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HomeHome > Judicial Development > US&UK > Patent

US Supreme Court rejects appeal over patent validity in Postal Service case

Post time：11-20 2024 Source：Reuters Author：Blake Brittain
tags： patent invalid
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Nov 18 (Reuters) - The U.S. Supreme Court said on Monday that it would not reconsider a decision that invalidated a patent held by Return Mail Inc at the request of the U.S. Postal Service.
 
The justices declined Return Mail's request to revisit standards for patent eligibility that critics say have caused uncertainty in U.S. intellectual property law.
 
Return Mail founder Mitch Hungerpiller said in a statement that he was disappointed with the decision and that patent-eligibility law is "not consistent in the federal courts." A USPS representative said that the Postal Service was pleased by the decision.
 
Alabama-based Return Mail sued USPS in 2011 at the U.S. Court of Federal Claims. It accused the agency of violating its patent rights in technology for processing undelivered mail to be returned to senders.
 
The federal claims court determined in 2022 that Return Mail's patent was invalid because it covered the abstract idea of "processing returned mail and relaying mailing address data." It said the patent covered a process "historically performed manually by people" that used computers "merely as a tool" to automate it.
 
The patent-focused U.S. Court of Appeals for the Federal Circuit upheld the decision in February. Return Mail asked the Supreme Court in July to reconsider the case.
 
The high court last addressed patent eligibility in a 2014 ruling that helped establish a two-part eligibility test. The test requires courts to determine if an invention involves an unpatentable abstract idea, natural phenomenon or law of nature, and if so, whether it includes an inventive concept.
 
Detractors have said that the ruling and subsequent decisions guided by it have created confusion that has led courts to cancel patents on inventions that should be protected.
 
"All relevant decisionmakers are now deeply divided on how to properly apply this Court's two-step framework," Return Mail said in its Supreme Court petition. "Without this Court's course correction, innovation — the very purpose of patent law — will be stifled."
 
The Trump and Biden Administrations and the Federal Circuit have previously asked the Supreme Court to take up a new case to address patent eligibility. Biden's solicitor general told the justices that they should reject Return Mail's case, however, because its patent covers an abstract idea under "any reasonable conception or articulation" of the standard.
 
The Supreme Court considered another aspect of Return Mail's case in 2019, determining that federal government agencies cannot use U.S. Patent Office proceedings to challenge the validity of patents they are accused of infringing.
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