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Return Mail v. United States Postal Service

Representative Claim

42. A method for processing a plurality of undeliverable mail items, comprising:

receiving from a sender a plurality of mail items, each including i) a written addressee, and ii)

encoded data indicating whether the sender wants a corrected address to be provided for the addressee;

identifying, as undeliverable mail items, mail items of the plurality of mail items that are returned subsequent to mailing as undeliverable;

decoding the encoded data incorporated in at least one of the undeliverable mail items;

creating output data that includes a customer number of the sender and at least a portion of the decoded data;

determining the sender wants a corrected address provided for intended recipients based on the decoded data;

if the sender wants a corrected address provided, electronically transferring to the sender information for the identified intended recipients that enable the sender to update the sender’s mailing address files; and

if the sender does not want a corrected address provided, posting return mail data records on a network that is accessible to the sender to enable the sender to access the records

Posture:

Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. CBM2014-00116.

Abstract Idea: Yes

The Federal Circuit agreed with the Board’s Step One determination, stating:

“We agree with the Board that claims 42–44 are directed to the abstract idea of ‘relaying mailing address data.’ Claim 42 recites ‘receiving from a sender a plurality of mail items,’ ‘identifying undeliverable mail items,’ ‘decoding . . . encoded data,’ ‘creating output data,’ and ‘determining if the sender wants a corrected address.’ Ex Parte Reexamination Certificate, ’548 patent col. 2 ll. 1–24. These steps are analogous to the steps of ‘collecting data,’ ‘recognizing certain data within the collected data set,’ and ‘storing that recognized data in memory,’ which we found to be abstract under Step 1 in Content Extraction & Transmission LLC v. Wells Fargo Bank, National Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014), cert. denied, 136 S. Ct. 119 (2015). And ‘[t]he mere combination of data sources [similarly] . . . does not make the claims patent eligible.’ FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1097 (Fed. Cir. 2016).”

Something More: No

The Federal Circuit also agreed with the Board’s Step Two determination, stating:

“We also reject Return Mail’s argument that claims 42–44 are patent-eligible under Alice step 2 for reciting an inventive concept that transforms the abstract idea into ‘something more.’ Alice, 134 S. Ct. at 2354. The claims only recite routine, conventional activities such as identifying undeliverable mail items, decoding data on those mail items, and creating output data. We are also not persuaded by Return Mail’s emphasis on the limitations reciting particular types of encoded data or particular uses of that data once decoded, such as sending the data or making it available to the sender, depending on the sender’s preferences. These additional steps amount to a basic logic determination of what to do given a user’s preferences. None of the recited steps, alone or together, suffice to transform the abstract idea into patent-eligible subject matter. They are akin to the routine, conventional steps of ‘updating an activity log, requiring a request from the consumer to view [an] ad, restrictions on public access, and use of the Internet,’ which we have held do not supply an inventive concept under step 2. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014), cert. denied, 135 S. Ct. 2907 (2015).”