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 RETURN MAIL, INC.’S PRELIMINARY RESPONSE
`
`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`THE UNITED STATES POSTAL SERVICE (USPS)
`AND THE UNITED STATES OF AMERICA,
`AS REPRESENTED BY THE POSTMASTER GENERAL
`Petitioner,
`
`v.
`
`RETURN MAIL, INC.
`Patent Owner.
`
`____________
`
`Case CBM2014-00116
`Patent 6,826,548
`____________
`
`PATENT OWNER RETURN MAIL, INC.’S PRELIMINARY RESPONSE
`
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`TABLE OF CONTENTS
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`PRELIMINARY STATEMENT
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`BACKGROUND
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`A.
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`The ‘548 Patent
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`TABLE OF AUTHORITIES
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`LIST OF EXHIBITS
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`I.
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`II.
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`III. PETITIONER LACKS STANDING TO SEEK CBM REVIEW
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`B.
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`Prosecution History
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`A.
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`v
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`x
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`1
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`3
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`3
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`3
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`6
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`Eminent domain litigation brought under 28 U.S.C. § 1498
`is not a proper ground for standing for CBM review
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`B.
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`The ‘548 patent is not a CBM patent under the AIA
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`STATEMENT OF THE PRECISE RELIEF REQUESTED
`
`A.
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`B.
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`It is not “more likely than not” that any of Claims 39-44
`will be found unpatentable
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`“Impermissible Broadening” is not a proper basis
`for CBM review
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`C.
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`Claim Construction
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`1.
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`2.
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`3.
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`4.
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`“decode,” “decoding,” “decoded information,”
`and “decoded data”
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`“encode,” “encoding,” “encoded information,”
`and “encoded data”
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`“returned mail items” and “mail items returned”
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`“return mail service provider”
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`i
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`6
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`10
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`14
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`14
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`14
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`16
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`17
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`18
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`19
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`20
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`IV.
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`V.
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`5.
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`6.
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`“detector,” “processor,” and “network”
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`“posting”
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`CLAIMS 39-44 OF THE ‘548 PATENT RECITE
`PATENT-ELIGIBLE SUBJECT MATTER
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`A.
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`B.
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`C.
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`D.
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`E.
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`Petitioner has the burden of proof
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`Claim 39 is patent-eligible
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`Claim 40 is patent-eligible
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`Claim 41 is patent-eligible
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`Claim 42 is patent-eligible
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`Claims 43 and 44 are patent-eligible
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`21
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`22
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`22
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`25
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`25
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`28
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`30
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`32
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`35
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`VI. CLAIMS 39-44 ARE PATENTABLE UNDER § 102 AND § 103
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`F.
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`A.
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`Krause is not prior art under § 102(a)
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`B.
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`Patent Owner disputes Petitioner’s prior art allegations
`and its representations as to the features of Claims 39-44
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`C.
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`Park does not anticipate Claims 39-44
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`1.
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`2.
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`3.
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`4.
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`5.
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`6.
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`Claim 39 is not anticipated by Park
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`Claim 40 is not anticipated by Park
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`Claim 41 is not anticipated by Park
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`Claim 42 is not anticipated by Park
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`Claim 43 is not anticipated by Park
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`Claim 44 is not anticipated by Park
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`D.
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`1997 ACS does not anticipate Claims 39-44
`ii
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`36
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`36
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`37
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`38
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`39
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`41
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`43
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`44
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`48
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`48
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`49
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`1.
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`2.
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`3.
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`4.
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`5.
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`6.
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`Claim 39 is not anticipated by 1997 ACS
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`Claim 40 is not anticipated by 1997 ACS
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`Claim 41 is not anticipated by 1997 ACS
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`Claim 42 is not anticipated by 1997 ACS
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`Claim 43 is not anticipated by 1997 ACS
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`Claim 44 is not anticipated by 1997 ACS
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`E.
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`Uhl does not anticipate nor render obvious Claims 39-41
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`50
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`51
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`53
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`55
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`58
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`59
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`59
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`60
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`62
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`62
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`62
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`64
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`65
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`65
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`66
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`70
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`70
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`71
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`72
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`1.
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`2.
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`3.
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`4.
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`5.
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`6.
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`7.
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`8.
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`9.
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`Claim 39 is not anticipated by Uhl
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`Claim 39 is not obvious over Uhl in view of Krause
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`Claim 39 is not obvious over Uhl in view of 1997 ACS
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`Claim 40 is not anticipated by Uhl
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`Claim 40 is not obvious over Uhl in view of Krause
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`Claim 40 is not obvious over Uhl in view of 1997 ACS
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`Claim 41 is not anticipated by Uhl
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`Claim 42 is not obvious over Uhl in view of Jatkowski
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`Claim 42 is not obvious over Uhl in view of Jatkowski
`and further in view of 1997 ACS
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`10. Claim 43 is not obvious over Uhl in view of Jatkowski
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`11. Claim 43 is not obvious over Uhl in view of Jatkowski
`and further in view of 1997 ACS
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`12. Claim 44 is not obvious over Uhl in view of Jatkowski
`
`iii
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`73
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`73
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`74
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`75
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`76
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`77
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`78
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`78
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`79
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`VI. CLAIMS 39-44 ARE WITHIN THE SCOPE OF
`THE ORIGINAL CLAIMS
`
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`13. Claim 44 is not obvious over Uhl in view of Jatkowski
`and further in view of 1997 ACS
`
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`
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`A.
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`B.
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`C.
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`Claim 39 is within the scope of the original claims
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`Claim 40 is within the scope of the original claims
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`Claim 41 is within the scope of the original claims
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`D.
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`Claim 42 is within the scope of the original claims
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`E.
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`Claims 43 and 44 are within the scope of the original claims
`
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`VII. GROUNDS NOT ADDRESSED IN PRELIMINARY RESPONSE
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`VIII. CONCLUSION
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`iv
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`TABLE OF AUTHORITIES
`
`
`FEDERAL CASES
`
`Alcon Research, Ltd. v. Apotex, Inc.,
`687 F.3d 1362 (Fed. Cir. 2012)
`
`
`
`
`
`
`Alice Corporation Pty. Ltd. v. CLS Bank International,
`134 S.Ct. 2347 (2014)
`
`
`
`
`
`Anderson v. International Eng. and Mfg., Inc.,
`160 F.3d 1345 (Fed. Cir. 1998)
`
`
`
`Bancorp Services, LLC v. Sun Life Assurance Co. of Canada (U.S.),
`687 F.3d 1266 (Fed. Cir. 2012)
`
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`78
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` 23, 24, 25, 27, 34, 36
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`74
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`29
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` 24, 27
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`29
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`9
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`24
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`24
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`17
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`59
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`24
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`Bilski v. Kappos,
`561 U.S. 593 (2010)
`
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`Dealertrack, Inc. v. Huber,
`674 F.3d 1315 (Fed. Cir. 2012)
`
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`
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`Decca Ltd. v. United States,
`225 Ct.Cl. 326, 640 F.2d 1156 (Ct.Cl. 1980)
`
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`Diamond v. Diehr,
`450 U.S. 175 (1981)
`
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`Gottschalk v. Benson,
`409 U.S. 63 (1972)
`
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`
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`In re Translogic Tech., Inc.,
`504 F.3d 1249 (Fed. Cir. 2007)
`
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`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
`688 F.3d 1342 (Fed. Cir. 2012)
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`Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
`566 U.S. ----, 132 S.Ct. 1289, 182 L.Ed.2d 321 (2012)
`
`
`
`
`
`v
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`
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`Motorola, Inc. v. United States,
`729 F.2d 765 (Fed. Cir. 1984)
`
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`Parker v. Flook,
`437 U.S. 584 (1978)
`
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`
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`Senju Pharm. Co., Ltd. v. Apotex, Inc.,
`746 F.3d 1344 (Fed. Cir. 2014)
`
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`Triton Group, Ltd. v. U.S.,
`10 Cl.Ct. 128 (Cl.Ct. 1986)
`
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`Zoltek Corp. v. U.S.,
`672 F.3d 1309 (Fed. Cir. 2012)
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`9
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`24
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`73
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`28
`
`8
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`State Street Bank and Trust Company v. Signature Financial Group, Inc.,
`47 U.S.P.Q.2d 1596 (Fed. Cir. 1998)
`
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`8
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`PATENT AND TRADEMARK OFFICE DECISIONS
`
`Alcon Research, Ltd. v. Dr. Joseph Neev,
`IPR2014-00217, Paper 21, 2014 WL 1917933 (PTAB May 9, 2014) 7, 8
`
`
`Amkor Technology, Inc. v. Tessera, Inc.,
`IPR2013-00242, Paper 98 (PTAB Jan. 31, 2014)
`
`
`Apple Inc. v. SightSound Technologies, LLC,
`CBM2013-00019, Paper 17 (PTAB Oct. 8, 2013)
`
`
`BAE Sys. v. Cheetah Omni, LLC,
`IPR2013-00175, Paper 15 (PTAB July 3, 2013)
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`7
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` 24, 25, 27
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`8
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`Creston Electronics, Inc. v. Norman IP Holdings, LLC,
`IPR2013-00278, Paper 11, 2013 WL 8595969 (PTAB Nov. 15, 2013) 59, 60
`
`
`CRS Advanced Technology, Inc. v. Frontline Tech. Inc.,
`CBM2012-00005, Paper 66 (PTAB Jan. 23, 2014)
`
`
`Ex Parte Edelson,
`No. 2011-004285 (BPAI Feb. 6, 2012)
`
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`vi
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`34
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`35
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`Ex Parte Ramanujam,
`No. 2009-002483, 2010 WL 3214559 (BPAI Aug. 12, 2010)
`
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`Ex Parte Rigoutsos,
`No. 2009-010520 (BPAI Feb. 7, 2012)
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`
`
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`Experian Marketing Solutions, Inc. v. RPost Communications Ltd,
`CBM2014-00010, Paper 20 (PTAB Apr. 22, 2014)
`
`
`Google Inc. v. SimpleAir, Inc.,
`CBM2014-00054, Paper 19 (PTAB May 13, 2014)
`
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`Int’l Flavors & Fragrances Inc. v. U.S. Dept. of Agriculture,
`IPR2013-00124, Paper 6 (PTAB, June 27, 2013)
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`LinkedIn Corp. v. AvMarkets Inc.,
`CBM2013-00025, Paper 13 (PTAB Nov. 12, 2013)
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`31
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`35
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` 10, 11, 12, 14
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`17
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`8
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` 24, 25, 34
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` 1, 6, 7, 8, 9, 10
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` 8, 9
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` passim
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`2, 5, 36, 37, 62
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`FEDERAL STATUTES
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`28 U.S.C. § 1498
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`28 U.S.C. § 1498(a)
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`35 U.S.C. § 101
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`35 U.S.C. § 102
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`35 U.S.C. § 102(a)
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`35 U.S.C. § 103
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`35 U.S.C. § 271
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`35 U.S.C. § 281
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`35 U.S.C. § 282(b)(2)
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`35 U.S.C. § 282(b)(3)
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`35 U.S.C. § 305
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`vii
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` 2, 14, 15, 36
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` 1, 7, 8, 9
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` 1, 7, 8, 9
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`15
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`15
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`7
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`15
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`25
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`5
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`16
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`5
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`10
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`10
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`35 U.S.C. § 315(b)
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`35 U.S.C. § 321(b)
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`35 U.S.C. § 322(a)(3)
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`35 U.S.C. § 323
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`35 U.S.C. § 324(b)
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`35 U.S.C. § 325(d)
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`RULES
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`77 Fed. Reg. 48,692 (Aug. 14, 2012)
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`77 Fed. Reg. 48,702 (Aug. 14, 2012)
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`77 Fed. Reg. 48,734 (Aug. 14, 2012)
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`77 Fed. Reg. 48,736 (Aug. 14, 2012)
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`REGULATIONS
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`37 C.F.R. § 42.200(b)
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`37 C.F.R. § 42.208(c)
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`37 C.F.R. § 42.208(d)
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`37 C.F.R. § 42.300(a)
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`37 C.F.R. § 42.301(a)
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`37 C.F.R. § 42.301(b)
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`37 C.F.R. § 42.302
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`37 C.F.R. § 42.302(a)
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`16
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`25
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`15
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`25
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` 10, 11
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`11
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` 1, 6, 7, 10
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`6
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`viii
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`37 C.F.R. § 42.304(a)
`
`37 C.F.R. § 42.304(b)
`
`OTHER
`
`157 Cong. Rec. S1042 (daily ed. Mar. 1, 2011) (statement of Sen. Kyl)
`
`MPEP § 213
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` 6, 10
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` 25, 34
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`6
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`4
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`ix
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`EXHIBIT LIST
`
`Description
`
`
`Number
`
`Exhibit 2001 Park U.S. Patent Publication 2001/0010334
`
`Exhibit 2002 Return Mail, Inc. v. United States, No. 11-00130 (Fed. Cl. Feb. 28, 2011)
`[Doc. No. 1, Complaint]
`
`Exhibit 2003 Return Mail, Inc. v. United States, No. 11-00130 (Fed. Cl. Aug. 13, 2012)
`[Doc. No. 39, Joint Claim Construction Statement]
`
`Exhibit 2004 Return Mail, Inc. v. United States, No. 11-00130 (Fed. Cl. Aug. 13, 2012)
`[Doc. No. 39-1, Appendix A—Agreed Constructions for Patent
`Claim Terms]
`
`Exhibit 2005 Return Mail, Inc. v. United States, No. 11-00130 (Fed. Cl. Aug. 13, 2012)
`[Doc. No. 39-2, Appendix B—Patent Claim Terms for Construction
`by the Court]
`
`Exhibit 2006 MCGRAW-HILL DICTIONARY OF COMPUTING & COMMUNICATIONS
`(6th ed. 2003)
`
`Exhibit 2007 Return Mail, Inc. v. United States, No. 11-00130 (Fed. Cl. Feb. 11, 2014)
`[Doc. No. 58, Scheduling Order]
`
`
`
`
`
`
`x
`
`
`
`PRELIMINARY STATEMENT
`
`The United States Postal Service (“Petitioner” or “USPS”) has no standing to
`
`I.
`
`
`
`petition for covered business method (“CBM”) patent review of U.S. Patent No.
`
`6,826,548 (“the ‘548 patent”).1 The first reason is that neither Petitioner, nor its
`
`alleged real party-in-interest the United States, have been sued for infringement of (or
`
`charged with infringement under) the ‘548 patent under 35 U.S.C. §§ 271 and 281 as
`
`required by 37 C.F.R. § 42.302. Instead, Return Mail, Inc. (“Patent Owner”) sued the
`
`United States under an eminent domain statute, 28 U.S.C. § 1498, for unlicensed use
`
`of the ‘548 patent. The second reason Petitioner lacks standing is because it has failed
`
`to disprove that the ‘548 patent is a technological invention. Therefore, because there
`
`is no standing for CBM review of the ‘548 patent, the Petition for CBM review of the
`
`‘548 patent should be denied.
`
`
`
`Even if Petitioner’s challenges are considered for argument’s sake, they lack
`
`merit. For example, Petitioner’s challenge under 35 U.S.C. § 101 lacks merit because
`
`the claims at issue, Claims 39-44, each contain significantly more than just an abstract
`
`idea, and they do not merely rely on a computer to be patent-eligible. As will be
`
`shown, they each contain meaningful limitations. Also, Petitioner fails to address each
`
`
`1 The ‘548 patent (Ex. 1001) was amended by Ex Parte Reexamination Certificate No.
`
`7964 (Ex. 1002).
`
`
`
`1
`
`
`
`of the limitations in the claims, and it fails to evaluate each of the claims as a
`
`combination, as required.
`
`
`
`As for Petitioner’s challenges under 35 U.S.C. §§ 102 and 103, four of the five
`
`alleged prior art references were previously considered during reexamination, and the
`
`fifth reference, Krause, is not § 102(a) prior art because it was not published until well
`
`after the filing date of the non-provisional application for the ‘548 patent. Even
`
`another evaluation of the alleged prior art reveals that they each fail to disclose many
`
`of the limitations of each claim at issue, and none of them render the claims obvious.
`
`
`
`Petitioner also challenges Claims 39-44 for impermissible broadening under 35
`
`U.S.C. § 305. Yet, CBM review under § 305 is statutorily prohibited under the AIA.
`
`Therefore, there is no statutory basis for challenging the claims at issue in a CBM
`
`proceeding under 35 U.S.C. § 305. Further, even if Petitioner’s assertions are
`
`considered for argument’s sake, they lack merit because each of the claims is within
`
`the scope of the original claims.
`
`
`
`Thus, Petitioner lacks standing to petition for CBM review. It is not more likely
`
`than not that the ‘548 patent will be found unpatentable as a result of Petitioner’s
`
`challenges under 35 U.S.C. §§ 101, 102, or 103. As for Petitioner’s request to cancel
`
`Claims 39-44 under 35 U.S.C. § 305, that request is statutorily prohibited, and the
`
`request lacks merit anyway. Therefore, USPS’ Petition should be denied.
`
`2
`
`
`
`
`
`
`
`II. BACKGROUND
`
`A.
`
`The ‘548 Patent
`
`The ‘548 patent is entitled a “System and Method for Processing Returned
`
`
`
`
`
`Mail.” (Ex. 1001). The claims of this patent set or define the boundaries for the
`
`patented invention. The claims challenged in this proceeding, Claims 39-44, describe
`
`the invention. (Ex. 1002). As explained in the Background section, a need existed for
`
`an improved method of processing returned mail that would overcome the historical
`
`problems with prior art manual handling. (Id. at 1:55-57). Further, a need existed to do
`
`so “quickly, more accurately, and at a substantially less cost.” (Id. at 1:57-58). The ‘548
`
`patent is a novel approach for processing returned mail using modern technology. As
`
`shown below, the alleged prior art references do not anticipate or render obvious
`
`Claims 39-44 of the ‘548 patent. Petitioner’s smoke-and-mirrors approach of selecting
`
`on certain words and phrases out of context cannot overcome the failure of its
`
`anticipation and obvious arguments.
`
`B.
`
`Prosecution History
`
`The ‘548 patent originally issued on November 30, 2004. (Ex. 1001). On
`
`
`
`
`
`January 31, 2007, the USPS petitioned the U.S. Patent and Trademark Office (“PTO”)
`
`to institute a reexamination of the ‘548 patent. (Ex. 1009 at 4-46). On April 17, 2007,
`
`the PTO granted the USPS’s request, instituting the reexamination. (Id. at 76-91). In
`
`the three-and-a-half years between April 17, 2007 and September 27, 2010, the PTO
`
`conducted a thorough reexamination of the ‘548 patent, including an assessment of
`3
`
`
`
`
`
`arguments made by the USPS through its counsel. In fact, four of the five prior art
`
`references that the USPS has submitted in this proceeding were considered during the
`
`reexamination proceeding. All of these references are the same or substantially the
`
`same alleged prior art references previously considered by the PTO.
`
`The Park U.S. Patent Publication 2001/0010334 was considered by the PTO
`
`during the original prosecution of the ‘548 patent. (Ex. 1015 at 234). Also, during the
`
`reexamination of the ‘548 patent, the PTO rejected certain claims based on Park as
`
`the base reference. (Ex. 1009 at 687-714). Yet despite the PTO’s extensive
`
`consideration of Park, which consisted of over 25 pages, the PTO issued of Notice of
`
`Intent to Issue Ex Parte Reexamination Certificate for newly presented claims, finding
`
`that those claims were patentable in view of the prior art. (Id. at 746-48).2
`
`Uhl was extensively considered by the PTO during the original prosecution of
`
`the ‘548 patent. (Ex. 1015 at 94-95; 104-06; 222-23; 230; 237; 255-58; 267-68; 298-99).
`
`
`2 The Park U.S. Pat. Pub. 2001/0010334 (Ex. 2001) is the U.S. version of the Park
`
`Korean Pat. Application (Ex. 1003) (“Park”) now cited by Petitioner. U.S. Park claims
`
`priority to Korean Park. One of the requirements for claiming priority to a foreign
`
`patent application is that the foreign application must be for the same invention as the
`
`application in the U.S. MPEP § 213. Further, the drawings for U.S. Park and Korean
`
`Park are identical, and they have substantially the same specification and claims.
`
`
`
`4
`
`
`
`It was also extensively considered by the PTO during the reexamination of the ‘548
`
`patent. (Ex. 1009 at 666-87; 706-14).
`
`The third base reference Petitioner cites is 1997 ACS. In its reexamination
`
`request, USPS devoted 31 pages of argument to 1997 ACS, referring to it at that time
`
`as “Publication 8.” (Ex. 1009 at 4-18; 30-45). It was also considered in detail by the
`
`examiner during reexamination. (Id. at 81-87, 92). In addition to the base references
`
`Park, Uhl, and 1997 ACS, Petitioner also cites Jatkowski and Krause. These two
`
`references are cited as part of the assertions related to Uhl. Jatkowski was considered
`
`by the PTO during the reexamination. (Ex. 1009 at 364, 369). The other peripheral
`
`reference, Krause, was not specifically identified in the reexamination, but the
`
`obviousness arguments regarding Uhl in light of Krause are substantially the same as
`
`the obviousness arguments regarding Uhl in the reexamination. (Ex. 1009 at 707-11).3
`
`According to 35 U.S.C. § 325(d), the Director may take into account whether
`
`the same or substantially the same prior art or arguments previously were presented to
`
`the PTO and reject the petition on that basis. Further, the PTO has made it clear that
`
`it “will exercise its authority under 35 U.S.C. § 325(d), where appropriate, to deny
`
`petitions that submit the same or substantially the same prior art or arguments
`
`previously presented to the Office.” (Response to Comment 55 related to Institution,
`
`77 Fed. Reg. 48,702 (Aug. 14, 2012)). This is also supported by the legislative history,
`
`which states that Section 325(d) “allows the Patent Office to reject any request for a
`
`3 Further, Krause does not qualify as § 102(a) prior art.
`5
`
`
`
`
`
`proceeding, including a request for ex parte reexamination, if the same or
`
`substantially the same prior art or arguments previously were presented to the Office
`
`with respect to that patent.” (157 Cong. Rec. S1042 (daily ed. Mar. 1, 2011) (statement
`
`of Sen. Kyl) (emphasis added)).
`
`Therefore, Petitioner has already tried, unsuccessfully, to invalidate the ‘548
`
`patent, and it should not be permitted to waste more resources trying again.
`
`III. PETITIONER LACKS STANDING TO SEEK CBM REVIEW.
`
`
`A. Eminent domain litigation brought under 28 U.S.C. § 1498 is not a
`proper ground for standing for CBM review.
`
`There is no standing for Petitioner to request CBM review because neither
`
`
`
`Petitioner nor its alleged real party-in-interest, the United States, have been sued for
`
`infringement of the ‘548 patent or charged with infringement under the ‘548 patent.
`
`Under “Grounds for standing” for CBM petitions, the petitioner must demonstrate that
`
`it “meets the eligibility requirements of § 42.302.” 37 C.F.R. § 42.304(a). Section
`
`42.302 requires that “the petitioner, the petitioner’s real party-in-interest, or a privy of
`
`the petitioner has been sued for infringement of the patent or has been charged
`
`with infringement under that patent.”4 37 C.F.R. § 42.302(a).
`
`4 “Charged with infringement means a real and substantial controversy regarding
`
`infringement of a covered business method patent exists such that the petitioner
`
`would have standing to bring a declaratory judgment action in Federal court.” 37
`
`C.F.R. § 42.302(a).
`
`
`
`6
`
`
`
`
`
`A suit for infringement of a patent is brought under 35 U.S.C. §§ 271 and 281.
`
`Although there have been no CBM filings or decisions addressing the meaning of
`
`“sued for infringement of the patent” under § 42.302 to date, in Alcon Research, Ltd. v.
`
`Dr. Joseph Neev, the Board evaluated the meaning of “served with a complaint alleging
`
`infringement of the patent” as stated in 35 U.S.C. § 315(b). IPR2014-00217, Paper 21,
`
`2014 WL 1917933 at *4-5 (PTAB May 9, 2014). In that decision, the Board explained,
`
`In Amkor Technology, Inc. v. Tessera, Inc., IPR2013-00242, Paper 98 (Jan.
`31, 2014), the Board construed section 315(b)’s requirement that the
`petitioner or real party-in-interest be “served with a complaint alleging
`infringement of the patent…” to require service of a complaint in a
`civil action. Amkor, slip op. at 6. The Board stated that: “The plain
`meaning of the term ‘Action’ in the narrowing context of the phrase
`‘served with a complaint’ dictates an interpretation of section 315(b)
`that limits its applicability to when the patent owner brings a civil action
`for patent infringement.” Id. at 8-9. The Board then went on to
`determine that civil actions for the purpose of section 315(b) are
`
`civil actions brought under 35 U.S.C. §§ 271 and 281 and not
`arbitration proceedings. See id. at 18.
`Alcon Research, 2014 WL 1917933 at *5 (bold-style added). Therefore, the phrase “sued
`
`for infringement of the patent” in § 42.302 should have the same meaning as “served
`
`with a complaint alleging infringement of the patent” in 35 U.S.C. § 315(b), i.e., an
`
`action brought under 35 U.S.C. §§ 271 and 281.
`
`
`
`Patent Owner sued the United States in the U.S. Court of Federal Claims under
`
`an eminent domain statute, 28 U.S.C. § 1498, for unlicensed use of the ‘548 patent.
`7
`
`
`
`
`
`(Ex. 2002). The United States was not sued for infringement of the ‘548 patent under
`
`35 U.S.C. §§ 271 and 281. (Ex. 2002). Petitioner asserts that it has been “charged with
`
`infringement,” but this is incorrect because any dispute between Petitioner and Patent
`
`Owner would also fall under the eminent domain statute, 28 U.S.C. § 1498, rather
`
`than §§ 271 and 281. Thus, Petitioner would not have standing to bring a declaratory
`
`judgment action under §§ 271 and 281, and it also lacks standing to sue Patent Owner
`
`under 28 U.S.C. § 1498.5 Triton Group, Ltd. v. U.S., 10 Cl.Ct. 128, 133-34 (Cl.Ct. 1986).
`
`
`
`Consistent with the Board’s understanding, as expressed in Alcon Research, that
`
`“patent infringement” is an action under Title 35, the Federal Circuit has held that the
`
`“plain language of § 1498(a) indicates that § 1498(a) operates independently from Title
`
`35.” Zoltek Corp. v. U.S., 672 F.3d 1309, 1321 (Fed. Cir. 2012). Further, the Federal
`
`
`5 Even Patent Owner cannot state that the United States can petition for CBM
`
`review. It merely states that the United States is eligible to participate in Board
`
`review. (Pet., Paper 2 at 11). In fact, the two Board decisions it cites are IPR decisions
`
`instead of CBM decisions. (Id.) (citing BAE Sys. v. Cheetah Omni, LLC, IPR2013-
`
`00175, Paper 15 (PTAB July 3, 2013) and Int’l Flavors & Fragrances Inc. v. U.S. Dept. of
`
`Agriculture IPR2013-00124, Paper 6 at 2 (PTAB June 27, 2013)). Neither has any
`
`bearing on the instant matter because they are IPR proceedings with different
`
`standing requirements, and the petitioners were private company defendants—not the
`
`United States. Cheetah Omni, Paper 15 at 2 and Int’l Flavors & Fragrances, Paper 6 at 2.
`
`
`
`8
`
`
`
`Circuit explained that “[a]lthough a section 1498 action may be similar to a Title 35
`
`action, it is nonetheless only parallel and not identical.” Id. (citing Motorola, Inc. v.
`
`United States, 729 F.2d 765, 768 (Fed. Cir. 1984)). In fact, Ҥ 1498(a) creates its own
`
`independent cause of action.” Id.
`
`
`
`Similarly, the Court of Federal Claims has held that “Section 1498 provides the
`
`sole remedy available to a patentee for an eminent domain taking of a license in his
`
`patent. The remedy is monetary and must be pursued by means of an action in
`
`this court.” Decca Ltd. v. United States, 225 Ct.Cl. 326, 640 F.2d 1156, 1166 (Ct.Cl.
`
`1980) (emphasis added). In Motorola, Inc. v. United States, the Federal Circuit held that
`
`as a compulsory, nonexclusive licensee, the United States is treated as a voluntary
`
`licensee, and not as a private, unlicensed infringer. 729 F.2d at 768 n.3.6
`
`
`
`Thus, Patent Owner has no standing to petition for CBM review of the ‘548
`
`patent. Neither it nor the United States have been sued for infringement of (or
`
`charged with infringement under) the ‘548 patent under 35 U.S.C. §§ 271 and 281 as
`
`
`6 The Federal Circuit also held that “[a]lthough concepts, phrases and words
`
`commonly used in the patent field may connote or denote a panoply of rights and
`
`remedies under Title 35, the same concepts, phrases and words do not and cannot
`
`always connote or denote the same meaning under section 1498. Although a section
`
`1498 action may be similar to a Title 35 action, it is nonetheless only parallel and not
`
`identical.” Id. at 768.
`
`
`
`9
`
`
`
`required by § 42.302. Instead, Patent Owner sued the United States under an eminent
`
`domain statute, 28 U.S.C. § 1498, for unlicensed use of the ‘548 patent. Therefore,
`
`because there is no standing for CBM review of the ‘548 patent, the Petition for CBM
`
`review of the ‘548 patent should be denied.
`
`B.
`
`The ‘548 patent is not a CBM patent under the AIA.
`
`A CBM patent is a patent that “claims a method or corresponding apparatus
`
`
`
`for performing data processing or other operations used
`
`in the practice,
`
`administration, or management of a financial product or service, except that the term does
`
`not include patents for technological inventions.” 37 C.F.R. § 42.301(a) (emphasis added).
`
`Petitioner has the burden to show that the ‘548 patent is a CBM patent. 37 C.F.R.
`
`§ 42.304(a). “For purposes of determining whether a patent is eligible for a covered
`
`business method patent review, the focus is on the claims.” Experian Marketing
`
`Solutions, Inc. v. RPost Communications Ltd, CBM2014-00010, Paper 20 at 5 (PTAB Apr.
`
`22, 2014) (citing 77 Fed. Reg. 48,734, 48,736 (Aug. 14, 2012)). Petitioner merely
`
`asserts that Claim 39 of the ‘548 patent recites a CBM patent.7
`
`
`7 Petitioner only asserts that Claim 39 recites a covered business method. It does not
`
`assert that Claims 40-44 recite covered business methods. Thus, there is no need to
`
`address Petitioner’s assertions that Claims 40-44 are not technological inventions.
`
`Patent Owner does so only for argument’s sake.
`
`
`
`10
`
`
`
`
`
`“To determine whether a patent is for a technological invention, [the Board]
`
`consider[s] ‘whether the claimed subject matter as a whole recites a technological
`
`feature that is novel and unobvious over the prior art; and solves a technical problem
`
`using a technical solution.’” Experian Marketing, Paper 20 at 7 (quoting 37 C.F.R.
`
`§ 42.301(b)). In Experian Marketing, the Board found that the petitioner failed to meet
`
`its burden of disproving a technological invention. Id. at 9. More specifically, the
`
`Board found that the petitioner analyzed the steps of the method claims separately,
`
`instead of examining each claim as a whole, as required. Id. Further, the petitioner
`
`failed to show that the claimed processes would only achieve the normal, expected, or
`
`predictable result of that combination. Id. The Board then held as follows:
`
`Lastly, merely because an invention’s claims recite a method, and such
`a method is applicable to a financial process, which (sic) does not
`obviate the need to determine whether the invention is directed to a
`technical invention. See 37 C.F.R. § 42.301(a) (“except that the term
`[covered business method patent] does not include patents for
`technological inventions”) (emphasis added). Petitioner’s conclusory
`language in the petition that none of the steps of a claim requires any
`novel and unobvious technological implementation, or solves a
`technical problem, without more, is not sufficient to demonstrate that
`the claimed subject matter is not a technical invention.
`Experian Marketing, Paper 20 at 9.
`
`In this proceeding, Petitioner likewise fails to meet its burden to demonstrate
`
`that the claimed subject matter is not a technological invention. For Claim 39, it
`
`
`
`11
`
`
`
`merely refers generally to a couple of elements and makes conclusory assertions. (Pet.,
`
`Paper 2 at 9). It fails to evaluate Claim 39 as a whole, as required. Experian Marketing,
`
`Paper 20 at 9. In fact, it does not address Claim 39’s “decoding” step.8 Every mention
`
`of “decoding” in the ‘548 patent specification relates to technology. (See e.g., Ex. 1001
`
`at Fig. 2 (206); Fig. 5 (506); 5:48-50 (“Next, as indicated in logic block 506, the two-
`
`dimensional barcode on the envelope is decoded.”)).9
`
`
`
`For Claim 40, Petitioner merely asserts that “Claim 40 recites a generic
`
`‘computer readable medium’ in the preamble of the claim—but again, no clear,
`
`specialized technological feature.” (Pet., Paper 2 at 9). It fails to address the specific
`
`steps and limitations of Claim 40, and it also fails to evaluate Claim 40 as a whole.
`
`Thus, there is no mention of whether the claimed product would only achieve the
`
`normal, expected, or predicted result of that combination. Petitioner merely provides
`
`a conclusory statement.
`
`
`
`As for Claim 41, Petitioner asserts only that “Claim 41 recites a ‘detector’ and
`
`‘processor’ that uses a ‘computer program,’ none of which the specification shows are
`
`specialized (or in the case of detector and processor, even defined).” (Pet., Paper 2 at
`
`
`8 Claims 39-44 can be found in Ex. 1002 [Ex Parte Reexamination Certificate].
`
`9 In the claim construction order issued by the U.S. Court of Federal Claims (“CFC”),
`
`the Court made the following statement: “Electronic terms such as ‘decoding’ and
`
`‘electronically transmitting’ are used.” (Ex. 1011 at 18.)
`
`
`
`12
`
`
`
`9). There is no discussion of claim limitations or evaluation of Claim 41 as a whole, as
`
`required. Thus, there is no showing or discussion of whether the claimed system
`
`would only achieve the normal, expected, or predicted result of that combination.
`
`Petitioner merely provides a conclusory statement.
`
`
`
`Claim 42 has seven separate steps, each of which has multiple limitations. (Ex.
`
`1002). Petitioner limits its assertions as to this claim as follows: “Claim 42 recites two
`
`alternatives—one which involves ‘electronically transferring’ data and another which
`
`involves posting to a ‘network.’ Neither alternative is explicitly defined in the
`
`specification beyond that any ‘conventional telecommunications data line’ can be
`
`used.” (Pet., Paper 2 at 9-10). Thus, it only refers to two of the seven steps in Claim
`
`42, and it even fails to address the limitations in those two steps. (Ex. 1002). There is
`
`no evaluation of Claim 42 as a whole, and thus, there is no discussion of whether the
`
`claimed method would only achieve the normal, expected, or predicted result of that
`
`combination. Petitioner merely provides a conclusory statement.
`
`
`
`Claims 43 and 44 are mentioned only as “Dependent claims 43 and 44 do not
`
`recite anything technological to add to claim 42.” (Pet., Paper 2 at 10). The limitations
`
`in these two claims are not mentioned, and there is no evaluation of the claims as a
`
`whole. Thus, there is no discussion of whether the claimed methods would only
`
`achieve the normal, e
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