            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.              )

                                        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 phrases the parties assert require construction
and their proposed constructions are as follows:

         Relevant Claim Term              RMI’s Proposed              USPS’s Proposed
                                           Construction                Construction
    Claims 39-42: “subsequent to      Plain and ordinary           After processing by the
    mailing”                          meaning.                     postal service.

                                      To the extent that any
                                      construction beyond
                                      plain and ordinary
                                      meaning is required,
                                      RMI proposes the
                                      following construction:
                                      “after mailing.”
    Claim 39: “returned mail items”   Items that are mailed and Mail items returned to
                                      come back to a post office the sender after
                                      facility.                  processing by the postal
                                                                 service.
    Claim 40: “mail items returned”   Items that are mailed and Mail items returned to
                                      come back to a post office the sender after
                                      facility.                  processing by the postal
                                                                 service.
    Claims 40-43: “undeliverable      Mail items that fail         Mail items that could not
    mail items”                       attempted delivery.          be deliverable by the
                                                                   postal service.
    Claim 42: “identifying, as        Identifying, mail items      Identifying, mail items
    undeliverable mail items”         that fail attempted          that could not be
                                      delivery.                    delivered by the postal
                                                                   service.
    Claims 39-42: “mail items that    Items that are mailed and    Mail items returned to
    are returned subsequent to        come back to a post office   the sender because they
    mailing as undeliverable”         facility after failed        could not be delivered by
                                      attempted delivery.          the postal service.
    Claim[] 42: “receiving from a     Receiving from a             A return mail service
    sender”                           subscriber                   provider receives from a
                                                                   subscriber
    Claims 39-41: “return mail        Any entity that performs     An entity that processes


                                             -2-
    service provider”                  electronic return mail      mail returned to the
                                       processing.                 sender by the postal
                                                                   service.
    Claims 39-44: “address”            Plain and ordinary          Street name and house
                                       meaning.                    number, city, state, and
                                       To the extent that any      postal code.
                                       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.”
    Claims 39, 42: “decoding”          Decipher information        Convert information into
                                       into useable form           useable form.
    Claim 41: “decode”
    Claim 40: “decoded                 Deciphered, us[e]able       Information converted
    information[”]                     information                 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   Plain and ordinary          Plain and ordinary
    corrected address provided” and    meaning.                    meaning (mutually
    “if the sender does not want a                                 exclusive alternatives)
    corrected address provided.”
    Claim 42: “posting return mail    Plain and ordinary           Posting decoded data on
    data records on a network that is meaning                      a network that is
    accessible to the sender.”                                     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



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


       1/
          Recently, the Federal Circuit, in granting a petition for rehearing en banc, requested the
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).
       2/
          Trial courts have considerable discretion construing claims and may revisit prior
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).




                                               -4-
       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 of technical 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
Meyer Intellectual 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,



                                          -5-
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:

       3/
           “Comprising,” a term that appears through these claims, generally introduces illustrative,
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.”) (citing Patent and Trademark Office, Department of Commerce, 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).



                                                -6-
      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
     undeliverable mail 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


                                   -7-
             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 concludes that it “consistently
(and without exception) requires receipt of returned mail items from the postal service
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 arguments that attempted to distinguish its invention from




                                          -8-
the USPS’s accused Postal Automated Redirection System (PARS).” Defendant
quotes plaintiff’s statement from the amendment of June 8, 2010 as follows:

             The instant specification 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 elements that 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 unless the patentee had demonstrated a clear



                                          -9-
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 as that 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).




                                          - 10 -
      Accordingly, “subsequent to mailing” is construed to mean, “after mailing.”

      B.    “Returned Mail Items”/“Mail Items 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 from the 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).




                                      - 11 -
       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); Rambus Inc. v. Infineon Techs. AG, 318 F.3d 1081, 1094
(Fed. Cir. 2003). Plaintiff asserts that 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 describes that 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 postal service 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



                                          - 12 -
proposed construction, as neither return to sender nor completion of Postal Service
processing is required.

      Upon analysis of the constructions proposed by the parties the 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




                                       - 13 -
             accessible to the sender to enable the sender to access the
             records.

’548 Patent (emphasis supplied).

       As previously noted, plaintiff’s proposed construction for “undeliverable mail”
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 constructions for these terms are, “[m]ail
items that could not be delivered by the postal service,” 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 is that mail 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 “undeliverable-
as-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 the Postal Service makes this 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.



                                         - 14 -
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-as-
addressed” 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.     “Mail Items 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


                                          - 15 -
             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 limitations into 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 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.




                                        - 16 -
      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 from the 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
           undeliverable mail 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).




                                    - 17 -
       As previously noted, plaintiff’s construction of “return mail service provider”
is “[a]ny entity that performs electronic return mail processing,” whereas defendant
proposes the 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 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; . . .




                                         - 18 -
             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 as required 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




                                         - 19 -
“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,4/ a transmittal between the application server and the address server which
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 39,5/ retains the requirement of a writing, a limiting condition plaintiff contends is
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 claim language. 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


       4/
            The parties have agreed to construe “mailing address service provider” as “[a]ny entity
that stores and provides updated address information.” J. Cl. Constr. Stmt., Doc. No. 39-1.
       5/
          Defendant’s alternative construction for “address” is “the written directions indicating the
location to which the USPS is to deliver or return a mailpiece.” Doc. No. 44 at 39.
       6/
          The court does not reach the question of whether a code in computer memory is written,
or whether an address can, in this context, be verbal.



                                                - 20 -
verbiage to construe the word “address,” defaulting to its plain and ordinary meaning.
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
           undeliverable mail 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




                                        - 21 -
            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.


                                        - 22 -
      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).




                                      - 23 -
       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
claim terms 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-and-
not-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



                                         - 24 -
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 that return
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 asserts that 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 ordinary meaning 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 of revisiting 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



                                         - 25 -
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




                                         - 26 -
