`
`Paper No.
`Filed: April 27, 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,
`
`v.
`
`RETURN MAIL, INC.,
`
`Patent Owner.
`
`__________________
`
`
`Case: CBM2014-00116
`Patent: 6,826,548
`
`__________________
`
`Petitioner’s Reply to RMI’s Opposition
`to Petitioner’s Motion to Exclude
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`
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`I.
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`II.
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`
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`Case CBM2014-00116
`Patent 6,826,548
`
`TABLE OF CONTENTS
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`Exhibits 2016 - 2020 and Exhibit 2031 – Improper Reliance on USPS’s
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`Exhibits 2021 - 2029 – Patents Filed After the Priority Date of the ’548
`
`USPS’s Motion to Exclude Should Be Granted ....................................................... 1
`A.
`Exhibits 2013 – 21st Century Dictionary of Computer Terms (1994) ...... 1
`B.
`Exhibit 2015 – Declaration of Scott M. Nettles ........................................... 1
`C.
`Systems ................................................................................................................ 2
`D.
`Patent ................................................................................................................... 3
`E.
`Development Complete .................................................................................... 3
`F.
`patent”) ................................................................................................................ 4
`G.
`Exhibit 2035 - Exhibit 2052 ............................................................................. 5
`Conclusion ...................................................................................................................... 5
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`Exhibit 2030 – PARS Excellence – New Processing System
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`Exhibit 2032 – File History of U.S. Patent No. 8,195,575 (“the ’575
`
`
`
`i
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`
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`TABLE OF AUTHORITIES
`
`Case CBM2014-00116
`Patent 6,826,548
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` Page(s)
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`Cases
`
`Fidelity National Information Services, Inc. v. Checkfree Corp.
`CBM2013-00031, 2014 WL 7330475 (PTAB Dec. 22, 2014) .................................. 1, 2
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`Interthinx, Inc. v. Corelogic Solutions, LLC,
`CBM2012-00007, 2014 WL 587149 (PTAB Jan. 30, 2014) (Paper 54) ....................... 1
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`SAP America, Inc. v. Versata Development Group, Inc.,
`CBM2012-00001, 2013 WL 3167735 (PTAB June 11, 2013) ...................................... 1
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`Statutes
`
`35 U.S.C. § 101 ........................................................................................................................... 4
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`Other Authorities
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`37 C.F.R. § 42.24 ....................................................................................................................... 5
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`37 C.F.R. § 42.65 ....................................................................................................................... 1
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`Fed. R. Evid. 401 ....................................................................................................................... 2
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`Fed. R. Evid. 403 ................................................................................................................... 1, 4
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`Fed. R. Evid. 704 ....................................................................................................................... 1
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`
`
`ii
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`
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`Case CBM2014-00116
`Patent 6,826,548
`
`I.
`
`USPS’s Motion to Exclude Should Be Granted
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`At each turn, RMI has failed to effectively show why its Exhibits should not be
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`excluded. As explained herein, these Exhibits should be excluded as failing to
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`comport with the rules of evidence.
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`A. Exhibits 2013 – 21st Century Dictionary of Computer Terms (1994)
`In its Opposition (Paper 33 “Opp.”), RMI provides no arguments how the
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`term “decoder” is relevant to this proceeding. Id. at 2. The term “decoder” is not
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`found in any of the claims nor the specification. RMI does not explain how the term
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`would assist the Board in this proceeding. Therefore, the Board should exclude Ex.
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`2013 because it is not relevant.
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`B. Exhibit 2015 – Declaration of Scott M. Nettles
`Dr. Nettles opines not based on his scientific or technical knowledge, but
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`rather on issues that are ultimately determinations of law including issues of patent
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`law and/or patent examination practice in contravention of 37 C.F.R. § 42.65 (FRE
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`403 and 704). RMI arguments rest on decisions where the Board considered expert
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`testimony related to what technology was available at the time, field of use, concepts
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`recited in the claims, and whether the claims-at-issue were mere routine, conventional
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`steps or meaningful limitations1. Opp. at 5 (citing SAP America, Inc. v. Versata
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`Development Group, Inc., CBM2012-00001; Interthinx, Inc. v. Corelogic Solutions, LLC,
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`CBM2012-00007; Fidelity National Information Services, Inc. v. Checkfree Corp., CBM2013-
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`1
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`Case CBM2014-00116
`Patent 6,826,548
`00031). But, Dr. Nettles opinions in paragraphs 37-95 do not relate to his scientific or
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`technical knowledge. Thus, the Board should exclude paragraphs 37-95.
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`C. Exhibits 2016 - 2020 and Exhibit 2031 – Improper Reliance on
`USPS’s Systems
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`RMI argues that Exs. 2016-2020 and 2031 were used to “described the state of
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`the technology for return mail processing before the ’548 patent. However, the
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`earliest issue date of the patents cited by RMI in Exhibits 2016–2020 and 2031 is
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`March 8, 2011, which is after the relevant time frame of 2001 (or 2002, the
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`appropriate date if priority date not accorded). RMI provides no support that Ex.
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`2016, nor Exs. 2017-2020 and 2031, “describe[s] the state of the technology for return
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`mail processing before the ’548 patent.” Id. In the Patent Owner Response, RMI
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`incorrectly offers Ex. 2021 to prove the truth of a matter asserted, and does not have
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`a non-hearsay purpose. POR at 61. Ex. 2021, for example, does not make “certain
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`facts more or less probable than they would be without this evidence.” Fed. R. Evid.
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`401. Nothing in Ex. 2021 contradicts that the CFS units in 1997 had scanners for
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`scanning the mail piece. Therefore, because the probative value of Exhibits 2021-2029
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`and 2031 is substantially outweighed by a danger of confusing the issue and wasting
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`time addressing systems not relevant to the current proceeding, these exhibits should
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`be excluded.
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`2
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`Case CBM2014-00116
`Patent 6,826,548
`D. Exhibits 2021 - 2029 – Patents Filed After the Priority Date of the
`’548 Patent
`
`RMI mistakenly claims that Exs. 2021-2029 are relevant to this proceeding
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`because they show that the ’548 patent claims do not preempt the field of technology
`
`at issue in this proceeding. But, by RMI’s own account, Exs. 2021-2029 are directed to
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`the field of “processing returned mail items,” not “relaying mailing address data,” the
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`field of technology at issue in this proceeding. Institution Decision (Paper 11) at 21.
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`As the Board noted, the claims of the ’548 patent are directed to the abstract idea of
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`“relaying mailing address data.” Id. RMI does not argue that these exhibits are related
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`to “relaying mailing address data” or that these exhibits show that the ’548 patent
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`does not preempt that field of technology. Therefore, because the probative value of
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`Exhibits 2021-2029 is substantially outweighed by a danger of confusing the issue and
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`wasting time addressing systems not relevant to the current proceeding, these exhibits
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`should be excluded.
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`E. Exhibit 2030 – PARS Excellence – New Processing System
`Development Complete
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`In its opposition, RMI continues to mischaracterize Exhibit 2030. RMI alleges
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`that this exhibit “directly contradicts allegations made by Petitioner.” Opp. (Paper 33)
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`at 10. Dr. Joe Lubenow, postal expert of 35 plus years of experience, when asked if
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`the CFS units have scanners answered, “[t]o the best of my knowledge, yes, it does.”
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`Ex.1023 at 168. Nothing in Ex. 2030 relates to or contradicts that the CFS units in
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`1997 had scanners for scanning the mail piece. Ex. 2030 actually states “Change of
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`3
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`Case CBM2014-00116
`Patent 6,826,548
`Address Forms Processing System scanners (left) scan newly-designed Change of Address Cards.”
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`Ex. 2030 at 1 (Italics in original). Engineering Program Director Raj Kumar states,
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`“[t]he cards can be read by an optical character reader,”—not the mail piece. Further,
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`Exhibit 2030 relates to a different system—the PARS system (a follow-on to the 1997
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`ACS system)—not at issue in this proceeding. Therefore, Ex. 2030’s probative value is
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`substantially outweighed by a danger of confusing the issue and wasting time
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`addressing a system not relevant to the 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 contends that the USPS position during prosecution of the ’575 patent is
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`different than the position asserted in the Petition. But, RMI misses the point that the
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`amendment resulting in the allowance of the ’575 patent was not solely based on
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`adding a “computer program product, stored on a non-transitory computer-readable
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`medium that, when executed by a computer, provides an electronic change of address
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`service.” In this proceeding, USPS is arguing that Claim 40 is ineligible because it
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`claims only the abstract idea of “relaying mailing address data” and RMI only added a
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`generic “computer program product residing on a computer readable medium” in an
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`attempt to overcome § 101. Therefore, USPS position is not inconsistent with its
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`former prosecution position and thus, Ex. 2032 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.
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`4
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`Case CBM2014-00116
`Patent 6,826,548
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`G. Exhibit 2035 - Exhibit 2052
`RMI contends, without merit, that Exs. 2035-2052 relate to the “issue of
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`preemption;” however, RMI confuses the field for which the ’548 patent is
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`preempting. RMI argues with a single blanket cite to Exs. 2035-2052, the only
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`purpose of which appears to be to circumvent the page limit requirements set forth by
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`37 37 C.F.R. § 42.24 (b)(2), that these exhibits “relate to the processing of returned
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`mail.” Opp. at 14. As noted by the Board, the abstract idea is actually “relaying
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`mailing address data.” Institution Decision (Paper 11) at X. But RMI has not asserted,
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`and cannot assert, that these exhibits show that the ’548 patent has not preempted the
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`field of “relaying mailing address data.” Therefore, Exs. 2035-2052 are not relevant to
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`this proceeding because the probative value does not outweigh the danger of
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`confusing the issue and wasting time. The Board should deny Exs. 2035-2052.
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`II. 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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`
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`Dated: April 27, 2015
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`Respectfully submitted,
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`By:/Lionel M. Lavenue/
`Lionel Lavenue, Reg. No. 46,859
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`5
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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 Reply to Patent
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`Owner’s Opposition to Motion to Exclude pursuant to 37 C.F.R. § 42.64(c) was
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`served on April 27, 2015, to the following attorneys of record for Petitioner by
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`electronic service at the e-mail address listed below.
`
`Eric M. Adams
`eric@elliottiplaw.com
`Douglas H. Elliott
`doug@elliotiplaw.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
`
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
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`6
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