Paper No. _____
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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,
`
`v.
`
`RETURN MAIL, INC.
`Patent Owner.
`
`____________
`
`Case CBM2014-00116
`Patent 6,826,548
`____________
`
`PATENT OWNER RETURN MAIL, INC.’S
`UPDATED EXHIBIT LIST
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`CBM2014-00116
`Patent 6,826,548
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`Further to 37 C.F.R. § 42.63(e), Patent Owner Return Mail, Inc. (“RMI”)
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`hereby submits a current listing of RMI exhibits to counsel for Petitioner The United
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`States Postal Service.
`
`Description
`Number
`Exhibit 2001 Park U.S. Patent Publication 2001/0010334
`Exhibit 2002 Return Mail, Inc. v. United States, No. 11-00130 (Fed. Cl. Feb. 28, 2011)
`[Doc. No. 1, Complaint]
`Exhibit 2003 Return Mail, Inc. v. United States, No. 11-00130 (Fed. Cl. Aug. 13, 2012)
`[Doc. No. 39, Joint Claim Construction Statement]
`Exhibit 2004 Return Mail, Inc. v. United States, No. 11-00130 (Fed. Cl. Aug. 13, 2012)
`[Doc. No. 39-1, Appendix A—Agreed Constructions for Patent
`Claim Terms]
`Exhibit 2005 Return Mail, Inc. v. United States, No. 11-00130 (Fed. Cl. Aug. 13, 2012)
`[Doc. No. 39-2, Appendix B—Patent Claim Terms for Construction
`by the Court]
`Exhibit 2006 MCGRAW-HILL DICTIONARY OF COMPUTING & COMMUNICATIONS
`(6th ed. 2003)
`Exhibit 2007 Return Mail, Inc. v. United States, No. 11-00130 (Fed. Cl. Feb. 11, 2014)
`[Doc. No. 58, Scheduling Order]
`Exhibit 2008 Updated CV of Joe Lubenow provided to RMI at the deposition of
`Joe Lubenow on November 13, 2014.
`Exhibit 2009 U.S. Patent No. 5,715,398 entitled “System for distributing items from
`an origin to a plurality of destinations.” Inventors Josef K. Lubenow
`and Charles T. Albright.
`Exhibit 2010 U.S. Patent No. 4,674,052 entitled “Collating and binding system and
`method with postage indication.” Inventors Did-Bun Wong and Josef
`K. Lubenow.
`Exhibit 2011 Random Houston Webster’s College Dictionary (2d ed. 1998)
`Exhibit 2012 Webster’s New World Computer Dictionary (9th ed. 2001)
`Exhibit 2013 21st Century Dictionary of Computer Terms (1994)
`Exhibit 2014 Microsoft Press Computer Dictionary (1991)
`Exhibit 2015 Declaration of Scott M. Nettles, dated December 15, 2014
`Exhibit 2016 One Code ACS Version 1.0 Scope Document, attached to U.S.
`Provisional Application for “Providing one code address correction.”
`Exhibit 2017 Planet/ACS Pilot
`Exhibit 2018 Planet/ACS Project Charter
`Exhibit 2019 Mailer Requirements for Participation
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`CBM2014-00116
`Patent 6,826,548
`Number
`Description
`Exhibit 2020 Planet – ACS Project Plan, Version 01, dated July 17, 2003
`Exhibit 2021 U.S. Patent No. 7,904,197 entitled “Methods and systems for
`providing one code address correction service.” Issued on March 8,
`2011.
`Exhibit 2022 U.S. Patent No. 8,195,575 entitled “Systems and methods for
`providing change of address services over a network.” Issued on June
`5, 2012
`Exhibit 2023 U.S. Patent No. 8,598,482 entitled “Intelligent barcode systems.”
`Issued December 3, 2013
`Exhibit 2024 U.S. Patent No. 8,829,379 entitled “Intelligent barcode systems.”
`Issued September 9, 2014
`Exhibit 2025 U.S. Patent No. 8,103,716 entitled “Methods and systems for
`forwarding an item to an alternative address.” Issued January 24, 2012
`Exhibit 2026 U.S. Patent No. 8,825,201 entitled “Processing of undeliverable as
`addressed mail.” Issued September 2, 2014
`Exhibit 2027 U.S. Patent No. 8,275,734 entitled “Systems and methods for returned
`mail.” Issued September 25, 2012
`Exhibit 2028 U.S. Patent No. 8,311,667 entitled “Processing of undeliverable as
`addressed mail.” Issued November 3, 2012
`Exhibit 2029 U.S. Patent No. 8,350,173 entitled “Determining disposition of
`undeliverable as addressed mail.” Issued January 8, 2013
`Exhibit 2030 Article entitled “PARS excellence: New Processing System
`Deployment Complete” (Aug. 23, 2005)
`Exhibit 2031 “Computerized Forwarding System Managers and Supervisors
`Guide,” Handbook PO-602 (dated June 2003)
`Exhibit 2032 Prosecution History for U.S. Patent No. 8,195,575 entitled “Systems
`and methods for providing change of address services over a
`network.”
`Exhibit 2033 157 Cong. Rec. S1360 (daily ed. Mar. 8, 2011)
`Exhibit 2034 Curriculum Vitae of Scott M. Nettles
`Exhibit 2035 U.S. Patent No. 8,688,265 entitled “Processing of undeliverable as
`addressed mail.” Issued April 1, 2014
`Exhibit 2036 U.S. Patent No. 8,637,783 entitled “Determining disposition of
`undeliverable as addressed mail.” Issued January 28, 2014
`Exhibit 2037 U.S. Patent No. 8,528,817 entitled “Methods and systems for data
`interchange.” Issued September 10, 2013
`Exhibit 2038 U.S. Patent No. 8,521,623 entitled “Return payment card process.”
`Issued August 27, 2013
`Exhibit 2039 U.S. Patent No. 8,499,046 entitled “Method and system for updating
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`CBM2014-00116
`Patent 6,826,548
`Number
`Description
`business cards.” Issued July 30, 2013
`Exhibit 2040 U.S. Patent No. 8,412,372 entitled “Processing of undeliverable as
`addressed mail.” Issued April 2, 2013
`
`Exhibit 2041 U.S. Patent No. 8,386,528 entitled “System and method of data
`processing for a communications operation.” Issued February 26,
`2013
`Exhibit 2042 U.S. Patent No. 8,386,516 entitled “Registration and maintenance of
`address data for each service point in a territory.” Issued February 26,
`2013
`Exhibit 2043 U.S. Patent No. 8,282,001 entitled “Method for data interchange.”
`Issued October 9, 2012
`Exhibit 2044 U.S. Patent No. 8,249,998 entitled “System for resolving distressed
`shipments.” Issued August 21, 2012
`Exhibit 2045 U.S. Patent No. 8,165,909 entitled “System and method for
`automated management of an address database.” Issued April 24,
`2012
`Exhibit 2046 U.S. Patent No. 8,157,173 entitled “Method for tagged bar code data
`interchange.” Issued April 17, 2012
`Exhibit 2047 U.S. Patent No. 8,129,646 entitled “System and method for validating
`mailings received.” Issued March 6, 2012
`Exhibit 2048 U.S. Patent No. 8,063,332 entitled “Mail piece consolidation and
`accountability using advanced tracking methods.” Issued November
`22, 2011
`Exhibit 2049 U.S. Patent No. 7,974,882 entitled “Method and system for creating a
`comprehensive undeliverable-as-addressed database for the
`improvement of the accuracy of marketing mailing lists.” Issued July
`5, 2011
`Exhibit 2050 U.S. Patent No. 7,942,328 entitled “Method for data interchange.”
`Issued May 17, 2011
`Exhibit 2051 U.S. Patent No. 7,934,641 entitled “Method and apparatus for bar
`code data interchange.” Issued May 3, 2011
`Exhibit 2052 U.S. Patent No. 7,912,854 entitled “Registration and maintenance of
`address data for each service point in a territory.” Issued March 22,
`2011
`Exhibit 2053 Patent Owner’s Objections to Petitioner’s Petition Exhibits dated
`October 30, 2014
`Exhibit 2054 Patent Owner’s Objections to Petitioner’s Reply Exhibits dated
`February 24, 2015
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`CBM2014-00116
`Patent 6,826,548
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`Dated: April 6, 2015
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` Respectfully submitted,
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`
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`
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`/Douglas H. Elliott/
`Douglas H. Elliott (Reg. No. 32,982)
`delliott@elliottiplaw.com
`Eric M. Adams (Reg. No. 56,290)
`eric@elliottiplaw.com
`THE ELLIOTT LAW FIRM, PLLC
`6750 West Loop South, Suite 920
`Bellaire, Texas 77401
`(832) 485-3508
`(832) 485-3511 fax
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`Attorneys for Patent Owner
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`CBM2014-00116
`Patent 6,826,548
`
`CERTIFICATE OF SERVICE
`
`
`The undersigned certifies that the foregoing Patent Owner Return Mail, Inc.’s
`
`Updated Exhibit List was served on April 6, 2015, by FEDERAL EXPRESS standard
`overnight shipping to the following attorneys of record for Petitioner as well as by
`electronic service at the e-mail address listed below.
`
`Lionel Lavenue
`Erika Arner
`Finnegan, Henderson, Farabow, Garrett & Dunner LLP
`Two Freedom Square
`11955 Freedom Drive
`Reston, VA 20190
`
`Elizabeth Ferrill
`Joshua Goldberg
`Finnegan, Henderson, Farabow, Garrett & Dunner LLP
`901 New York Avenue, N.W.
`Washington, D.C. 20001
`
`USPS-RMI-CBM@finnegan.com
`
`
`
`/Douglas H. Elliott/
`Douglas H. Elliott
`Registration No. 32,982
`Attorney for Patent Owner
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