`Entered: July 25, 2014
`
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`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 B2
`____________
`
`Before KEVIN F. TURNER, BARBARA A. BENOIT, and
`JO-ANNE M. KOKOSKI, Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`Case CBM2014-00116
`Patent 6,826,548 B2
`
`
`A conference call in the above proceeding was held on July 24, 2014,
`
`between respective counsel for Petitioner and Patent Owner, and
`
`Judges Turner, Benoit, and Kokoski. A court reporter was present on the
`
`call, and a transcript will be filed by Petitioner as an exhibit in this
`
`proceeding in due course.1 Petitioner initiated the conference call to seek
`
`authorization to file a five page supplemental brief addressing the Supreme
`
`Court’s recent decision in Alice Corp. Pty, Ltd. v. CLS Bank Int’l, No. 13-
`
`298, 2014 WL 2765283 (June 19, 2014).
`
`Petitioner filed the petition in this case on April 15, 2014, two months
`
`prior to the Supreme Court’s Alice decision. Paper 2 (“Petition”). The
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`Petition includes a ground of unpatentability based upon 35 U.S.C. § 101.
`
`Pet. 17-27. According to Petitioner, Patent Owner relies on Alice in the
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`Preliminary Response to criticize Petitioner’s analyses under 35 U.S.C.
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`§ 101, and to support Patent Owner’s argument that the patent claims at
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`issue recite patent-eligible subject matter. See Prelim. Resp. 22-36.
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`Petitioner requested supplemental briefing in order to address Patent
`
`Owner’s arguments based on the Alice decision.
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`Patent Owner objected to Petitioner’s request, arguing that the Board
`
`does not have authority to authorize supplemental briefing before a
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`proceeding is instituted. Patent Owner further stated that the Alice decision
`
`is a restatement of holdings in other cases, and because the arguments in the
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`Petition address those previous cases, supplemental briefing is not
`
`appropriate. Patent Owner requested, however, that if Petitioner is
`
`
`1 This order summarizes the statements made during the conference call.
`A more detailed record may be found in the transcript.
`
`
`
`2
`
`
`
`Case CBM2014-00116
`Patent 6,826,548 B2
`
`authorized to file a supplemental response, Patent Owner be allowed to file a
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`sur-reply.
`
`Based on the circumstances of this case, we authorize Petitioner to file
`
`a five page supplemental response, limited to responding to Patent Owner’s
`
`arguments, based on the Alice decision, with respect to Petitioner’s asserted
`
`ground of unpatentability under 35 U.S.C. § 101. Patent Owner is
`
`authorized to file a three page sur-reply to address Petitioner’s supplemental
`
`response, optionally addressing whether we should consider the
`
`supplemental response in determining whether to institute a trial based on
`
`the Petition.
`
`
`
`Accordingly, it is
`
`ORDERED that Petitioner is authorized to file a supplemental
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`response of no more than five pages no later than one week after the date of
`
`this Order;
`
`FURTHER ORDERED that Petitioner’s supplemental response shall
`
`be limited to addressing Patent Owner’s arguments, based on the Alice
`
`decision, with respect to Petitioner’s asserted ground of unpatentability
`
`under 35 U.S.C. § 101; and
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`FURTHER ORDERED the Patent Owner is authorized to file a
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`surreply to Petitioner’s supplemental response of no more than three pages
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`no later than one week after the Petitioner’s filing of the supplemental
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`response.
`
`
`
`
`
`
`
`
`
`3
`
`
`
`Case CBM2014-00116
`Patent 6,826,548 B2
`
`For Petitioner:
`
`Lionel M. Lavenue
`Erika H. Arner
`Elizabeth D. Ferrill
`Joshua L. Goldberg
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP
`lionel.lavenue@finnegan.com
`erika.arner@finnegan.com
`elizabeth.ferrill@finnegan.com
`joshua.goldberg@finnegan.com
`
`
`
`For Patent Owner:
`
`Douglass H. Elliott
`Eric M. Adams
`THE ELLIOTT LAW FIRM, PLLC
`doug@elliottiplaw.com
`eric@elliottiplaw.com
`
`4
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