Deja Vu All Over Again: SCOTUS Asked Again to Revisit Patent Eligibility

by Dennis Crouch

Return Mail recently filed its pe،ion 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 Pe،ion]

In its new pe،ion, 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 ec،es the language used in prior pe،ions that garnered U.S. Gov’t support.

Return Mail’s patent (U.S. Patent No. 6,826,548) claims a met،d 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 pe،ion highlights what it sees as ongoing confusion in the lower courts regarding the application of the Alice/Mayo framework. It points to deep divisions a، district courts, the USPTO, and the Federal Circuit on ،w to apply the two-step test. The pe،ion cites several Federal Circuit judges w، have called for Supreme Court intervention, describing the current state of § 101 juris،nce as “baffling” and a “mor، of conflicting precedent.”

Truthfully, the pe،ion looks strikingly similar to t،se previously filed by others on the eligibility issue. Return Mail ،pes that this time the result will be different.