Trial@uspto.gov
`571-272-7822
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` Paper 24
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` Entered: February 20, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`THE UNITED STATES POSTAL SERVICE (USPS) AND
`THE UNITED STATES OF AMERICA,
`AS REPRESENTED BY THE POSTMASTER GENERAL,
`Petitioner,
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`v.
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`RETURN MAIL, INC.,
`Patent Owner.
`_______________
`
`
`CBM2014-00116
`Patent 6,826,548 B2
`_______________
`
`
`Before KEVIN F. TURNER, BARBARA A. BENOIT, and
`JO-ANNE M. KOKOSKI, Administrative Patent Judges.
`
`
`TURNER, Administrative Patent Judge
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`
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`DECISION
`Request for Rehearing
`37 C.F.R. §§ 42.71
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`571-272-7822
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` Paper 24
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`
`
`
` Entered: February 20, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`THE UNITED STATES POSTAL SERVICE (USPS) AND
`THE UNITED STATES OF AMERICA,
`AS REPRESENTED BY THE POSTMASTER GENERAL,
`Petitioner,
`
`v.
`
`RETURN MAIL, INC.,
`Patent Owner.
`_______________
`
`
`CBM2014-00116
`Patent 6,826,548 B2
`_______________
`
`
`Before KEVIN F. TURNER, BARBARA A. BENOIT, and
`JO-ANNE M. KOKOSKI, Administrative Patent Judges.
`
`
`TURNER, Administrative Patent Judge
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`
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`
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`DECISION
`Request for Rehearing
`37 C.F.R. §§ 42.71
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`
`
`CBM2014-00116
`Patent 6,826,548 B2
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`I. INTRODUCTION
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`The United States Postal Service and United States of America, as
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`represented by the Postmaster General (collectively “USPS”), filed a request for
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`rehearing (Paper 15, “Req.”) of the Decision on Institution (Paper 11, “Dec.”),
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`which instituted a covered business method patent review of claims 39–44 of
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`U.S. Patent No. 6,826,548 B2 (“the ’548 Patent”). In its request, USPS essentially
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`contends that the Board improperly relied upon 35 U.S.C. § 326(b) “to deny
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`institution of certain other proposed grounds” and “seeks rehearing to ensure that
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`those remaining unpatentability grounds are either instituted as part of this
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`proceeding or are available later.” Req. 1. The request for rehearing is denied.
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`II. ANALYSIS
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`When rehearing a decision on institution, the Board will review the decision
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`for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be
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`determined if a decision is based on an erroneous interpretation of law, if a factual
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`finding is not supported by substantial evidence, or if the decision represents an
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`unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. U.S.,
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`393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338,
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`1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315-16 (Fed. Cir. 2000).
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`The standard for instituting a covered business method patent review of a
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`patent is set forth in 35 U.S.C. § 324(a), which provides that “[t]he Director may not
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`authorize a post-grant review to be instituted unless the Director” makes a threshold
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`2
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`CBM2014-00116
`Patent 6,826,548 B2
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`determination. See section 18(a)(1) of the AIA1 (“The transitional proceeding . . .
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`shall employ the standards and procedures of, a post-grant review under chapter 32
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`of title 35, United States code”). The standard is written in permissive terms—
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`identifying when the United States Patent and Trademark Office (“the Office”) is
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`authorized to institute a post-grant review, but not requiring a review to be instituted.
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`Thus, Congress has given the Office discretion whether to institute a review or not
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`institute a review.
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`Further, in determining whether to institute a covered business method patent
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`review of a patent, the Board may “deny some or all grounds for unpatentability for
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`some or all of the challenged claims.” 37 C.F.R. § 42.208(b). The Rules for post-
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`grant patent review proceedings were promulgated to take into account the “effect of
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`any such regulation on the economy, the integrity of the patent system, the efficient
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`administration of the Office, and the ability of the Office to timely complete
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`proceedings.” 35 U.S.C. § 326(b). In addition, as mandated by
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`35 U.S.C. § 326(a)(11), 37 C.F.R. § 42.200(c) was promulgated to require that the
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`final written determination in a post-grant patent review be issued normally no more
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`than one year after the date of institution, except that the review may be extended by
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`not more than six months for good cause shown.
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`In the decision on institution for the instant proceeding, we granted USPS’s
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`Petition to institute a covered business method patent review of challenged claims
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`39–44 of the ’548 Patent—specifically, as unpatentable under (i) 35 U.S.C. § 101,
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`as being directed to unpatentable subject matter, and (ii) 35 U.S.C. § 102, as being
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`1 Section 18(a) of the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125
`Stat. 284, 329 (2011) (“AIA”).
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`3
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`CBM2014-00116
`Patent 6,826,548 B2
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`anticipated by 1997 ACS.2 Dec. 35. In rendering the decision on institution, we
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`exercised our discretion in denying several other asserted grounds “for reasons of
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`administrative necessity to ensure timely completion of the instituted proceeding.”
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`Id. at 32–33. It is those latter decisions that USPS takes issue with in its Request
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`for Rehearing.
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`USPS argues that we did not address substantively the denied grounds and
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`that we lack any statutory authority to deny grounds on the basis of administrative
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`necessity. Req. 3. USPS continues that it complied with the statutory and
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`regulatory requirements, promulgated by the Director to ensure efficient
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`administration of the Office and the timely completion of proceedings, in its
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`Petition, but we failed “to explain how denying a few grounds of unpatentability
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`set forth within the defined page limits can be necessary for efficiency.” Id. at 3–4.
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`Additionally, USPS notes that “35 U.S.C. § 328 requires the PTAB issue a final
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`written decision ‘with respect to the patentability of any patent claim challenged by
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`the petitioner.’” Id. at 4 (citations omitted). Lastly, USPS argues that it is unclear
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`from the Decision “whether any consideration was given to the possible estoppel
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`effect that may result in unrecoverable defensive rights to the Petitioner.” Id.
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`USPS’s arguments are not persuasive. USPS fails to appreciate fully that the
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`Board is charged with securing the just, speedy, and inexpensive resolution of
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`every proceeding. 37 C.F.R. § 42.1(b). USPS also fails to appreciate the
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`discretion that Congress has granted the Office in the decision of whether to
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`institute a post-grant review. 35 U.S.C. § 324(a).
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`
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`2 United States Postal Service, Address Change Service, Publication 8 (July 1997)
`(Ex. 1004)
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`4
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`CBM2014-00116
`Patent 6,826,548 B2
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`Indeed, USPS does not argue that we misapprehended or overlooked USPS’s
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`arguments in the Petition. Rather, USPS appears to argue that as the petitioner, it
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`is in the best position to set forth all of the grounds that are appropriate and that the
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`Board must substantively demonstrate that those grounds are somehow defective,
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`if they are not to form the basis of a trial. USPS’s position is in direct opposition
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`to the clear language of 35 U.S.C. § 324(a), granting the Office discretion as to
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`whether to institute a post-grant review. Further, unlike a reexamination
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`proceeding, the Board is not obligated to institute a trial on every ground with
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`respect to which there is a reasonable likelihood that a petitioner would prevail in
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`showing unpatentability of specific claims. 35 U.S.C. § 324(a); 37 C.F.R.
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`§ 42.208(a), (b). Moreover, in this case, the institution of all possible grounds
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`would not allow “for the ability of the Office to timely complete proceedings.”
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`Although not spelled out in our Decision, we determined that a surfeit of instituted
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`grounds in this case would not allow the parties or the Board to consider all of the
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`intricacies of those grounds within the prescribed time period. Cf. Heckler v.
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`Chaney, 470 U.S. 821, 831 (1985) (indicating an agency, when deciding whether
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`to take action in a particular matter, must determine whether its resources are best
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`spent on one matter or another).
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`We agree with USPS that 35 U.S.C. § 328 authorizes us to issue “a final
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`written decision with respect to the patentability of any patent claim challenged by
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`the petitioner.” We do not read § 328, however, as requiring that every possible
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`ground put forth by a petitioner needs to be substantively evaluated. Moreover,
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`Rule 208(a) authorizes us to institute a post-grant review on some of the
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`challenged claims and some of the grounds of unpatentability asserted for each
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`5
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`CBM2014-00116
`Patent 6,826,548 B2
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`claim. 37 C.F.R. § 42.208(a). The Decision on Institution set forth the grounds
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`upon which the trial was authorized (Dec. 35) and no grounds were “deferred,” as
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`alleged by USPS. Req. 4–5.
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`Thus, we are not persuaded that the Decision on Institution should be altered
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`to encompass additional grounds of unpatentability. For the foregoing reasons,
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`USPS has not shown that the Board abused its discretion in denying the additional
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`grounds.
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`USPS, in the alternative, seeks clarification that our decision denying several
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`asserted grounds for reasons of administrative necessity to ensure timely
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`completion of the instituted proceeding “does not affect the Petitioner’s ability to
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`argue the same grounds in this proceeding on appeal before the Court of Appeals
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`for the Federal Circuit and/or at the Court of Federal Claims, or in a future post-
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`grant proceeding.” We have no authority to ensure Petitioner’s ability to assert
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`grounds in a proceeding before any court. See, e.g., 35 U.S.C. § 325(e)(2)
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`(prescribing estoppel in civil actions and other proceedings). Nor will we provide
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`an advisory opinion as to whether a ground included in a petition, but denied
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`without consideration of its merits, has been presented to the Office under
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`35 U.S.C. § 325(d). Such a determination, for instance, is up to the Board when
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`determining whether to institute another proceeding.
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`Moreover, to the extent USPS seeks assurance that it “can argue the same
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`grounds in this proceeding on appeal before the Court of Appeals for the Federal
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`Circuit”—meaning that USPS seeks assurance it can argue the denied grounds in
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`any appeal from a final written decision resulting from the instituted review—we
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`cannot provide such assurance. The Board’s determination “whether to institute a
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`6
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`CBM2014-00116
`Patent 6,826,548 B2
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`post-grant review [is] final and nonappealable.” 35 U.S.C. § 324(e). In In re
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`Cuozzo Speed Technologies, LLC, No. 2014-1301, 2015 WL 448667, at *2–4 (Fed.
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`Cir. Feb. 4, 2015), the Federal Circuit reviewed 35 U.S.C. § 314(d), which uses the
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`same language in providing the Board’s determination whether to institute an inter
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`partes review (“IPR”) “is final and nonappealable.” The Federal Circuit
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`“conclude[d] that section 314(d) prohibits review of the decision to institute an IPR
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`even after a final decision.” Id. at *3.
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`Thus, we are not persuaded that the Decision on Institution should have
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`provided assurances as to whether the denied grounds could be reasserted before
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`the Board or the Court of Appeals for the Federal Circuit. For the foregoing
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`reasons, USPS has not shown that the Board abused its discretion in failing to
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`provide such assurances.
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`III. CONCLUSION
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`USPS’s Request for Rehearing is denied.
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`7
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`CBM2014-00116
`Patent 6,826,548 B2
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`PETITIONER:
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`Lionel Lavenue
`Erika Arner
`Elizabeth Ferrill
`Joshua Goldberg
`Finnegan, Henderson, Farabow, Garrett & Dunner LLP
`lionel.lavenue@finnegan.com
`erika.arner@finnegan.com
`elizabeth.ferrill@finnegan.com
`joshua.goldberg@finnegan.com
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`PATENT OWNER:
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`Douglas H. Elliot
`Eric M. Adams
`The Elliott Law Firm, PLLC
`delliott@elliottiplaw.com
`eric@elliottiplaw.com
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`8
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