United States Postal Service v. Return Mail Inc

1. Case Identification

• Case #: CBM2014-00116
• Patent #: 6,826,548
• Filed: April 15, 2014
• Petitioner(s): United States Postal Service (USPS)
• Patent Owner(s): Return Mail, Inc.
• Challenged Claims: 39-44

2. Patent Overview

• Title: System and Method for Processing Return Mail
• Brief Description: The ’548 patent describes a system for automating the processing of returned, undeliverable mail. The invention aims to eliminate the labor-intensive manual task of updating mailing address records by using conventional electronic means to decode information on returned mail, obtain corrected addresses, and transmit the updated data back to the original sender.

3. Grounds for Unpatentability

Ground 1: Anticipation over Park - Claims 39-44 are anticipated by Park under 35 U.S.C. §102.

• Prior Art Relied Upon: Park (Korean Patent No. 2000-003860).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Park, which disclosed a postal processing system for returned mail, taught every limitation of the challenged claims. Park’s system read customer barcode information on returned mail items to determine sender preferences (the decoding step), used that information to search a database for updated recipient information (the obtaining step), and electronically transmitted return status information, including updated addresses, to senders (the electronically transmitting step). Petitioner asserted that Park’s disclosure of processing bulk mail, reading barcodes post-mailing, and using a notification server to send updated data directly mapped to the elements of independent claims 39, 41, and 42, as well as their dependent claims.

Ground 2: Anticipation over 1997 ACS - Claims 39-44 are anticipated by 1997 ACS under 35 U.S.C. §102.

• Prior Art Relied Upon: 1997 ACS (An Address Change Service publication from the USPS, dated July 1997).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that the USPS’s own pre-existing Address Change Service (ACS) rendered the claims invalid. The 1997 ACS system taught mailers to place an ancillary service endorsement (e.g., "ADDRESS SERVICE REQUESTED") or a participant code on mail pieces. When mail was undeliverable, a postal carrier or a Computerized Forwarding System (CFS) would decode this information to determine the sender wanted a corrected address. The system would then obtain an updated address from the Change of Address (COA) database and electronically transmit a notification file to the participating mailer. Petitioner argued this automated electronic process for providing address corrections met all limitations of the challenged claims.

Ground 3: Obviousness over Uhl and Jatkowski - Claims 42-44 are obvious over Uhl in view of Jatkowski under 35 U.S.C. §103.

• Prior Art Relied Upon: Uhl (Patent 6,292,709), Jatkowski (Patent 6,457,012).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued Uhl taught nearly all elements of claim 42, including a method for processing return mail by decoding an "advance instruction" printed on a mail piece to determine if the sender wants a corrected address. However, Petitioner noted Uhl did not explicitly disclose the alternative claimed step of posting return mail data to a network if the sender does not want a corrected address. Jatkowski was argued to supply this limitation by disclosing a method of updating address data where requests could be initiated from a client system over a network, thereby teaching the concept of posting data records on an accessible network.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Uhl’s mail processing system with Jatkowski's network-based data access to create a more robust and efficient service. This would allow senders to not only receive corrected addresses automatically but also to access data for uncorrected mail items via a network, which was a known business objective for improving data management.
  • Expectation of Success: The combination involved applying a conventional network data access method (Jatkowski) to a known mail processing system (Uhl). A POSITA would have reasonably expected this integration to work predictably, as it leveraged well-understood technologies to achieve the foreseeable benefit of enhanced data accessibility and efficiency.

• Additional Grounds: Petitioner also asserted that all challenged claims were unpatentable under 35 U.S.C. §101 as directed to the abstract idea of relaying mailing address data using only generic computer components. Further, Petitioner argued that claims 39-44 were invalid under 35 U.S.C. §305 for being impermissibly broadened during an earlier ex parte reexamination by removing key limitations present in the original patent's claims.

4. Key Claim Construction Positions

• Petitioner argued for the Broadest Reasonable Interpretation (BRI) for all claim terms, contending the claims required no specific computer hardware.
• "Processor": Proposed construction was "one that processes," arguing that this could encompass a human employee manually processing data. This construction supported the argument that the claims were directed to a fundamental, abstract business practice rather than a specific technological implementation.
• "Electronically transmitting" and "network": Proposed constructions were broad, covering any "conventional telecommunications data line" and any "interconnected system," such as a phone or mail-center network. Petitioner argued these terms were used generically in the patent and did not limit the claims to a specific technological environment, further reinforcing the abstract idea challenge.

5. Key Technical Contentions (Beyond Claim Construction)

• Priority Date Challenge: A central contention was that claims 39-44 were not entitled to the priority date of the provisional application (January 24, 2001). Petitioner argued that the key limitation of "determining that the sender wants a corrected address" was not disclosed in the provisional application and constituted new matter added in the later non-provisional filing. This argument was critical to establishing that Park (filed in 2000) and Krause (claiming priority to 2000) qualified as prior art under §102.

6. Relief Requested

• Petitioner requested institution of a Covered Business Method (CBM) post-grant review and cancellation of claims 39-44 of the ’548 patent as unpatentable.