Paper No. _____
`
`
`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’S DEMONSTRATIVE EXHIBITS
`
`
`
`
`
`
`
`
`
`
`
`
`
`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’S DEMONSTRATIVE EXHIBITS
`
`
`
`
`
`
`
`
`
`
`
`
`CBM2014-00116
`Patent Owner’s Demonstrative Exhibits
`PATENT OWNER’S DEMONSTRATIVES
`
`
`
`
`In accordance with 37 C.F.R. § 42.70(b) and the Board’s Order (Paper 35),
`
`Patent Owner Return Mail, Inc. submits the following demonstrative exhibits for use
`
`at the hearing scheduled for Tuesday, May 12, 2015.
`
`
`
`
`
`
`Dated: May 7, 2015
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Eric M. Adams/
`Eric M. Adams (Reg. No. 56,290)
`eric@elliottiplaw.com
`Douglas H. Elliott (Reg. No. 32,982)
`delliott@elliottiplaw.com
`THE ELLIOTT LAW FIRM, PLLC
`6750 West Loop South, Suite 920
`Bellaire, Texas 77401
`(832) 485-3508
`(832) 485-3511 fax
`
`Attorneys for Patent Owner
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`2
`
`
`
`
`
`CBM2014-00116
`Patent Owner’s Demonstrative Exhibits
`CERTIFICATE OF SERVICE
`
`
`The undersigned certifies that the foregoing Patent Owner Return Mail, Inc.’s
`
`Demonstrative Exhibits was served on May 7, 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
`
`
`
`
`
`
`
`/Eric M. Adams/
`Eric M. Adams
`Registration No. 56,290
`
`
`
`Attorney for Patent Owner
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`3
`
`
`
`
`
`
`CBM2014-00116
`U.S. Patent No. 6,826,548
`
`
`
`Demonstratives
`Patent Owner
`Return Mail, Inc.
`
`
`
`
`
`1
`
`
`
`GROUNDS AT ISSUE
`
` Whether Claims 39-44 are directed to non-statutory subject
`matter under Section 101.
`
` Whether 1997 ACS anticipates Claims 39-44.
`
`TECHNOLOGY
`
` A method, system and program product for processing
`returned mail
`
`
`
`2
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`RREPREESENTAATIVEE CLAIIM 42
`
`REPRESENTATIVE CLAIM 42
`
`42. A metltodfor processing a plurality of'andeliverable
`mail items, comprising:
`
`receiving from a sender a plurality of mail items, each
`
`includin i) a written addressee, and ii)
`
`identifi’ing. as undeliverable mail items, mail items oft/3e
`plurality of mail iten-is that are returned subsequent to
`mailing as undeliverable;
`
`
`
`creating output data that includes—0 f
`the sender and at least a portion ot—
`determining iftlze sender wants a. corrected address pro-
`
`%d for intended recipients based on_
`
`if the sender wants a corrected address provided. -
`—fbr the
`identified intended recipients that enable the sender to
`update the sender ’s mailing addressfiles; and
`
`il'tlze sender does not want a corrected address provided,
`_thI is
`accessible to the sender to enable the sender to access
`
`the records.
`
`
`
`
`
`3
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`SECTTION 1101
`
`
`
`
`
`
`
`
`
`Claims 39-44 aree a technnologicall improvvement.
`
`
`
` C
`
`
` T
`
`The ‘5488 patent
`
`
`
`
`
`contempplates innformatioon encodded direcctly
`onto the
`
`
`
`
`mation oon the piiece of mmail
`
`he informpiece off mail, th
`can be
`
`
`
`read diirectly bby an ooptical
`
`
`scanner,, and thhen
`
`
`automatically proocessed
`
`
`by the aapplicatiion serv
`
`er. (Exhhibit
`
`2015 at ¶¶¶ 56-65
`).
`
`oca2
`
`d).
`(Ex.20221 at 3:46-553) (emphaasis added
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`4
`
` A
`
`
`
`
`
`As explained in PPetitioneer’s ownn words iin one o
`
`f its pateents
`
`
`
`entitled ““Methodds and SSystems
`
`for Proocessing
`One C
`ode
`
`
`
`
`
`Address Correctiion Service” issuued on MMarch 8,
`2011:
`
`eA
`
`
`
`MACHINE-OR-TRANSFORMATION TEST
` The ‘548 patent claims meet the machine prong of the machine-or-
`transformation test because they are tied to specific machines in a
`specific sequence for specific purposes capable of organizing,
`transforming, transmitting and posting address information. (Ex.1001
`at Figs. 2 & 3).
`
`o First, a high volume mail sorter (Ex.1001 at 3:32-35; Ex.1023 at 90-91).
`
` o
`
` o
`
` Second, an “optical scanner (Ex.1001 at 3:32-35; Ex.1023 at 56-57).
`
` Third, decoding of encoded information done by a computer (Ex.1001 at 2:66-3:3;
`Ex.1023 at 92-93).
`
` Fourth, the scanned and read information is conveyed to a computer based
`application server programmed to store and process the scanned information.
`(Ex.1001 at 3:39-41; Ex.1023 at 94).
`
` Fifth, the scanned information is stored in the return mail service provider’s mass
`storage device. (Ex.1001 at 3:41-44; Ex.1023 at 94).
`
` Sixth, within the mass storage device, the application server creates a database.
`Ex.1001 at 4:7-10, 3:42-44; Ex.1023 at 94).
`
`
`
`
`
`
`
`
`
`
` o
`
` o
`
` o
`
` o
`
` Seventh, the application server also may be programmed to search for updated
`address information. (Ex.1001 at 3:52-57; Ex.1023 at 96-97).
`
` o
`
` Eighth, of course, all of these different hardware devices have software interfaces,
`Ex.1001 at 4:20-26 (“provided with software to receive and interpret the data”), and
`data communication lines such that they can “exchange data and information
`electronically and automatically.” (Ex.1001 at 3:60-64; Ex.1023 at 58-59).
`
`
` The ‘548 patent claims meet the transformation prong because they
`transform encoded information regarding a previous address and
`handling instructions into decoded information, which is then used to
`change inaccurate address information into either accurate address
`information or a notice of inaccuracy. (Ex.2015 at ¶¶ 78-80).
`
`
`
`5
`
`
`
`THE HUMAN MIND
` The ‘548 patent claims cannot be performed in the human mind, or
`with just pencil and paper, because they require encoded
`information in the form of “machine-readable data.” (Ex.1001 at
`2:66-3:3).
`
` The ‘548 patent refers to using a two-dimensional barcode for the
`machine-readable data. (Ex.1001 at 3:14-15).
`
` Petitioner’s declarant, Dr. Lubenow, agreed that a scanner would
`be needed to read the more technical two-dimensional barcodes.
`(Ex.1023 at 50-51).
`
`PREEMPTION
` The Supreme Court has recently clarified that “the concern that
`drives this exclusionary principle [implicit exceptions to Section
`101] as one of pre-emption,” i.e., where the patent “would pre-
`empt use of this approach in all fields, and would effectively grant
`a monopoly over an abstract idea.” Alice Corp. Pty. Ltd. v. CLS
`Bank Int’l, 134 S.Ct. 2347, 2354 (2014).
`
` The real question is whether the claims will preempt a significant
`amount of inventive activity. California Inst. of Tech. v. Hughes
`Comm. Inc., 2014 WL 5661290 at *13 (C.D. Cal. Nov. 3, 2014).
`
` Prior art methods of processing return mail, such as 1997 ACS, are
`not preempted by the ‘548 patent claims.
`
` A number of entities have been issued similar patents relating to
`the “processing of returned mail items” since the ‘548 patent
`issued from reexamination. (Ex.2021-2029, 2035-2052)
`
`
`
`6
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`LACK OF ANTICIPATION
`
`
`1997 ACS
`
`
`
` The process described in 1997 ACS begins when a postal customer
`fills out a hard copy Form 3575, which is simply a change of address
`order form. (Ex.1004 at 5).
`
` A clerk at the CFS unit manually enters the information from the hard
`copy Form 3575 into a look-up database, and then the hard copy
`Form 3575 is returned to the delivery unit. (Id.).
`
` 1997 ACS describes a process in which information from hard copy
`change of address forms is input into a look-up database by clerks,
`and later there is an attempt by clerks to compare name and address
`information on hard copy mail items to information in the look-up
`database.
`
` Then, if a postal carrier receives a mail item that is undeliverable-as-
`addressed because the intended recipient has moved, in certain
`situations, the mail item is sent to a CFS unit. (Ex.1004 at 5).
`
` A CFS clerk looks up the name and address on the mail item in the
`look-up database, and if the clerk finds a match between the name
`and address on the hard copy mail item and the information in the
`look-up database, then in certain situations there is an opportunity for
`an electronic notification to be generated. (Id.).
`
`
`
`
`
`
`
`7
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Arbitrariily Assiggned Parrticipannt Code
`
`
` Thee ACS paarticipant
`
`code arbbitrarily
`assigned
`
`by the UUSPS is
`
`
`
`encooded dataa or decodded data.
`
`not
`
`
`
`igned byy the
`
`
`
`
`
` The
`rarily asscreated aand arbitr
`
`
`e ACS paarticipant
`
`code is
`
`USPPS. (Ex.1
`
`
`at 137:222-138:24)).
`004 at 9;
`Ex.1023
`
` Acc
`
`
`cording too 1997 AACS, the
`
`
`participaant code
`up of seeven
`is made
`
`
`
`
`alphha characcters, andd the inddividual lletters ussed havee no speccific
`
`
`
`
`
`
`
`
`
`
`meaaning behhind themm. (Ex.10004 at 99; Ex.10223 at 13
`
`7:22-1388:24;
`
`
`
`Ex.22015 at ¶¶¶ 102-1033).
`o Thus, th
`
`
`
`
`he particiipant codee is not enncoded ddata.
`
`
` Thee participaant code
`
`
`
`
`
`disclosed in 19997 ACS iss not “deecoded ddata”
`
`
`becaause it is never decciphered
`
`
`
`
`
`into a diffferent forrm. (Ex.11004 at 9,, 19;
`
`
`
`Ex.11023 at 140:21-141:10; Ex..2015 at ¶¶ 103). It
`
`
`
`
`never chaanges forrm:
`
`
` o
`
`
`
` 1
`
`PS assigns participantt code BXBBJDCK too a postal ccustomer. ((Ex.1004 aat 9).
`
`
`
`
`
`
` USP
`
`
`
`participannt code BXXBJDCK
`2 Afte
`
`
`
`er activatioon, the posstal custommer places
`on a
`
`maill item:
`
`
`
`the extent ffulfillmentt files are ccreated, theey are grouuped by p
`
`
`
`
`
`
`
`articipant ccode
`
`
`
`(Id.)).
`3 To t
`
`
`
`
`
`BXBBJDCK. (IId. at 19).
`
`oo Thus, th
`
`
`
`
`
`
`
`he particiipant codee is not ddecoded ddata.
`
`
`
`
`
`
`8
`
`
`
`THE PLAIN-ENGLISH ENDORSEMENTS
` The plain-English endorsements disclosed in 1997 ACS are not
`encoded data or decoded data.
`
`
`
`
`
` 1997 ACS describes two possible endorsements for the possibility of
`an electronic notification: “Address Service Requested” and “Change
`Service Requested.” (Ex.1004 at 14).
`
` Thus, the endorsements are in plain English rather than in code.
`
` Given that the endorsement is not a code, it cannot be decoded.
`(Ex.2015 at ¶ 104).
`
` Further, the endorsements are also not “decoded data” (decipherable,
`usable data) because they never change form. (Id.).
`
`
`
`
`9
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`NO MEANS FOR DECODING
` 1997 ACS does not describe or disclose any means for decoding information
`indicating whether a sender wants a corrected address.
`
`
`
`
`
` A postal carrier simply reading or not reading a participant code is not
`“decoding.” (Ex.1023 at 154:18-155:17; Ex.2015 at ¶ 105).
`
` Also, 1997 ACS does not disclose or describe CFS units decoding participant
`codes or endorsements, especially given the evidence that the CFS units did not
`have optical scanners until at least 2005.
`
` A USPS article from 2005 explains that new optical scanners were being added
`to replace “mechanized
`terminals previously used
`to manually enter
`information.” (Ex.2030 at 1-2).
`
`
`
` This is consistent with a 2003 CFS Managers and Supervisors Guide which
`points out that a “CFS operator enters the COA information into the CFS
`database” as part of processing undeliverable-as-addressed mail. (Ex.2031 at
`12).
`
`10
`
`
`
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
