Petitioner’s Demonstratives
`
`The United States Postal Service (USPS)
`And The United States of America,
`As Represented By The Postmaster General
`v.
`Return Mail, Inc. (RMI)
`
`PTAB Hearing for
`CBM2014‐00116
`
`May 12, 2015
`
`USPS EXHIBIT 1029
`USPS v. RMI
`CBM2014-00116
`
`
`
`The United States Postal Service (USPS)
`And The United States of America,
`As Represented By The Postmaster General
`v.
`Return Mail, Inc. (RMI)
`
`PTAB Hearing for
`CBM2014‐00116
`
`May 12, 2015
`
`USPS EXHIBIT 1029
`USPS v. RMI
`CBM2014-00116
`
`
`
`
`
`Patent Owner’s Business Method PatentPatent Owner’s Business Method Patent
`
`U.S. Patent No. 6,826,548
`“System and Method for Processing
`Returned Mail”
`
`USPTO identified CBM patents by
`class 705
`
`2
`
`
`
`
`
`Instituted Grounds of UnpatentabilityInstituted Grounds of Unpatentability
`
`All Challenged Claims:
` Claims 39‐44 Unpatentable Subject Matter Under 35 U.S.C. § 101
` Claims 39‐44 Anticipated by 1997 ACS Under 35 U.S.C. §102
`
`Institution Decision (Paper 11) at 35.
`
`3
`
`
`
`
`
`TimelineTimeline
`
`The effective filing date of ’548 patent is Jan. 24, 2002, the
`’548 patent is not entitled to priority date of Jan. 24, 2001
`because the provisional application does not provide the
`requisite support for at least the “determining that the
`sender wants a corrected address” recited in each of the
`independent claims of the ’548 patent.
`Petition (Paper 2) at 27‐30.
`
`Jan. 24, 2002
`U.S. Patent No.
`6,826,548 Filed
`
`1989
`ACS was expanded to
`provide electronic address
`corrections to new
`subscribers
`
`1982
`Initial testing of the
`Address Change Service
`(ACS)
`
`Jul. 1997
`Address Change Service
`Publication 8 “1997 ACS”
`published
`
`Jan. 24, 2001
`U.S. Provisional
`Application No.
`60/263,788
`Filed
`
`1980
`Lubenow Declaration
`(Ex. 2008), ¶¶ 14, 21.
`
`. . .
`
`1997
`
`1998
`
`1999
`
`2000
`
`2001
`
`2002
`
`1997 ACS (Ex. 1004) at 1.
`
`’548 Patent (Ex. 1001).
`
`4
`
`
`
`The ’548 Patent
`The ’548 Patent
`
`System and Method for Processing Returned System and Method for Processing Returned
`
`MailMail
`
`Unpatentable Under § 101
`
`5
`
`
`
`
`
`The ’548 Patent Covers an Old Abstract IdeaThe ’548 Patent Covers an Old Abstract Idea
`
`Not only does the ’548 Patent cover an abstract idea, it is not even a new
`abstract idea. The Same Problem: “Many businesses mail thousands or even
`millions of pieces of mail each month… Inevitably, a certain percentage of the
`items that are mailed each month by these businesses are returned to the
`sender.”
`’548 Patent (Ex. 1001), 1:25‐46 (emphases added).
`
`6
`
`
`
`
`
`The ’548 Patent Covers an Old Abstract IdeaThe ’548 Patent Covers an Old Abstract Idea
`
`“Subscribers provide the address of the return mail service provider in the
`return address block, which receives mail, returned as undeliverable by the
`USPS. The return mail provider service provider (sic) captures the data from
`the returned items and apply its special expertise in obtaining corrected
`address information. The return mail service provider then
`electronically transfers corrective data records to the subscriber.”
`’548 Patent (Ex. 1001), 2:8‐13.
`
`7
`
`
`
`
`
`The Background of the ’548 Patent Discloses the ClaimsThe Background of the ’548 Patent Discloses the Claims
`
`“It is not uncommon for such high
`volume users to retain a staff of several
`employees whose job it is to[:]
`•
`receive the returned mail,
`• manually research the reasons for
`the unsuccessful delivery, obtain,
`where possible, the correct
`addressing information for the
`intended [] recipient, and
`• oversee a second mailing to the
`corrected address.”
`’548 Patent (Ex. 1001), 1:41‐47.
`
`39. A method for processing returned mail
`items sent by a sender to an intended recipient,
`the method comprising:
`decoding, subsequent to mailing of the
`returned mail items, information indicating
`whether the sender wants a corrected address
`to be provided for the intended recipient, on at
`least one of the returned mail items;
`obtaining an updated address of the
`intended recipient subsequent to determining
`that the sender wants a corrected address to be
`provided for the intended recipient; and
`electronically transmitting an updated
`address of the intended recipient to a transferee,
`wherein the transferee is a return mail service
`provider.
`
`’548 Patent (Ex. 1001), 3:11–15.
`
`8
`
`
`
`
`
`The ’548 Patent Solves a Financial Problem Not a Technical OneThe ’548 Patent Solves a Financial Problem Not a Technical One
`
`According to the Background of the ’548 Patent, RMI was attempting to solve
`a financial problem not a technical problem. “The patent merely makes more
`cost efficient the process of relaying mailing address data by using
`conventional telecommunications technology.”
`Petition (Paper 2) at 10; ’548 Patent (Ex. 1001 ), 3:35‐55; ’548 Patent Prosecution History (Ex. 1015) at 250.
`
`9
`
`
`
`
`
`The Solution Already Existed Decades Before RMIThe Solution Already Existed Decades Before RMI
`
`Dr. Joe Lubenow
`• The USPS as early as 1982 began initial testing of the Address Change
`Service (ACS) system to provide electronic transmission of address
`correction notification to mailers.
`In 1986 National Change of Address (NCOA) venders obtained update
`addresses, “matching” subscriber’s existing mailing list with change‐of‐
`address information entered at CFS sites.
`In 1989, ACS was expanded to provide electronic address corrections to
`mailers for mailpieces that were undeliverable for reasons other than a
`customer move.
`
`•
`
`•
`
`Dr. Lubenow Declaration (Ex. 1008) at ¶¶ 14, 20, & 21 (emphases added).
`
`10
`
`
`
`
`
`RMI Agrees The ’548 Patent is AbstractRMI Agrees The ’548 Patent is Abstract
`
`RMI Response (Paper 21) at 34 (emphases added).
`
`RMI’s Own Words
`• “[T]his case involves changing and processing data in a way that
`improves the overall processing of returned mail.”
`• The claimed features merely “eliminates the very labor intensive
`task of manually updating individual mailing address records.”
`• “[T]he ’548 patent uses a combination of known machines…”
`
`’548 Patent Prosecution History (Ex. 1015) at 250.
`
`RMI’s Response (Paper 21) at 40.
`
`Institution Decision (Paper 11) at 14 (citing ’548 Patent (Ex. 1001), 3:11–15).
`
`11
`
`
`
`
`
`Claims Employ No Specific TechnologyClaims Employ No Specific Technology
`
`’548 Patent (Ex. 1001) Fig. 1.
`
`12
`
`
`
`
`
`Claims Employ No Specific TechnologyClaims Employ No Specific Technology
`
`The ’548 Patent describes the computers are
`“electronically linked by a data line, which
`may be any conventional telecommunications
`data line”
`’548 Patent (Ex. 1001), 3:52‐54.
`
`’548 Patent (Ex. 1001) Fig. 1.
`
`13
`
`
`
`
`
`Claims Employ No Specific TechnologyClaims Employ No Specific Technology
`
`The ’548 Patent describes the system as
`“[a]ny kind of computer system or other
`apparatus adapted for carrying out the
`methods described herein is suited.”
`’548 Patent (Ex. 1001), 7:52‐54.
`
`’548 Patent (Ex. 1001) Fig. 1.
`
`14
`
`
`
`
`
`Claims Employ No Specific TechnologyClaims Employ No Specific Technology
`
`The ’548 Patent describes the “Software
`interfaces are provided… in the return mail
`application server 50 such that the two
`computers may exchange data and
`information electronically and automatically”
`’548 Patent (Ex. 1001), 3:52‐54.
`
`’548 Patent (Ex. 1001) Fig. 1.
`
`15
`
`
`
`
`
`Mere Generic “[Computer] Instructions” is Not EnoughMere Generic “[Computer] Instructions” is Not Enough
`
`RMI argued “[i]n view of the amendments to claim 19,
`the rejection of claims 19‐23, 34 and 35 as directed to
`non‐statutory subject matter is overcome.”
`’548 Patent Prosecution History (Ex. 1015) at 250.
`
`16
`
`
`
`
`
`’548 Patent – Prosecution History’548 Patent – Prosecution History
`
`“[T]he mere recitation of a generic computer cannot
`transform a patent‐ineligible abstract idea into a patent‐
`eligible invention.”
`Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347, 2358 (2014).
`
`’548 Patent Prosecution History (Ex. 1015) at 250.
`
`17
`
`
`
`
`
`Conventional Functionality Is Not Patent EligibleConventional Functionality Is Not Patent Eligible
`
`“The Court in Alice made clear that a claim directed to an
`abstract idea does not move into section 101 eligibility
`territory by ‘merely requir[ing] generic computer
`implementation.’ Alice, 134 S. Ct. at 2357.”
`buySAFE, Inc. v. Google, Inc., No. 2013‐1575, slip op. at 7 (Fed. Cir. Sept. 3, 2014).
`
`“The computer functionality is generic—indeed quite limited: a
`computer receives a request for a guarantee and transmits an
`offer of guarantee in return . . . . That a computer receives and
`sends the information over a network—with no further
`specification—is not even arguably inventive.”
`
`buySAFE, Inc. v. Google, Inc., No. 2013‐1575, slip op. at 9 (Fed. Cir. Sept. 3, 2014).
`
`18
`
`
`
`
`
`The Claims are Merely Automating a Manual ProcessThe Claims are Merely Automating a Manual Process
`
`Alice Corp. Pty. Ltd. V. CLS Bank Int’l, 134 S.Ct. 2347, 2359 (2014).
`
`RMI’s Expert, Dr. Scott Nettles
`
`• “Looking at the ’548 patent, its architecture is simple… and is
`specifically designed to support automating the address
`updating process.”
`• “The entire purpose behind the patent is to convert a
`manual process to an integrated automated process.”
`• The high‐level improvement that ‘548 patent claims provide
`is automating the process of generating address corrections
`for mailers that request them.
`
`Nettles Declaration (Ex. 2015) at ¶ 52 (citing Ex. 1001, 1:55‐60) (emphases added).
`
`Nettles Declaration (Ex. 2015) at ¶ 75 (emphases added).
`
`Nettles Declaration (Ex. 2015) at ¶ 49 (emphases added).
`
`19
`
`
`
`
`
`The ’548 Patent Recites Known TechnologyThe ’548 Patent Recites Known Technology
`
`Mere recitation of known technologies, such as computer
`hardware, communication or computer networks, software,
`memory, computer‐readable storage medium, scanners,
`display devices or databases, or specialized machines, such as
`an ATM or point of sale device typically do not render a patent
`a “technological invention.”
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48763‐64 (Aug. 14, 2012).
`
`The ’548 Patent discloses that encoding and decoding were old
`and well‐known at the time the application leading to the ’548
`Patent was filed.
`
`Institution Decision (Paper 11) at 14 (citing ’548 Patent (Ex. 1001), 3:11–15).
`
`20
`
`
`
`
`
`Claim 39 Claims the Idea of Relaying Mailing Address DataClaim 39 Claims the Idea of Relaying Mailing Address Data
`
`Claim 39: A method for processing returned mail:
`decoding… information indicating whether the sender wants a corrected
`address…;
`obtaining an updated address…; and
`electronically transmitting an updated address ….
`
`’548 Patent (Ex. 1002), 1:21‐33 (emphases added).
`
`“We are persuaded that the steps are directed to the abstract
`idea of relaying mailing address data, with the inclusion of an
`electrical transmission step.”
`
`Institution Decision (Paper 11) at 21.
`
`21
`
`
`
`
`
`Claim 40 Does Not Add “Significantly More” Than the Abstract IdeaClaim 40 Does Not Add “Significantly More” Than the Abstract Idea
`
`Claim 40: A computer program product residing on a computer readable
`medium comprising instructions for causing a computer to:
`store decoded information indicating whether the sender wants a
`corrected address and a customer number…;
`determining from the decoded data that the customer wants a corrected
`address…;
`receive an updated address ….; and
`transmit the updated address….
`
`’548 Patent (Ex. 1002), 1:34‐51 (emphases added).
`
`Claim 40 adds a “computer program product for causing a computer to store” to
`the steps recited in claim 39 but this step is conventional, non‐technological step
`that simply ensnare the abstract business process of relaying mailing address data.
`Further RMI states, “[a]ny kind of computer system or other apparatus adapted for
`carrying out the methods described herein is suited.”
`
`’548 Patent (Ex. 1001), 7:7‐9.
`
`22
`
`
`
`
`
`Claim 41 Does Not Add “Significantly More” Than the Abstract IdeaClaim 41 Does Not Add “Significantly More” Than the Abstract Idea
`
`Claim 41: A system for processing a plurality of undeliverable mail items
`comprising:
`a first detector, wherein the first detector detects… encoded information
`… indicating whether a sender wants a corrected address…; and
`a processor that uses a computer program comprising instructions that
`cause the system to: i) decode the information indicating whether the
`sender wants a corrected address to be provided ; ii) encode and decode …
`information; and iii) enable an updated address … to be sent ….
`’548 Patent (Ex. 1002), 1:52‐67 (emphases added).
`
`Claim 41 adds a “detector” and a “processor” to perform the steps recited in claim
`39 but those components are “well‐known, generic computing technology being
`asked to do their generic function without any specified constraints, and without
`being a part of any technological advance used to implement an abstract idea
`unrelated to that technology.”
`CRS Adv. Techs, CBM2012‐00005, Paper 66, at 15 (PTAB 2014).
`
`23
`
`
`
`
`
`The Abstract Idea of Claim 39 Taints Claims 40 and 41The Abstract Idea of Claim 39 Taints Claims 40 and 41
`
`“[S]ystem claims that closely track method claims and are
`grounded by the same meaningful limitations will generally
`rise and fall together.”
`Accenture Global Services, GmBH v. Guidewire Software, Inc., 728 F.3d at 1341 (Fed. Cir. Aug. 06, 2011).
`
`“[T]he format of the various method, system, and media claims
`asserted [] ‘d[id] not change the patent eligibility analysis
`under § 101.’”
`
`Bancorp Services, L.L.C. v. Sun Life Assurance. Co. of Canada (U.S.), 687 F.3d 1266, 1276‐77 (citation omitted).
`
`24
`
`
`
`
`
`Claim 42 Claims the Idea of Relaying Mailing Address DataClaim 42 Claims the Idea of Relaying Mailing Address Data
`
`Claim 42: A method for processing a plurality of undeliverable mail items:
`receiving … mail items, each including i) a written addressee, and ii) encoded data
`including whether the sender wants a corrected address to be provided for the
`addressee;
`identifying … mail items …;
`decoding the encoded data…;
`creating output data…; (Created but never used)
`determining if the sender wants a corrected address …;
`if sender wants a corrected address…, electronically transferring to the sender…;
`and
`if the sender does not want a corrected address… posting… records on a network…
`’548 Patent (Ex. 1002), 2:1‐24.
`
`Claim 42 adds “posting” and “creating output data” steps to the steps recited in
`claim 39 but those steps are conventional, non‐technological steps that simply
`ensnare the abstract business process of relaying mailing address data.
`
`25
`
`
`
`
`
`Dependent Claims 43 and 44 Add Nothing Patent‐EligibleDependent Claims 43 and 44 Add Nothing Patent‐Eligible
`
`Claim 43: The method of claim 42, further comprising transmitting the name and
`address of the intended recipient to a mailing address service provider, subsequent to
`the determining step, in order to obtain an updated address for each intended
`recipient of an undeliverable mail item.
`
`Claim 44: The method of claim 42, where the plurality of mail items further indicate a
`name and address of the intended recipient.
`
`’548 Patent (Ex. 1002), 2:25‐32 (emphases added).
`
`Claim 43 adds “transmitting the name and address” and Claim 44 adds where the
`mail item “indicates a name and address” steps to the steps recited in claim 42 but
`neither of these claims adds non‐generic technological limitations—they ensnare
`the abstract business process of relaying mailing address data.
`
`26
`
`
`
`
`
`Recognizing Data is Not Patent EligibleRecognizing Data is Not Patent Eligible
`
`“The concept of data collection, recognition, and storage is
`undisputedly well‐known. Indeed, humans have always
`performed these functions.”
`Content Extraction & Transmission LLC, v. Wells Fargo Bank, No. 2013‐1588, 2014 WL 7272219 at 7 (Fed. Cir. Dec. 23, 2014).
`“CET attempts to distinguish its claims from those found to be
`abstract in Alice and other cases by showing that its claims
`require not only a computer but also an additional machine—a
`scanner. CET argues that its claims are not drawn to an
`abstract idea because human minds are unable to process and
`recognize the stream of bits output by a scanner… CET’s claims
`are drawn to the basic concept of data recognition and
`storage.”
`
`Id. at 8 (citation omitted).
`
`27
`
`
`
`
`
`RMI Attempts to “Narrow” Its Abstract IdeaRMI Attempts to “Narrow” Its Abstract Idea
`
`RMI Alleges Incorrectly:
`
`• “the piece of mail can be read directly by an optical scanner,
`and then processed by the application server”
`• “the encoded information… is decoded and transforms
`incorrect address information into correct address information
`after checking the available databases or alternatively a
`notification that the prior address is incorrect.
`
`RMI Response (Paper 21) at 36.
`
`RMI Response (Paper 21) at 39 (emphases added).
`
`28
`
`
`
`
`
`RMI Attempts to “Narrow” Its Abstract IdeaRMI Attempts to “Narrow” Its Abstract Idea
`
`RMI Alleges Incorrectly:
`
`• “the piece of mail can be read directly by an optical scanner,
`and then processed by the application server”
`RMI Response (Paper 21) at 36.
`• “the encoded information… is decoded and transforms
`• Not a single claim recites an “optical scanner” or “application server.”
`incorrect address information into correct address information
`•
`Even if the claims included these generic components, which they do not,
`after checking the available databases or alternatively a
`as the Board correctly noted, “at the time of the invention of the ’548
`Patent, neither decoding, such as bar code reading, nor electronically
`notification that the prior address is incorrect
`transmitting, was unknown, unachievable, or incapable of being
`combined in the manner claimed.”
`Institution Decision (Paper 11) at 14.
`Institution Decision (Paper 11) at 14.
`
`29
`
`
`
`
`
`RMI Attempts to “Narrow” Its Abstract IdeaRMI Attempts to “Narrow” Its Abstract Idea
`
`RMI Alleges Incorrectly:
`
`Claims 39‐44 simply do not contemplate, let alone claim, “transform[ing]
`incorrect address information into correct address information after checking
`the available database” or providing a “notification that the prior address is
`• “the piece of mail can be read directly by an optical scanner,
`incorrect.”
`USPS Reply (Paper 22) at 4.
`and then processed by the application server”
`• “the encoded information… is decoded and transforms
`incorrect address information into correct address information
`after checking the available databases or alternatively a
`notification that the prior address is incorrect.
`
`RMI Response (Paper 21) at 36.
`
`RMI Response (Paper 21) at 36.
`
`RMI Response (Paper 21) at 39 (emphases added).
`
`30
`
`
`
`
`
`RMI Attempts to “Narrow” Its Abstract IdeaRMI Attempts to “Narrow” Its Abstract Idea
`
`RMI efforts to “narrow” its abstract idea by importing language
`and limitations not recited by the claims to avoid preemption
`(and later will be shown anticipation) run afoul of Supreme
`Court precedent.
`
`Mayo holds that the breadth or narrowness of an abstract idea
`is not relevant to the application of the exclusionary rule itself.
`Rather, the exclusionary rule applies “even if the particular…
`abstract idea at issue is narrow.”
`buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 133 (quoting Mayo, 132 S.Ct. at 1303).
`
`31
`
`
`
`
`
`Claims 39‐44 Fail the Machine‐or‐Transformation TestClaims 39‐44 Fail the Machine‐or‐Transformation Test
`
`RMI’s last attempt is to argue that its claims “satisfy both the
`machine or transformation tests (‘MOTT’).”
`
`RMI Response (Paper 21) at 39.
`
`“[T]here can remain no doubt: recitation of generic computer
`limitations does not make an otherwise ineligible claim patent‐
`eligible.”
`
`DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (citing Alice, 134 S.Ct. at 2358).
`
`32
`
`
`
`
`
`Claims 39‐44 Should be Cancelled Under 35 U.S.C. § 101Claims 39‐44 Should be Cancelled Under 35 U.S.C. § 101
`
`Having failed to move to amend claims, RMI now attempts
`to effect, through arguments improperly narrowing its claims,
`what it should have done through claim amendment. RMI
`attempts to turn a blind‐eye to the entirety of the 1997 ACS
`reference mischaracterizing it as a manual system. In so doing,
`RMI tacitly concedes the abstractness of its claims and the
`anticipation of 1997 ACS.
`Therefore, USPS respectfully requests cancellation of
`asserted claims 39‐44 of the ’548 patent as being unpatentable
`under 35 U.S.C. § 101 and anticipated by 1997 ACS under § 102
`for the reasons set forth herein, in USPS Reply (Paper 22) and
`in its Petition for CBM Review (Paper 2).
`
`USPS Reply (Paper 22) at 1‐2.
`
`33
`
`
`
`The ’548 Patent
`The ’548 Patent
`
`System and Method for Processing Returned System and Method for Processing Returned
`
`MailMail
`
`1997 ACS Anticipates the ’548 Patent
`Under 35 U.S.C. § 102
`
`34
`
`
`
`
`
`1997 ACS Anticipates the ’548 Patent1997 ACS Anticipates the ’548 Patent
`
`1997 ACS is a practical system used to
`actually practice processing return
`mail.
`1997 ACS (Ex. 1004).
`RMI attempts to muddy the water by
`arguing that 1997 ACS is significantly
`more complicated than the ’548 Patent.
`USPS Reply (Paper 22) at 6‐7.
`But the USPS system (1997 ACS) is an
`operational system in the real world,
`which has to solve a problem as oppose
`to just covering an abstract idea of
`“relaying mailing address data.”
`1997 ACS (Ex. 1004).
`1997 ACS may be more complicated
`than the ’548 Patent but 1997 ACS
`discloses each limitation at least once
`regardless of the “particular
`circumstances.”
`USPS Reply (Paper 22) at 6‐7.
`
`35
`
`
`
`
`
`Reduce Undeliverable‐as‐Addressed (UAA) Mail VolumeReduce Undeliverable‐as‐Addressed (UAA) Mail Volume
`
`1997 ACS (Ex. 1004) at 5.
`
`36
`
`
`
`
`
`Automated Electronic Process for Providing Address Correction Automated Electronic Process for Providing Address Correction
`
`1997 ACS (Ex. 1004) at 5.
`
`37
`
`
`
`
`
`1997 ACS “Codes” Indicate the Sender Wants a Corrected Address1997 ACS “Codes” Indicate the Sender Wants a Corrected Address
`
`1997 ACS (Ex. 1004) at 8.
`
`38
`
`
`
`
`
`1997 ACS “Codes” Indicate the Sender Wants a Corrected Address1997 ACS “Codes” Indicate the Sender Wants a Corrected Address
`
`ADDRESS SERVICE REQUESTED
`
`Participant Code
`(Provided by ACS Dept.)
`BXBJDCK
`
`1997 ACS (Ex. 1004) at 8.
`
`39
`
`
`
`
`
`1997 ACS “Codes” Indicate the Sender Wants a Corrected Address1997 ACS “Codes” Indicate the Sender Wants a Corrected Address
`
`Keyline
`#JNS0069TWK2874#
`Provided by mailer
`
`1997 ACS (Ex. 1004) at 6.
`
`1997 ACS (Ex. 1004) at 19.
`
`40
`
`
`
`
`
`1997 ACS “Codes” Indicate the Sender Wants a Corrected Address1997 ACS “Codes” Indicate the Sender Wants a Corrected Address
`
`1997 ACS (Ex. 1004) at 9.
`
`1997 ACS (Ex. 1004) at 8.
`
`41
`
`
`
`
`
`1997 ACS “Codes” Indicate How to Process Return Mail1997 ACS “Codes” Indicate How to Process Return Mail
`
`1997 ACS (Ex. 1004) at 4.
`
`42
`
`
`
`
`
`RMI Agrees 1997 ACS Discloses “Processing Returned Mail Items”RMI Agrees 1997 ACS Discloses “Processing Returned Mail Items”
`
`RMI’s Own Words
`“[I]f 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.”
`
`RMI Response (Paper 21) at 53.
`
`43
`
`
`
`
`
`RMI Agrees 1997 ACS Discloses “Processing Returned Mail Items”RMI Agrees 1997 ACS Discloses “Processing Returned Mail Items”
`
`RMI’s Own Words
`“Referring to FIG. 1, at the return mail service provider's location,
`the returned mail (block 15) is received from the United States
`Postal Service (block 90).”
`
`’548 Patent (Ex. 1001), 3:32‐34 (emphasis added).
`
`’548 Patent (Ex. 1001), Fig. 1
`
`44
`
`
`
`
`
`RMI Agrees 1997 ACS Discloses “Obtaining a Corrected Address”RMI Agrees 1997 ACS Discloses “Obtaining a Corrected Address”
`
`RMI’s Own Words
`“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.”
`RMI Response (Paper 21) at 53 (emphases added).
`
`45
`
`
`
`
`
`RMI Agrees 1997 ACS Discloses “Obtaining a Corrected Address”RMI Agrees 1997 ACS Discloses “Obtaining a Corrected Address”
`
`RMI’s Expert, Dr. Scott Nettles’ Own Words
`
`“1997 ACS discloses for using a computer is having a CFS clerk match
`the name and address information on a mail item to information in
`a database.”
`
`Dr. Scott Nettles Declaration (Ex. 2015) at ¶ 119 (emphases added).
`
`46
`
`
`
`
`
`RMI Agrees 1997 ACS Discloses “Obtaining a Corrected Address”RMI Agrees 1997 ACS Discloses “Obtaining a Corrected Address”
`
`RMI alleges (incorrectly) that “1997 ACS does not describe or disclose the
`limitation “subsequent to determining that the sender wants a corrected
`address to be provided for the intended recipient,” but does not argue
`that 1997 ACS does not discloses “obtaining an updated address of the
`intended recipient.”
`
`RMI Response (Paper 21) at 64.
`
`47
`
`
`
`
`
`RMI Agrees 1997 ACS Discloses “Electronically Transmitting”RMI Agrees 1997 ACS Discloses “Electronically Transmitting”
`
`RMI’s Own Words
`“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.”
`RMI Response (Paper 21) at 53 (emphasis added).
`
`48
`
`
`
`
`
`RMI Agrees 1997 ACS Discloses “Electronically Transmitting”RMI Agrees 1997 ACS Discloses “Electronically Transmitting”
`
`RMI Response (Paper 21) at 65.
`
`49
`
`
`
`
`
`Claim 39 is Anticipated by 1997 ACSClaim 39 is Anticipated by 1997 ACS
`
`39. A method for processing returned mail items
`sent by a sender to an intended recipient, the
`method comprising:
`decoding, subsequent to mailing of the
`returned mail items, information indicating whether
`the sender wants a corrected address to be
`provided for the intended recipient, on at least one
`of the returned mail items;
`obtaining an updated address of the intended
`recipient subsequent to determining that the sender
`wants a corrected address to be provided for the
`intended recipient; and
`electronically transmitting an updated address
`of the intended recipient to a transferee, wherein
`the transferee is a return mail service provider.
`
`RMI Response (Paper 21) at 53, 64‐65.
`
`50
`
`
`
`
`
`Claim 40 is Anticipated by 1997 ACSClaim 40 is Anticipated by 1997 ACS
`
`RMI Response (Paper 21) at 53, 64‐65.
`
`51
`
`
`
`
`
`Claim 41 is Anticipated by 1997 ACSClaim 41 is Anticipated by 1997 ACS
`
`41. A system for processing a plurality of undeliverable mail
`items comprising:
`a first detector, wherein the first detector detects,
`subsequent to mailing the undeliverable mail items, encoded
`information on at least one of the plurality of undeliverable
`mail items indicating whether a sender wants a corrected
`address to be provided for at least one of the undeliverable
`mail items; and
`a processor that uses a computer program comprising
`instructions that cause the system to: i) decode the
`information indicating whether the sender wants a corrected
`address to be provided; ii) encode and decode intended
`recipient information; and iii) enable an updated address of an
`intended recipient to be sent to a transferee, wherein the
`transferee is a return mail service provider.
`
`RMI Response (Paper 21) at 53, 64‐65.
`
`52
`
`
`
`
`
`Claim 42 is Anticipated by 1997 ACSClaim 42 is Anticipated by 1997 ACS
`
`Claim 42: A method for processing a plurality of undeliverable mail items, comprising:
`receiving from a sender a plurality of mail items, each including i) a written addressee, and
`ii) encoded data including whether the sender wants a corrected address to be provided for the
`addressee;
`
`identifying, as undeliverable mail items, mail items of the plurality of mail items that are
`returned subsequent to mailing as undeliverable;
`
`decoding the encoded data incorporated in at least one of the undeliverable mail items;
`
`creating output data that includes a customer number of the sender and at least a portion of
`the decoded data;
`
`determining if the sender wants a corrected address provided for intended recipients based
`on the decoded data;
`
`if sender wants a corrected address provided, electronically transferring to the sender
`information for the identified intended recipients that enable the sender to update the
`sender’s mailing address files; and
`
`if the sender does not want a corrected address provided, posting return mail data records
`on a network that is accessible to the sender to enable the sender to access the records.
`’548 Patent (Ex. 1002) at 2:1‐24.
`
`53
`
`
`
`
`
`Only “Decoding” in Dispute Only “Decoding” in Dispute
`
`Trial has simplified the issues in this proceeding. The only
`element in debate is whether 1997 ACS discloses
`“decoding … information indicating whether the sender
`wants a corrected address”
`Claim 39: A method for processing returned mail items sent by a sender to an
`intended recipient, the method comprising:
`decoding, subsequent to mailing of the returned mail items, information
`indicating whether the sender wants a corrected address to be provided for
`the intended recipient, on at least one of the returned mail items;
`obtaining an updated address of the intended recipient subsequent to
`determining that the sender wants a corrected address to be provided for
`the intended recipient; and
`electronically transmitting an updated address of the intended recipient
`to a transferee, wherein the transferee is a return mail service provider.
`’548 Patent (Ex. 1002) at 1:21‐33.
`
`54
`
`
`
`
`
`1997 ACS Discloses at Least Three Types of “Encoded/Decode Data”1997 ACS Discloses at Least Three Types of “Encoded/Decode Data”
`
`RMI Alleges Incorrectly:
`
`(1) The “participant code is simply a[n] arbitrarily assigned list of
`seven letters, and the specific letters used have no meaning
`behind them.”
`(2) The Ancillary Service Endorsements (i.e. Address Service
`Requested and Change Service Requested) are in plain English
`“[t]hus, they do not meet the definition of ‘encoded data.’”
`(3) “The keyline is simply additional identification information.”
`
`RMI Response (Paper 21) at 57.
`
`RMI Response (Paper 21) at 58.
`
`RMI Response (Paper 21) at 71.
`
`55
`
`
`
`
`
`1997 ACS Discloses at Least Three Types of “Codes”1997 ACS Discloses at Least Three Types of “Codes”
`
`1997 ACS (Ex. 1004) at 9.
`
`There is no question that 1997 ACS discloses three
`such codes:
`– (1) ACS Participant Code (e.g., “#BXBJDCK”);
`– (2) Ancillary Service Endorsement (“ASE”) (e.g.,
`“ADDRESS SERVICE REQUESTED”); and
`– (3) Keyline (e.g., #JNS0069TWK2874#)
`Each represents “data converted into code” and
`each is “decipherable.”
`
`1997 ACS (Ex. 1004) at 10.
`
`1997 ACS (Ex. 1004) at 14.
`
`USPS Reply (Paper 22) at 7‐8.
`
`56
`
`
`
`
`
`1997 ACS Discloses at Least Three Types of “Codes”1997 ACS Discloses at Least Three Types of “Codes”
`
`There is no question that 1997 ACS discloses three
`such codes:
`– (1) ACS Participant Code (e.g., “#BXBJDCK”);
`– (2) Ancillary Service Endorsement (“ASE”) (e.g.,
`“ADDRESS SERVICE REQUESTED”); and
`– (3) Keyline (e.g., #JNS0069TWK2874#)
`The (1) ACS Participant Code, (2) Ancillary Service
`1997 ACS (Ex. 1004) at 14.
`Endorsement, and (3) Keyline “indicat[es] a sender wants
`Each represents “data converted into code” and
`a corrected address provided for the intended recipient,”
`each is “decipherable.”
`as required by Claims 39‐44.
`
`1997 ACS (Ex. 1004) at 10.
`
`1997 ACS (Ex. 1004) at 9.
`
`USPS Reply (Paper 22) at 7‐8.
`
`57
`
`
`
`
`
`1997 ACS Discloses at Least Three Types of “Codes”1997 ACS Discloses at Least Three Types of “Codes”
`
`There is no question that 1997 ACS discloses three
`such codes:
`The (3) Keyline discloses “encode[d] and decode[d]
`– (1) ACS Participant Code (e.g., “#BXBJDCK”);
`intended recipient identification information,” as required
`1997 ACS (Ex. 1004) at 9.
`by Claim 41.
`– (2) Ancillary Service Endorsement (“ASE”) (e.g.,
`“ADDRESS SERVICE REQUESTED”); and
`– (3) Keyline (e.g., #JNS0069TWK2874#)
`Each represents “data converted into code” and
`each is “decipherable.”
`
`1997 ACS (Ex. 1004) at 10.
`
`1997 ACS (Ex. 1004) at 14.
`
`USPS Reply (Paper 22) at 7‐8.
`
`58
`
`
`
`
`
`(1) ACS Participant Code is Encoded/Decoded Data(1) ACS Participant Code is Encoded/Decoded Data
`
`Participant Code
`(Provided by ACS Dept.)
`BXBJDCK
`
`1997 ACS (Ex. 1004) at 8.
`
`•
`
`Dr. Joe Lubenow
`“The ACS Participant Code includes seven alphabetical characters
`preceded by a pound sign (#).”
`Lubenow Supplemental Declaration
`(Ex. 1028) at ¶ 15 (citing 1997 ACS at 9).
`• The CFS Unit must decode this code to determine if the customer is
`participating in electronic notification.
`Lubenow Supplemental Declaration (Ex. 1028) at ¶ 15 (citing 1997 ACS at 5).
`
`59
`
`
`
`
`
`(2) Ancillary Service Endorsement (ASE) is Encoded/Decoded Data(2) Ancillary Service Endorsement (ASE) is Encoded/Decoded Data
`
`ADDRESS SERVICE REQUESTED
`
`1997 ACS (Ex. 1004) at 8.
`
`Dr. Joe Lubenow
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