Return Mail, Inc. v. United States Postal Service

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, Wash-
ington, 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 & Vesel-
ka, 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”) ap-
peals 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 perform-
ing data processing or other operations used in the prac-
tice, 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 “transi-
tional” program, currently scheduled to sunset in Sep-
tember 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 discov-
ery, 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). Ulti-
mately, Congress intended CBM review, like the pro-
grams 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 undeliv-
erable 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 Reexami-
nation 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 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 han-
dling 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 ad-
dress 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 infor-
mation is then processed, such as by obtaining corre-
sponding updated address data from a computer or
database, and the updated information is then electroni-
cally 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 re-
turned mail to be processed “virtually entirely automati-
cally through the exchange of data files between
computers.” Id. at col. 6 ll. 61–64.
C
In February 2011, after trying unsuccessfully to li-
cense 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 “en-
gage[d] in the unlicensed and unlawful use and infringe-
ment of the invention claimed in the ’548 patent.” 3 J.A.
3302. Return Mail sought relief in the form of “reasona-
ble 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 pa-
tent 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 recov-
ery 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 determi-
nation 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 stand-
ing 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 chal-
lenged 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 as-
pects 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 require-
ment 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 discre-
tion, can require that any person be admitted to adminis-
trative 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 manufac-
ture of a patented invention without license or lawful
right, which falls within the definition of patent infringe-
ment.” J.A. 50. It further held that the PTO, through
regulation regarding the meaning of “charged with in-
fringement,” 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 stand-
ing 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 an-
swered. 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 determi-
nation by the Director whether to institute . . . review
under this section” is “final and nonappealable.” (Empha-
sis 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 contro-
versy 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 legisla-
tive 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 Physi-
cians, 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 in-
stitution 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 institu-
tion 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 interpret-
ing 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 availa-
bility 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 deci-
sion 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 condi-
tion 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 authori-
tatively prescribed by Congress, so that when they act
improperly, . . . what they do is ultra vires”).
The Postal Service’s reliance on Achates is also una-
vailing. There, we held that the PTO’s determination
that a petitioner has satisfied 35 U.S.C. § 315(b)’s statuto-
ry 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 pur-
poses 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 gener-
ally 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 legis-
lature 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 (altera-
tions 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 require-
ment 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 ‘jurisdiction-
al,’ in the sense that their existence is a condition prece-
dent 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 conclu-
sion 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-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 decisions under the
standards set forth in the APA, but those standards allow
us to also set aside agency actions that are “not in accord-
ance 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 ques-
tion of statutory interpretation, we apply de novo re-
view. 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 “infringe-
ment.” But while we recognize there are important
differences between § 1498(a) suits against the govern-
ment and suits for infringement against private parties,
these differences, along with Return Mail’s other argu-
ments, are insufficient to compel a conclusion that Con-
gress 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 in-
terpretation 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 Chev-
ron, 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 in-
fringement, which is only a tort, creates no cause of action
cognizable in the court of claims.”). In other words, ab-
sent 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 compensa-
tion under § 1498 is premised on a theory of an eminent
domain taking under the Fifth Amendment.”). The gov-
ernment 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 provi-
sion “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 other-
wise 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 attor-
ney 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 gov-
ernment 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 contrac-
tors. . . . [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 “in-
fringement” 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 “in-
fringement” 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 character-
ized 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 legisla-
tive 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 reason-
able 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 ‘un-
doubted 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 gov-
ernment 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 (“When the government has infringed, it is
deemed to have ‘taken’ [a] patent license under an emi-
nent domain theory.”).
b
We turn next to the scope of the term “sued for in-
fringement” 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 “infringe-
ment.” 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 construc-
tion, 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 de-
fine 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 dic-
tionaries 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.” Infringe-
ment, Black’s Law Dictionary (9th ed. 2009). Those rights

13Return 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 inven-
tion,” 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. Inter-
national 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 condi-
tions not present in the statute’s text. See Norfolk Dredg-
ing Co. v. United States, 375 F.3d 1106, 1111 (Fed. Cir.
2004) (holding that courts must avoid “add[ing] condi-
tions” 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 infringe-
ment of a patent. When a patent owner brings a § 1498(a)
suit, it alleges that the government has unlawfully inter-
fered with its rights by manufacturing or using the pa-
tented 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 in-
fringement triggers its obligation to pay just compensa-
tion. 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 asser-
tion 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 allow-
ing the government, when sued under § 1498(a), to peti-
tion 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] pa-
tent, 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 pro-
ceeding before the International Trade Commis-
sion 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 “recog-
nize[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 govern-
ment from the estoppel provision to Congress, as prece-
dent 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 claim-
ant 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 Ser-
vice discusses the significance, if any, of the word “person”
as used in § 18(a)(1)(B). This issue is distinct and inde-
pendent from the dispute before us regarding the mean-
ing 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 improper-
ly 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.” Gus-
tafson 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 provi-
sions 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 reasona-
ble to assume that Congress did not intend to include the
United States because it would have complicated enact-
ment 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 en-
gages 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 meth-
od patents.” Versata, 793 F.3d at 1325. Congress there-
fore 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) en-
sures 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 dis-
sent observes that the CBM statute makes no mention of
infringement litigation in the Claims Court—the principal
reason why the government can circumvent these estop-
pel 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 re-
spect 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 neverthe-
less 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 unde-
liverable 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 re-
turned 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 infor-
mation 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 pro-
vided, posting return mail data records on a net-
work 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 argu-
ments 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 ab-
stract 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 pa-
tent-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 ab-
stract 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 di-
rected to a specific improvement in the area of returned-
mail 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 insuffi-
cient 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 identi-
fying 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, convention-
al 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. Ultramer-
cial, 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 Reexamina-
tion 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 them-
selves.”); see also Accenture Glob. Servs., GmbH v. Guide-
wire 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 “im-
prove[s] the performance of the computer system itself”
recites patent-eligible subject matter (alteration in origi-
nal)). 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 ab-
stract idea into patent-eligible subject matter.
3
Finally, we address Return Mail’s request for clarifi-
cation on “the role that preemption plays” in the § 101
analysis. Appellant’s Opening Br. 5. Return Mail propos-
es 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 ab-
stract 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 preemp-
tion “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, “ques-
tions 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 patent-
ineligible 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 considera-
tions 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 great-
er 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 mat-
ter.’”).
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 suffi-
cient 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 deci-
sion.
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. How-
ever, 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 subject-
matter jurisdiction exists, even in the absence of a chal-
lenge 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 founda-
tional 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 appel-
late 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 jurisdic-
tion). 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 ultimate-
ly 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 delegat-
ing 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 Con-
gress); 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 there-
fore 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 complex-
ities 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 Con-
gress, unless the context indicates otherwise— . . .
the word ‘person’ . . . include[s] corporations, com-
panies, 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 defini-
tion, 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 in-
clude 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 asso-
ciations. The absence of any comparable provision
extending the term to sovereign governments im-
plies that Congress did not desire the term to ex-
tend 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 govern-
ment); 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 war-
rant 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 legis-
lative history, and the executive interpretation of
the statute are aids to construction which may in-
dicate 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 in-
clude within its meaning the Federal government.
It would require an express definition to that ef-
fect to give it a sense thus extended.
Id. As summarized in Corpus Juris:
A statute regulating only persons and corpora-
tions does not include the government itself un-
less 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 gov-
ernment agency, or a city or town. However, the
word may include the sovereign where the legisla-
tive 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 liti-
gation in the Court of Federal Claims, while reciting the
analogous actions in the district courts and the Interna-
tional 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 empha-
sized, throughout the gestation of the AIA. Then-Director
of the PTO Dudas told the Congress:
[T]he estoppel needs to be quite strong . . . any is-
sue 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, successor-
Director Kappos reiterated the importance of the estoppel
provision:
If I can say that in my own words also, that I be-
lieve there are significant advantages for patent-
ees who successfully go through the post-grant
system—in this case inter partes review—because
of those estoppel provisions. Those estoppel pro-
visions mean that your patent is largely unchal-
lengeable 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 ben-
efit 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 chal-
lenge 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 pro-
vision 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 in-
ference 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 gov-
ernment? If inclusion of the United States and its agen-
cies 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 legisla-
ture 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”, as-
sumed 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 availa-
ble, the court is responsible to assure that waiver com-
ports 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 . . . .” Automat-
ed 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).