March 2, 2011 — Return Mail, Inc. filed a lawsuit on February 28, 2011,against the federal government alleging that the United States Postal Service is using the company’s patented process for handling undeliverable mail without permission. The lawsuit seeks compensation for unauthorized use of Return Mail’s patent. Covington & Burling LLP attorneys represent Return Mail.
Return Mail, a Birmingham, Alabama, corporation founded in 2000, invented an automated system that processes returned and undeliverable mail. Return Mail’s system provides benefits and costs savings to mailers. For example, it allows mailers to reduce the costs of manual handling and processing of return mail. It also improves the accuracy of the delivery of invoices, thereby increasing revenue for mailers using Return Mail’s system. The United States Patent and Trademark Office awarded Return Mail United States Patent Number 6,826,548 (“ ’548 Patent) for this invention.
Return Mail alleges in its complaint filed in the U.S. Court of Federal Claims that the Postal Service met with Return Mail at least five times to discuss licensing Return Mail’s invention. During those meetings, according to the complaint, the Postal Service learned the details of Return Mail’s invention and ultimately approved a pilot program to use it.
Return Mail invested millions of dollars and spent years developing its innovative and cost-saving system. In its complaint, Return Mail alleges that instead of licensing and paying for the use of Return Mail’s invention, the Postal Service took Return Mail’s invention and used it to create its own address change service called OneCode Address Correction Service (or “OneCode ACS”). The Postal Service projects savings of hundreds of millions of dollars each year from this system — so much that the Postal Service announced that it would offer OneCodeACS to its customers at no charge in most cases. Return Mail’s complaint alleges that the Postal Service’s announcement destroyed Return Mail’s business, forcing it to lay-off most of its employees.
As recounted in the complaint, the Postal Service asked the Patent and Trademark Office to invalidate Return Mail’s ’548 Patent. The PTO, however, rejected the Postal Service’s efforts, and on January 4, 2011, issued a reexamination certificate confirming the validity of Return Mail’s patent.