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29 August 2017Patents

Federal Circuit delivers boost to US Postal Service

The US Postal Service (USPS) has been cleared of any wrongdoing in a lawsuit brought against it by a company claiming that ‘return to sender’ technology infringed its patent.

Return Mail owns US patent number 6,826,548, which relates to “the processing of mail items that are undeliverable due to an inaccurate or obsolete address for the intended recipient”.

It had tried to license the patent to USPS, but the government agency refused in February 2011, before Return Mail filed a suit in a claims court.

USPS then filed an invalidity suit with the US Patent and Trademark Office (USPTO) claiming the subject matter could not be patented as it was abstract.

The USPTO ruled that the subject matter was unpatentable under section 101, a decision which Return Mail later appealed against, leading to the case at the Federal Circuit.

Return Mail claimed the court should reverse the ineligible subject matter ruling.

However, the court stated that the USPTO was correct, in a 2-1 verdict.

The court ruled that several parts of the patent “lack an inventive concept that transforms an otherwise abstract idea into patent-eligible subject matter”.

It added that the use of barcodes, part of the technology used in the patent, “is not sufficient to impart patent eligibility”.

For the foregoing reasons, we affirm the board’s decision,” the Federal Circuit concluded.

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