The Board has once again applied the Mayo/Alice test for patent eligibility, this time in the final written decision for United States Postal Service v. Return Mail Inc., CBM2014-00116, finding all six challenged claims unpatentable under 35 U.S.C. § 101. The patent bar as a whole, and this blog in particular, have noted how deadly § 101 has become post-Alice.
The patent claims a method in which, after mail is returned as undeliverable, a corrected address is electronically provided, either to the sender or to a related mail service provider. In its petition, the USPS asserted that communicating address information whenever an incorrect address turns up is an abstract idea, and simply communicating and encoding the data electronically is insignificant post-solution activity, not “significantly more” in the Mayo/Alice parlance. The patent owner, Return Mail, emphasized the electronic transmission and encoding/decoding to argue that the claimed method improved the functioning of mail-return technology, hoping to find safe harbor in the Supreme Court’s statement that the Alice claims were invalid in part because the invention did not “effect an improvement in any other technology or technical field.” But the Board sided with the USPS, finding that any system of correcting address information would have resulted in somehow communicating the corrected address; doing it electronically doesn’t make the subject matter patent eligible.
Return Mail also tried to link the claims to more particular technological elements that might not be part of an ordinary, general-purpose computer, like an “optical scanner.” Return Mail also tried to link steps in the claims to specific hardware called out in the specification in order to argue that the claims met the machine prong of the machine or transformation test. The Board dismissed these arguments easily, since none of the those elements were actually present in the claims.
The decision should further hearten those facing allegations of infringement of a business method patent, even a business method with a fairly technological implementation. Whenever alleged infringers have the opportunity to argue patent eligibility, they should.
For patent owners, this case further highlights the fact that none of the current arguments about patent eligibility could have been foreseen back when these claims were being drafted. It’s possible that there is an unwritten patent eligible claim lurking somewhere in the body of the patent, perhaps including some of the particular technological elements called out in the specification. But back when the patent was being prosecuted, years ago, there was no way to know how important such a claim would become. Patent applicants in the software and business method areas need to be careful to claim the most concrete versions of their inventions in as many ways as possible. With the law of patent eligibility so unsettled, there’s no telling which claim might eventually carry the day.