sender and at least a portion of the decoded data;
determining the sender wants a corrected address provided for intended recipients based on the de coded data;
if the sender wants a corrected address provided, electronically transferring to the sender info rmation for the identified intended recipients that enable the sender to update the sender’s mailing address files; and
if the sender does not want a corrected address pr ovided, posting return mail data records on a ne twork that is accessible to the sender to enable the sender to access the records.

Id. at col. 2 ll. 1– 24 (emphase s added).

19 Return Mail does not advance any separate a rg uments with respect to dependent claims 43

– 44.RETURN MAIL , INC

. v. USPS 30

Section 101 of the Patent Act defines patent

- eligible subject matter to include “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” 35 U.S.C. § 101. Under well

- established case law, this provision implicitly excludes “ laws of nature, natural phenomena, and a bstract ideas ” from the realm of patent

- eligible subject
matter. Diamond v. Diehr , 450 U.S. 175, 185 (1981). The Supreme Court has set forth a two

- step framework for determining whether patent claims are drawn to a p atent

- ineligible concept

. Alice Corp. v. CLS Bank Int’l

, 134 S. Ct. 2347, 2355 (2014) (citing Ma yo Collaborative Serv s. v. Prometheus Labs

. , Inc., 566 U.S. 66, 77

– 78 (2012)). First, one “d e termine[s] whether the claims at issue are directed to” a law of nature, natural phenomenon, or abstract idea. Id. If so , the second step is to “search for

an inventive concept

, ” namely “ an element or combination of el e ments that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.” Id. (alter ation in original) (internal quotation marks omitted).

1

Under Alice step 1, Return Mail contends that claims 42

– 44 may involve the abstract idea of “rela y ing mailing address data” but are not directed to such an abstract idea. Appellant’s Opening Br. 48

– 50. The Supreme Court has caution ed that, “lest [the excl u sionary principle] swallow all of patent law,” an inve n tion that simply “involves” an abstract idea is not patent ineligible under § 101. Alice , 134 S. Ct. at 2354. Return Mail focuses on
two rea sons why claims 42

– 44 merely involves an a bstract idea: first, the claims do not preempt other systems for relaying mailing a d dress data ; and second, they are directed to a specific improvement to technology for relaying mailing a d dress data

. We agree with the Board that claims 42

– 44 are d i-RETURN MAIL , INC

. v. USPS 31

rected to the abstract idea of “re laying mailing a d dress data.” J.A. 17. Claim 42 recite s “receiving from a sender a plurality of mail items,” “identifying und e liverable mail items,” “decoding .

. . encoded d ata,” “creating output data,” and “determining if the sender wants a corrected address.” Ex Parte Reexamination Cert ificate, ’548 patent col. 2 ll. 1

– 24 . These steps are analogous to the steps of “collecting data,” “recogni z ing certain data within the co llected data set,” and “storing that recognized data in memory,” which we found to be abstract under Step 1 in Content Extra c tion & Transmission LLC v

. Wells Fargo Bank, N at ional Ass’n , 776 F.3d 1343, 1347 (Fed. Cir. 2014), cert. denied , 136 S. Ct. 119 (20 15). And “[t]he mere comb i nation of data sources [similarly]

. . . does not make the claims patent eligible.” FairWarning IP, LLC v. Iatric Sys., Inc. , 839 F.3d 1089, 1097 (Fed. Cir. 2016)

. Return Mail’s contention that claims 42

– 44 a re d irected to a specific improvement in the area of r e turn edmail processing is unava iling. Appellant’s Opening Br. 50. “[L]imit[ing] the abstract idea to a particular environ ment,” here a mail processing sy s tem with generic computing technology , “does not make the claims any less abstract for the step 1 anal y sis.” In re TLI Commc’ns LLC Patent Litig. , 823 F.3d 607, 613 (Fed. Cir. 2016)

. T he claims at issue are not analogous to claims “directed to a specific impleme n tation of a solution to a problem in the software arts,” which we have held not to be directed to an abstract idea. Enfish, LLC v. Microsoft Corp. , 822 F.3d 1327 , 1339 (Fed. Cir. 2016). E ncoding and decoding mail recipient information— including whether the sender wants a corrected address

— are processes that c an , and have been, per formed in the human mind. T he claims here simply recite that existing business pra c tice with the benefit of generic comput ing technology. Th at is insufficient to make the claims any less a b stract under step 1.RETURN MAIL , INC

. v. USPS 32

2
We also reject Retur n Mail’s argument that c laim s 42

– 44 are p atent

- eligible under Alice step 2 for reci t ing an inventive concept that transforms the abstract idea into “something more .” Alice , 134 S. Ct. at 2354. The claims only recite routine, conventional activities such as ident ifying undeliverable mail items, decoding data on those mail items , and creating output data

. We are also not persuaded by Return Mail’s emphasis on the limitations reciting particular types of encoded data or particular uses of that data once dec oded, such as sending the data or making it available to the sen d er, depending on the sender’s preferences. These additional steps amount to a basic logic determination of what to do given a user’s preferences. None of the recited steps, alone or togethe r, suffice to transform the abstract idea into patent

- eligible subject matter . They are akin to the routine, conventio nal steps of “updating an activity log, requiring a request from the consumer to view [an] ad, restrictions on public

ac cess, and use of the Internet,” which we have held do not supply an inventive concept under step 2. Ultr a me rcial, Inc. v. Hulu, LLC , 772 F.3d 709, 716 (Fed. Cir. 2014)

, cert. denied , 135 S. Ct. 2907 (2015)

. Return Mail contends that claims 42

– 44 allow the sender to take other steps, “such as deleting obsolete address from a subsequent mailing ,” that do not a p pear in the claim language. Appellant’s Opening Br. 15

– 16 . In addition, Return Mail points to hardware, such “a mail sorter, optical scanner, da tabases, appl i cati on servers, and the mail itself ” to argue that claims 42

– 44 result in an “improvement to an existing technological process .” Id. at 54

– 55. However, those limitations do not appear in the subject claims ; in stead, the claims focus only on encoding and decoding certain information and placing that information over a network. Ex Parte Reexamin ation Certificate, ’548 patent col. 2 ll. 1

– 24

. Thus, there is no basis in the claim language to import these steps andRETURN MAIL , INC

. v. USPS 33

components. Synopsys, Inc. v. Mentor Graphics Corp. , 839 F.3d 1138, 1149 (Fed. Cir. 2016) (“T he § 101 inquiry must focus on the language of the Asserted Claims the mselves.” ) ; see als o Accenture Glob

. Servs., GmbH v. Guid ewire Software, Inc. , 728 F.3d 1336, 1345 (Fed. Cir. 2013) (“[T]he important inquiry for a § 101 anal y sis is to look to the claim.”)

. Return Mail attempts to analogize the claims b e fore

us to claims that this court has held to be patent

- eligible under step 2 in BASCOM Glob

. Internet Servs., Inc. v. AT&T Mobility LLC , 827 F.3d 1341 (Fed. Cir. 2016), and in DDR Holdings, LLC v. H o tels.com, LP , 773 F.3d 1245 (Fed. Cir. 2014). We dis agree. I n those cases

, the claimed inventions went beyond “ merely the routine or conventional use of the Internet” or computer system s

. DDR , 773 F.3d at 1259; see also BASCOM , 827 F.3d at 1351 (holding that a software

- based invention that “i mprove[s] the performance of the computer system itself” recites patent

- eligible subject matter (alteration in orig inal)). Here, in contrast, claims 42

– 44 do not improve the functi oning of the computer or barcode system itself. Instead, they apply those functionalities in the context of processing returned mail.

We conclude that claims 42

– 44 of the ’548 patent lack an inventive concept that tra nsforms an othe r wise a bstract idea into patent

- eligible subject matter.

3 Finally, we address Return Mail’s request for clar ification on “the role that preemption plays” in the § 101 analysis. Appellant’s Opening Br. 5. Return Mail propo ses that we hold claims to be drawn to p a tent

- eligible subject matter “if the practical effect of those claims would not preempt other commercially deployed and patentably distinct systems that involve the same a bstract idea.” Id. at 53. In other words, it asks us to ado pt a test for determining whether claims are “directed to” anRETURN MAIL , INC

. v. USPS 34

abstract idea by looking to whet h er the claims have preempted others from entering the field

. Certainly, preemption is the underlying “concern that drives” the § 101 analysis. Alice , 134 S. Ct. at 2354. After all, monopolization of “the basic tools of scientific and technological work” would “thwart[] the primary object of the patent laws” to promote future innovation. Id. Preemption is therefore part and parcel with the § 101 inquiry. Fo r example , we have often cited the lack of preemption concerns to support a determination that a claim is patent

- eligible under § 101. See, e.g.

, McRO, Inc. v. Bandai Namco Games Am. Inc. , 837 F.3d 1299, 1315

– 16 (Fed. Cir. 2016); BASCOM , 827 F.3d at 1352 (“[T]he claims of the .

. . patent do not preempt the use of the abstract idea of filtering content on the Internet or on generic co m puter components performing conventional activ i ties.”).

But we have consistently held that claims that are otherwise direct ed to patent

- ineligible subject matter cannot be saved by arguing the absence of complete preemption. See, e.g.

, Synopsys , 839 F.3d at 1150 (holding that an argument about the absence of co m plete preem ption “misses the mark”); FairWarning , 839 F.3d at 1098 (“But even assuming that the .

. . patent does not preempt the field, its lack of preem p tion does not save these claims.”); Intellectual Ve n tures I LLC v. Symantec Corp.

, 838 F.3d 1307, 1320

– 31 (Fed. Cir. 2016) (same); OIP Techs., Inc. v. Am a zon.com, Inc. , 788 F.3d 1359, 1362

– 63 (Fed. Cir. 2015)

, cert. denied , 136 S. Ct. 701 (2015) (“[T]hat the claims do not preempt all price optimization or may be li m ited to [a particular] setting do not make them any less abstract.”). As we have explained, “que stion s on preemption are inherent in and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom, Inc. , 788 F.3d 1371, 1379 (Fed. Cir. 2015), cert. denied

, 136 S. Ct. 2511 (2016). “While preemption may signal patent ineligible subject matter, th e absence of co mpleteRETURN MAIL , INC

. v. USPS 35

preemption does not demonstrate patent eligibi l ity.” Id. Arguments about the lack of preemption risk cannot save claims that are deemed to only be directed to paten tineligible subject matter.
Relatedly, we reject Return Mail’s imp lication that the Board reached inconsistent results by concluding that claims 42

– 44 are not patent

- eligible under § 101 yet holding that the claims are not invalid as antic i pated under 35 U.S.C. § 102 or obvious under 35 U.S.C. § 103. A “pragmatic analys is of § 101 is facil i tated by consider ations analogous to those of §§ 102 and 103.” Internet Patents Corp. v. Active Network, Inc. , 790 F.3d 1343, 1347 (Fed. Cir. 2015). And § 101 subject matter eligibility is a

“ threshold test ” that typically precedes the novelty or obviousness inquiry. Bilski v. Kappos , 561 U.S. 593, 602 (2010) ; s ee also Manual of Patent Examining Procedures § 2103 “P a tent Examination Process” (9th ed.

, Nov. 2015) (listing steps of the patent examination process , with

“ [d] etermine whether the claimed invention complies with 35 U.S.C. 101” listed before “ [d] etermine whether the claimed invention complies with 35 U.S.C. 102 and 103”). But § 101 subject

- matter eligibility is a r e quirement separate from other patentability inquiries

. See Mayo

, 566 U.S. at 90 (recognizing that the § 101 inquiry and other patentability inquiries “might som e times overlap,” but that “shift[ing] the patent

- eligibility inquiry entirely to these [other] sections risks creating significantly grea ter legal uncerta inty, while assuming that those sections can do work that they are not equipped to do”) ; D iehr , 450 U.S. 175 at 190 (“The question .

. . of whether a particular inve n tion is novel is ‘wholly apart from whether the inve n tion falls into a category of statutory subject ma tter.’”)

. At bottom, claims 42

– 44 of the ’548 patent recite the use of barcode functionality and c omputer system s to provide updated address information, which is not sufficient to impart patent eligibility. See OIP Techs. , 788 atRETURN MAIL , INC

. v. USPS 36

1363 (“[R]elying on a computer to perform ro u tine tasks more quickly or more accurately is insuff i cient to render a claim patent eligible.”), cert. denied , 136 S. Ct. 701 (2015).

III. C ONCLUSION For the foregoing reasons, we affirm the Board’s dec ision.

AFFIRMED

# United States **Court of Appeals**  **for the Federal Circuit**

______________________ RETURN MAIL, INC., Appellant

v.

UNITED STATES POSTAL SERVICE, UNITED STATES, Appellees

______________________

2016

- 1502

______________________ Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. CBM2014

- 00116.

______________________ N EWMAN , Circuit Judge , dissenting

. An important threshold issue before the court is whether the United States and its agency the United States Postal Service are with in the definition of “ person ” in § 18(a)(1)(B) of the America Invents Act

, and thus entitled to proceed under that Act. The panel majority states that the appellant waived the issue because it was not raised in its opening brief. Maj. Op. at 24

– 25 . Ho wever, matter s of jurisdiction are not subject to disposition by waiver.
My colleagues hold that the question of whether the government is a “ person ” subject to the AIA was waived by the parties ’ failure to object . Although some issuesRETURN MAIL , INC

. v. USPS 2

may be waived, statutory jurisdiction is not subject to waiver. See Arbaugh v. Y & H Corp., 546 U.S. 500, 514 (2006) ( “ Moreover, courts, including this Court, have an independent obligation to determine whether subject

matter jurisdiction exists, even in the absence of a cha llenge from any party. ”); Ruhrgas AG v. Marathon Oil Co.

, 526 U.S. 574, 583

– 84 (1999) (“ subject

- matter delineations must be policed by the c ourts on their own initi ative even at the highest level. ” ); United States v. Cotton , 535 U.S. 625, 630 (2002) (“ subject

- matter jurisdiction

. . . ca n never be forfeited or waived. ” ).
My colleagues do not impart precision to their holding (or not) of waiver; rather, they “observe” that they would probably find waiver since the issue is not clearly within the “Article III context.” Maj. Op. 25 n. 15 . However, considerations of subject m atter jurisdiction are found ational to the tribunal’s power. “It is well settled that no action of the parties can confer subject

- matter jurisdiction on a tribunal and that the principles of estoppel do not apply to vest subject

- matter jurisdiction where Congress has not done so.” Dunklebarger v. Merit Sys. Prot. Bd.

, 130 F.3d 1476, 1480 (Fed. Cir. 1997) (citing Insurance Corp. of Ir eland v. Compagnie des Bauxites de Guinee , 456 U.S. 694, 702 (1982)). The issue of whether the PTAB possesses the power to adjudicate a claim of invalidity involves subject matter jurisdiction, for the dispute must be within the limited scope grante d by the Congress to the PTAB.
This court has an independent obligation to ascertain its own jurisdiction and that of the tribunal below. See Mitchell v. Maurer , 293 U.S. 237, 244 (1934) (“An appe llate federal court must satisfy itself not only of its own jurisdiction, but also that of the lower courts in a cause under review.”). Although the foregoing concerns a court’s review of a lower court’s jurisdiction, the same principle applies to review of an agency’s jurisdiction. See, e.g., Da Cruz v. INS , 4 F.3d 721, 722 (9th Cir. 1993)RETURN MAIL , INC

. v. USPS 3

(considering, sua sponte , whether the BIA lacked jurisdi ction). This inquiry cannot be waived. It is a “judicial function,” and not that of an agency, to decide the limits of the agency's statutory powers. Social Sec. Bd. v. Nierotko , 327 U.S. 358, 369 (1946).
“An agency is but a creature of statute. Any and all authority pursuant to which an agency m ay act ultimat ely must be grounded in an express grant from Congress.” Killip v. Office of Pers. Mgmt. , 991 F.2d 1564, 1569 (Fed. Cir. 1993). See also Sealed Air Corp. v. United States Int ’ l Trade Comm ’n , 645 F.2d 976, 993 (CCPA 1981) (“Any authority delegated or granted to an administrative agency is necessarily limited to the terms of the delega ting statute.”); Gibas v. Saginaw Mining Co. , 748 F.2d 1112, 1117 (6th Cir. 1984) (administrative agencies are vested only with the authority given to them by Co ngress) ; Atchison, Topeka & Santa Fe Ry. Co. v. Interstate Commerce Comm ’n , 607 F.2d 1199, 1203 (7th Cir. 1979) (same). “ Though an agency may promulgate rules or regulations pursuant to authority granted by Congress, no such rule or regulation can confer on the agency any greater authority than that conferred under the governing statute.” Killip

, 991 F.2d at 1569 (citing Bowen v. Georgetown Univ. Hosp. , 488 U.S. 204, 208 (1988)

. The AIA states that a “ person ” can file a CBM petition in the PTO, and if the decision is adverse, that person is bound by the decision in any future litigation. The nature of the “ person ” is a factor in statutory jurisdiction

. S ee, e.g

. , Caterpillar Inc. v. Lewis , 519 U.S. 61, 73, (1996) (“ [T] here was in this case complete divers ity, and ther efore federal subject

- matter jurisdiction, at the time of trial and judgment. ”); United States v. Testan , 424 U.S. 392, 397, 393 (1976) ( “ the measure of the Court of Claims ’ statutory jurisdiction ” “ presents a substantial issue concerning the jurisdiction of the Court of Claims and the relief available in that tribunal. ”) . It is our obligation toRETURN MAIL , INC

. v. USPS 4

assure ourselves of the propriety of the PTAB ’ s exercise of statutory authority. Such obligation cannot be waived.

T he general statutory definition is that a “ person ” does not include the United States and its agenc ies unless expressly provided. It is at least as reasonable to assume that Congress , and those seeking the improvements

p rovided by the A merica I nvents A ct
, knew that “person” did not inc lude the United States

, lest additional comple xities a ppear in the path of enactment of the America Invents Act

. The legislative record does not explore these potential compl exities

, but neither is there any suggestion that the standard rule of exclusion o f the United States from the definition of “ person ” was simply l egislative inadvertence, as my colleagues appear to believe. The Congress cannot be deemed innocent of knowing that the government can indeed be sued for infringement , but only in the Court of Federal Claims ; yet that court is conspicuous ly absent from the designation of tribunals subject to the America Invents Act. See, e.g. , 35 U.S.C. §§ 315(e), 325(e), and AIA § 18(a)(1)(D) ( stating provisions applicable to the PTO, the district courts, and the ITC).

The Covered Business Method statute states tha t “ [a]
person may not file a petition for [CBM review] 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. ” AIA § 18(a)(1)(B) (emphas e s added). The Dictionary Act, 1 U.S.C. § 1, defines “ person ”:
In determining the meaning of any Act of Co ngress, unless the context indicates otherwise — . . . the word ‘ person ’ . . . include[s] corporations, co mpanies, associations, firms, partnerships, societies, and joint stock companies, as well as individuals.RETURN MAIL , INC

. v. USPS 5

The government is conspicuously absent from this defin ition , which pervades the legislative context, and from time t o time receives judicial reinforcement. See, e. g., United States v. United Mine Workers of Am. , 330 U.S. 258 (1947) : In common usage the term [ “ person ” ] does not i nclude the sovereign, and statutes employing it will ordinarily not be construed to do so. Congress made expres s provision, [] 1 U.S.C. § 1, for the term to extend to partnerships and corporation s , and in § 13 of the Act itself for it to extend to ass ociations. The absence of any comparable provision extending the term to sovereign governments i mplies that C ongress did not desire the term to e xtend to them.

Id. at 275. See also, e.g., Wilson v. Omaha Indian Tribe

, 442 U.S. 653, 667 (1979) ( statutes employing the usage

“ person ” are o rdinarily construed to exclude the gover nment ); Lunday

- Thagard Co. v. U.S. Dep ’ t of Interior , 773 F.2d 322, 324 (Temp. Emer. Ct. App. 1985) (“ On several occasions it has been held that the government does not come within the definition of a ‘ person. ’” ) (citing United States v. Cooper Corp. , 312 U.S. 600, 604 (1941) a nd United Mine Workers of Am. , 330 U.S. at 275 ).
Although exceptions may arise, such exceptions wa rrant c onsidered analysis , not presumptive waiver by silence. I n United States v. Cooper Corp.

, the Court guided such analysis : [T] here is no hard and fast rule of exclusion. The purpose, the subject matter, the context, the legi slative history, and the executive interpretation of the statute are aids to construction which may i ndicate an intent, by the use of the term, to bring state or nation with in the sc ope of the law.

Id

. at 605.RETURN MAIL , INC

. v. USPS 6

The long

- standing rule excluding the government from implicit inclusion as a statutory “person” applies to situations where the government would benefit from such inclusion, as well as situations where such inclusion would burde n the government. For example, i n Un ited States v. Fox

, the Court held that a devise of real estate to the Federal government was void because the New York Statute of Wills only permitted devises of land “ to any person capable by law of holding real estate ,” and the federal government was n either a natural nor an artificial

person

. 94 U.S. 315 , 321 (1876)

. The Court stated :
The term ‘ person ’ as here used applies to natural persons, and also to artificial persons, —bodies

po l itic, deriving their exist ence and powers from legislation,

— but cannot be so extended as to i nclude within its meaning the Federal government. It would require an express definition to that e ffect to give it a sense thus extended

. Id

. As summarized in Corpus Juris:
A statute regu lating only persons and corpor ations does not include the government itself u nless a contrary intention is clearly expressed. Thus, the word “ person ” used in a statute will not be construed so as to include the sovereign, whether the United States, or a s tate, or a go vernment agency, or a city or town. However, the word may include the sovereign where the legisl ative intent to do so is manifest or where courts recognize the exception whereby government agencies are only excluded from the operation of

gene ral statutory provisions if their inclusion would result in an infringement upon sovereign governmental powers.
82 C.J.S. Statutes § 391 (citat ions omitted).RETURN MAIL , INC

. v. USPS 7

The CBM statute does not mention infringement litigation in the Court of Federal Claims , while reciting the analogous actions in the district courts and the Intern ati o nal Trade Commission

. My colleagues suggest that the legislative intent was to silently give the United States the benefit of the AIA , but not the burden of the estoppel provision . T he estoppel provision, however, is the quid

pro quo that underl ay enactment of the AIA

. 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 dispu tes without resort to the courts. The government so emph asized, throughout the gestation of the AIA. Then

- Director of the PTO Dudas told the Congress:
[T]he estoppel needs to be quite strong

. . . any i ssue that you raised or could have raised

. . . you can bring up no place else. That second window, from the administration ’ s position is intended to allow nothing

– a comp lete alternative to litigation.
Patent Reform: The Future of American Innovation: Hearing Before the Senate Comm. on the Judiciary , 110th Cong. 13 (2007) (statement of Director Jon Dudas). When the final version of the legislation was enacted, successor

Director Kappos reiterated the importance of the estoppel provision:
If I can say that in my own words also, that I b elieve there are sign ificant advantages for paten tees who successfully go through the post

- grant system

— in this case inter partes review —because of those estoppel provisions. Those estoppel pr ovisions mean that your patent is largely uncha llengeable by the same party.

America Invents Act: Hearing on H.R. 1249 Before the House Comm. on the Judiciary , 112th Cong. 52

– 53 (2011) (statement of Director David Kappos).RETURN MAIL , INC

. v. USPS 8

My colleagues w ould grant the United States the be nefit of post

- grant challenge in the PTO

, but would omit the statut e’ s estoppel against raising the same challeng e in court. Th is statutory balance, of a dministrative cha llenge in exchange for finality

, is the foundation of the America Invents Act

. It may be that recognition of the complexit y of binding the government t o estoppel led to the omission of the government

. We can only speculate as to the reason , but it is clear that the government is not included as a “ person ” subject to the AIA. 1

1 The panel majority states that in this dissent I

“ engage [] in mere speculation that Congress intended to exclude the government from filing petitions despite the lack of a record or any indication that it intended this result. ” Maj. Op. 2 7 . I do not speculate as to the meaning of “person”; its meaning has been defined by Congress for legislativ e use. Nor do I speculate as to the decade of legislative history of the America Invents Act . As Justice Frankfurter wrote, statutory interpretation “ demands awareness of certain presuppositions. ” Some Reflections on the Reading of Statutes , 47 Colum. L. Rev. 527, 537 (1947). The majority ignores the extensive backdrop of law and history on which the AIA was enacted. In doing so, the majority construes the statutory pr ovision in isolation, declining to consider the purpose and intent of the legislatur e in exclusion of the Government from the estoppel provisions. See Richards v. United States , 369 U.S. 1, 11 (1962) ( It is “fundamental that a section of a statute should not be read in isolation from the context of the whole Act, and that in fulfilling o ur responsibility in interpreting legislation, we must not be guided by a single sentence or member of a sentence, but should look to the provisions of the whole law, and to its object and policy. ”) (quotations and citations omitted).RETURN MAIL , INC

. v. USPS 9

The panel majority argues that erring on the side of prudence is “ letting the tail wag the dog. ” Maj. Op. 27

. T he majority assumes that Congress gave no particular thought to whether the government should be subject to the estoppel provision. However, the dominant purpose of finality and economy of litigation is based on the es to ppel provision and inform s any analysis of the statutory plan. See United States v. Morton , 467 U.S. 822, 828 (1984) (“ We do not, however, construe statutory phrases in isolation; we read statutes as a whole. ”).
The panel majority errs in stating that the proper i nference is that the government is a “ person ” under this statute, for the vast weight of statute and precedent requires the opposite inference. One might wonder why the drafters of the America Invents Act did not assure inclusion of the United St ates in post

- grant proceedings, for the government is a participant in the patent system, and a sufficiently frequent plaintiff or defendant to be recognized.
Can my colleagues be correct in concluding that, over the lengthy and vigorous gestation of the A IA, it did not occur to anyone to consider the participation of the go vernment ? If inclusion of the United States and its age ncies was indeed intended, as the majority holds, is this silence merely a matter of legislative error , subject to repair by the j udiciary?
The theory that the United States was accidentally omitted as a “ person ” subject to the AIA is contrary to the vast body of precedent. When the government is excluded

The only “rewriting of the plain language of a statute ,” Maj. Op. 27, comes from the pen of the majority, who ignores the presumption of exclusion of the government from the scope of “person.”RETURN MAIL , INC

. v. USPS 10

on the face of a statute, the presumption that the legisl ature intended to exc lude the government may only be overcome by strong evidence of intent to include

. Such evidence is conspicuously lacking here.
Indeed, inclusion of the government as a “person” , a ssumed by the majority, requires the assumption that legislat ors intended to grant the government access to post

- grant proceedings in the PTAB while also intend ing
to remove the government from the estoppel provision, thereby giving the government “ two bites at the apple ,” in the majority ’ s words. Such an irregular assumption

, with no hint of support in the statute or legislative history

, cannot be countenanced. “ The words of the statute should be read in context, the statute ’ s place in ‘ the overall statutory scheme ’ should be considered, and the problem Congress sought to solv e should be taken into account. ” PDK Labs. Inc. v. U.S. D.E.A. , 362 F.3d 786, 796 (D.C. Cir. 2004) (quoting Davis v. Mich

. Dep ’ t of Treasury , 489 U.S. 803, 809 (1989)).
Even if waiver of a jurisdictional defect were avail able, the court is responsible to assure that waiver co mports with the statutory purpose. See Harris Corp. v. Ericsson Inc. , 417 F.3d 1241, 1251 (Fed. Cir. 2005) ( we

“ retain[ ] case

- by

- case discretion over whether to apply waiver ”). In addition, “[u]n der certain circumstances, we

may con sider issues not previously raised

. . . .” Automa ted Merch. Sys., Inc. v. Lee , 782 F.3d 1376, 1379 (Fed. Cir. 2015). S uch circumstances include whether “ the issue involves a pure question of law and refusal to consider it would result in a miscarriage of justice ” and whether “ the issue presents significant questions of general impact or of great public concern ” or “ the interest of substantial justice is at stake. ” Id . (citations omitted). This question requires resolution.

The statutory record contain s no foundation for this
court ’ s departure from the explicit text of the legislation.RETURN MAIL , INC

. v. USPS 11

The government is not a “ person ” to whom the post

- grant procedures of the AIA are available. Thus I would vacate the decision of the Board, for the proceeding is beyond the Board ’ s statutory authority

. See 2 Richard J. Pierce Jr., Administrative Law Treatise § 14.2, at 1185 (5th ed. 2010) ( “ An agency has the power to resolve a dispute or an issue only if Congress has conferred on the agency statutory jurisdiction to do so. ” ); 5 U.S.C. § 706(2)(c).