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.

______________________ 

Decided: August 28, 2017

______________________ 

RICHARD L. RAINEY, Covington & Burling LLP, Washington, DC, argued for appellant. Also represented by 

MICHAEL S. SAWYER; ERIC MICHAEL ADAMS, DOUGLAS H.

ELLIOTT, The Elliott Law Firm, PLLC, Bellaire, TX; LEE 

LANDA KAPLAN, JEFFREY POTTS, Smyser, Kaplan & Veselka, LLP, Houston, TX.

DAVID ALLEN FOLEY, JR., Commercial Litigation 

Branch, Civil Division, United States Department of 

Justice, Washington, DC, argued for appellees. Also 

represented by BENJAMIN C. MIZER, JOHN FARGO. 
2 RETURN MAIL, INC. v. USPS

______________________ 

Before PROST, Chief Judge, NEWMAN and WALLACH,

Circuit Judges.

Opinion for the court filed by Chief Judge PROST. 

Dissenting opinion filed by Circuit Judge NEWMAN. 

PROST, Chief Judge. 

Patent assignee Return Mail, Inc. (“Return Mail”) appeals 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 business 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. On the merits, the Board

determined that all of the challenged patent claims were

directed to ineligible subject matter under 35 U.S.C. 

§ 101. We affirm.

I. BACKGROUND

A 

In 2011, Congress enacted the Leahy-Smith America 

Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 

which created several new quasi-adjudicatory proceedings 

before the PTO for determining the patentability 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).

This appeal arises from a CBM review, which unlike 

IPR or PGR, is limited to CBM patents—i.e., patents “that 

claim[] a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial 
RETURN MAIL, INC. v. USPS 3

product or service,” with the exception of “technological 

inventions.” AIA § 18(d)(1). CBM review is also a “transitional” program, currently scheduled to sunset in September 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 makes a threshold determination 

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 petition is unpatentable”

or that “the petition raises a novel or unsettled legal 

question that 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 involves discovery, the submission 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 culminates 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). The Board must issue its final written decision 

within one year after the institution of CBM review, 

except in narrow circumstances. Id. § 326(a)(11). Ultimately, Congress intended CBM review, like the programs for IPR and PGR, “to provide [a] ‘quick and cost 

effective alternative[]’ 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 simplicity, 

we cite directly to portions of the U.S. Code that AIA § 18 

employs. 
4 RETURN MAIL, INC. v. USPS

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 underlying 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 undeliverable due to an inaccurate or obsolete address for the 

intended recipient. ’548 patent col. 1 ll. 20–24. The 

patent underwent ex parte reexamination, resulting in 

the cancellation of all original claims and the issuance of 

new claims 39–63 in January 2011.2 Ex Parte Reexamination Certificate 6,826,548 C1. 

According to its specification, “[t]he processing of mail 

that is returned to sender historically has been a timeconsuming labor-intensive process for high volume mail 

users.” ’548 patent col. 1 ll. 39–42. For instance, “[e]ven 

with the availability of address updating services to aid in 

researching for the correct address,” the process of handling returned mail “[wa]s substantially a manual one 

subject to human error and delays.” Id. at col. 1 ll. 39–51.

The claimed invention of the ’548 patent purportedly 

“overcomes the historical problems with prior art manual 

handling” and “does so quickly, more accurately, and at 

substantially less cost.” Id. at col. 1 ll. 55–59. It teaches 

encoding useful information, such as the name and address of intended recipients, on mail items in the form of a

two-dimensional barcode. Id. at col. 2 ll. 4–5, col. 2 l. 66–

col. 3 l. 15. Undeliverable mail items are returned to a 

 

2 References to the ’548 patent throughout this 

opinion include the Ex Parte Reexamination Certificate.
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 information is then processed, such as by obtaining corresponding updated address data from a computer or 

database, and the updated information is then electronically provided to the sender to be used as the sender

deems appropriate. 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 automatically through the exchange of data files between 

computers.” Id. at col. 6 ll. 61–64.

C 

In February 2011, after trying unsuccessfully to license 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, had “engage[d] in the unlicensed and unlawful use and infringement of the invention claimed in the ’548 patent.”3 J.A. 

3302. Return Mail sought relief in the form of “reasonable and entire compensation.” 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 patent. It raised several 

grounds for unpatentability, including patent-ineligible 

subject matter under § 101, anticipation under § 102, and

 

3 If “an invention described in and covered by a patent 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 

owner may obtain a remedy by filing an “action against 

the United States in the [Claims Court] . . . for the recovery of his reasonable and entire compensation for such 

use and manufacture.” 28 U.S.C. § 1498(a).
6 RETURN MAIL, INC. v. USPS

obviousness under § 103. 

In response, Return Mail not only raised patentability 

arguments but also contested the Postal Service’s ability 

under the AIA to petition for CBM review. The Board

held that the Postal Service had statutory “standing” and

instituted review of all of the challenged claims under

§ 101 for ineligible subject matter.4 In its final written 

decision, the Board later reiterated its standing determination and held that the challenged claims were drawn to 

ineligible subject matter under § 101.5 

Return 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. DISCUSSION

On appeal, Return Mail argues that we should vacate 

the Board’s decision because the Postal Service failed to 

meet the statutory standing requirement to petition for 

CBM review. It also argues in the alternative 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 standing is distinct from that of whether a party is properly 

before an agency. We 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 instituted CBM review under 

§ 102 but held in the final written decision that the challenged claims were not anticipated. Anticipation is not at 

issue in this appeal.
RETURN MAIL, INC. v. USPS 7

matter.6 Return Mail does not challenge any other aspects of the CBM review proceeding.

A 

The “starting point” for determining whether a party 

is properly before an agency is “the statute that confers 

standing before that agency.” Ritchie v. Simpson, 170 

F.3d 1092, 1095 (Fed. Cir. 1999). Because the PTO is an 

administrative agency, the Article III standing requirement 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 discretion, can require that any person be admitted to administrative proceedings, whether or not that person . . . has 

satisfied the . . . constitutional standing requirements 

recognized 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 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.” (Emphases 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 manufacture of a patented invention without license or lawful 

right, which falls within the definition of patent infringement.” J.A. 50. It further held that the PTO, through 

regulation regarding the meaning of “charged with infringement,” 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 subject 

matter. Appellant’s Opening Br. 48 n.3.
8 RETURN MAIL, INC. v. USPS

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

After the Board instituted the underlying proceeding, 

Return Mail continued to submit that the Postal Service

lacked standing to seek CBM review. The Board again 

rejected that contention and “incorporate[d]” its previous 

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 determination that 

the Postal Service had standing to petition for CBM 

review, a question that we have never previously answered. The AIA authorizes appeals from the Board’s 

final written decision in a CBM review proceeding. 35 

U.S.C. § 329. But the statute also includes a “No Appeal”

provision, 35 U.S.C. § 324(e), stating that “[t]he determination by the Director whether to institute . . . review 

under this section” is “final and nonappealable.” (Emphasis added). The Postal Service argues that § 324(e) bars 

this court from revisiting whether “the Board erred in 

instituting the proceeding in the first place,” based in part 

on the determination that the Postal Service had 

§ 18(a)(1)(B) standing. Appellees’ Br. 17.

As the Supreme Court recently reiterated, there is a 

“‘strong presumption’ in favor of judicial review” when 

interpreting “statutes that may limit or preclude 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 controversy 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 legislative intent “by ‘clear and convincing’ evidence.” Versata 

Dev. Grp. v. SAP Am., Inc., 793 F.3d 1306, 1320 (Fed. Cir. 

2015) (quoting Bowen v. Mich. Acad. of Family Physicians, 476 U.S. 667, 671–72 (1986)). To the extent any 

“doubt about congressional intent exists, the general 

presumption favoring judicial review of rights-changing 

administrative action is controlling.” Id.

Even though the Board initially determined in its institution decision that the Postal Service had standing, 

that fact alone does not preclude judicial review. The AIA 

draws a “clear and common-sense distinction” between a 

final written decision 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. Some 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 previously made at the institution phase. We have held that the availability of judicial 

review does not hinge on such “timing” or “[o]verlap” of 

issues. Versata, 793 F.3d at 1319. Thus, even if 

§ 18(a)(1)(B) standing is best addressed at the institution 

stage so as to avoid unnecessary proceedings, that the 

Board first decided it at the institution stage in this case 

is not enough, by itself, to bar judicial review.

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.
10 RETURN MAIL, INC. v. USPS

that the Postal Service had standing to petition for CBM 

review is not reviewable. Both cases interpreted the scope

of 35 U.S.C. § 314(d), an analogous no-appeal provision 

for the IPR program. Because the pertinent language of 

§ 314(d) is identical to that of § 324(e), case law interpreting 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 related 

cases where we interpret [related statutory provisions] 

similarly.”). Nevertheless, we conclude that Cuozzo and 

Achates are distinguishable and do not dictate the availability of judicial review in this case. 

In Cuozzo, the Supreme Court interpreted § 314(d) to 

bar judicial review of determinations 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 quotation marks omitted). 

The Court held that the dispute at issue—whether the 

petitioner met a statutory requirement to set forth 

grounds for an IPR petition with particularity—was

barred by § 314(d) from judicial review because it merely 

amounted to an “ordinary dispute” about the PTO’s decision to institute and was grounded in “a statute closely 

related to th[e] decision to institute.” Id. at 2139, 2142. 

Here, in contrast, whether a party is statutorily allowed 

to petition for CBM review does not amount to “little more 

than a challenge to the [PTO’s] conclusion” about the

petition’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, “reasonable likelihood” of 
RETURN 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. 

The Board’s determination of whether a party is qualified 

under § 18(a)(1)(B) to petition for CBM review is a condition 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) (explaining that federal 

agencies’ “power to act and how they are to act is authoritatively prescribed by Congress, so that when they act 

improperly, . . . what they do is ultra vires”). 

The Postal Service’s reliance on Achates is also unavailing. There, we held that the PTO’s determination 

that a petitioner has satisfied 35 U.S.C. § 315(b)’s statutory 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 authority to cancel that patent is unaffected. 

We disagree. 

Achates is distinguishable based on differences in the 

statutory framework for IPR and CBM review. First, for 

IPR proceedings, any “person who is not the owner of [the 

challenged] 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, 136 S. Ct. at 2143. In contrast, by 

requiring a petitioner 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 par-

 

success under 35 U.S.C. § 314(a) is immaterial for purposes of this case.
12 RETURN MAIL, INC. v. USPS

ties who have some stake in the outcome. If a party is 

barred by § 18(a)(1)(B) from petitioning for CBM review of 

a patent, it 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 generally 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 legislature 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 patent through CBM 

revew. 

Although the PTAB may issue a final written decision 

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 

the PTAB “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 petition 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 

statutory 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 Congress).
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 (alterations in original) (quoting Henderson ex rel. Henderson v. 

Shinseki, 562 U.S. 428, 435 (2011)). Unlike the IPR time 

bar which is simply a procedural requirement that rights

be exercised in a timely manner, § 18(a)(1)(B) relates to a 

party’s right to seek CBM review in the first instance.

There is no doubt that, despite the AIA’s no-appeal 

provisions, judicial review remains available on questions 

of “whether the [Board] exceeded statutory limits on its 

authority to invalidate.” Versata, 793 F.3d at 1319; see 

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 (restricted to determinations of 

whether to institute) and “our long tradition of judicial 

review of government actions that alter the legal rights of 

an affected person.” Versata, 793 F.3d at 1319. For 

example, in Versata 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 

provision limits the Board’s authority to invalidate a 

patent. Id. at 1320. The § 18(a)(1)(B) standing requirement at issue here appears in the same subsection and

similarly limits the Board’s authority to invalidate a 

patent through CBM review. Even though it is not 

phrased in terms of what the Director can or cannot do, 

Congress placed an express limitation on the reach of the 

CBM review program, a “special review regime” that is 

only available for an eight-year transitional period. Id. 

Where determinations are “fundamental or ‘jurisdictional,’ in the sense that their existence is a condition precedent to the operation of the statutory scheme[,] [such] 

fundamental requirements are . . . indispensable to the 
14 RETURN MAIL, INC. v. USPS

application of the statute . . . because the Congress has so 

provided explicitly.” Crowell v. Benson, 285 U.S. 22, 54–

55 (1932) (footnote omitted). 

The legislative history of the AIA supports our conclusion that questions related to a party’s standing touch 

upon the PTO’s ultimate authority to act. Congress 

explained that the PTO’s ability to conduct CBM review 

“is limited in certain respects” and highlighted that the 

PTO “cannot” grant a petition “unless 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 absent a petition filed by a party with the 

requisite standing confirms that § 18(a)(1)(B) provides a 

fundamental limitation on the PTO’s authority. 

For 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 review 

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-andcapricious review under the Administrative Procedure Act 

(“APA”), while Return Mail contends that de novo review 

applies. It is true that we review PTO decisions under the 

standards set forth in the APA, but those standards allow 

us to also set aside agency actions that are “not in accordance 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 question of statutory interpretation, we apply de novo review.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).

Return Mail makes several cogent arguments why a 

§ 1498(a) suit, in some sense, is not one for “infringement.” But while we recognize there are important 

differences between § 1498(a) suits against the government and suits for infringement against private parties, 

these differences, along with Return Mail’s other arguments, are insufficient to compel a conclusion that Congress intended to exclude a government-related party 

sued under § 1498(a) from being able to petition for CBM 

review. 

 

11 The Postal Service submits that the Board’s interpretation 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 defer to those PTO remarks under Chevron, U.S.A. v. Natural Resources 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 

without interpreting it. See 37 C.F.R. § 42.302(a) (stating 

that a petitioner for CBM review must have been “sued 

for infringement or . . . charged with infringement” and 

then defining only “charged with infringement”). We do 

not give deference to an agency regulation that merely 

“parrot[s]” statutory language. Gonzales v. Oregon, 546 

U.S. 243, 257 (2006).
16 RETURN MAIL, INC. v. USPS

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 sovereign 

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 Mfg. 

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 infringement, which is only a tort, creates no cause of action 

cognizable in the court of claims.”). In other words, absent 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). 

Congress responded in 1910 by enacting the precursor to 

§ 1498(a), under which the government assumes liability 

for the “use or manufacture” of a claimed invention “by or 

for the United States without license of the owner thereof 

or lawful right to use or manufacture the same.” 28 

U.S.C. § 1498(a).

Section 1498(a) “is an eminent domain statute,” 

wherein the government “has consented thereunder only 

to be sued for its taking of a patent license.” Decca Ltd. 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 settled that recovery of reasonable compensation under § 1498 is premised on a theory of an eminent 

domain taking under the Fifth Amendment.”). The government therefore remains immune from suit under the 
RETURN MAIL, INC. v. USPS 17

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

remedy 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 

“infringement.” We disagree. It is true that this provision “creates its own independent cause of action,” which 

is “‘only parallel and not identical’” to an infringement 

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 held that certain relief otherwise 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 attorney fees, and § 287 damages 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, relying 

on our statement that the government “is not a putative 

infringer but is deemed a licensee.” Motorola, 729 F.2d at 

772 (emphasis added). But Motorola says that the government is “not in the position of an ordinary infringer,” 

not that the government cannot infringe. 729 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.” 

Id. at 768 n.3 (emphasis added). And, to be sure, we and 

our predecessor court 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 Government or its contractors. . . . [U]nder § 1498(a) the Government has waived its 

sovereign 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 infringement of a patent” (footnote omit-
18 RETURN MAIL, INC. v. USPS

ted)).

Return Mail separately points out that the word “infringement” 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 “infringement” and “infringement” of certificate 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 precursor to 

§ 1498(a)). We are not persuaded that the absence of the 

word “infringement” 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 

“infringement” may actually support a reading that 

Congress also understood infringement to be the basis for 

governmental liability in the patent context. The legislative history of § 1498(a) can be credibly interpreted to 

support this understanding. See, e.g., H.R. Rep. No. 61-

1288, at 1 (1910) (noting that the precursor to § 1498(a) 

was intended “to enlarge the jurisdiction of the Court of 

Claims so that said court may entertain suits against the 

United States for the infringement or unauthorized use of 

a patented invention, in certain cases, and award reasonable 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 

Opening Br. 43 (arguing that the government “has ‘undoubted authority . . . to exert the power of eminent 

domain’ over a patented invention”). But the text of 
RETURN MAIL, INC. v. USPS 19

§ 1498(a) provides that liability 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 preexisting license or lawful right to do so. Cf. Leesona, 599 

F.2d at 965 (“When the government has infringed, it is 

deemed to have ‘taken’ [a] patent license under an eminent domain theory.”).

b 

We turn next to the scope of the term “sued for infringement” 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 infringement 

of the patent” or “charged with infringement under that 

patent.” Section 18 does not define the term “infringement.”12

The Postal Service argues that 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 on the context, the subject matter, legislative 

history, and executive interpretation.” 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 established 

that arguments not raised in the opening brief are 

waived.”).
20 RETURN MAIL, INC. v. USPS

§ 1498 action.” Appellees’ Br. 29. Return Mail appears to 

acknowledge that the ordinary meaning of “infringement” 

is broad. See Appellant’s Opening Br. 44 (“[T]he term 

‘infringement’ 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 invention, 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 cannot be 

sued for “infringement” as defined in that statute.

Applying fundamental canons of statutory construction, we agree with the Postal Service that being sued 

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 define a term, “words will be interpreted as taking their 

ordinary, contemporary, common meaning” at the time 

that Congress enacted the statute. Perrin v. United 

States, 444 U.S. 37, 42 (1979). Courts 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 “infringement” in the patent 

law context refers to “[a]n act that interferes with one of 

the exclusive rights of a patent[] . . . owner.” Infringement, Black’s Law Dictionary (9th ed. 2009). Those rights 

 

13 Return Mail’s § 1498(a) complaint accused the 

Postal Service of “infringing” the ’548 patent in multiple 

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 

Impression 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 prevent 

others from [using, selling, or importing an item].”). 

Accordingly, patent infringement encompasses “[t]he 

unauthorized making, using, offering to sell, selling, or 

importing into the United States of any patented invention,” which, not surprisingly, closely tracks the language 

of the Patent Act. Patent Infringement, Black’s Law 

Dictionary (9th ed. 2009) (citing 35 U.S.C. § 271(a)). 

But nothing in the text of § 18(a)(1)(B) indicates an 

intent to restrict “infringement” to suits that fall under 

the Patent Act. Congress 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 

infringement. 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. International Trade Commission, 796 F.3d 1338 (Fed. Cir. 

2015) (en banc), we referred to § 271 as “the statutory 

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 import infringing 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 in-
22 RETURN MAIL, INC. v. USPS

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 limited to 

infringement under § 271 would impose additional conditions not present in the statute’s text. See Norfolk Dredging Co. v. United States, 375 F.3d 1106, 1111 (Fed. Cir.

2004) (holding that courts must avoid “add[ing] conditions” 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 infringement of a patent. When a patent owner brings a § 1498(a) 

suit, it alleges that the government has unlawfully interfered with its rights by manufacturing or using the patented invention. Those activities “come[] within the 

scope of the right to exclude granted in 35 U.S.C. 

§ 154(a)(1).” Zoltek, 672 F.3d at 1327. Indeed, in Zoltek,

we “defined ‘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 

directly infringe the patent.” Id. at 1323. Liability under 

this provision, like liability under § 271(a), requires a 

showing that “each limitation is present in the accused 

product or process,” such that the government “would be 

liable for direct infringement of the patent right for such 

use or manufacture if [it] was a private party.” Id. at 

1319 (emphasis added). Accordingly, § 1498 encompasses 

“any direct infringement that would normally require a 

license by a private party.” Id. at 1320. Infringement is a 

prerequisite to § 1498(a) liability; the government’s infringement triggers its obligation to pay just compensation. See James v. Campbell, 104 U.S. 356, 357–58 (1881) 

 

fringement, and it was not related to construing the 

statute at issue here.
RETURN MAIL, INC. v. USPS 23

(holding that a patent “confers upon the patentee an 

exclusive property in the patented invention which cannot 

be appropriated or used by the government 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 contemplation of the contingency of the assertion 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 allowing the government, when sued under § 1498(a), to petition for CBM review may create tension with the estoppel 

provision for CBM review. AIA § 18(a)(1)(D) provides: 

The petitioner in a transitional proceeding that 

results in a final written decision under [35 U.S.C. 

§ 328(a)] with respect to a claim in a [CBM] patent, 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 proceeding before the International Trade Commission under [19 U.S.C. § 1337], that the claim is 

invalid on any ground that the petitioner raised 

during that transitional 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 “recognize[d] the importance of quiet title to patent owners to 

ensure continued investment resources.” Appellant’s 

Reply Br. 24–25 (alteration in original) (quoting H.R. Rep. 
24 RETURN MAIL, INC. v. USPS

No. 112-98, pt. 1, at 48 (2011)). Yet construing 

§ 18(a)(1)(B) to allow the government to petition 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 proceeding. 

The Postal Service does not dispute the oddity of this 

result and acknowledges that the government would not 

be subject to estoppel under this construction. Appellees’ 

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, we leave the soundness of exempting the government from the estoppel provision to Congress, as precedent 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 claimant seeking public funds.”).

The dissent does not disagree with our interpretation 

of “sued for infringement” but, instead, believes that the 

word “person” dictates a different result. We respectfully 

disagree. First, neither Return Mail nor the Postal Service discusses the significance, if any, of the word “person” 

as used in § 18(a)(1)(B). This issue is distinct and independent from the dispute before us regarding the meaning of the phrase “sued for infringement.” 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 waived.”); see also Nat. 

Res. Def. Council, Inc. v. EPA, 25 F.3d 1063, 1074 (D.C. 

Cir. 1994) (“[F]ailure to raise a particular question of 

statutory construction before an agency constitutes waiv-
RETURN MAIL, INC. v. USPS 25

er of the argument in court.”).15

Second, even assuming the issue is not waivable or is 

important 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 presumption 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 Mine Workers of Am., 

330 U.S. at 275. But when determining the scope of the 

term “person,” there is “no hard 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 any presumption that the term 

“person” excludes the government carries less weight here 

because the statute “confer[s] a benefit or advantage” to 

the government, rather than “a burden or limitation.” Id.; 

see also Will v. Mich. Dep’t of State Police, 491 U.S. 58, 64 

(1989) (stating that the exclusion of sovereigns from 

“person” “is particularly 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 dissent, 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 address 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 dissent’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. 
26 RETURN MAIL, INC. v. USPS

that Congress has subjected the States to liability to 

which they had not been subject before”). 

Contrary to the dissent’s allegation that we improperly construe this provision “in isolation” from the context of 

the whole Act, Dissenting Op. 8–9 n.1, we apply the

“premise that [a] term should be construed, if possible, to 

give it a consistent meaning throughout [an] Act.” Gustafson v. Alloyd Co., 513 U.S. 561, 568 (1995). The AIA 

does not appear to use the term “person” to exclude the 

government in other provisions. For example, its provisions on intervening rights provide that “[a]ny proposed 

amended or new claim determined to be patentable and

incorporated into a patent” after an IPR, PGR, or CBM 

review has “the same effect as that specified in [35 U.S.C. 

§ 252] for reissued patents on the right of any person who 

made, purchased, or used within the United States, or 

imported 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 emphasis 

on the “statutory balance” Congress created through the 

AIA’s estoppel provisions to support its interpretation of 

this statute. Dissenting Op. 7–9. Yet it relies on these 

estoppel provisions—a policy consideration—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 reasonable to assume that Congress did not intend to include the 

United States because it would have complicated enactment of the AIA. Dissenting Op. 4. Yet it concedes that 

the legislative record does not explore what the dissent 

characterizes as these “potential complexities,” 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 engages 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. Indeed, it is not our role to speculate on these 

policy concerns in the absence of Congressional guidance 

and rely on them to justify rewriting the plain language of 

a statute. To do so would be the classic example of letting 

the tail wag the dog.17 For the reasons set forth above, we 

believe the better reading of “person” in § 18(a)(1)(B) does 

not exclude the government. 

The creation of the CBM review framework stemmed 

from a “general concern, including within the halls of 

Congress, regarding litigation abuse over business method patents.” Versata, 793 F.3d at 1325. Congress therefore created CBM review as a “special review regime, over 

and above any other authority the [Board] might have,” 

for quickly reviewing such patents viewed to be especially 

prone to litigation abuse. Id. at 1320. This regime was so 

unusual that Congress placed an eight-year time limit on 

it. Id. It is not surprising, then, that § 18(a)(1)(B) ensures 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 provided 

none, to curtail the ability of the government to initiate a 

CBM proceeding when, like a party sued in federal dis-

 

17 To further support its estoppel argument, the dissent observes that the CBM statute makes no mention of 

infringement litigation in the Claims Court—the principal

reason why the government can circumvent these estoppel provisions under our interpretation. Dissenting Op. 7. 

But again, the solution to the dissent’s concern is for 

Congress to “correct” this imbalance should it see fit, 

rather than allow this potential inequity to drive our 

interpretation of the plain language of the statute. 
28 RETURN MAIL, INC. v. USPS

trict court or the ITC, it has interests at stake with respect 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 the 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

infringement.”

B 

Next, we address whether the Board erred in holding 

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 information: 

information “indicating whether the sender wants a 

corrected address to be provided for the addressee.” Ex 

Parte Reexamination Certificate, ’548 patent col. 2 ll. 4–6. 

If the sender wants updated address information, that 

information is transferred to the sender to enable it to 

update its mailing address files. Id. at col. 2 ll. 17–20. If 

not, information regarding the returned mail is nevertheless posted on a network so that the sender can access it. 

Id. at col. 2 ll. 21–24. 

The parties treat claim 42 of the ’548 patent as repre-

 

18 The parties have not pointed to any evidence in 

the legislative history that compels us to reach a different 

statutory interpretation. 
RETURN MAIL, INC. v. USPS 29

sentative for purposes of the § 101 inquiry:19 

42. A method for processing a plurality of undeliverable mail items, comprising: 

receiving from a sender a plurality of mail items, 

each including i) a written addressee, and ii) 

encoded data indicating whether the sender 

wants a corrected address to be provided for the 

addressee; 

identifying, as undeliverable mail items, mail 

items of the plurality of mail items that are returned subsequent to mailing as undeliverable; 

decoding the encoded data incorporated in at least 

one of the undeliverable mail items; 

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 

decoded data; 

if the sender wants a corrected address provided, 

electronically transferring to the sender information 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 provided, posting return mail data records on a network that is accessible to the sender to enable the 

sender to access the records.

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

 

19 Return Mail does not advance any separate arguments with respect to dependent claims 43–44.
30 RETURN MAIL, INC. v. USPS

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 abstract 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 patent-ineligible concept. Alice Corp. v. CLS Bank Int’l, 134 

S. Ct. 2347, 2355 (2014) (citing Mayo Collaborative Servs. 

v. Prometheus Labs., Inc., 566 U.S. 66, 77–78 (2012)). 

First, one “determine[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 elements that is sufficient to ensure that the patent in 

practice amounts to significantly more than a patent upon 

the [ineligible concept] itself.” Id. (alteration in original) 

(internal quotation marks omitted).

1 

Under Alice step 1, Return Mail contends that claims 

42–44 may involve the abstract idea of “relaying mailing 

address data” but are not directed to such an abstract 

idea. Appellant’s Opening Br. 48–50. The Supreme Court 

has cautioned that, “lest [the exclusionary principle] 

swallow all of patent law,” an invention that simply 

“involves” an abstract idea is not patent ineligible under 

§ 101. Alice, 134 S. Ct. at 2354. Return Mail focuses on 

two reasons why claims 42–44 merely involves an abstract idea: first, the claims do not preempt other systems 

for relaying mailing address data; and second, they are 

directed to a specific improvement to technology for 

relaying mailing address data. 

We agree with the Board that claims 42–44 are di-
RETURN MAIL, INC. v. USPS 31

rected to the abstract idea of “relaying mailing address 

data.” J.A. 17. Claim 42 recites “receiving from a sender 

a plurality of mail items,” “identifying undeliverable mail 

items,” “decoding . . . encoded data,” “creating output 

data,” and “determining if the sender wants a corrected 

address.” Ex Parte Reexamination Certificate, ’548 

patent col. 2 ll. 1–24. These steps are analogous to the 

steps of “collecting data,” “recognizing certain data within 

the collected data set,” and “storing that recognized data 

in memory,” which we found to be abstract under Step 1 

in Content Extraction & Transmission LLC v. Wells Fargo 

Bank, National Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 

2014), cert. denied, 136 S. Ct. 119 (2015). And “[t]he mere 

combination 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 are directed to a specific improvement in the area of returnedmail processing is unavailing. Appellant’s Opening 

Br. 50. “[L]imit[ing] the abstract idea to a particular 

environment,” here a mail processing system with generic 

computing technology, “does not make the claims any less 

abstract for the step 1 analysis.” In re TLI Commc’ns 

LLC Patent Litig., 823 F.3d 607, 613 (Fed. Cir. 2016). The 

claims at issue are not analogous to claims “directed to a 

specific implementation 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). Encoding and decoding mail 

recipient information—including whether the sender 

wants a corrected address—are processes that can, and 

have been, performed in the human mind. The claims 

here simply recite that existing business practice with the 

benefit of generic computing technology. That is insufficient to make the claims any less abstract under step 1.
32 RETURN MAIL, INC. v. USPS

2 

We also reject Return Mail’s argument that claims 

42–44 are patent-eligible under Alice step 2 for reciting 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 identifying 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 decoded, such as sending the data 

or making it available to the sender, 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 together, 

suffice to transform the abstract idea into patent-eligible 

subject matter. They are akin to the routine, conventional steps of “updating an activity log, requiring a request 

from the consumer to view [an] ad, restrictions on public 

access, and use of the Internet,” which we have held do 

not supply an inventive concept under step 2. Ultramercial, 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 appear in 

the claim language. Appellant’s Opening Br. 15–16. In 

addition, Return Mail points to hardware, such “a mail 

sorter, optical scanner, databases, application 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; instead, the claims focus only on

encoding and decoding certain information and placing 

that information over a network. Ex Parte Reexamination Certificate, ’548 patent col. 2 ll. 1–24. Thus, there is 

no basis in the claim language to import these steps and
RETURN MAIL, INC. v. USPS 33

components. Synopsys, Inc. v. Mentor Graphics Corp., 839 

F.3d 1138, 1149 (Fed. Cir. 2016) (“The § 101 inquiry must 

focus on the language of the Asserted Claims themselves.”); see also Accenture Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1345 (Fed. Cir. 2013) 

(“[T]he important inquiry for a § 101 analysis is to look to 

the claim.”). 

Return Mail attempts to analogize the claims before 

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. Hotels.com, LP, 773 F.3d 1245 

(Fed. Cir. 2014). We disagree. In those cases, the 

claimed inventions went beyond “merely the routine or 

conventional use of the Internet” or computer systems. 

DDR, 773 F.3d at 1259; see also BASCOM, 827 F.3d at 

1351 (holding that a software-based invention that “improve[s] the performance of the computer system itself” 

recites patent-eligible subject matter (alteration in original)). Here, in contrast, claims 42–44 do not improve the 

functioning 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 transforms an otherwise abstract idea into patent-eligible subject matter.

3 

Finally, we address Return Mail’s request for clarification on “the role that preemption plays” in the § 101 

analysis. Appellant’s Opening Br. 5. Return Mail proposes that we hold claims to be drawn to patent-eligible 

subject matter “if the practical effect of those claims 

would not preempt other commercially deployed and 

patentably distinct systems that involve the same abstract idea.” Id. at 53. In other words, it asks us to adopt 

a test for determining whether claims are “directed to” an
34 RETURN MAIL, INC. v. USPS

abstract idea by looking to whether 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. For 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 computer components performing conventional 

activities.”).

But we have consistently held that claims that are 

otherwise directed 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 complete preemption “misses the mark”); FairWarning, 839 F.3d at 1098 

(“But even assuming that the . . . patent does not preempt 

the field, its lack of preemption does not save these 

claims.”); Intellectual Ventures I LLC v. Symantec Corp., 

838 F.3d 1307, 1320–31 (Fed. Cir. 2016) (same); OIP 

Techs., Inc. v. Amazon.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 limited to [a particular] setting do not make 

them any less abstract.”). As we have explained, “questions 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, the absence of complete 
RETURN MAIL, INC. v. USPS 35

preemption does not demonstrate patent eligibility.” Id. 

Arguments about the lack of preemption risk cannot save 

claims that are deemed to only be directed to patentineligible subject matter.

Relatedly, we reject Return Mail’s implication 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 anticipated 

under 35 U.S.C. § 102 or obvious under 35 U.S.C. § 103. 

A “pragmatic analysis of § 101 is facilitated by considerations 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); see also Manual of Patent Examining Procedures

§ 2103 “Patent 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 requirement 

separate from other patentability inquiries. See Mayo, 

566 U.S. at 90 (recognizing that the § 101 inquiry and 

other patentability inquiries “might sometimes overlap,” 

but that “shift[ing] the patent-eligibility inquiry entirely 

to these [other] sections risks creating significantly greater legal uncertainty, while assuming that those sections 

can do work that they are not equipped to do”); Diehr, 450 

U.S. 175 at 190 (“The question . . . of whether a particular 

invention is novel is ‘wholly apart from whether the 

invention falls into a category of statutory subject matter.’”). 

At bottom, claims 42–44 of the ’548 patent recite the 

use of barcode functionality and computer systems to 

provide updated address information, which is not sufficient to impart patent eligibility. See OIP Techs., 788 at
36 RETURN MAIL, INC. v. USPS

1363 (“[R]elying on a computer to perform routine tasks 

more quickly or more accurately is insufficient to render a 

claim patent eligible.”), cert. denied, 136 S. Ct. 701 (2015).

III. CONCLUSION

For the foregoing reasons, we affirm the Board’s decision.

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.

______________________ 

NEWMAN, Circuit Judge, dissenting. 

An important threshold issue before the court is 

whether the United States and its agency the United 

States Postal Service are within 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. However, matters 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 issues 
2 RETURN MAIL, INC. v. USPS

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

526 U.S. 574, 583–84 (1999) (“subject-matter delineations 

must be policed by the courts on their own initiative even 

at the highest level.”); United States v. Cotton, 535 U.S. 

625, 630 (2002) (“subject-matter jurisdiction . . . can 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 matter jurisdiction are foundational 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 Ireland 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 granted 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 appellate 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 jurisdiction). 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 may act ultimately 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 delegating 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 Congress); 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. See, 

e.g., Caterpillar Inc. v. Lewis, 519 U.S. 61, 73, (1996) 

(“[T]here was in this case complete diversity, and therefore 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 to 
4 RETURN MAIL, INC. v. USPS

assure ourselves of the propriety of the PTAB’s exercise of 

statutory authority. Such obligation cannot be waived.

The general statutory definition is that a “person” 

does not include the United States and its agencies unless 

expressly provided. It is at least as reasonable to assume

that Congress, and those seeking the improvements 

provided by the America Invents Act, knew that “person” 

did not include the United States, lest additional complexities appear in the path of enactment of the America 

Invents Act. 

The legislative record does not explore these potential

complexities, but neither is there any suggestion that the 

standard rule of exclusion of the United States from the 

definition of “person” was simply legislative 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 conspicuously 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 that “[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) (emphases added). The Dictionary Act, 1 

U.S.C. § 1, defines “person”: 

In determining the meaning of any Act of Congress, unless the context indicates otherwise— . . . 

the word ‘person’ . . . include[s] corporations, companies, 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 definition, which pervades the legislative context, and from 

time to 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 include the sovereign, and statutes employing it will 

ordinarily not be construed to do so. Congress 

made express provision, [] 1 U.S.C. § 1, for the 

term to extend to partnerships and corporations, 

and in § 13 of the Act itself for it to extend to associations. The absence of any comparable provision 

extending the term to sovereign governments implies that Congress did not desire the term to extend 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 ordinarily construed to exclude the government); 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) and 

United Mine Workers of Am., 330 U.S. at 275). 

Although exceptions may arise, such exceptions warrant considered analysis, not presumptive waiver by 

silence. In 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 legislative history, and the executive interpretation of 

the statute are aids to construction which may indicate an intent, by the use of the term, to bring 

state or nation within the scope of the law.

Id. at 605.
6 RETURN MAIL, INC. v. USPS

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 burden the government. For example, in United 

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 neither 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 

politic, deriving their existence and powers from 

legislation,—but cannot be so extended as to include within its meaning the Federal government. 

It would require an express definition to that effect to give it a sense thus extended. 

Id. As summarized in Corpus Juris:

A statute regulating only persons and corporations does not include the government itself unless 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 state, or a government agency, or a city or town. However, the 

word may include the sovereign where the legislative intent to do so is manifest or where courts 

recognize the exception whereby government 

agencies are only excluded from the operation of 

general statutory provisions if their inclusion 

would result in an infringement upon sovereign 

governmental powers.

82 C.J.S. Statutes § 391 (citations 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 International 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. The estoppel provision, however, is the quid 

pro quo that underlay 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 disputes 

without resort to the courts. The government so emphasized, throughout the gestation of the AIA. Then-Director 

of the PTO Dudas told the Congress:

[T]he estoppel needs to be quite strong . . . any issue 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 complete 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, successorDirector Kappos reiterated the importance of the estoppel 

provision:

If I can say that in my own words also, that I believe there are significant advantages for patentees who successfully go through the post-grant 

system—in this case inter partes review—because 

of those estoppel provisions. Those estoppel provisions mean that your patent is largely unchallengeable 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).
8 RETURN MAIL, INC. v. USPS

My colleagues would grant the United States the benefit of post-grant challenge in the PTO, but would omit 

the statute’s estoppel against raising the same challenge 

in court. This statutory balance, of administrative challenge in exchange for finality, is the foundation of the 

America Invents Act. It may be that recognition of the 

complexity of binding the government to 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. 27. I do not speculate as to the meaning 

of “person”; its meaning has been defined by Congress for 

legislative 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 provision in isolation, declining to consider the purpose and 

intent of the legislature 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 our 

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. 

The 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 estoppel 

provision and informs 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 inference 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 States 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 AIA, it did not 

occur to anyone to consider the participation of the government? If inclusion of the United States and its agencies was indeed intended, as the majority holds, is this 

silence merely a matter of legislative error, subject to 

repair by the judiciary?

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.” 
10 RETURN MAIL, INC. v. USPS

on the face of a statute, the presumption that the legislature intended to exclude 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”, assumed by the majority, requires the assumption that

legislators intended to grant the government access to 

post-grant proceedings in the PTAB while also intending

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 solve 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 available, the court is responsible to assure that waiver comports 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]nder certain circumstances, we 

may consider issues not previously raised . . . .” Automated Merch. Sys., Inc. v. Lee, 782 F.3d 1376, 1379 (Fed. Cir. 

2015). Such 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 contains 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).