trials@uspto.gov
`571-272-7822
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`CBM2014-00116, Paper No. 40
`June 15, 2015
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`RECORD OF ORAL HEARING
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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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`- - - - - -
`THE UNITED STATES POSTAL SERVICE (USPS) AND
`THE UNITED STATES OF AMERICA, AS REPRESENTED
`BY THE POSTMASTER GENERAL
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`Petitioner
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`vs.
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`RETURN MAIL, INC.
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`Patent Owner
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`- - - - - -
`CBM 2014-00116
`Application No. 10/057608
`Technology Center 3600
`Patent 6,826,548 B2
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`- - - - - -
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`Oral Hearing Held: May 12, 2015
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`Before: BARBARA A. BENOIT, KEVIN F. TURNER (via video),
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`JO-ANNE M. KOKOSKI, Administrative Patent Judges
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`The above-entitled matter came on for hearing on Tuesday, May 12, 2015 at
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`the U.S. Patent and Trademark Office, 600 Dulany Street, Alexandria,
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`Virginia in Courtroom D at 1:00 p.m.
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`571-272-7822
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`
`
`CBM2014-00116, Paper No. 40
`June 15, 2015
`
`RECORD OF ORAL HEARING
`
`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
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`vs.
`
`RETURN MAIL, INC.
`
`Patent Owner
`
`- - - - - -
`CBM 2014-00116
`Application No. 10/057608
`Technology Center 3600
`Patent 6,826,548 B2
`
`- - - - - -
`
`Oral Hearing Held: May 12, 2015
`
`
`
`
`
`Before: BARBARA A. BENOIT, KEVIN F. TURNER (via video),
`
`JO-ANNE M. KOKOSKI, Administrative Patent Judges
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`
`
`The above-entitled matter came on for hearing on Tuesday, May 12, 2015 at
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`the U.S. Patent and Trademark Office, 600 Dulany Street, Alexandria,
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`Virginia in Courtroom D at 1:00 p.m.
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`APPEARANCES:
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`ON BEHALF OF THE PETITIONER:
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`LIONEL LAVENUE, ESQ.
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`SEAN D. DAMON, ESQ.
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`Finnegan, Henderson, Farabow, Garrett
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` & Dunner LLP
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`901 New York Avenue, N.W.
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`Washington, D.C. 20001-4413
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`202-408-4000
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`ON BEHALF OF THE PATENT OWNER:
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`ERIC M. ADAMS, ESQ.
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`The Elliott Law Firm, PLLC
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`6750 West Loop South, Suite 995
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`Houston, Texas 77401
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`888-904-1576
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`CBM 2014-00116
`Application No. 10/057608
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`P R O C E E D I N G S
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`(1:00 p. m.)
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`JUDGE B ENOIT: Pl ease be seated . Good
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`afternoon. We will hear argu ment now in Case Nu mber IP R
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`2014-00116, the United States Postal Service and th e United
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`States of Ame rica as r epresented b y the Post master General
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`versus Return Ma il, Incorporated .
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`This case concern s U.S . patent Nu mber 6,826,548.
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`Counsel for the p arties, will you pl ease introduce yo urselves?
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`MR. LAVENUE: Hello , Your Honors, Lionel
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`Lavenue f ro m Finnegan for the Uni ted States Postal Service.
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`MR. ADAMS: Er ic Ada ms for the Patent Owner ,
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`Return Mail, Inc .
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`JUDGE B ENOIT: Welco me .
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`Per our order dated April 21st, 2015, each side will
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`have one hou r to argue. Petitioner also ma y reserve rebuttal
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`ti me .
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`I would like to re mind the parties t hat the hearing
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`is open to the public and a full tran script of this hear ing will
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`be made part of t he record .
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`Please bea r in mi nd that Judge Tur ner is attending
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`this hearing b y vi deo. Judge Turne r, can you hea r us ?
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`JUDGE TURNER : I can hear you .
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`JUDGE B ENOIT: Thank you . We can hear you as
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`well. I would like to re mind the p arties to mention each slide
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`CBM 2014-00116
`Application No. 10/057608
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`nu mber or e ach p age nu mbe r as yo u refe r to it in yo ur
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`de monstratives. This will make th e re cord clea r.
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`Before we begin with your argu me nts, the panel
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`would like to add ress Patent Owne r's man y g eneral objections
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`to Petitioner's de monstratives.
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`First, we would li ke to note the de monstratives ar e
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`not evidence but, rather, de monstra tives are an aid to the oral
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`argu ment . We al so note that Paten t Owner's obje ctions are
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`general, such as t his slide contains new argu ments o r this slide
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`contains new evid entiar y citations and in large meas ure do not
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`identify with par t icularit y the new argu ment or the new
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`citation on the slide is required.
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`Moreover, the pa nel is capable o f deter mining
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`whether infor mati on of a de monstra tive is i mp roper, and we
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`will not rel y on such infor mation in our final writte n decision.
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`Nor is th ere a jur y pr esent that mi ght be confused by such
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`infor mation.
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`Patent Owner , we note your obje ctions. The
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`Petitioner, we also note your response.
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`We will not spen d ti me this afte rnoon ruling on
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`an y of the nu me r ous objections. I also will note for the re cord
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`that in response to Patent Owne r's objections, P etitioner
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`re moved one slide and the de monst rative sub mitted as
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`Exhibit 1029 does not include the re moved slide.
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`Application No. 10/057608
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`I understand slide nu mbe rs on P etitioner's
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`de monstratives shown toda y will match the s lide nu mbers in
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`Exhibit 1029. Is that correct?
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`MR. LAVENUE: Yes , Your Honor .
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`JUDGE B ENOIT: Thank you . We' re now re ad y to
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`hear f ro m P etitioner.
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`MR. LAVENUE: Thank you, Your Honor. A fe w
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`housekeeping matters first. We would like to reserv e 30
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`minutes of rebuttal ti me.
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`JUDGE B ENOIT: Oka y.
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`MR. LAVENUE: Also, Your Honors, I a m not sure
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`if you have a prin tout. Excuse me , Judge Turner , I c an't hand
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`it to you, but I ha ve a printout of o ur de monstratives and of
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`the patents and the prior art r efer e nce. M a y I hand t hose up?
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`JUDGE B ENOIT: Pl ease.
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`MR. LAVENUE: Thank you.
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`JUDGE B ENOIT: Thank you .
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`MR. LAVENUE: So with that, Yo ur Honors, I will
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`begin. Thank yo u ver y much for t he ti me toda y.
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`Judge Turner, I will be ref erring to Petitioner's
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`de monstratives. I f at an y ti me I' m not referring to the page
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`nu mbers adequatel y, please l et me know. We a re also
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`projecting on the screen her e. And so if the re is an y
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`confusion, just le t me know, and I will provide the n u mber , the
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`slide nu mber that we a re on.
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`CBM 2014-00116
`Application No. 10/057608
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`JUDGE TURNER : Thank you .
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`MR. LAVENUE: So turning to slide 2, we ar e of
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`course here to look at the '548 pate nt. We described this as a
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`business method patent. The gene ral technolog y a r ea is
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`rela ying address data. And we bel ieve that rela yin g mailing
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`address data, mai ling address information is basic ally an idea
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`that an yone can i mple ment in their mind.
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`It does not satisf y the 101 require ments. And, in
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`addition, it is also anticipated b y the single 102 prior art
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`referenc e that we had sub mit ted, the 1997 AC S.
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`So if we go to sli de 3, this has our two argu ments,
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`our 101 and our 1 02. And then the i mage that you see on the
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`screen on slide 3 and for you, Judge Turner, that is t he 1997
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`ACS re ference .
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`So easil y identified b y date bec ause it is fro m
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`1997. And it is t he AC S refe rence fro m that ti me period.
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`Just in context for the ti ming, turning to slide 4,
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`we se e that the fil ing date of the pa tent is 2002, and the actual
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`1997 ACS refe ren ce is well be fore that. What is of i nterest,
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`though, is that there was actuall y a lot going on with the
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`Postal Service be fore 1997. It is just that the 1997 referenc e,
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`the AC S r efer enc e, that's the refe r ence where we fo und
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`ever ything in one docu ment .
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`There were man y things before that date. You c an
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`see on t he slide t hat back in 1989 that's when the ad dress
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`CBM 2014-00116
`Application No. 10/057608
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`correction service , ACS , was expan ded to provide el ectronic
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`address correctio ns, so that was qu ite before 1997. That was
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`in 1989. And the n even going bac k to 1982, that's when the
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`initial ACS s yste m was initiated.
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`So this is quite a n old s yste m that the Postal
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`Service has had. And the r eason that we chose the 1 997 ACS
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`referenc e is just because it was ea s y, it was one docu ment, it
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`had what we thought was all of the ele ments of the c lai ms that
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`are at iss ue in thi s proceeding.
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`So with that , I wi ll turn to slide 6. And slide 6 is
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`our opening slides on 101. I have a fe w slides on 101 and then
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`a fe w slides on 102. Afte r those s lides, I will then hear what
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`the Patent Owner has to sa y and the n provide our res ponses to
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`that.
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`So with respect t o our 101 argu me nt, basicall y we
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`sub mit that the cl ai ms at issue of t he '548 patent a re to not
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`only an old idea , as you can see f rom the ti me line th at we
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`sub mitted, but als o to an abstract i dea.
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`And we believe t hat the background of the patent
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`points that out, as we show here on slide 6. The pate nt itself
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`points out that businesses mail thousands or even mi llions of
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`pieces of ma il. And in certain ci rc u mstances those mail pieces
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`are returned and you have to deal wit h those return ed mail
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`pieces. So ho w d o you get the cha nge of address inf or mation
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`to the mailer so t hat the y can again correct for that?
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`Application No. 10/057608
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`This is acknowle dged b y the Paten t Owner as being
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`in the background. If we go to slide 7, we c an see that not
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`only does the Pat ent Owner descri be the proble m, it also
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`describes the solution, that when there wer e ma il pie ces that
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`were not delivera ble, then the y wo uld be returned. Then there
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`was infor mation t hat could be provided, that could b e
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`collected, and in order t o provide t hose mail pieces t hat we re
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`not deliverable to the maile r, so th at the y could then make
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`those corrections. This was in the background of the patent.
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`This was not just in the clai ms the mselves.
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`This is wh y we su b mit that in violation of Alice ,
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`RMI is basic all y tr ying to pre e mpt the entire concept of
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`rela ying ma iling address data, bec ause with this pat ent clai m,
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`the y a re sub mitting that an ything where you have a ddress
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`infor mation that i s corrected and th at data is sent bac k to a
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`maile r, that tha t would be infringing of these patent clai ms.
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`And we sub mit th at that would be a violation of
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`101 because it is a co mplete pr ee mption of all that. Now, we
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`recognize that the y pointed to other patents that ar e i n the
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`field that have come out since their patent. And the y sa y:
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`Well, because of those other patents, that's not pr ee mption, but
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`those other patents are an entirel y different technolog y, an d
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`entirel y dif ferent s yste ms .
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`The generi cness, the abstract conce pts that the y
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`provide in their c lai ms di stinguish their clai ms quite
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`CBM 2014-00116
`Application No. 10/057608
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`dra maticall y fro m the clai ms that t he y have presente d as
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`adverse exa mples .
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`The best exa mple , we think, is if we go to slide 8 .
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`If you look at the left side of the slide, these are fro m the
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`background of the patent itself. A nd if you look at the right
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`side of the slide, this is fro m clai m 39.
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`You can see that the background, that even the
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`Patent Owner des cribes is exactl y correlating to the patent
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`clai ms that ar e de scribed in the cla i m 39. You have receiving
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`returned mail. Well, that is descri bed as background and that
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`is clai med.
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`You have an unsuccessful deliver y with obtaining
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`of corre ct address infor mation. That is described in the
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`background. Tha t is described in t he clai m.
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`You have overse e ing a second mail ing or providing
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`data about that se cond mailing to a mailer . That is i n the
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`background. Tha t is in the clai m.
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`So this illustrates that this is old te chnology and
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`this is an abstract idea. In fa ct, the patent also even discloses
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`that encoding and decoding we r e well -known at the ti me of the
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`application, including bar codes. S o even those additional
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`argu ments that the Patent Owner has made are even
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`under mined b y hi s own background of its o wn s yste m.
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`If we go to slide 9, we can see that the background
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`also ex plains that the y were not tr ying to solve not only --
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`CBM 2014-00116
`Application No. 10/057608
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`the y wer e solving a financial proble m. The y wer e n ot tr ying
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`to solve a technic al proble m.
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`Basicall y the pate nt background and the patent
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`itself explains that the re ason for th e patent clai ms , t he rea son
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`for the patent is t hat the y wanted to make it more co st
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`efficient, more fi nancially e fficien t. And that's the reason that
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`the y wer e thinking that if the y just tried to co mputer ize the
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`aspect of so methi ng that was done manuall y, then th at would
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`make it patentabl e.
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`Well, before Alic e, the y ma y have had an
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`argu ment , but a fter Alice , that is no longer available. We
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`certainl y know th e changes that ha ve occurred beca use of that.
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`If we go to slide 10, here we get into so me of the
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`testi mon y of the experts . This is our expert, the USPS Postal
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`Service expert, Dr. Joe Lubenow. And Dr. Joe Lube now when
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`he was deposed i n this proceeding, he explained that not onl y
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`was the patent an d the patent clai ms an abstract idea , which
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`should not be patentable under 101, but also he went into the
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`history of how this technology is e xtre mel y old. An d as we
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`pointed out before, going back to 1982, with the crea tion of
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`the AC S s yste m.
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`Now, in addition to Dr . Lubenow's co mments on
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`the history of rel a ying return mail address infor mation, we
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`also have RMI 's o wn words that the y have included in their
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`petition.
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`CBM 2014-00116
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`The y have explained, for exa mple , that this case
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`involves changing processing mail in a wa y that involves the
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`processing of returned mail. Well , the y even ad mit t hat th at is
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`what the t echnolog y is gene rall y directed to. It is pr ocessing
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`of returned ma il a nd rela ying mailing address infor mation.
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`The y note that th e clai m featur es e li minate the
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`labor intensive tasks of manuall y u pdating individual mailing
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`address records . Well, this is exac tly what Alice is to prevent.
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`Basicall y mental steps, taking men tal steps, taking s o mething
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`you can do manua lly and converting that into an ele ctronic
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`process b y sa ying we 're going to do with that co mpu ter. So
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`because we'r e doi ng it with a co mp uter, then the refo re it
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`overco mes 101.
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`Well, ten yea rs a go that ma y have worked, but now
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`it doesn't. With Alice and its progen y, that is just si mpl y not
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`the law now. In a ddition, the patent itself makes a n u mber of
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`ver y clear ad miss ions as t o what it is that the patent believes
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`is the technology that is being used. And the y sa y it is
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`well -known co mp uters.
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`We'r e quoting her e in the third bull et of slide 11,
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`the '548 patent uses a co mbination of known ma chines in order
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`to acco mplish the clai m ele ments t hat the y -- that th e y cite.
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`Also the y note or also the Boa rd h as noted that the ' 548 patent
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`discloses encoding and decoding were well -known at this ti me.
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`CBM 2014-00116
`Application No. 10/057608
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`Now, on the next few slides what we would like to
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`do is just go thro ugh so me of the t ec hnology that ha s been
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`disclosed by the patentee, b y the P atent Owner , as t o what is
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`their specific te c hnology. And I t hink that you will see that
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`there is no specif ic technology tha t the y have pointed to.
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`For exa mple , if we look at slide 13 , we see that the
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`patent itself is de scribing the just general use of ele ctronicall y
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`linking a data line and conventional teleco mmunica tions. So,
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`again, this is a co nventional technology.
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`If we look at slide 14, again, the p atent refe rs to
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`using "any kind of co mpute r s yste m. " So an y t yp e of
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`co mputer s yste m or apparatus can be used for car r yi ng out the
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`clai med invention on slide 14.
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`On slide 15, we s ee, again, the pat ent refe rring to
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`basic software int erfaces that a re u sed for the excha nge of
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`data. So the re is not hing in here th at brings this -- t hese
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`patent clai ms be yond the mere generic. This is the generic.
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`This is the abstract. It is not 101.
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`Now, slide 16 has so mething that is ver y f a miliar
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`to me bec ause when I dr afted paten t applications ten years
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`ago, t his is the t ype of a mend ment I might have mad e to
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`overco me a 101 r eje ction. And thi s is fro m RMI 's fi le histor y.
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`Basicall y RMI got a re jection and i n 2003, so that's
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`al most, what, 12 years ago, so abo ut the ti me that I re me mber
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`still doing these office a ctions. And so in 2003 they got a 101
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`rejection. And what did the y do? Well, the y added the ter ms
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`"co mprising instructions."
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`So the y, of cours e, said , well, bec ause, we' re going
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`to confir m that we have instructions in a co mputer , because,
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`notice, the cl ai m itself starts "a co mputer readable mediu m
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`containing a co mputer progra m," a nd then the y added the
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`phrase "co mprising instructions." So now the y h ave a
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`co mputer progra m. The y have instructions. And the y have a
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`co mputer .
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`Well, yes, 12 yea rs ago t his was su fficient to
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`overco me 101 bef ore there was Alice, before there was
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`Beauregard and b efore all of the ch anges that have b een made
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`in the patent la w. In fact , I re me mber making these ver y sa me
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`edits and overcoming 101 re jections based upon this.
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`But we know this is not the la w any longer . So
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`this type of change that the y used t o overco me the 101
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`rejection in their file histor y is si mply not sufficient toda y.
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`If we go to slide 17, we c an see , of course, the la w
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`fro m Alice , which is "the me re reci t ation of a gene ric
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`co mputer cannot t ransfor m a patent -ineligible idea into a
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`patent -eligible invention."
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`And this is exactl y what we sub mit RMI is doing
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`here toda y. And in slide 18, me rel y requiring generic
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`co mputer i mple mentations, that is not enough. A co mputer
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`that receives and sends infor mation over a network with no
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`further specificat ion is not even ar guably inventive.
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`Again, we note, with no further specification. RMI
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`has not sub mitted that there is eno ugh sufficient detail in their
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`clai ms to overco me the require me nts of the la w tha t have co me
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`out since Alice .
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`Now, interestingly, if we go to slid e 19, this is the
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`other expert in th e case , this is RM I's expert , Dr . Sc ott
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`Nettles. And Dr. Scott Nettles has made so me intere sting
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`ad missions in t his case.
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`If we look at the first bullet point, we can see that
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`Dr . Nettles - - this is, re me mbe r, this is the P atent Owner's
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`expert -- "looking at the '548 patent , its a rchitecture is si mple
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`and is specificall y designed to sup port auto mating t he address
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`updating process."
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`So, again , this is to the concept of just taking a
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`mental process an d auto mating that with co mputers . The
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`second bullet point on slide 19. " The entire purpose behind
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`the patent is to co nvert a manual pr ocess to an integr ated
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`auto mate d proc ess."
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`It couldn't get an y si mpler than th at. This is
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`exactl y what the purpose of the pa tent is. And noti ce that the
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`expert sa ys the en tire purpose, not one purpose, not one of the
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`man y, the entire purpose of the -- behind the patent is to
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`convert manual in to auto matic .
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`That is a direct vi olation of Alice . Finall y, the
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`third bullet point, "the high -level i mprove ment that the '548
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`patent clai ms is a uto mating the pro cess of gener ating address
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`corrections for mailers that r equest the m."
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`So we wou ld submit that not onl y has our expert
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`co mmented on this, to so me extent, not as much as R MI's
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`expert, R MI's expert co mmented in great detail, but RMI's
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`expert has made v er y clea r that the r e is no purpose b ehind this
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`patent other than making a mental step into an automated
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`process, which makes it a violation of 101.
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`This is shown on slide 20, whe re th e Office of
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`Patent Trail Pract ice Guide even no tes that not onl y co mputers
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`but also scanners, mere r ecitation of known technologies
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`including comput ers and scanners do not render a p atent a
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`technological invention, consistent with the t ype of Alice
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`anal ysis.
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`As you know, one of the argu ments that RM I is
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`making is that the patent clai ms someho w incorporat e a
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`scanner, even though the word sc a nner is nowhere i n the
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`clai ms . So , fi rst of all, there is no word scanner, bu t even if
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`there were a word scanner, which t here is not, even that would
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`not be sufficient t o bring it outside of 101.
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`As an exa mple of the violation of 101, I show here
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`on slide 21 of cla i m 39, this is the first of the clai ms , clai ms
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`39 through 44. And here we can se e the method is basicall y,
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`one, decoding; two, obtaining an a ddress, an update d address;
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`and, three , electr onically trans mitting the updated address.
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`So this is not roc ket science. This is not the t ype
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`of thing that would be sustainable over a 101 re jectio n.
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`Interestingly, just as an aside, the o btaining the
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`updated address, where does that c o me fro m? That co mes
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`fro m the Postal S ervice, so even u nder their o wn cl ai m.
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`Now, at t his point I would just like to point out to
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`the Board that we have a nu mb er of slides fro m slide 21 to
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`slide 26, which go through clai ms 39 through 44, as to the f act
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`that these are me r el y abstract ideas and do not overc o me the
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`101 issue.
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`But at that poi nt what I would like to do is I would
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`now like to ju mp to slide 28.
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`So if we can go t o slide 28. On slide 28 I have t wo
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`exa mples of how RMI does so meth ing which is ver y consistent
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`in this proceeding, and that is the y tr y to nar row their clai m in
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`a wa y t hat the cla i m does not read in order to mak e i t
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`patentable.
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`And the y do that both for 101 and the y do that for
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`102. Here on slide 28 we have so me exa mples of ho w the y t r y
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`to narrow their cl ai m in order to o verco me 101.
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`First, the y sa y, as I mention, t hat t here is a
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`scanner. That's b ullet point 1. An d then, second, the y sa y
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`that there is so me sort of t ransfor mation that occurs with the
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`address infor mation. However, if we look at slide 2 9, it notes
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`that not a single c lai m ele ment reci tes a sc anner or a n
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`application server. And even if the y did, it is quite c lear that
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`just these gene ric co mponents would not satisf y 101.
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`On slide 30, we l ook at this conce pt of
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`transfor ming the incorrect address infor mation into correct
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`address infor mation. This is si mpl y not in the clai ms. So this
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`sort of transfor ma tion -- of course, I know wh y the y are tr ying
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`to do this, right? The y are tr ying t o get the ma chine or
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`transfor mation test, but there is no transfor mation t hat
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`satisfies the mach ine or transfor mat ion test for S ecti on 101.
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`So, again , that -- those are t wo wa ys in which RMI ,
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`the y tr y to li mit t heir clai ms in order to mak e the m p atentable,
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`but those li mitations do not work.
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`So with that , I would like to turn to 102. And 102,
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`we will start with slide 35, Sean.
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`So with slide 35, what I thought I would do is
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`before we get into the main 102 a r gu ment that is be fore us, is
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`to look at the AC S re ferenc e itself . This is the 1997 AC S
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`referenc e on slide 35. You can se e a picture of it on the left.
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`And this is a n act ual s yste m that the Postal S ervice uses for
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`processing returned mail.
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`You can see that this was fro m 199 7. And it has a
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`lot of co mplex fe atures. One of the interesting things that
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`RMI co mplains a bout is that, well, the ACS s yste m does X, Y,
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`and Z. And so, t herefore , it shouldn't work as an a nticipatory
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`referenc e.
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`Well, the thing is all we have to do is show that
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`ACS discloses wh at their clai ms ar e in one instance , even
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`though we do it i n mo re than one i nstance, but we just have to
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`show it in one ca se.
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`If we show it in one case , then it is anticipator y.
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`The fact that the ACS re ference or the AC S s yste m i s mu ch
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`more co mplicated than just what we're using for pur poses of
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`this proceeding, that is a red -herri ng because it c ert ainly is a
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`ver y co mpli cated s yste m.
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`But for purposes of what we're looking at here on
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`slide 36, we c an s ee the bene fits of AC S he re, reduci ng mail
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`volume. Interestingly, note the las t point: Address change
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`infor mation c an b e retrieved electr onically b y large volume
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`maile rs via a tele co mmunications network.
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`Well, that is esse ntially the botto m line of the RM I
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`patents, the paten t clai ms at issue.
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`Let's go to page 3 7. So on 37 we s ee that ACS is
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`an auto mated elec tronic enhance me nt to our manual process
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`for providing addres s corre ctions to mailers. So tha t's the
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`basic s yste m we'r e looking at.
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`Now, how does th is s yste m work? So if we go to
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`slide 38, and I a m sure you know this fro m the briefs alread y,
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`CBM 2014-00116
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`but just as a su mma r y, how does t he s yste m work? Well, the
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`s yste m work s b y using particular c odes.
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`And these codes a re either an addre ss change
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`service participan t code, AC S pa rticipant code, or th e y are an
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`endorse ment on a mail piec e. And if we go to slide 39, we c an
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`see these.
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`So the first one o n the right is the part icipant code.
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`And then the one that is on the top left, that is the address
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`service requested code; also ref erre d to as an ancillar y se rvice
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`endorse ment.
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`I know that these ter ms ar e a little confusing.
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`The y a re certainl y confusing for me. I ' m sure the y ma y be for
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`you as well , bec a use so meti mes the y are re ferr ed to si mila rl y
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`in different wa ys, but it is, of cour se, it is because of the
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`genus/species relationship a mong the different codes.
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`But here one of t he address - -
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`JUDGE TURNER : Counsel, can I a sk a quick
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`question before you move on?
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`MR. LAVENUE: Yes .
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`JUDGE TURNER : Apropos of our construction,
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`under address ser vice requested, what is being deciphered
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`there?
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`MR. LAVENUE: Under address se rvice requested,
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`what is being dec iphered, Your Honor ? And if I can ju mp to, I
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`have slides for th at, of course, and it addresses your question
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`directl y.
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`If I can ju mp to s lide 60. So in sli de 60 we note
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`that address servi ce r equested, it is one of the codes that we
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`have on our, on our envelope. And then I think that your
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`question is on slide 61, where the question is: Well, if
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`so meone has si mp l y written in plai n English on an e nvelope
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`"address service r equested," how is that encoded or decoded?
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`Right?
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`And this is Judge -- this is Dr. Joe Lubenow, the
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`USP S expert . And he explains that it is bec ause thes e words
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`"address service r equested," the y re present so methin g ver y
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`particular that ha ve to be understood based upon a r esource.
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`And the r esource is the ACS guide, which desc ribes, well, if
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`you have the se words, how are those words to be in corporated?
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`How are those words to be interpre ted? How ar e the y to be
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`decoded, basicall y?
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`And so Dr. Lubenow notes that it stands for a
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`co mplex set of rules and behaviors, which ar e desc ribed on the
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`next slide, sli de 6 2. So on slide 62 Dr. Lubenow exp lains,
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`well, there is four pages of rules th at govern what that phrase
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`me ans. And so if you go to the AC S re ferenc e on pa ges 14
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`through 17 of Ex hibit 1004, which is the ACS r efere nce, you
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`can see that these mail piec e endor se ments have diff erent
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`CBM 2014-00116
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`codes that have d ifferent behaviors based upon the u se of that
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`code.
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`So if we go to sli de 63, we see that, well, that
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`refers , again , to t he page 14 through 17. But if we g o be yond
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`that to page 65, you can actuall y se e the en dorse men ts. So
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`these are two of t he possible endorse ments for stand ard mail .
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`Now, re me mbe r, t here is diff erent t ypes of mail.
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`There is standard mail . There is pe riodical mail. Th ere is
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`parcel mail . Ther e is diffe rent t yp e s.
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`Well, even under standa rd mail, wh ich is
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`endorse ment A, t here a re four diff erent options that are listed
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`here, depending on what t ype of ti ming you have , s o whether it
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`is within the first 12 months or aft er 12 months whe n the
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`mailing has be en co mpleted. Also depending on the t y pe of
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`service that you h ave.
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`All of those are d ependent upon these wo rds. And
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`these words have to be decoded in order to have a pa rticular
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`result b y the Post al Service or b y t he CFS unit once the mail is
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`returned for an y particular re ason.
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`JUDGE TURNE R : ^ I guess the re ason for my
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`question is I wouldn't think of it as a decoding, I me a n, in the
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`sa me exa mple , th ere is a Zip code for Jessica Jones and there
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`is also a Zip code for the return . I guess under your
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`definition, those would be decoding as wel l, right?
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`I would have to fi gure out -- I woul d have to go
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`figure out whe re t hat is or is that a n extended Zip code? It
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`feels like we 're stretching the defin ition of decoding and
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`deciphering here.
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`MR. LAVENUE: Well , I love your exa mple of Zip
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`code be cause that absolutely is a c ode. I mean, it is na med
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`Zip code. It is a code. It has to be deciphered. I mean, I
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`think that we kno w that if we look at a Zip code, we all can in
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`our
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