February 19
Return Mail, Inc. v. United States Postal Service
No. 17-1594, Fed. Cir.
Preview by Michelle Divelbiss, Online Editor
It has been almost a decade since the Supreme Court decided that corporations are people, and now the Court looks to whether the government is a “person.” Under the Leahy-Smith America Invents Act (“AIA”), patent disputes can be adjudicated administratively through post-grant review, inter partes review, and a transitional covered business method (“CBM”) review. The AIA allows “a person who is not the owner of a patent [to] file . . . a petition to institute” the post-grant review or inter partes review proceedings to challenge the validity of a patent. 35 U.S.C. §§ 311(a), 321(a) (2012). To file a petition for a CBM review, “a person” or their “real party in interest or privy” must have been sued for or charged with patent infringement. AIA, Pub. L. No. 112-29, § 18(a)(1)(B), 125 Stat. 284, 330 (2011). The question before the Court is whether the government is a “person” who can file a petition to institute these methods of review.
Petitioner Return Mail Inc. (“Return Mail”) obtained a patent on an invention that expedites the process of identifying the correct destination address for undeliverable mail by scanning barcodes instead of relying on the alphanumeric address. The United States Postal Service (“USPS”) was interested in a license agreement for the use of this invention. During negotiations to work out an agreement, USPS announced the use of its own system to expedite the handling of undeliverable mail. After Return Mail informed USPS that the use of that system would infringe on its patent, USPS filed a petition to institute an ex parte review of Return Mail’s patent. (An ex parte review is a nonadversarial proceeding in which someone other than the patent owner asks the Patent Office to review the patentability of an issued patent.) The Patent Office found that Return Mail’s invention was patentable.
Some years later, Return Mail sued USPS for infringing on its patent. That suit lasted three years, and USPS subsequently petitioned the Patent and Trademark Appeals Board (“Board”) for a CBM review, alleging that the invention was not patentable. Because USPS is an “independent establishment” of the U.S. government, the government is the real party in interest. Return Mail claimed that the government was not a “person” and could therefore not institute the CBM proceeding. The Board disagreed with Return Mail’s argument; instead, the Board indicated that because the government was sued over the patent, it had standing to seek the review. Years later, the Board found the patent invalid based on patent-ineligible subject matter.
The Court of Appeals for the Federal Circuit affirmed the Board’s decision, further stating that if the government is not a “person” for purposes of the AIA, it is for the legislature to clarify, not the courts. Now, the Supreme Court is gearing up to weigh in on yet another statutory interpretation involving personhood. Law professors have submitted briefs as amici curiae supporting Petitioner Return Mail, including The George Washington University Law School’s own Dmitry Karshtedt.
February 20
Mission Product Holdings, Inc. v. Tempnology, LLC
No. 17-1657, 1st Cir.
Preview by Christopher Lin
In November 2012, Tempnology, a company that developed and owned the intellectual property rights in sports attire and accessories that were designed to remain at a low temperature during exercise, entered into a licensing agreement with Mission Product Holdings (“MPH”). The agreement granted MPH a nonexclusive intellectual property license, a nonexclusive trademark license (issued separately from the IP license), and a limited exclusive distribution rights license.
In September 2015, Tempnology filed for bankruptcy due to operation losses and sought to reject its agreement with MPH under 11 U.S.C. § 365(a) (2012), which allows the debtor-in-possession to “reject any executory contract” so long as the court approves. The bankruptcy court approved the rejection but allowed MPH to retain the intellectual property rights pursuant to 11 U.S.C. § 365(n). The court determined the scope of the retainable rights to include the intellectual property license, but not the trademark license or the distribution rights license, and held that Tempnology’s rejection of the agreement terminated the latter two licenses. On appeal, the First Circuit affirmed the bankruptcy court’s disposition.
In granting MPH’s petition and setting off to resolve a circuit split, the Supreme Court limited the issue to one question: whether a debtor-licensor’s rejection of a license agreement under the Bankruptcy Code terminates the licensee’s rights that would have otherwise survived the rejection under applicable nonbankruptcy law.
MPH argues that the rejection of an agreement under the Bankruptcy Code merely constitutes a breach of contract on the debtor-licensor’s part. According to MPH, such a rejection does not rescind an agreement or revoke a counterparty’s right, nor does it take back interests (such as an IP license) that the debtor-licensor transferred to the counterparty prior to bankruptcy, because the estate should not enjoy a greater interest in the assets than the debtor-licensor would have outside of bankruptcy. MPH further contends that the policy of the Bankruptcy Code does not support an interpretation allowing for the termination of third party rights in the debtor’s estate assets upon bankruptcy. According to MPH, such an interpretation will result in the termination of all the counterparty’s rights in the debtor’s assets, which is contrary to bankruptcy principles.
In response, Tempnology argues that when a debtor rejects an agreement under the Bankruptcy Code, the counterparty’s sole remedy is a prepetition claim for damages, with certain exceptions that do not apply to the instant case. Tempnology contends that upon rejection of the agreement, the Bankruptcy Code reduced MPH’s rights to a claim for damages, and that adding any more remedies would make the enumerated exceptions meaningless. Tempnology further responds to MPH’s policy argument and asserts that MPH’s rule will frustrate the Bankruptcy Code’s policy of equality in asset distribution by enhancing the interests of some counterparties to rejected agreements above other creditors. Finally, Tempnology claims that a trademark license does not create a property interest in the trademark, but merely a right to use it, which is unenforceable after rejection.
February 25
Manhattan Community Access Corp. v. Halleck
No. 17-1702, 2d Cir.
Preview by Jeremy Allen-Arney
DeeDee Halleck produced programs for Manhattan Neighborhood Network (“MNN”), a privately-operated public access channel. In one of Halleck’s programs, her fellow Respondent Jesus Melendez expressed his displeasure with MNN staff by stating “I have to wait until they are fired, or they retire, or someone kills them so that I can come and have access to the facility here.” Brief for Petitioners at 9, Manhattan Cmty. Access Corp. v. Halleck, No. 17-1702 (U.S. filed Dec. 4, 2018) (emphasis omitted).
After its employees complained about Halleck’s program, MNN prohibited Halleck from airing the offending program in the future and claimed the program violated a zero-tolerance harassment policy. Halleck decided to bring suit, alleging MNN violated her First Amendment rights. The district court, however, granted MNN’s motion to dismiss because Halleck failed to allege that MNN was a state actor. The Second Circuit reversed and held that “[a] public access channel is the electronic version of the public square,” Halleck v. Manhattan Cmty. Access Corp., 882 F.3d 300, 304–06 (2d Cir. 2018), relying in large part on Justice Kennedy’s concurrence in Denver Area Educational Telecommunications Consortium, Inc. v. FCC, 518 U.S. 727, 793–94 (1996) (Kennedy, J., concurring). In order to decide this case, the Court must decide whether a privately-operated public access television channel qualifies as a state actor for First Amendment purposes.
Petitioners argue that the Second Circuit did not ask whether MNN is a state actor before deciding that it qualifies as a public forum, even though the Supreme Court’s decisions in Lugar v. Edmondson Oil Co., 457 U.S. 922, 936 (1982), and other cases require just that. Brief for Petitioners, supra, at 23. Petitioners further contend that if the Second Circuit had reached this public forum question, it should have concluded that MNN does not qualify as a public forum because New York does not retain control over its board. Id. at 38; see also Lebron v. Nat’l R.R. Passenger Corp., 513 U.S. 374, 399–400 (1995).
Respondents contend that the Supreme Court should let the Second Circuit ruling stand, and advance a narrow vision of the public forum doctrine: “A public forum cannot be created by a private party or by government inaction. . . . [T]he government must intentionally open the forum for use by the public to speak.” Brief for Respondents at 18, Halleck, No. 17-1702 (U.S. filed Jan. 11, 2019). Accordingly, Respondents argue that New York intentionally created its public access channels as public forums by adopting a “first-come, first-served” policy with respect to programming, making channel operators unable to exercise the discretion normally associated with private forums. See id. at 21.
February 26
United States v. Haymond
No. 17-1672, 10th Cir.
Preview by John Hindley
Haymond puts front and center the competing values of retributive justice for those who are guilty of the heinous crime of possessing child pornography and upholding the constitutional rights of the accused.
Andre Ralph Haymond was found guilty of possessing child pornography under 18 U.S.C. § 2252 (2012). Subsequently, he was sentenced to 38 months in prison, which was within the statutory requirement of a sentence of no more than 10 years, see id. § 2252(b)(2), and 10 years of supervised release, see id. § 3583(k). As part of his supervised release, Haymond was required to, inter alia, register his name in the national sex offender registry, not commit a federal, state, or local crime, or view or possess child pornography. Brief for the United States at 8, United States v. Haymond, No. 17-1672 (U.S. filed Dec. 17, 2018). In October 2015, about two years after being released from prison, a probation officer found child pornography on Haymond’s phone.
The district court judge later found by a preponderance of the evidence that this constituted a violation of Haymond’s release. His punishment: another five years of prison followed by five years of supervised release. See Brief for Respondent at 8, United States v. Haymond, 17-1672 (U.S. filed Jan 18, 2019). Breaching the supervised release of a Class C felony, which includes possessing child pornography, imposes a prison sentence of two years, according to the relevant statute. See 18 U.S.C. § 3583(e)(3). In 2003, however, Congress added § 3583(k), which specifically addresses sex offenders, and gives discretion to district court judges to sentence defendants to a minimum of five years and up to life in prison for committing another sex offense. See Adam Walsh Child Protection and Safety Act of 2006, Pub. L. No. 109-248, § 141(e)(2), 120 Stat. 587, 603. It is worth noting that Haymond’s sentence for breaching his supervisory release was longer than his original sentence. Haymond appealed his sentence to the Tenth Circuit, arguing that § 3583(k) violates his Fifth and Sixth Amendment rights because (1) it takes away “the sentencing judge[’s] discretion to impose a punishment within the statutorily prescribed range” and (2) it punishes him for new conduct without being convicted by a jury beyond a reasonable doubt. Brief of Respondent in Opposition at 11, United States v. Haymond, 17-1672 (U.S. filed Sept. 13, 2018).
The Tenth Circuit agreed with Haymond, holding that the statute is “unconstitutional and unenforceable” because it required a judge, and not a jury, to find facts in order to impose a mandatory sentence on the defendant for subsequent conduct. See United States v. Haymond, 869 F.3d 1153, 1160, 1168 (10th Cir. 2017). Ultimately, the court excised the offending provision in § 3583(k). See id. at 1168. To support its holding, the Tenth Circuit relied heavily on United States v. Booker, in which the Supreme Court held that the federal sentencing guidelines violated the Sixth Amendment because they allowed a judge to find, by a preponderance of the evidence, additional facts in order to impose longer sentences in addition to the jail time that was already required by the original offense of which the defendant was found guilty by a jury. See 543 U.S. 220, 226–27 (2005). The Tenth Circuit remanded the case so the defendant could be sentenced only under § 3583(e)(3). See Haymond, 869 F.3d at 1168.
The United States appealed, arguing that Court jurisprudence draws a line between facts “relevant to the imposition of a sentence,” where a defendant is entitled to a jury, and facts “relevant to the administration of a sentence,” where there is no right to a jury. Brief for the United States at 23–24, Haymond, 17-1672 (U.S. filed Dec. 17, 2018). In other words, the jury right extends to “criminal prosecutions,” which do not include the sentencing for a supervisory release violation. Id. at 24–28 (quoting U.S. Const. amend. VI). According to the government, “Congress was entitled to identify certain types of supervised-release violations following convictions” that could receive harsher penalties. Id. at 22.
What is peculiar about this case is that the Court granted certiorari even though there is not a circuit split on the matter. This is not a frequently litigated issue and no other circuit has questioned the constitutionality of the statute. See Brief of Respondent in Opposition at 20–23, Haymond, 17-1672 (U.S. filed Sept. 13, 2018).
Mont v. United States
No. 17-8995, 6th Cir.
Preview by Ian K. Bryant-Smith
This case seeks to clarify the interaction between two federal sentencing statutes. Under 18 U.S.C. § 3583(i) (2012), federal courts are authorized to retroactively revoke supervised release after the period of supervised release has expired “for any period reasonably necessary for the adjudication of matters arising before its expiration if, before its expiration, a warrant or summons has been issued on the basis of an allegation of [a violation of the supervised release agreement].” But under 18 U.S.C. § 3624(e), a period of supervised release “does not run” while a prisoner “is imprisoned in connection with a conviction for a Federal, State, or local crime.” In Mont, the Supreme Court will rule on whether a period of incarceration between arrest and sentencing for a state crime, which was then credited toward the sentence, qualifies as being imprisoned under § 3624(e).
On March 6, 2012, Jason Mont was released from federal prison after serving seven years on drug and gun charges. Immediately upon release he began a five-year term of supervised release. In May 2015, he was arrested on state marijuana charges and released on bond pending trial. On June 1, 2016, he was arrested again on state charges and incarcerated in the Mahong County Jail pending trial. On October 16, 2016, he plea-bargained for a six-year prison sentence that included time served. In November, the federal court scheduled a hearing to adjudicate the government’s claim that Mont had violated the terms of his supervised release, but ultimately delayed those proceedings until after Mont’s state sentence had been finalized. The district court found that a summons had been issued on November 1, but this later turned out not to have been the case. The five-year period after Mont’s release expired on March 6, 2017. The final sentencing order was published on March 21. On March 30, the federal district court held that Mont’s state convictions had violated the terms of his supervised release and issued a warrant for his arrest. At a hearing on the violations, the federal court sentenced Mont to an additional 42 months, to run consecutively to the state sentences.
Mont argued that the district court lacked authority to re-arrest him on March 30 because the five-year supervised release period had expired on March 6, and that the court’s lack of authority was especially problematic considering that the November 1 summons had never actually been issued. But the United States argued that § 3583(i) gave the court continued jurisdiction because the period since the expiration of the supervised release period was a reasonable delay, and the district court agreed. The Sixth Circuit affirmed.
On appeal, Mont maintains that the district court had no jurisdiction for two reasons. First, he argues that § 3624(e) does not pause the clock on a supervised release period when a prisoner is being held in presentencing detention for separate state charges. Because pretrial detention is not punishment for the commission of a crime, he maintains that that time does not qualify. Second, he argues that § 3583(i) requires an assertion of jurisdiction prior to the expiration of the supervised release term, and that because the summons was not actually issued this assertion never took place. The language of the statute suggests that it was intended to be jurisdictional, he claims, and once the time of its jurisdiction has expired there is no way for the court to reclaim that jurisdiction.
The United States counters on two grounds. First, it argues that § 3624(e) is broadly worded and that the “in connection with” language clearly applies to pretrial detention. It looks to the purpose of supervised release programs; they are intended to assist former inmates with their transition back into society, and time spent in jail (regardless of whether that is pretrial or postconviction) is not time that helps with that transition. According to the United States, if a prisoner were able to double-count time in jail as time towards supervised release, he or she could conceivably complete a supervised release program and be set free into the world without actually spending any time outside of a jail or prison. Second, the United States argues that, at minimum, the supervised release period stopped running on October 16, 2016, when Mont pled guilty to the state crimes. And if that were the case, the United States contends, the five-year period would not yet have expired when the federal district court issued its warrant.
February 27
The American Legion v. American Humanist Ass’n
No. 17-1717, 4th Cir.
Preview by Michelle Divelbiss, Online Editor
Is the shape of a cross unconstitutional? The “Peace Cross” is a Celtic-style Latin cross that serves as a memorial to veterans at the Bladensburg World War I Veterans Memorial in Maryland. The cross at issue, standing since 1925, was established by private citizens to honor soldiers who lost their lives during World War I; crosses have been a symbol of fallen soldiers throughout many wars. In 1961, Petitioner, The American Legion, conveyed the cross and the land on which it sits to the Maryland-National Capital Park and Planning Commission (“Commission”). Two cases have been consolidated and the Commission is also a petitioner. The land was conveyed to the public Commission because it was in the middle of a traffic roundabout and it was not feasible for a private organization to continue the upkeep.
Respondent, the American Humanist Association (“Association”) alleged that the cross’s presence on public land violated the Establishment Clause. Although the District Court found the memorial to be constitutional, the Fourth Circuit reversed and found that the cross has “‘inherent religious meaning’ that ‘easily overwhelm[ed]’ the government’s secular purposes . . . [and therefore] ‘endors[es]’ Christianity.” Brief for The American Legion Petitioners at 11, Am. Legion v. Am. Humanist Ass’n, No. 17-1717 (U.S. filed Dec. 17, 2018).
It is unclear whether the Supreme Court will undertake review based on the “coercive test” or the “endorsement test.” Petitioners claim that the cross does not “coerce religious belief, practice, or financial support” and is therefore not in violation of the Establishment Clause. Id. at 15. Petitioners also claim that the cross does not endorse religion because it is only a commemorative memorial. Additionally, the Court will address whether the Commission’s upkeep of the memorial is considered “excessive entanglement with religion” and therefore violative of the First Amendment. Id. at i. With more than fifty amicus briefs submitted in the consolidated cases, this case is being closely watched by both religious and secular organizations.
