Return To Sender: High Court To Hear Undeliverable Mail Case (washingtonpost.com)

New submitter bluekloud shares a report: Mitch Hungerpiller thought he had a first-class solution for mail that gets returned as undeliverable, a common problem for businesses that send lots of letters. But the process he helped develop and built his small Alabama technology company around has resulted in a more than decade-long fight with the U.S. Postal Service, which says his solution shouldn't have been patentable. The David vs. Goliath dispute has now arrived at the Supreme Court. On Tuesday, the justices will hear Hungerpiller's case, which involves parsing the meaning of a 2011 patent law.

"All I want is a fair shake," said Hungerpiller, who lives in Birmingham and is a father of three. Hungerpiller, 56, started thinking seriously about returned mail in 1999 when he was doing computer consulting work. While visiting clients he kept seeing huge trays of returned mail. He read that every year, billions pieces of mail are returned as undeliverable, costing companies and the Postal Service time and money. So he decided to try to solve the problem. He developed a system that uses barcodes, scanning equipment and computer databases to process returned mail almost entirely automatically. His clients, from financial services companies to marketing companies, generally direct their returned mail to Hungerpiller's company, Return Mail Inc., for processing. Clients can get information about whether the mail was actually correctly addressed and whether there's a more current address.

Comments

I read this a few days ago

[rsilvergun]

and the patent looks like another example of stringing existing tech together for it's exact intended purpose. Similar to "one click shopping". It's just computers doing computer stuf. e.g. I think it would fail any test of novelty or newness.

Re:I read this a few days ago

[omnichad]

The novelty is in the stringing. Every new invention is at least partly going to build on existing ideas. Patents can be awarded on processes, not necessarily an "invention."

Re:I read this a few days ago

[Kjella]

Similar to "one click shopping". It's just computers doing computer stuf. e.g. I think it would fail any test of novelty or newness.

Which was partially upheld, then the broadest claims restricted to a shopping cart and upheld too. Long story short whether /. think something is novel is not a good indicator of how patent law actually works but in this case yes the patent itself has been completely shot down both by ACA review and the appeals court. From what I can read of the legal papers, the government can't be sued under ordinary patent law just a special provision that is more eminent domain-like. The USPS asked for a patent review that you can only file for if you're being sued for infringement, now the legal battle is whether that provision is standing to trigger a review. It's trying to win on a technicality, yes our patent is junk but you got no right to challenge it. The courts don't see it that way though.

Re:I read this a few days ago

[SlaveToTheGrind]

I think it would fail any test of novelty or newness.

It did. The Patent Trial and Appeal Board held the claims unpatentable after the USPS challenged them, and the Court of Appeals for the Federal Circuit affirmed. That's why the case is now at the Supreme Court.

Re:I read this a few days ago

[jellomizer]

Where do you draw the line between software and a machine?
A clock uses gears with the right type and size to make it a good time keeping device. If I were to take a gear and swap it with an other, I could make the clock work backwards, or have it run faster or slower. In many ways the gear settings is the clocks software.

Lets say I have a mousetrap, it works better then an other one, because there is software that uses all the newest buzzwords, to attract the mouse, and know when it is in prime location to trap it. The actual trapping mechanism itself is rather basic, however all the work went into the software.

Now there are a lot of stupid software patents, where "futurists" can see the natural progression of software, then patent it without much details on how it would work. Lets say I see bandwidth improving so I will predict that in the future. Applications will be on the cloud, that would stream its content like a video feed, and respond differently from input from the user. That is as much detail I need to probably put a patent on this. Details on data compression, how much bandwidth is needed, how to overcome many lag issues, I don't need to worry about. That is where the Patent system is flawed. You can patent an Idea. But software should be free game (I don't like the Idea of Software being protected by both Copyright and Patents) If shown to be a functional set of code.

Re:I read this a few days ago

[B'Trey]

The technology to make it work didn't exist for hundreds of years. Once the technology became available, it was thought of and implemented very quickly. That suggests that it was an obvious application of the technology.

Re:I read this a few days ago

[jenningsthecat]

and the patent looks like another example of stringing existing tech together for it's exact intended purpose... I think it would fail any test of novelty or newness.

FTA: "Even early on, the Postal Service expressed interest in Return Mail’s invention, Hungerpiller said. By 2006, the government and Return Mail were talking about licensing options and a formal pilot program."

The Post Office was negotiating with Hungerpiller before they went and violated his patent, so presumably they thought there was "novelty or newness". I'm reminded of another patentability test - the "obvious to a person skilled in the art" criterion. The problem with both criteria is that things become obvious in hindsight, and we tend to forget they really weren't so obvious before the fact. If the idea / process / procedure hadn't been implemented yet, in spite of the tech required having been available for quite some time, then was it really obvious? And AFAIC, if it isn't obvious, then it's new or novel pretty much by definition.

Re:I read this a few days ago

[ShanghaiBill]

Nobody would ever get a patent on anything if the test was some beer-bottle patent attorney saying "oh yeah, I could have thought of that."

If you give the beer drinker the solution, and they say "I could have thought of that", then that doesn't mean much, because most innovations are "obvious" in hindsight.

But if the beer drinker knows a bit about computers, and you ask them "How would you solve this problem?", most would come up with a solution involving a database and either a barcode or some sort of OCR. This is the true test of "obviousness", and this patent appears to fail it.

Re:I read this a few days ago

[alvinrod]

You could probably make that claim of just about any invention. It wasn't possible for a long time for some reason, but once that reason went away someone was able to implement it. Personally I think the mark of a good invention is that it seems incredibly obvious in hind-sight, but for some reason wasn't done.

For example, most Amazon packages I get have inflated plastic packing material instead of packing peanuts or wads of paper. I look at that and wonder why the hell it wasn't done that way previously. I assume that the technology existed to make it possible (though maybe I'm wrong about this) but looking at it now, it seems stupid to do it any other way.

How long does something have to go between becoming technically possible and being implemented before it stops being obvious?

Re:I read this a few days ago

[AvitarX]

I don't know anything about this case, so I will talk in generics.

I think that we (in the US) have a problem in that independent simultaneous invention isn't an affirmative defense for obviousness. Often times 2 people invent independently pretty much the exact same thing, and one gets a patent and the other doesn't (famously the telephone, though there's evidence that espionage was involved there). I would argue if two people building on past tech invent something pretty much simultaneously, it falls into the category of obvious.

If this person really did develop a novel process for handling returned mail, it arguably doesn't even need to be an invention to be patented (I believe), since it could be a business method. It does seem (technology aside) to be a novel business method without any other knowledge of other people doing the exact same thing around the exact same time.

I'm a little confused though, because I thought CASS certified addresses after NCOA are pretty much immune to returned mail, I'd think large companies would be up on that.

Re:I read this a few days ago

[Fly Swatter]

And this is what bugs me, and maybe most people about patents. You can patent machine A and machine B, then some third party can come in and patent using machine A with machine B as an interaction of A and B...

Over simplified example: Someone patents a light bulb, then someone patents a light bulb socket. In my opinion there should not be an ability to patent inserting the light bulb into the light bulb socket, since it is an obvious possible interaction of previous patents, there is no invention there.

All inventions are ideas, but not all ideas are inventions, we as a society need to fix this and draw a line somewhere sane.

Re:I read this a few days ago

[Theaetetus]

The novelty is in the stringing. Every new invention is at least partly going to build on existing ideas. Patents can be awarded on processes, not necessarily an "invention."

Yes, usually, but not in this particular case... Here's claim 1:

1. A method for processing a plurality of undeliverable mail items comprising the steps of:
encoding data including intended recipient identification information on each of a plurality of mail items prior to mailing;
receiving those items of the plurality of mail items that are returned as being undeliverable;
scanning and decoding the encoded data on the items of undeliverable mail to identify intended recipients having incorrect addresses; and
electronically transferring to the sender information for the identified intended recipients for the sender to update the sender's mailing address files.

1. Al, Charlie's assistant, writes Bob's destination address on outside of envelope. That's "encoding data including intended recipient identification information."
2. Get mail returned ("receiving those items that are returned as undeliverable").
3. Read address ("scanning and decoding data").
4. Al sends email to Charlie asking for Bob's correct address ("electronically transferring to the sender information for the identified intended recipients for the sender to update the sender's mailing address files").

Boom, invalid.

Re:I read this a few days ago

[WolfgangVL]

Patents are granted for---

1. Frivolous prior art we've been doing for hundreds of years already. (like rounding corners or traveling on 2 wheels)
2. (established processes) on a computer. (like handwriting, mail delivery return*, and composing)
3. Every 100th application in the monthly stack of frivolous (but paid) applications. (like the monthly IBM collection)
4. Every application that lands on So-and-so's desk, that chick approves everything.
5. Anything to do with A/I, deep learning, machine learning, or personal assistants

"Prior art" and "invalid" is declared on-

1. Anything that may threaten the growth of %CORPORATION revenue growth.
2. Anything %CORPORATION may currently be researching.
3. Any patent application that did not spend the extra $$ on an "express application"
4 Any application that lands on So-and-so's desk, that guy denies everything.

That's the way it works now. Try to keep up.

The rest of the original article

[bobstreo]

actually tells why the guy is being heard by the Supreme Court.

TLDR? The US postal service are assholes.

Re:The rest of the original article

[The Grim Reefer]

You can't patent something and then expect the government to pay your patent licensing fees.

I wonder how many lawyers working in the military defense industry read your comment. How many do you think spit out their beverage laughing at your comment?

I guess you missed the story about Bitmanagement suing the US Navy.

While the US government can revoke and take the IP of a patent under national security measures, that doesn't mean they can simply take any and all patents they want to. Or not pay a licensing fee for anything. If you patent a new stamp adhesive, I don't think the government is going to take if from you. If you patent a working teleportation machine, that's a different story.

Re:The rest of the original article

[Lil'wombat]

But the USPS is supposedly an independent corporation. That is why they have to fund their pensions for the next 75 years but other government agencies don't

Re:The rest of the original article

[Aighearach]

They're not, and courts don't, measuring if the Postal Service counts as a "person."

They're measuring if the wording in a specific law is including the Postal Service when it uses the word "person" in a particular provision.

There are no implications outside of this exact narrow issue of patent law involving restrictions on when the Government can request a patent review.

Companies are not considered "people" by the court. That's just a colloquial simplification that isn't literally accurate. They're considered legal entities. And the precedent says that the 14th Amendment grants equal due process to all legal entities. If a law applies to corporations or not depends on the details of the law and if that law was attempting to apply only to humans, or to anybody recognized as a legal entity before the court. The actual word "person" isn't relevant, except that Congress often uses the word when writing laws, leaving the Courts to figure out which sort of provision it was.

The obvious examples are things like voting, but another easy example is a recreational fishing license compared to a commercial fishing license; one is reasonably restricted to human persons, the other usually applies to everybody, but can still be granted individually. Other types of resource access are like that; it can go either way according to the preferences of the people making the rules.

For example, I buy commercial mushroom hunting licenses from various National Forests. These licenses are only granted to individuals. If a company wants to hire people to pick mushrooms, they can't get a license themselves, they would have to require the potential employees to themselves be individual permit holders. Same for berry picking. But if you want to harvest bear grass (it is used in floral arrangements) then that license can go to a person or a company, and covers some number of employees that can be onsite at one time.

Now, if it turns out that the government didn't indicate clearly that something was restricted to individuals, of if their reasoning was arbitrary and capricious, then they can't restrict something to individuals in that case. But that's only because of due process, not because of some corporate right to be an individual. That's what is at stake here; it isn't entirely clear of there is an intentional restriction in this case, or just clumsy wording. The 14th Amendment will cause that to generally be resolved in the way that restricts the rights of the affected parties the least amount; eg, granting the corporation the right to do the thing. At least until or unless Congress clarifies the matter.

Re:The rest of the original article

[Aighearach]

They exist in a muddled middle ground where they're partially the government, but also partially independent.

That's why Congress is even allowed to give them special pension rules!

So every rule of this type is a special case that the courts have to measure and balance to see how it affects the USPS. And also that means, any precedents created won't apply to anybody else, except maybe Amtrak.

Sounds like...

[93 Escort Wagon]

”He developed a system that uses barcodes, scanning equipment and computer databases to process returned mail almost entirely automatically. His clients, from financial services companies to marketing companies, generally direct their returned mail to Hungerpiller's company, Return Mail Inc., for processing. Clients can get information about whether the mail was actually correctly addressed and whether thereâ(TM)s a more current address.”

So basically he patented outsourcing? Rather than the client companies doing the verification work, his company did it. All the barcodes seem likely to have done is to make his company’s job easier to automate... and probably accomplished some lock-in.

Do it on a computer

[MNNorske]

Basically it sounds like he just took an existing process/job and did it on a computer. Prior to this a person would've gone into the contact spreadsheet or database and marked the entries as invalid. All he did was take that existing job and put a computer readable barcode on stuff and had the computer do it faster. Very useful for the companies as it saves payroll, but it does not sound like something that should've been patentable to me.

Re:Do it on a computer

[Drethon]

Basically it sounds like he just took an existing process/job and did it on a computer. Prior to this a person would've gone into the contact spreadsheet or database and marked the entries as invalid. All he did was take that existing job and put a computer readable barcode on stuff and had the computer do it faster. Very useful for the companies as it saves payroll, but it does not sound like something that should've been patentable to me.

I feel kind of bad for him that he implemented a great idea, then the post office decided to do it themselves. But if you can't provide a better/cheaper service, being first isn't going to sustain a business.

Re:Do it on a computer

[MNNorske]

I'm not saying that his idea isn't valuable. He obviously had a great idea and was able to build a business around it. But, the idea itself doesn't sound patentable to me. His specific implementation may be patentable, or aspects of what he has built could be. But, should the concept of scanning a barcode and marking an entry in a contacts database as invalid be itself patentable? I would argue not because the action itself is a standard business process that has been done before albeit manually. Plus the post office already had mail sorting hardware/software that would use OCR to decode the address on envelopes, apply barcodes to the envelopes, and then route said envelopes through massive sorting systems. So all they are doing on top of that is building a list of invalid addresses in a database when the envelopes route back through the sorting machine. So they already had most of the pieces he put together into his patent. Only the output was different.

Re:Do it on a computer

[Attila Dimedici]

The only reason I think he may have a patent able idea is that, according to him, the Post Office talked to him about licensing his patent before developing their own implementation. Usually, such conversations involve finding out how the process works. The key question to me is, how far had the Post Office gone towards implementing their own system when they started talking to him (assuming that they actually did)?
Perhaps, they discovered that they had already worked out to do what he was doing and therefore decided he did not have a legitimate patent That would be consistent with the fact that the only grounds he has for presenting this to the Supreme Court is whether or not the Post Office has standing to sue to overturn his patent.

Re:Ownership

[omnichad]

If it's returned, it's no longer in their care. They're not sneaking into a mail facility in the dead of night.

Post Office probably is a person

[maroberts]

...for the purposes of the act.

I suspect that the Post Office has in the past had patents assigned to it. and if it can be 'someone' which can own a patent, it is also 'someone' who can invalidate a patent. Also companies are 'people' for some legal processes, so I see little reason why government bodies can't also be 'people' for legal actions.

Re:Post Office probably is a person

[DarkFlite]

If the Post Office isn't a person for this purpose, than no corporation could challenge a patent. The Supremes aren't going to toss out corporate personhood over this.

Re:Post Office probably is a person

[Comrade Ogilvy]

If the Post Office is not a person, why can you sue it for violating a patent?

Personally, I think it would be all kinds of exciting for plaintiff to win here, so we can shave down the "rights" of the legal fictions called corporations. But I suspect the Supremes will see the trap.

Summary doesn't mention what's contested!?

[HeckRuler]

Let me guess, the actual issue is some overly broad software patent.

He scans barcodes on mail and looks up a database.

Re:Summary doesn't mention what's contested!?

[Elfich47]

This popped up in other news sources: Part of the argument is this: "....A person can challenge the patent....". Is the postal service a person in the context of this argument?

Re:Ownership

[viperidaenz]

IANAL, but the post office is delivering the mail - to the return address specified on the mail.
The post office received the letter and delivered it according to the instructions on it.

"return to sender" mail doesn't stay the property of the post office indefinitely.

Prior art?

[Medievalist]

My employers have been doing this since roughly the same time period. Because it's obvious. As soon as bar code scanners with ps/2 keyboard in/out jacks came on the market, we had people handling our return mail this way. DB and everything.

Postal service is right and this Hungerpiller rube is a rent-seeker, not an innovator.

Story told me by patent atty when I was applying..

[Ungrounded Lightning]

... things become obvious in hindsight, and we tend to forget they really weren't so obvious before the fact. If the idea / process / procedure hadn't been implemented yet, in spite of the tech required having been available for quite some time, then was it really obvious?

Story told me by a patent attorney when I was applying for one. (I say this because I didn't look it up myself.):

He said the classic case of inventions only being obvious in hidnsight was a challenge to the patent on the
Ray-o-Vac "leakproof" "sealed-in-steel" battery (a classic carbon-zinc dry cell).

Such cells consists of some variant of this: a zinc cup (the negative electrode), containing a corrosive paste (which either IS the positive electrode or contains it (i.e. manganese dioxide) at its center) and a carbon electrode to contact the electrode to provide the positive terminal. Early "dry cells" were capped with things such as asphalt and wrapped with a printed carbon label.

The corrosive pastet eating the zinc cup was what powered the cell. So before it was actually dead the corrosive would have eaten a hole in it, wetted the cardboard, and started eating the flashlight or whatever. (Assuming swelling of the internal components didn't rupture the zinc cup first, with the same result.)

Needless to say this didn't make users happy. So the various battery companies did a bunch of research to try to design a variant that didn't do this. For years.

Story goes that one of the researchers came home really depressed one day and his wife asked what was the problem. So he explained it. Says she (while opening a can of soup, as the story goes): "Why don't you seal it in a steel can?"

Thus (with the addition of composition changes to avoid swelling enough to burst the can) was born the sealed in steel leakproof dry cell.

Of course Union Carbide (Everready) challenged the patent as obvious. "Oh?" says the judge. Turning to the Ray-o-Vac folk he asks: "How long did you work on this problem before you though of the can? How many engineers worked on it? How much did you spend?" Turning back to the Union Carbide guys he asks them the same thing. Answers: Years of work, lots of guys, lots of bux. "It's only obvious in hindsight. Rule for the defendant."

Re:Ownership

[hamburger lady]

by that reasoning, if i sent a letter to someone and it got sent back 'return to sender' and i tore it up and threw it out, i'd be destroying post office property. that doesn't make any sense at all.

Re:Except we don't know what is patented

[parkinglot777]

I haven't read the patent, so I have no idea what the patent covers.

Here is the application of the patent -- U.S. 2003/0191651. And here is the patent itself -- U.S. 6,826,548.