` Paper No.
`Filed: April 6, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
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`
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`__________________
`
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`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.,
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`Patent Owner.
`
`__________________
`
`
`Case: CBM2014-00116
`Patent: 6,826,548
`
`__________________
`
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`Petitioner’s Motion to Exclude Evidence
`Pursuant to 37 C.F.R. § 42.64(c)
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`I.
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`Relief Requested
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`Case CBM2014-00116
`Patent 6,826,548
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`Pursuant to 37 C.F.R. § 42.64(c), Petitioner The United States Postal Service
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`(“USPS”) and The United States of America, as represented by the postmaster
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`general, (“Petitioner”) moves to exclude certain evidence submitted by Patent Owner
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`(“PO”) Return Mail, Inc. (“RMI”) in this proceeding. For the reasons detailed below,
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`USPS’s motion to exclude should be granted.
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`A motion to exclude is available to a party wishing to challenge the
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`admissibility of evidence and to preserve an objection made previously. See Office
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`Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48,767 (Aug. 14, 2012).
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`II. Objections to RMI’s Exhibits
`Pursuant to 37 C.F.R. § 42.64(b)(1), Petitioner served objections on December
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`22, 2014, objecting to Exhibits 2013, Exhibits 2015-2032, and Exhibits 2035-2052
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`submitted by RMI. RMI did not serve any supplemental evidence in response to
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`Petitioner’s objections.
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`A. Exhibit 2013 – 21st Century Dictionary of Computer Terms (1994)
`RMI cites Exhibit 2013, the 21st Century Dictionary of Computer Terms, on
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`pages 29 and 56 of its PO Response to Petition (Paper No. 21) (“POR”) to support
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`its claim construction position of the verb “decode.” But, the claim term “decode” is
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`not defined by this exhibit—rather the noun “decoder” is defined and this word is not
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`found in the challenged claims or the specification. Therefore, Petitioner objects to
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`Case CBM2014-00116
`Patent 6,826,548
`Exhibit 2013 because the exhibit is not relevant under Federal Rules of Evidence
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`(“FRE”) Rules 401-403 and should be excluded.
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`B. Exhibit 2015 - Declaration of Scott M. Nettles
`RMI cites to paragraphs 37-95 of Exhibit 2015, the Declaration of Scott M.
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`Nettles, on pages 12, 13, 29, 30, 32, 33, 34, 36, 38, 40, 43-48, 50, 51 of its POR to
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`support its positions that claims 39-44 of the ’548 patent are patent eligible subject
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`matter under 35 U.S.C. § 101. Petitioner objects to paragraphs 37-95 of this exhibit
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`because these portions of the Declaration contain testimony on matters as to which
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`the witness lacks sufficient knowledge (personal or otherwise) and testimony that
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`directly opines on issues that are ultimately determinations of law (as opposed to
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`underlying factual bases) including issues of patent law and/or patent examination
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`practice in contravention of 37 C.F.R. § 42.65 (FRE 403 and 704). For example, as
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`part of his patent-eligible subject matter opinion, Dr. Nettles creates his own two-part
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`test—one that has no basis in legal precedent and, in fact, runs afoul of the holdings
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`in Alice, Bilski, Benson, Flook, Bancorp, and CyberSource—to determine whether there is
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`a technological improvement. See Exhibit 2015 at ¶ 50. Specifically, Dr. Nettles states:
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`When looking at the ’548 patent, there are two aspects that in my
`opinion are key to seeing that there is a technological
`improvement. First, it has an overall structure or “architecture”
`that supports automation. Second, it has key technological
`enablers that support and enable the architecture.
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`Id. Using this test and others, Dr. Nettles also opines on the ultimate issue that the
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`claims recite patent-eligible subject matter and meet the requirements of 35 U.S.C.
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`Patent 6,826,548
`§ 101, id. at ¶ 37. In doing so, Dr. Nettles improperly substitutes his opinion for that
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`of the Board. Petitioner objects to paragraphs 37-95 of Exhibit 2015 because Dr.
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`Nettles purports to provide his legal opinion based on a two-part test (of his own
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`creation) that the claims are patent-eligible subject matter because they contain a
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`"technological improvement." However, it is well-established that “whether the
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`asserted claims . . . are invalid for failure to claim statutory subject matter under 35
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`U.S.C. § 101, is a question of law[.]” AT&T v. Excel Comm., Inc., 172 F.3d 1352, 1355
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`(Fed. Cir. 1999).
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`Petitioner further objects to Exhibit 2015 as hearsay under FRE 802. RMI has
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`not responded to Petitioner’s objections asserting that paragraphs 37-95 do not fall
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`within one of the FRE hearsay exceptions. In his Declaration, Dr. Nettles states that
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`Petitioner agrees with his opinion regarding the technological improvement of the
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`’548 patent. Ex. 2015 at ¶ 66. In his Declaration, Dr. Nettles also selectively quotes a
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`paragraph of the exhibit, to prove the “truth” of the matter asserted that the USPS
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`required significant changes over the 1997 ACS system and thus recite a technological
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`improvement. Dr. Nettles quotes a paragraph from Exhibit 2020 PLANET ACS
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`project, page 7:
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`The PLANET-ACS process will have a primary impact upon the
`Improve Delivery of the Mail by optimizing and streamlining the manual
`keying system used today. Scanned bar codes will reduce the number of
`keying errors and improve the speed of NIXIE and [Change of Address]
`mail through the current process. The mailer receives the larger benefit
`by receiving near real time address correction information to update
`their mailing files. Correctly addressed mail improves the sorting and
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`Patent 6,826,548
`delivery of mail for carriers. . . . Providing PLANET-ACS to a wide
`range of mailer[s] will add value to the mail by improving deliverability,
`resulting in improved benefits via mail as a communication medium.
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`Ex. 2015 at ¶ 66. But Dr. Nettles omitted an important sentence in the middle: “The
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`implementation of PLANET-ACS requires minimal development investment,
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`leveraging the existing processes already in place within USPS.” Ex. 2020 at 7
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`(emphases added). This omission demonstrates Dr. Nettles mischaracterization of the
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`information that he proffered for the “truth” asserted in violation of FRE 802.
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`Therefore, paragraphs 37-95 should be excluded.
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`C. Exhibits 2016 – 2020 and Exhibit 2031 - Improper Reliance on USPS’s
`Systems
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`RMI relies on Exhibits 2016 - 2020, documents which describe a collection of
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`USPS mail handling systems unrelated to the Instituted Reference from a prior art
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`standpoint and later implemented, in its POR on pages 13, 35-37 in support of its
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`arguments that the ’548 patent is a technological invention. Petitioner objects to
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`Exhibits 2016 - 2020 under FRE 401-403 as being irrelevant to this argument. These
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`exhibits refer to the USPS PLANET and OneCode ACS systems, described by the
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`USPS to use a machine-readable barcodes for mail processing, which are not at issue
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`in this proceeding. From a prior art perspective, the PLANET system, described in
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`2003 and the OneCode ACS system, described in 2004, cannot be related in any way to
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`disclosure of the 1997 ACS prior art reference. In addition, the exhibits are irrelevant
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`because they describe the state of the art but do not mention or describe the ’548
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`patent. Therefore, because the probative value of Exhibits 2016 - 2020 is substantially
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`outweighed by a danger of confusing the issues and wasting time addressing systems
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`not relevant to the current proceeding, these exhibits should be excluded.
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`D. Exhibits 2021 – 2029 –Patents Filed After the Priority Date of the ’548
`Patent
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`RMI cites to Exhibits 2021 - 2029 on pages 37, 47, 48, and 50 of its POR to
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`show that the exhibits, later-filed patents filed by the USPS cite to the ’548 patent as a
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`prior art reference, supports its arguments that encoding information on an envelope
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`constitutes a technological improvement. Petitioner objects to Exhibits 2021 - 2029
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`under FRE 401-403 as being irrelevant to those arguments. The mere fact that a
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`patent discloses a reference as prior art does not mean that Petitioner has acquiesced
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`to the validity of the patent. In fact, Petitioner is under a duty of disclosure to the
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`USPTO to disclose all known references. Further, the earliest issue date of the patents
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`cited by RMI in Exhibits 2021–2029 is March 8, 2011, which is after the relevant time
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`frame of 2001 (or 2002, the appropriate date if priority date not accorded). Moreover,
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`each exhibit describes features outside the scope of the Petition because it relates to
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`features different from the system described in the Instituted Reference. Therefore,
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`because the probative value of Exhibits 2021-2029 is substantially outweighed by a
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`danger of confusing the issue and wasting time addressing systems not relevant to the
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`current proceeding, these exhibits should be excluded.
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`Patent 6,826,548
`E. Exhibit 2030 – PARS Excellence – New Processing System
`Development Complete
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`RMI cites to Exhibit 2030 on pages 60, 64, 66, 67, 69, 71, and 74 of their POR
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`in support of its arguments that scanners did not exist prior to 2005 at the USPS
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`facilities. Petitioner objects to Exhibit 2030 under FRE 401-403 on the grounds that is
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`irrelevant to this argument. Petitioner further objects that the exhibit is confusing and
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`misleading under FRE 403. The exhibit only states that the installation of scanners, as
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`of August 2005, was completed at 87 Computer Forwarding System locations as part
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`of the Postal Automated Redirection System (“PARS”) deployment. For this reason,
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`the exhibit is irrelevant. Moreover, the exhibit does not state that 2005 is when
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`scanners were first installed or thought of being installed in those units. Ex. 2030 at 1-
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`2. Thus, RMI’s reliance on the exhibit is confusing and misleading to support its
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`argument. Further, Exhibit 2030 relates to a different system—the PARS system (a
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`follow-on to the 1997 ACS system)—not at issue in this proceeding or the co-pending
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`litigation. Therefore, Exhibit 2030’s probative value is substantially outweighed by a
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`danger of confusing the issue and wasting time addressing a system not relevant to the
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`current proceeding.
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`F. Exhibit 2032 – File History of U.S. Patent No. 8,195,575 (“the ’575
`patent”)
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`RMI cites to Exhibit 2032 on page 49 of its POR in support of its arguments
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`that the field is not preempted by the ’548 patent and that the USPS prosecution
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`position is different than the position asserted in the Petition. Petitioner objects to
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`Patent 6,826,548
`this exhibit under FRE 401-403 on the grounds that it is irrelevant to those
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`arguments. Petitioner further objects that the exhibit is irrelevant, confusing, and
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`misleading under FRE 403 because RMI misrepresents that Petitioner’s law firm’s
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`position regarding the validity of its claims. RMI asserted that the reason the claims
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`overcame a § 101 rejection by the Examiner was that USPS amended the claim to read
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`“computer program product, stored on a non-transitory computer-readable medium
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`that, when executed by a computer, provides an electronic change of address service.”
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`Ex. 2015 at 49 (emphasis added). However, RMI leaves out that USPS did not
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`acquiesce to the Examiner’s position but “traverses the rejection, solely to advance
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`prosecution, Applicant has incorporated the Examiner’s suggestion.” Ex. 2032 at 39.
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`Although, the language recited in the preamble is similar to that of claim 40 of the
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`’548 patent, it is the preamble and the claims, which overcame the rejection. Further,
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`the ’575 patent describes the PLANET system (as noted above an unrelated and later
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`implemented system, unrelated to the Instituted Reference) issued on June 5, 2012,
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`more than decade after the claims-at-issue and thus the prosecution history set forth
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`in Exhibit 2032 is irrelevant and should be excluded.
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`G. Exhibit 2035 – Exhibit 2052
`RMI makes a single blanket cite to Exhibits 2035-2052 on page 50 of its POR,
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`referring to them as patents who cite the ’548 patent as a prior art reference. RMI
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`cites these exhibits apparently to support its argument that the ’548 patent has been
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`cited as prior art. But other than this bald citation, RMI provides no further analysis as
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`Patent 6,826,548
`to the relevancy of these exhibits to this proceeding. Petitioner objects to this style of
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`citation, because its only purpose can be to circumvent the page limit requirements set
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`forth by 37 C.F.R. § 42.24 (b)(2). Petitioner further objects to these exhibits under
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`FRE 401-403 as being irrelevant, because the issue date of Exhibits 2035-2052, the
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`earliest being March 22, 2011, all post-date an appropriate time frame of 2001 or 2002
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`(appropriate date if priority date not accorded) of the ’548 patent. Therefore, the
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`probative value of Exhibits 2035-2052 is substantially outweighed by a danger of
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`confusing the issue and wasting time addressing systems not relevant to the current
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`proceeding.
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`III. Conclusion
`Based on the reasons provided above, Petitioner requests that the Board
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`exclude RMI’s Exhibits 2013, paragraphs 37-95 of Exhibit 2015, Exhibits 2014-2032,
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`and Exhibits 2035-2052.
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`Dated: April 6, 2015
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`
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`Respectfully submitted,
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`By: /Lionel M. Lavenue/
`Lionel Lavenue, Reg. No. 46,859
`Finnegan, Henderson,
`Farabow, Garrett & Dunner LLP
`Two Freedom Square
`11955 Freedom Drive
`Reston, VA, 20190-5675
`Phone: 571.203.2750
`Fax: 571.203.2777
`E-mail: USPS-RMI-CBM@finnegan.com
`Attorney for Petitioner
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`CERTIFICATE OF SERVICE
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`Case CBM2014-00116
`Patent 6,826,548
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`The undersigned certifies that the foregoing Petitioner’s Motion to
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`Exclude Evidence pursuant to 37 C.F.R. § 42.64(c) was served on April 6, 2015,
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`via email directed to counsel of record for the Patent Owner at the following:
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`Douglas H. Elliott
`doug@elliotiplaw.com
`Eric M. Adams
`eric@elliottiplaw.com
`Renea Mattox
`renea@elliottiplaw.com
`Sarah Kelly
`sarah@elliottiplaw.com
`THE ELLIOTT LAW FIRM, PLLC
`6750 West Loop South, Suite 995
`Bellaire, Texas 77401
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`/Ashley F. Cheung/
`Ashley F. Cheung
`Case Manager
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`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
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`10
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