In the United States Court of Federal Claims

No. 11-130 C

(Filed October 4, 2013)

RETURN MAIL, INC., 

 Plaintiff,

v.

THE UNITED STATES,

 Defendant.

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)

ORDER 

This order, in accord with Markman v. Westview Instruments, Inc., 52 F.3d

967, 976 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996), addresses the claim

terms and phrases of United States Patent No. 6,826,548 C1, for which the parties

have selected and proposed differing constructions.

Background 

Incomplete or incorrect addresses on material mailed with the United States

Postal Service (“USPS”) result in a large volume of returned mail, which is

considered to comprise a costly problem, particularly for high volume mailers. 

Plaintiff asserts that, commencing in 2000, Ralph Mitchell Hungerpiller and Ronald

C. Cagle began developing a solution to the returned mail problem. In 2001, they

filed an application with the United States Patent and Trademark Office (“PTO”) and

in 2004, were awarded U. S. Patent No. 6,826,548 (“’548 Patent”). The ’548 Patent 

was subsequently assigned to plaintiff. Return Mail, Inc. (“RMI”) approached the

USPS about licensing the invention, and the USPS requested that plaintiff partner

with several large mailers to test integration with USPS systems. The USPS

subsequently declined to complete tests that plaintiff arranged, and began providing

its own address change service, OneCode ACS to process returned mail. The USPS

petitioned the PTO to grant an ex parte reexamination of the ’548 Patent. The PTO

conducted a reexamination of the ’548 Patent adding newly presented claims,

subsequently numbered as Claims 39-63. On January 4, 2011, the PTO issued a

Reexamination Certificate as U. S. Patent No. 6,826,548 C1. Plaintiff now contends

that the USPS performs each step of the method of one or more of the claims, of the

’548 Patent or ’548 Reexam Certificate, through its use of the Postal Service’s
OneCode ACS. Plaintiff’s Infringement Claim Chart cites Claim Nos. 39-44 in this

regard. Def.’s Cl. Constr. Br., Doc. No. 44-11.

The ’548 Patent claim terms and phrasesthe parties assert require construction

and their proposed constructions are as follows:

Relevant Claim Term RMI’s Proposed

Construction

USPS’s Proposed

Construction 

Claims 39-42: “subsequent to

mailing”

Plain and ordinary

meaning.

To the extent that any

construction beyond

plain and ordinary

meaning is required,

RMI proposes the

following construction:

“after mailing.”

After processing by the

postal service.

Claim 39: “returned mail items” Items that are mailed and

come back to a post office

facility.

Mail items returned to

the sender after

processing by the postal

service.

Claim 40: “mail items returned” Items that are mailed and

come back to a post office

facility.

Mail items returned to

the sender after

processing by the postal

service.

Claims 40-43: “undeliverable

mail items”

Mail items that fail

attempted delivery.

Mail items that could not

be deliverable by the

postal service.

Claim 42: “identifying, as

undeliverable mail items”

Identifying, mail items

that fail attempted

delivery.

Identifying, mail items

that could not be

delivered by the postal

service.

Claims 39-42: “mail items that

are returned subsequent to

mailing as undeliverable”

Items that are mailed and

come back to a post office

facility after failed

attempted delivery.

Mail items returned to

the sender because they

could not be delivered by

the postal service.

Claim[] 42: “receiving from a

sender”

Receiving from a

subscriber

A return mail service

provider receives from a

subscriber

Claims 39-41: “return mail Any entity that performs An entity that processes

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service provider” electronic return mail

processing.

mail returned to the

sender by the postal

service.

Claims 39-44: “address” Plain and ordinary

meaning.

To the extent that any

construction beyond

plain and ordinary

meaning is required,

RMI proposes the

following construction:

“The location to which

the USPS is to deliver or

return a mailpiece.”

Street name and house

number, city, state, and

postal code.

Claims 39, 42: “decoding”

Claim 41: “decode”

Decipher information

into useable form

Convert information into

useable form.

Claim 40: “decoded

information[”]

Deciphered, us[e]able

information

Information converted

into useable form.

Claim 40: “decoded data” Deciphered, useable data Information converted

into useable form.

Claim 42: “decoded data” Deciphered, useable data Information converted

into useable form.

Claim 42: “if the sender wants a

corrected address provided” and

“if the sender does not want a

corrected address provided.”

Plain and ordinary

meaning.

Plain and ordinary

meaning (mutually

exclusive alternatives)

Claim 42: “posting return mail

data records on a network that is

accessible to the sender.”

Plain and ordinary

meaning

Posting decoded data on

a network that is

accessible to the sender

Pl.’s Cl. Constr. Br., Doc. No. 41 at 9, 13, 18, 22, 23, 25, 27, 32, 33, 37.

Discussion

Determining patent infringement is a two-step process. “[T]he court first

interprets the claims to determine their scope and meaning.” Presidio Components,

Inc. v. Am. Tech. Ceramics Corp., 702 F.3d 1351, 1358 (Fed. Cir. 2012) (citing Cybor

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Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed. Cir. 1998) (en banc) ). The 1/

claims “define the scope of the patented invention.” Vitronics Corp. v. Conceptronic,

Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). 

Claim construction, the initial step in patent litigation, assists in defining the

invention prior to addressing alleged infringement because the scope of a patent is

defined by the words of the claims. See Phillips v. AWH Corp., 415 F.3d 1303, 1312

(Fed. Cir. 2005) (en banc); Innova/Pure Water, Inc. v. Safari Water Filtration Sys.,

Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004). Claim construction is a matter of law.2/

Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en banc), aff’d,

517 U.S. 370, 372 (1996). See also Cybor Corp., 138 F.3d at 1456); Radio Sys. Corp.

v. Lalor, 709 F.3d 1124, 1127 (Fed. Cir. 2013). 

We begin our analysis with the language of the claim. See Phillips v.

AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) (“[T]he

claims themselves provide substantial guidance as to the meaning of

particular claim terms.”). “The words of a claim ‘are generally given

their ordinary and customary meaning,’” which “is the meaning that the

term would have to a person of ordinary skill in the art in question at the

time of the invention.” Id. at 1312-13 (internal citations omitted). “The

claims, of course, do not stand alone. Rather, they are part of ‘a fully, 

integrated written instrument,’ consisting principally of a specification

that concludes with the claims. For that reason, claims ‘must be read in

view of the specification, of which they are a part.’” Id. at 1315

(quoting Markman, 52 F.3d at 978, 979).

Function Media, L.L.C. v. Google, Inc., 708 F.3d 1310, 1320 (Fed. Cir. 2013). 

Recently, the Federal Circuit, in granting a petition for rehearing en banc, requested the 1/

parties address whether Cybor should be overruled. See Lighting Ballast Control LLC v. Philips

Elec. N. Am. Corp., 500 Fed. Appx. 951 (Fed. Cir. Mar. 15, 2013). 

Trial courts have considerable discretion construing claims and may revisit prior 2/

constructions. See, e.g., CytoLogix Corp. v. Ventana Med. Sys., Inc., 424 F.3d 1168, 1172 (Fed. Cir.

2005); Jack Guttman, Inc. v. Kopykake Enters., Inc., 302 F.3d 1352, 1361 (Fed. Cir. 2002).

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While the meaning of claim terms may be apparent, or agreed, when the parties

are unable to agree on the definition of certain claim terms, the court must construe

them as a matter of law. Markman v. Westview Instruments, Inc., 517 U.S. 370,

388–90 (1996); Cybor Corp., 138 F.3d at 1454. “Claim construction is a matter of

resolution of disputed meanings and technical scope, to clarify and when necessary

to explain what the patentee covered by the claims, for use in the determination of

infringement.” U. S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir.

1997). 

In construing claim terms, the court refers to “those sources available to the

public that show what a person of skill in the art would have understood disputed

claim language to mean.” Phillips, 415 F.3d at 1314 (quoting Innova, 381 F.3d at

1116). “[S]ources include ‘the words of the claims themselves, the remainder of the

specification, the prosecution history (intrinsic evidence), and extrinsic evidence

concerning relevant scientific principles, the meaning oftechnical terms, and the state

of the art.”’ Id. (parenthetical supplied). 

“It is a ‘bedrock principle’ of patent law that the ‘claims of a patent define the

invention to which the patentee is entitled the right to exclude.’” Phillips, 415 F.3d

at 1312 (Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water, Inc., 381 F.3d at

1115 (Fed. Cir. 2004)). Sources for ascertaining disputed claim terms include the

claims and the specifications. The specification “contain[s] a written description of

the invention, and of the manner and process of making and using it.” 35 U.S.C. §

112, ¶ 1. “The specification ‘is always highly relevant to the claim construction

analysis. Usually, it is dispositive; it is the single best guide to the meaning of a

disputed term.’” Phillips, 415 F.3d at 1315 (quoting Vitronics, 90 F.3d at 1582); see

MeyerIntellectual Props. Ltd. v. Bodum, Inc., 690 F.3d 1354, 1368 (Fed. Cir. 2012). 

Specifications can provide insight into how the inventor and patent examiner

understood the patent. Phillips, 415 F.3d at 1315-16. 

Embodiments, examples of the specifications, are illustrative but not limiting. 

Accent Packaging, Inc. v. Leggett &Platt, Inc., 707 F.3d 1318, 1326 (Fed. Cir. 2013)

(“‘Although the specification often describes very specific embodiments of the

invention, we have repeatedly warned against confining the claims to those

embodiments.’” (quoting Phillips, 415 F.3d at 1323)). ‘“[A] claim interpretation that

excludes a preferred embodiment from the scope of the claim is rarely, if ever,

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correct.’” Id. (quoting On-Line Techs., Inc. v. Bodenseewerk Perkin-Elmer GmbH,

386 F.3d 1133, 1138 (Fed. Cir. 2004). 

While it may provide meaning or context, extrinsic evidence cannot be used to

vary the meaning of terms contrary to the unambiguous meaning expressed in the

intrinsic evidence, and cannot be used to vary the meaning of terms contrary to the

claim specification and prosecution history. Phillips, 415 F.3d at 1317, 1324; see

Apex, Inc. v. Raritan Computer, Inc., 325 F.3d 1364, 1371 (Fed. Cir. 2003). Intrinsic

evidence is preferred over extrinsic evidence. Chamberlain Grp., Inc. v. Lear Corp.,

516 F.3d 1331, 1335 (Fed. Cir. 2008). 

Applying these principles, the following constructions are reached with respect

to each disputed claim term or phrase.

A. “Subsequent to mailing” (Claims 39-42)

39 A method for processing returned mail items sent by a sender to an

intended recipient, the method comprising [ ]: 3/

decoding, subsequent to mailing of the returned mail

items, information indicating whether the sender wants a

corrected address to be provided for the intended recipient,

on at least one of the returned mail items; . . . 

40 A computer program product residing on a computer readable

medium comprising instructions for causing a computer to:

“Comprising,” a term that appears through these claims, generally introduces illustrative, 3/

not exhaustive steps. “In the patent claim context the term ‘comprising’ is well understood to mean

‘including but not limited to.’” CIAS, Inc. v. Alliance Gaming Corp., 504 F.3d 1356, 1360 (Fed. Cir.

2007); see Invitrogen Corp. v. Biocrest Mfg., L.P., 327 F.3d 1364, 1368 (Fed. Cir. 2003) (“The

transition ‘comprising’ in a method claim indicates that the claim is open-ended and allows for

additional steps.”); Georgia-Pacific Corp. v. U. S. Gypsum Co., 195 F.3d 1322, 1327-28 (Fed. Cir.

1999) (“‘comprising’ . . . is inclusive or open-ended and does not exclude additional unrecited

elements or method steps.”) (citingPatent and Trademark Office, Department ofCommerce, Manual

of Patent Examining Procedure § 2111.03 (6th ed. 1997)); see also Gillette Co. v. Energizer

Holdings, Inc., 405 F.3d 1367, 1370-74 (Fed. Cir. 2005) (holding that “‘comprising . . . a group of

first, second, and third blades’” did not exclude razors with more than three blades). 

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store decoded information indicating whether a sender

wants a corrected address to be provided and a customer

number, each associated with at least one of a plurality of

mail items returned subsequent to mailing as being

undeliverable; . . . 

41 A system for processing a plurality of undeliverable mail items

comprising:

a first detector, wherein the first detector detects,

subsequent to mailing the undeliverable mail items,

encoded information on at least one of the plurality of

undeliverablemail items indicating whether a sender wants

a corrected address to be provided for at least one of the

undeliverable mail items; . . .

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 if 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

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accessible to the sender to enable the sender to access the

records.

Compl.., Exs. A-C (“’548 Patent”) (emphasis supplied). 

As noted previously, with respect to “subsequent to mailing” plaintiff seeks a

construction of “plain and ordinary meaning” or, if an additional construction is

required, it proposes that the term means “after mailing.” Defendant proposes the

construction “after processing by the postal service.”

Defendant supports its proposed construction by asserting that “the

specification of the ’548 Patent repeatedly shows that the patentees intended for the

disclosed systems and methods to occur after processing by the postal service had

been completed.” Doc. 44 at 4-5. The embodiments of Figures 1, 2 and 5 are cited

as examples. Id. at 5 (’548 Patent, 3:32-34, 4:36-39, 5:42-44). Also for support of

its proposed “after processing” construction defendant at page five of its brief, quotes

the ’548 Patent specification (3:21-31):

Accordingly, when a piece of mail is undeliverable for any reason, it is

returned by the post office to the return mail service provider offering

the processing services of the present invention. As an alternative, a

subscriber can elect to receive its own returned mail, bundle it together,

and then deliver it to the return mail service provider for return mail

processing. In any event, at the return mail service provider’s location,

thousands of pieces of undeliverable mail sent originally by many

subscribers to their customers are received either directly from the post

office or from subscribers.

With respect to the ’548 Patent specification, defendant concludesthat it “consistently

(and without exception) requiresreceipt ofreturned mail items fromthe postalservice

after processing by the postal service has been completed.” Doc. No. 44 at 6. 

Defendant also relies on prosecution history to support its proposed “after

processing” construction at page six of its brief noting that, during prosecution,

“[p]laintiff made numerous argumentsthat attempted to distinguish its invention from

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the USPS’s accused Postal Automated Redirection System (PARS).” Defendant

quotes plaintiff’s statement from the amendment of June 8, 2010 as follows:

The instantspecification discloses, and the present claims exist in,

a vastly different mailing and address correction paradigm than that of

PARS – one that employs methods and systems that start with an

incorrectly addressed mail item that is first mailed, then returned for

address correction, and subsequently re-mailed to the intended recipient

for delivery. In contrast, PARS, the primary reference cited in the

Office Action and relied upon by the Examiner, discloses a system,

technique and elementsthat are dysfunctional in this post-mailing return

for address correction paradigm, as recited in the presently pending

claims.

Doc. No. 44-6 at A63 (emphasis in original).

Plaintiff responds to defendant’s reliance on specification language that starts

with mail items leaving the Postal Service by noting that the examples “are naturally

focused on Return Mail’s initial business model of providing a third-party service for

processing mail returned by the Postal Service.” Doc. No. 46 at 3. Plaintiff notes that

by July of 2000, its business plan contemplated licensing “its processes and

application program interfaces to the USPS.” Doc. Nos. 46 at 3; 41-5. Plaintiff also

notes that the ’548 Patent specification includes an exemplary embodiment that is not

limited to processing mail items that have left the Postal Service. This embodiment

involves items of mail found to be undeliverable “received at a processing location

where they are loaded onto a transport mechanism and then optically scanned.” ’548

Patent 2:15-26. Plaintiff argues that the processing location could be part of the

Postal Service or run by a third party. Doc. No. 46 at 3.

In view of the “processing location” embodiment, plaintiff contends that

defendant is incorrect in its assertion at page six of its brief, that the ’548 Patent

specifications “without exception” require receipt of returned mail items from the

Postal Service after processing by the Postal Service is completed. However, plaintiff

also relies on precedent that even if defendant was correct and the specification

discloses only the single embodiment of third-party returned mail processing, claims

would not be limited to that embodiment unlessthe patentee had demonstrated a clear

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intention to so limit the claim scope. Martek Biosciences Corp. v. Nutrinova, Inc.,

579 F.3d 1363, 1381 (Fed. Cir. 2009). Plaintiff argues that defendant has not

identified any such clear intention to limit the scope of the claims to third-party return

mail processing. Doc. No. 46 at 4.

With respect to prosecution history, where defendant insists that plaintiff

distinguished the invention from all internal USPS processes, plaintiff responds that

it distinguished its invention from the PARS reference in that PARS attempts to

obtain a correct address for a mail item prior to attempted delivery to an intended

recipient. Doc. No. 46 at 8. Plaintiff agrees that the asserted claims do not apply to

this point-of-entry redirection processing since its invention exists in a different

mailing and address correction paradigm – one in which correct addresses are

obtained after attempted delivery to an intended recipient. Id. at 4-5. Plaintiff states

it has never disclaimed processing a mail item returned to the Postal Service after a

failed delivery attempt from the scope of its invention. Id. at 8.

After careful consideration of the arguments presented, defendant has not

presented requisite support for its proposed “after processing” construction. The ’548

Patent specification does not compel a construction limiting the claims to situations

where the Postal Service has fully completed its processing. The parties apparently

agree that the claims are limited to situations occurring after the Postal Service has

attempted delivery to an intended recipient, which eliminates processing prior to

attempted delivery, but this does not include all Postal Service processing. Absent

support for defendant’s proposed construction, subsequent to mailing is left with its

plain and ordinary meaning. There is no indication that the ’548 Patentee intended

that “mailing” have a special definition and none is stated in the specification or

prosecution history. See Laryngeal Mask Co. v. Ambu, 618 F.3d 1367, 1372 (Fed.

Cir. 2010). Ordinary usage, as reflected for example, in the so-called “mailbox rule”

considers mailing asthat point in time when the sender relinquishes a mail item to the

USPS such as by depositing it into a Post Office receptacle, or at least the point

shortly thereafter when the mail item is postmarked. See Rios v. Nicholson, 490 F.3d

928, 930-31 (Fed. Cir. 2007). The Postal Service may be considered to act as the

agent of the sender after mailing until delivery of the item to the intended recipient. 

Rhode Island Tool Co. v. United States, 130 Ct. Cl. 698, 705, 128 F. Supp. 417, 420

(1955).

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Accordingly, “subsequent to mailing” is construed to mean, “after mailing.”

B. “ReturnedMailItems”/“MailItems Returned” (Claims

39 & 40) 

39 A method for processing returned mail items sent by a sender to an

intended recipient, the method comprising:

decoding, subsequent to mailing of the returned mail

items, information indicating whether the sender wants a

corrected address to be provided for the intended recipient,

on at least one of the returned mail items; 

obtaining an updated address of the intended recipient

subsequent to determining that the sender wants a

corrected address to be provided for the intended recipient;

and electronically transmitting an updated address of the

intended recipient to a transferee, wherein the transferee is

a return mail service provider.

40 A computer program product residing on a computer readable

medium comprising instructions for causing a computer to: 

store decoded information indicating whether a sender

wants a corrected address to be provided and a customer

number, each associated with at least one of a plurality of

mail items returned subsequent to mailing as being

undeliverable; 

determining fromthe decoded data that the customer wants

a corrected address to be provided for at least one of the

plurality of undeliverable mail items;

receive an updated address of an intended recipient for at

least one of the plurality of undeliverable mail items,

subsequent to and based upon the determining step; and 

transmit the updated address to a transferee, wherein the

transferee is a return mail service provider.

’548 Patent (emphasis supplied).

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As noted previously, plaintiff’s proposed construction for “returned mail items”

and for “mail items returned” is “items that are mailed and come back to a post office

facility.” Defendant’s proposed construction for these terms is “mail items returned

to the sender after processing by the postal service.” 

In support of its proposed construction, defendant focuses (Doc. No. 44 at 11)

on the initial sentence in the “Background of the Invention” which states “the present

invention relates generally to mail processing, and more particularly to a method, 

system, and program product for processing business mail that is returned to sender

due to an inaccurate or expired address for the intended recipient.” See Doc. No. 44

at 11 (citing ’548 Patent 1:20-24). Plaintiff responds that the use of the phrase “the

present invention” does not automatically limit the meaning of claim terms, but must

be read in context with the entire specification. Netcraft Corp. v. eBay, Inc., 549 F.3d

1394, 1396 (Fed. Cir. 2008); RambusInc. v. Infineon Techs. AG, 318 F.3d 1081, 1094

(Fed. Cir. 2003). Plaintiff assertsthat the construction of “‘mail items returned to the

sender . . .’ conflicts with the language of claims 39 and 42” and “excludes a

preferred embodiment from the scope of the claims.” Doc. No. 46 at 8. This

embodiment describesthat mail would not be returned to the sender, but “returned by

the post office to the return mail service provider offering the processing services of

the present invention.” ’548 Patent 3:21-24. As defendant’s construction would read

a preferred embodiment out of the scope of the claims, plaintiff asserts it should be

rejected. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996). 

Defendant’s suggestion that “the return mail service provider” could be considered

the sender’s agent would require a rewriting of the claim.

Defendant also relies on prosecution history, asserting that plaintiff there

“disclaimed any application of ‘returned mail’ to internal postalservice processes for

redirecting mail.” Doc. No. 44 at 15. Defendant relies on three references (PARS,

Second Generation and Pintsov) cited by the examiner. Id. at 14-17. Plaintiff

correctly notes that with respect to these references, plaintiff did not distinguish them

in a way that is relevant to the meaning of “returned mail.” Doc. No. 46 at 11.

Finally, extrinsic evidence in the form of the United States Postal Service’s

Glossary of Postal Terms (Pub. 32, May 1997, p. 100) defines “return mail” as

“[m]ail that must be sent in the opposite direction for proper dispatch ([a]lso called

turnback mail.).” Doc. No. 41-4. This definition does not support defendant’s

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proposed construction, as neither return to sender nor completion of Postal Service

processing is required.

Upon analysis of the constructions proposed by the partiesthe court concludes 

that defendant’s position lacks requisite support and would read a preferred

embodiment out of the scope of claims. Plaintiff’s proposed construction is

consistent with the intrinsic and extrinsic evidence.

Accordingly, “returned mail items” and “mail items returned” are construed to

mean “[i]tems that are mailed and come back to a post office facility.”

C “Undeliverable Mail Items” (Claims 40-43)

“Identifying as Undeliverable Mail Items” (Claim 42)

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 if 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

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accessible to the sender to enable the sender to access the

records. 

’548 Patent (emphasis supplied).

As previously noted, plaintiff’s proposed construction for “undeliverablemail”

is “[m]ail items that fail attempted delivery,” and for “identifying, as undeliverable

mail items” plaintiff’s proposed construction is “[i]dentifying, mail items that failed

attempted delivery.” Defendant’s proposed constructionsfor these terms are, “[m]ail

items that could not be delivered by the postalservice,” and “[i]dentifying, mail items

that could not be delivered by the postal service.”

The parties differ on when mail becomes undeliverable. Plaintiff’s proposed

construction is that mail becomes undeliverable after a failed delivery attempt. 

Defendant’s proposed construction isthatmail becomes undeliverable after the Postal

Service exhausts all remedial steps to correct flaws which led to a failed delivery

attempt.

Plaintiff relies on extrinsic evidence to support its proposed construction,

namely the Postal Service’s Glossary of Postal Terms which defines “undeliverableas-addressed mail” as “[m]ail that the USPS cannot deliver as addressed and must

forward to the addressee, return to sender, or send to a mail recovery center.” Doc.

No. 46-4 at 121. A mail recovery center is defined as “a postal facility designed only

to receive and attempt to return undeliverable and unforwardable mail of obvious

value.” Doc. No. 46-1 at 67. Plaintiff asserts that “a person of ordinary skill would

understand that thePostal Service makesthis determination [undeliverability] through

attempting delivery.” Doc. No. 46 at 12.

Defendant argues that prosecution history reflects that plaintiff disclaimed

coverage of undeliverable mail based on “attempted delivery” referring to PARS,

Second-Generation and Pintsov references. Doc. No. 44 at 22-24. However, plaintiff

correctly notes that it never distinguished these references on the ground that

“undeliverable mail” is mail that “could not be delivered by the postal service.” 

Rather plaintiff asserts that it repeatedly argued that undeliverable mail is mail after

an attempted delivery without regard to whether the Postal Service could take

remedial steps to redirect the mail after a failed delivery attempt. Doc. No. 46 at 14. 

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Plaintiff cites a similar construction by the Postal Service of “undeliverable mail” in

its Request for Ex Parte Reexamination of the ’548 Patent “asserting that USPS prior

art anticipated receiving undeliverable mail items because an internal Postal Service

unit known as CFS [Computerized Forwarding System] ‘receives “undeliverable-asaddressed” mailpieces from postal carriers.’” Doc. Nos. 46 at 14; 46-2 at 4.

Finally, the plaintiff notes that the specification does disclose that, after a

determination is made that mail is deliverable, it is then “physically delivered to the

addressee as normal.” ’548 Patent 5:35-36. Plaintiff argues that this disclosure also

leads to a conclusion that “[u]ndeliverable mail is therefore mail that cannot be

delivered to the addressee ‘as normal.’” Doc. No. 46 at 12.

Upon analysis it is concluded that neither proposed construction receives

strong support in the intrinsic or extrinsic evidence cited, but plaintiff’s construction

does have the support of defendant’s similar construction in the Request for Ex Parte

Reexamination. Accordingly, subject to possible reconsideration as a result of

additional evidence developed, it is concluded that “undeliverable mail items” is

construed as “mail items that fail attempted delivery,” and “identifying as

undeliverable mail items” is construed as “identifying mail items that fail attempted

delivery.”

D. “MailItems That Are Returned Subsequent to Mailing

as Undeliverable” Claims 39-42

For the reasons expressed with respect to the prior construction of “mail items

returned,” “subsequent to mailing” and “undeliverable mail items” the construction

of “[i]tems that are mailed and come back to a post office facility after failed

delivery” is adopted for “mail items that are returned subsequent to mailing as

undeliverable.”

E. “Receiving from a Sender” (Claim 42)

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

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indicating whether the sender wants a corrected address to

be provided for the addressee;

’548 Patent (emphasis supplied).

As previously noted plaintiff’s proposed construction for “receiving from a sender”

is “receiving from a subscriber.” Defendant’s proposed construction is “[a] return

mail service provider receives from a subscriber.”

Upon an analysis of the proposed constructions, plaintiff’s proposed

construction is adopted. The plain language of the claim does not limit who receives

from a sender (subscriber). Defendant’s reliance on figures and descriptions of

exemplary embodiments to support its proposed construction runs afoul of the

restriction against importing limitationsinto claim terms from specifications. Abbott

Labs. v. Sandoz, Inc., 566 F.3d 1282, 1288 (Fed. Cir. 2009).

Accordingly the adopted construction of “receiving from a sender” is

“receiving from a subscriber.”

F. “Return Mail Service Provider” (Claims 39-41)

39 A method for processing returned mail items sent by a sender to an

intended recipient, the method comprising: 

decoding, subsequent to mailing ofthe returned mail items,

information indicating whether the sender wants a

corrected address to be provided for the intended recipient,

on at least one of the returned mail items;

obtaining an updated address of the intended recipient

subsequent to determining that the sender wants a

corrected address to be provided for the intended recipient;

and

electronically transmitting an updated address of the

intended recipient to a transferee, wherein the transferee is

a return mail service provider.

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40 A computer program product residing on a computer readable

medium comprising instructions for causing a computer to:

store decoded information indicating whether a sender

wants a corrected address to be provided and a customer

number, each associated with at least one of a plurality of

mail items returned subsequent to mailing as being

undeliverable;

determining fromthe decoded data that the customer wants

a corrected address to be provided for at least one of the

plurality of undeliverable mail items;

receive an updated address of an intended recipient for at

least one of the plurality of undeliverable mail items,

subsequent to and based upon the determining step; and

transmit the updated address to a transferee, wherein the

transferee is a return mail service provider.

41 A system for processing a plurality of undeliverable mail items

comprising:

a first detector, wherein the first detector detects,

subsequent to mailing the undeliverable mail items,

encoded information on at least one of the plurality of

undeliverablemail items indicating whether a sender wants

a corrected address to be provided for at least one of the

undeliverable mail items; and

a processor that uses a computer program comprising

instructions that cause the system to: i) decode the

information indicating whether the sender wants a

corrected address to be provided; ii) encode and decode

intended recipient identification information; and iii)

enable an updated address of an intended recipient to be

sent to a transferee, wherein the transferee is a return mail

service provider. 

’548 Patent (emphasis supplied).

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As previously noted, plaintiff’s construction of “return mail service provider”

is “[a]ny entity that performs electronic return mail processing,” whereas defendant

proposesthe construction of “[a]n entity that processes mail returned to the sender by

the postal service.”

Previous discussion on “returned mail” has rejected defendant’s proposed

“returned to sender,” which leaves the issue of “electronic” as the remaining

difference in the proposed constructions. Defendant opposes the inclusion of

“electronic” in the constructions because the ’548 Patent specification states several

roles for the return mail service provider which are not distinctly “electronic,” such

as “load mail onto a transport mechanism.” Doc. No. 44 at 20; see ’548 Patent 2:15-

20.

Claims 39-41 relate to processing return mail by means of an electronic method

or system. Electronic terms such as “decoding” and “electronically transmitted” are

used. Including consideration of surrounding claim language, as provided in IGT v.

Bally Gaming Int’l, Inc., 659 F.3d 1109, 1117 (Fed. Cir. 2011), it is concluded that

electronic return mail processing is claimed.

Accordingly, “return mail service provider” is construed as “any entity that

performs electronic return mail processing.” 

G. “Address” (Claims 39-42)

Claim 42 is exemplary:

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 addressto

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; . . . 

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determining if 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.

’548 Patent (emphasis supplied).

As noted previously, plaintiff’s proposed construction for “address” is: “[P]lain

and ordinary meaning. To the extent that any construction beyond plain and ordinary

meaning is required, RMI proposes the following construction: ‘The location to

which the USPS is to deliver or return a mailpiece,’” and defendant’s proposed

construction is: “Street name and house number, city, state, and postal code. 

Alternative: the written directions indicating the location to which the USPS is to

deliver or return a mailpiece.” Doc. No. 46 at 16.

Plaintiff asserts that defendant’s proposed construction of street name and

house number, city, state and postal code is too narrow and would exclude many

government offices, including the Internal Revenue Service and United States

Senators. Government website instructions require only the city, state and zip code. 

Plaintiff also cites to the broad and ordinary use of “address” in prosecution history

and the USPS Glossary of Postal Terms which defines “address” as “[t]he location

to which the USPS is to deliver or return a mailpiece. It consists of certain

elements such as recipient name, street name and house number, and city, state, and

ZIP Code asrequired by the mail class.” Doc. No. 41 at 30 (citing Glossary of Postal

Terms, Pub. 32, May 1997, p. 5 (emphasis in original)). 

Defendant points out that “‘address” is used in multiple senses in the claims

which makes its construction more important than may be immediately apparent. 

Doc. No. 44 at 38. The term is used in various states of the process, starting with

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“address” used by the sender on the mailpiece when deposited for mailing, followed

by an intermediate step in which data is transmitted to a mailing address service

provider, a transmittal between the application server and the address server which 4/

in turn provides responsive data to the return mail application server, which may

require a very specific format. Accordingly, defendant concludes these

communications do not fall within the plain and ordinary meaning of “address.”

Plaintiff responds that although “address” is used in various stages of this

method and process patent, from its initial placement on the mail item by the

sender/subscriber as well as encoding, decoding, electronic transmission and/or

availability, the underlying meaning of address in the claims presented for

construction, is the same. 

The parties also disagree whether “address” must be in writing. Defendant’s

alternative construction in response to plaintiff’s critique, of “locational aspects of a

written address (i.e., an identifiable location, city, state and zip code),” Doc. No. 44

at 39, retains the requirement of a writing, a limiting condition plaintiff contends is 5/

not warranted, in that the addition of a writing requirement would remove from the

patent protection an address stored in a computer in code, or in verbal form.

6/

Defendant attempts to create a distinction between a “written address” and an address

stored on a computer, such as the input data in a request to a mailing address service

provider, an address stored as binary code in computer memory, or a spoken address,

distinctions not supported by the claimlanguage. As noted, electronic processing and

provision of updated addresses, for example, in Claim 42, and specifications that

describe decoding data then made available electronically, make it clear that

electronic address correction was anticipated and that the writing requirement

defendant suggests is too narrow. Accordingly, the court declines to add further

The parties have agreed to construe “mailing address service provider” as “[a]ny entity 4/

that stores and provides updated address information.” J. Cl. Constr. Stmt., Doc. No. 39-1.

Defendant’s alternative construction for “address” is “the written directions indicating the 5/

location to which the USPS is to deliver or return a mailpiece.” Doc. No. 44 at 39.

The court does not reach the question of whether a code in computer memory is written, 6/

or whether an address can, in this context, be verbal.

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verbiage to construe the word “address,” defaulting to its plain and ordinarymeaning. 

See Harris Corp v. IXYX Corp., 114 F.3d 1149, 1152 (Fed. Cir. 1997). 

H. “Decoding”/“Decode”/“Decoded Information”

/“Decoded Data” (Claims 39-42)

39 A method for processing returned mail items sent by a sender to an

intended recipient, the method comprising:

decoding, subsequent to mailing of the returned mail

items, information indicating whether the sender wants a

corrected address to be provided for the intended recipient,

on at least one of the returned mail items; . . . .

40 A computer program product residing on a computer readable

medium comprising instructions for causing a computer to:

store decoded information indicating whether a sender

wants a corrected address to be provided and a customer

number, each associated with at least one of a plurality of

mail items returned subsequent to mailing as being

undeliverable; . . . .

41 A system for processing a plurality of undeliverable mail items

comprising:

a first detector, wherein the first detector detects,

subsequent to mailing the undeliverable mail items,

encoded information on at least one of the plurality of

undeliverablemail items indicating whether a sender wants

a corrected address to be provided for at least one of the

undeliverable mail items; and 

a processor that uses a computer program comprising

instructions that cause the system to: i) decode the

information indicating whether the sender wants a

corrected address to be provided; ii) encode and decode

intended recipient identification information; and iii)

enable an updated address of an intended recipient to be

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sent to a transferee, wherein the transferee is a return mail

service provider. 

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 if the sender wants a corrected address

provided for intended recipients based on the decoded

data; . . .

’548 Patent (emphasis supplied).

As noted previously, plaintiff’s proposed construction for “decoding” and

“decode” is: “Decipher information into useable form” and defendant’s proposed

construction is: “Convert information into useable form.” Plaintiff’s proposed

construction for “decoded information” is: “Deciphered, usable information” and

defendant’s proposed construction is: “Information converted into useable form.” 

For “decoded data,” plaintiff proposes the construction: “Deciphered useable data”

and defendant proposes: “Information converted into useable form.”

Upon analysis of the proposed constructions, it is concluded that plaintiff’s

proposed constructions using the terms “decipher” and “deciphered” more closely

follow the customary meaning of the terms and reflects the claim language. This is

because decoding must operate on encoded data. Defendant’s proposed construction

employs “convert” and “converted” which does not recognize that the information

involved is coded and thus broadens the term construed.

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Accordingly, “decoding” and “decode” are construed as “decipher information

into useable form.” “Decoded information” is construed as “deciphered useable

information.” “Decoded data” is construed at “deciphered, useable data.” 

I. “If Sender Wants a Corrected Address Provided,

Electronically Transferring” / “If the Sender Does Not

Want a Corrected Address Provided, Posting Return

Mail Data Records on a Network That Is Accessible to

a Sender” (Claim 42)

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 addr

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 if 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.

’548 Patent (emphasis supplied).

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As noted previously, for “if the sender wants a corrected address provided” and

“if the sender does not want a corrected address provided” the parties both propose

a construction of “plain and ordinary meaning,” but defendant’s proposed

construction adds “(mutually exclusive alternatives).” For “posting return mail data

records on a network that is accessible to the sender” plaintiff’s proposed

construction is “plain and ordinary meaning” and defendant’s proposed construction

is “posting decoded data on a network that is accessible to the sender.”

Dealing first with the corrected address construction, the parties agree that the

claimterms do not require further construction and should be accorded their plain and

ordinary meaning. They also agree that a sender cannot concurrently want and not

want a corrected address for a mail item. They disagree on whether these want-andnot-want steps are “mutually exclusive,” and whether these are the only two options,

as defendant contends, so further steps are precluded.

Defendant reasons that its proposed construction comports with preferred

embodiment Figure 3, which, it contends presents two mutually exclusive outcomes

depending on the determination made in block 302. “DOES SENDER WANT AN

ATTEMPT MADE TO PROVIDE CORRECT ADDRESS FOR INTENDED

RECIPIENT?” Fig. 3, block 302; see also ’548 Patent at 4:55-58 (“[A] test is made

to determine if the sender (originator) wants the return mail application service

provider to provide corrected addresses for intended recipients.”). If at block 302 the

sender wants a corrected address provided, the “if” clause is operative. See ’548

Patent at 4:63-5:13. If at the block 302 decision junction the sender does not want

a corrected address provided, the “if not” clause is operative. See ’548 Patent at

4:58-63. Defendant asserts these two outcomes are “mutually exclusive alternatives.” 

Plaintiff reads Figure 3 differently–as a processing logic embodiment in which

returned mail data records are placed on a website accessible to the sender regardless

whether the sender wants (block 314) or does not want (block 304) a corrected

address to be provided for the intended recipient by the return mail service provider. 

Plaintiff asserts that if defendant intends that the consequences of the block 302

decision are mutually exclusive, the Claim 42 language would have to be rewritten

to provide that following a decision that the sender wants a corrected address

provided, the sender electronically receives information enabling the update of the

sender’s mailing address files, but return mail data records would not be posted on

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a network that is accessible to the sender to enable the sender to access the records. 

The “mutually exclusive” consequence of the block 302 decision would be thatreturn

mail data records would be posted if an address correction was not wanted, but would

not be posted if an address correction was wanted. Doc. No. 41 at 37; Doc. No. 52

(Tr.) at 146-47.

Plaintiff also assertsthat defendant’s “mutually exclusive” construction would

exclude the embodiment depicted in Figure 3 from the scope of Claim 42. This is a

result which is rarely, if ever, correct. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d

1576, 1583 (Fed. Cir. 1996). 

Defendant also cites to prosecution history, where during reexamination, claims

that included only an “if” clause or its equivalent were rejected by the patent

examiner and were all eventually cancelled. Doc. No. 44 at 29. However, it is

concluded that this material has more relevance to future proceedings, rather than

claim construction and will be considered if presented then.

Accordingly, with respect to claim construction it is concluded that adding

“mutually exclusive alternatives,” to the “plain and ordinary meaning” construction

both parties agree is appropriate, would add ambiguity, not clarity to the meaning of

the claim. The addition of this language to the construction could also result in

excluding the embodiment depicted in Figure 3 from the scope of Claim 42.

In this circumstance, the construction of plain and ordinarymeaning is adopted

for “if the sender wants a corrected address provided” and “if the sender does not

want a corrected address provided,” with the possibility ofrevisiting this construction

in the light of future proceedings. See n.2, supra.

With respect to the proposed constructions for “posting return mail data records

on a network that is accessible to the sender” the parties agree that the claim term

should be given its plain and ordinary meaning except for “return mail data records,”

which defendant’s proposed construction construes as “decoded data.” Doc. No. 44

at 31.

For its “decoded data” construction defendant relies on the Figure 3

embodiment recited in Claim 42. As the “return mail data records” of Claim 42 are

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associated only with a decision in block 302 of Figure 3 that a corrected address is

not wanted, the specification teaches, at 4:58-61, that these records “are placed on the

Internet website of the service provider for pickup by the sender (logic block 304).” 

Defendant notes that, “[a]t this stage, each record contains nothing more than the

decoded information from the 2-D barcode on the mail items.” Doc. No. 44 at 33. 

Accordingly defendant proposes the “decoded data” construction.

Plaintiff notes that defendant’s construction imports a limitation from a single

embodiment into the claim language, but as indicated in logic block 314 of Figure 3,

“return mail data records”may contain non-decoded data such as corrected addresses.

Doc. Nos. 41 at 38; see also 52 (Tr.) at 153. Plaintiff also notes that the term

“decoded data” also appears in Claim 42 and relies on the principle that “[t]he use of

two terms in a claim requires that they connote different meanings.” Applied Med.

Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1333 n.3 (Fed. Cir. 2006).

Upon analysis it is concluded “posting Return Mail data records on a network

that is accessible to the sender” shall be afforded its plain and ordinary meaning. 

Defendant’s proposed “decoded data” construction adds unnecessary ambiguity and

does not overcome the maxim whereby different claim terms are generally given

different meanings.

s/ James F. Merow 

James F. Merow

Senior Judge

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