Ginsburg Back on the Bench for Postal Service Patent Snarl

People stand in line to enter the Supreme Court in Washington on Dec. 4, 2017. (AP Photo/Jacquelyn Martin)

WASHINGTON (CN) – Justice Ruth Bader Ginsburg was an active questioner during Supreme Court oral arguments Tuesday, appearing on the bench for the first time since a December hospital stay.

In hour-long arguments on the government’s ability to petition the Patent and Trademark Office for review of a patent, Ginsburg asked the first question this morning and followed up with four more questions.

After undergoing surgery on Dec. 21 to have two cancerous growths removed from her left lung, the 85-year-old Ginsburg missed 11 arguments but still participated in the cases through written submissions to the court.

Doctors discovered the growths while treating Ginsburg for a November fall in her office that caused the Clinton appointee to break three ribs.

In the case before the justices today, the Federal Circuit upheld a decision that invalidated a patent by the company Return Mail for a barcode that can sort undeliverable mail items.

After it was accused of by Return Mail of infringement, the U.S. Postal Service availed itself of a provision of the America Invents Act that allows a “person” to petition for review of already issued patents for certain reasons. 

Critical to arguments this morning was whether the government is a “person” able to take advantage of the law’s patent-review processes.

Covington and Burling attorney Beth Brinkmann told the court that Congress never meant to open the processes up to the government. She said if the government could use these procedures, it would give it unique options to challenge patents and upset a “linchpin” of the structure Congress created in the law.

Under the AIA, parties that bring petitions for review at the Patent and Trademark Office — as the government did in this case — cannot then relitigate the issue before a federal district court or the International Trade Commission. The bar does not apply to the Court of Federal Claims, where lawsuits challenging the government’s use of a patent are heard.

As Brinkmann explained, this combination would mean the government, and no other party, would be able to both use the AIA review process and go forward in court.

That argument prompted Ginsburg to ask how central the unequal bar from court is to Return Mail’s case.  

“Your position is that the estoppel provision is the linchpin, you just said, but your position would be the same even if there were no estoppel provision,” Ginsburg said. “Is that not so?”

Ginsburg later questioned Brinkmann’s argument that in other areas of law Congress explicitly said when it wanted the government included in the definition of “person.” Ginsburg challenged her to explain why lawmakers would have wanted to exclude the government from this arrangement.  

“But why would Congress want to leave a government agency out of this second look if the idea is to weed out patents that never should have been given in the first place?” Ginsburg asked.

Arguing for the government, Deputy Solicitor General Malcolm Stewart said including the executive branch in the definition of “person” under the AIA procedures would make perfect sense in the law’s broader context and that other patent laws have used the term “person” to include the government.

Still, Ginsburg pressed Stewart on why Congress would have wanted to create a system in which the government has an advantage over anyone else making similar claims.  

“What about Ms. Brinkmann’s linchpin that the estoppel provision – that the government effectively gets two bites of the apple, everybody else gets just one?” Ginsburg asked.

Stewart also faced pushback from the court’s two newest justices – Trump appointees Neil Gorsuch and Brett Kavanaugh, both of whom wondered why Congress wouldn’t have been more clear when setting up a system in which one executive branch agencies goes before another.  

“Shouldn’t we, as Justice Sotomayor suggested, at least expect some sort of clarity from Congress when it wants that unusual arrangement to reign?” Gorsuch asked.

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