US Supreme Court Junks Return Mails Appeal Over Patent Validity In Postal Service Case

US Supreme Court Junks Return Mails Appeal Over Patent Validity In Postal Service Case

The judges refused to revisit eligibility standards that critics claimed caused uncertainty in intellectual property laws

The US Supreme Court has declined to reconsider a decision that invalidated a patent held by Return Mail Inc at the request of the Postal Service.

While the Postal Service was pleased with the decision, Return Mail founder Mitch Hungerpiller expressed disappointment stating that the patent-eligibility law was "not consistent in the federal courts."

In 2011, Alabama-based Return Mail sued the Postal Service at the US Court of Federal Claims, accusing it of violating its patent rights in technology for processing undelivered mail to be returned to senders.

The court determined in 2022 that Return Mail's patent was invalid, as it covered the abstract idea of "processing returned mail and relaying mailing address data." It added that the patent covered a process "historically performed manually by people who used computers merely as a tool" to automate it.

Early this year, the patent-focused US Court of Appeals for the Federal Circuit upheld the decision.

That’s when Return Mail pleaded before the top court to reconsider the matter.

The high court last addressed patent eligibility in a 2014 ruling that helped establish a two-part eligibility test. The test required courts to determine if an invention involved an unpatentable abstract idea, natural phenomenon, or law of nature and whether it included an inventive concept.

The critics maintained that the ruling and subsequent decisions created confusion that led the courts to cancel patents on inventions that should have been protected.

In its petition before the Supreme Court, Return Mail stressed, "All relevant decision-makers are now deeply divided on how to apply the court's two-step framework. Without course correction, the purpose of patent law will be stifled."

Earlier, the Donald Trump and Joe Biden administrations and the federal circuit court requested the apex court to take up a new case on patent eligibility.

Biden's solicitor general told the judges they should reject Return Mail's case because its patent covered an abstract idea under "any reasonable conception or articulation" of the standard.

The court considered another aspect of Return Mail's case in 2019, determining that federal government agencies could not use the US Patent Office proceedings to challenge the validity of patents that they were accused of violating.