Return Mail, Inc. v. United States Postal Service, No. 16-1502 (Fed. Cir. 2017)
Annotate this CaseReturn Mail’s patent is directed to processing mail items that are undeliverable due to an inaccurate or obsolete address, using scannable bar codes. Ex parte reexamination resulted in the cancellation of all original claims and the issuance of new claims in 2011. After trying unsuccessfully to license the patent to the Postal Service, Return filed suit under 28 U.S.C. 1498(a), alleging infringement. The Postal Service sought covered business method (CBM ) review, asserting patent-ineligible subject matter, 35 U.S.C. 101 and anticipation, sections 102 and 103. Return raised patentability arguments and contested the Postal Service’s ability under the America Invents Act (AIA), 125 Stat. 284, to petition for CBM review. The Board held that the Postal Service had statutory “standing,” instituted review, and held that the challenged claims were drawn to ineligible subject matter. The Federal CIrcuit affirmed, first agreeing that the Postal Service has standing. While there are differences between section 1498(a) suits against the government and suits for infringement against private parties, those differences are insufficient to exclude a government-related defendant under section 1498(a) from seeking CBM review. The claims at issue simply recite existing business practices with the benefit of generic computing technology, which is not sufficient to impart patent eligibility.
The court issued a subsequent related opinion or order on August 9, 2019.
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