Orange County – Last Wednesday a three-judge panel of the U.S. Court of Appeals for the Federal Circuit upheld an earlier decision by the Court of Federal Claims, holding that the United States Postal Service and IBM did not infringe a shipping patent held by Uship Intellectual Properties LLC.
In the earlier case, Uship complained that the U.S. Postal Service infringed its U.S. Patent Number 5,831,220 for an “Automated package shipping machine.” The ’220 patent covers a system by which all of the shipping steps, from calculating postage to printing a label and accepting payment, are automated and carried out by the machine. IBM was later added as a third-party defendant when Uship learned that it created the machines for USPS.
Uship, headquartered in Austin, Texas, was founded in 2003 by Matt Chasen who came up with the idea when he was planning a move from Seattle to Austin. Matt had extra space in his rented van and wondered how many other trucks crossed the country partially empty. So, he set out to find a way to make it more affordable to coordinate shipping with others.
The patent specifically refers to a kiosk-type of machine on which a user can weigh a package, figure the postage and print a label. However, the patent also spells out that the package is then “given to a human attendant, such as a check out clerk of a grocery or hardware store and the like, with the appropriate mailing label for validation of receipt of the item by the attendant.” Because of this, the court held that the U.S. Postal Service and IBM are not infringing on the patent since the entire transaction at the U.S. Postal Service is conducted from the machine and not passed on to an attendant or postal worker.
On appeal, Uship made a plea to the appellate judge that the U.S. Court of Federal Claims misunderstood some of the factors relating to its patent. The judge, however, was not convinced. John M. Mesmarais, IBM’s attorney commented that he was pleased with the decision because it “limited the Uship patents to their proper scope.”
Uship’s counsel made no comment.