by Dennis Crouch
Return Mail recently filed its petition for certiorari with the Supreme Court, seeking a broader scope of patent eligibility under 35 U.S.C. § 101. You may remember that Return Mail won its case before the Supreme Court a few years ago. Return Mail, Inc. v. United States Postal Service, 587 U.S. 618 (2019) (federal agencies are not “any person” under the AIA and therefore cannot challenge patents via IPR). [Return Mail Eligiblity Petition]
In its new petition, Return Mail frames the question presented as: Whether the claimed invention is ineligible for patent protection under the abstract-idea exception to 35 U.S.C. §101. This formulation echoes the language used in prior petitions that garnered U.S. Gov’t support.
Return Mail’s patent (U.S. Patent No. 6,826,548) claims a method for processing undeliverable mail. The invention involves encoding information from the sender, including the recipient’s name and address, into a two-dimensional barcode on mail items. If a piece of mail is undeliverable, it is sent to a processing location where the barcode is scanned and decoded. The system then interacts with a database of corrected addresses and, depending on the sender’s preference, either provides a corrected address or notifies the sender that the mail was undeliverable.
The PTAB had originally cancelled the claims and that decision affirmed on appeal. However, it was ultimately vacated by the Supreme Court in its 2019 decision. Action then moved to the Court of Federal Claims which invalidated Return Mail’s patent under § 101. The Federal Circuit affirmed in a no-opinion R.36 judgment.
Return Mail’s petition highlights what it sees as ongoing confusion in the lower courts regarding the application of the Alice/Mayo framework. It points to deep divisions among district courts, the USPTO, and the Federal Circuit on how to apply the two-step test. The petition cites several Federal Circuit judges who have called for Supreme Court intervention, describing the current state of § 101 jurisprudence as “baffling” and a “morass of conflicting precedent.”
Truthfully, the petition looks strikingly similar to those previously filed by others on the eligibility issue. Return Mail hopes that this time the result will be different.
What is the point or value of a cert petition or its grant on §101 on patent claims already held invalid in an IPR §103 decision sustained by the Fed. Cir.? As a practical matter, no district court or the Court of Claims on remand here is going to decide contrary to that prior Fed. Cir. sustained Return Mail §103 decision, irrespective of its being vacated by the Sup. Ct. for having an invalid [government] IPR petitioner.