Mail scanning company claims jail is infringing its patent. HLFIP v. RUTHERFORD

Mail scanning company claims jail is infringing its patent. HLFIP v. RUTHERFORD

A patent is a set of exclusive rights granted to the inventor of a invention that qualifies for patent protection.  To qualify for patent protection in the United States an inventor must file a patent application with the United States Patent and Trademark Office.  The application must describe the invention in detail and demonstrate that the claimed invention is new useful and not obvious.  A patent grants its owner the exclusive right to make, use, sell and import the patented invention.  If someone other than the patent owner attempts to exercise one of these exclusive rights that can be considered patent infringement.  The owner of a patent can stop patent infringement by filing a lawsuit which requests and injunction and get monetary damages for patent infringement which has already occurred.

Patent law grants an inventor a temporary monopoly over their invention in exchange for full public disclosure of the invention.   Developing an invention from scratch is a time consuming and expensive process.  Frequently the amount of effort put into developing an invention is not immediately apparent when the invention is delivered as a finished product.  The purpose of patent law is to allow inventors to share their ideas with the public without the fear that their inventions will be used without compensation.  The public gains the benefit of the inventors knowledge and after the patent expires the invention enters the public domain.  If not for protections granted by patent law, many inventors would keep their inventions a secret and innovation would be stifled.

Despite the strong public policy reasons to respect patent rights, there are still accusations of patent infringement after a patented invention is presented to a potential buyer.  One such case is HLFIP HOLDING, INC. v. RUTHERFORD COUNTY, TENNESSEE, 3:19-cv-00714 (M.D.TN 2019).  The plaintiff in this case is Smart Communications, the owner of a patented method of delivering digitized versions of physical mail.  The patent is titled Correctional Postal Mail Contraband Elimination System and was issued in May 2019. The invention describes a method of scanning inmate mail and delivering it to the inmate via kiosks located inside a jail.  The purpose of the invention is to allow jail operators to more efficiently control secret communications and contraband.   The plaintiff sells the invention under the name MailGuard.

The defendant Rutherford County is a municipal governmental entity that operates a jail.  In 2017 the plaintiffs demonstrated MailGuard to representatives of the defendant.  The defendants were interested in using MailGuard in its jails and asked the plaintiff to partner with one of the defendants vendors, VendEngine, to integrate MailGuard into the VendEngine’s system which was already operating at the jail.  After the execution of a non-disclosure agreement and several conversations between the plaintiff and defendants, the defendants stopped communicating with the plaintiff.  Later through, press releases, the plaintiff learned that VendEngine launched a new product, MailRoom, which performed a similar function as MailGuard.  A former employee of the jail that moved to VendEngine, was quoted in the press release praising MailRoom as groudbreaking.

The plaintiff sued the defendant’s for patent infringement. In its complaint, the plaintiff details how each of the functions of MailRoom infringe on the claims of the plaintiff’s patent.  While the plaintiff makes a strong case for patent infringement in its complaint, accusations are not evidence.  The defendant will be given an opportunity to answer and it is possible that the defendant figured out a way to perform the same function without infringing on the plaintiff’s patent.

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