Paper No. _________
`CBM2014-00116
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`__________________
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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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`Petitioners,
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`v.
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`RETURN MAIL, INC.
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`Patent Owner.
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`__________________
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`Case: CBM2014-00116
`Patent: 6,826,548
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`__________________
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`PETITIONER’S SUPPLEMENTAL BRIEF
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`CBM2014-00116
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
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`
`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
`
`Petitioners,
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`v.
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`RETURN MAIL, INC.
`
`Patent Owner.
`
`__________________
`
`
`Case: CBM2014-00116
`Patent: 6,826,548
`
`__________________
`
`PETITIONER’S SUPPLEMENTAL BRIEF
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`Case CBM2014-00116
`Patent 6,826,548
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`Table of Contents
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`I. ALICE BUILDS AND EXPANDS THE MAYO TEST FOR PATENT
`INELIGIBILITY ...................................................................................................................... 2
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`II. THE CLAIMS AT ISSUE BY RMI ARE NOT PATENT ELIGIBLE UNDER
`ALICE ........................................................................................................................................ 3
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`FEDERAL CASES
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`Table of Authorities
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`Case CBM2014-00116
`Patent 6,826,548
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`Page(s)
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`Alice Corporation v. CLS Bank International,
`573 U. S. ___ (2014) .................................................................................................. passim
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`Diamond v. Diehr,
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`450 U.S. 175 (1981) ............................................................................................................. 5
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`Mayo Collaborative Services v. Prometheus Labs., Inc.,
`132 S. Ct. 1289 (2012) ..................................................................................................... 2, 5
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`PATENT AND TRADEMARK OFFICE DECISIONS
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`Anova Food LLC v. Kowalski,
`IPR2013-00114, Paper 11 (June 25, 2013) ....................................................................... 1
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`FEDERAL STATUTES
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`35 U.S.C. § 101 ................................................................................................................. passim
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`REGULATIONS
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`37 C.F.R. § 42.5(a) ................................................................................................................... 11
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`37 C.F.R. § 42.301(b) ................................................................................................................ 4
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`iii
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`Case CBM2014-00116
`Patent 6,826,548
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`Pursuant to the Board’s July 25, 2014 Order, Petitioner United States Postal
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`Service (USPS) hereby submits its supplemental brief addressing the Alice issues.1
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`Claims 39-44 at issue merely instruct a practitioner to implement the abstract
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`idea of “relaying mailing address data” on a generic computer, which is just like the
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`ineligible patent claims in Alice (“here the representative claim does no more than
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`instruct the practitioner to implement the abstract idea of intermediate settlements on
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`a generic computer”). Alice, Slip. op. 3. Specifically, in its Response, RMI asserts that
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`its claims pass muster under Alice because they “deal” with “actual hard copy mail.”
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`(Response at 26.) But, how can a generic process for “deal[ing]” with “hard copy
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`mail” be patent eligible? RMI is wrong on several levels, at least because the claims of
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`the ’548 patent are all limited to relaying data on a generic computer. In a direct
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`affront to the Supreme Court’s guidance in Alice, RMI seeks to preclude others from
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`practicing the abstract idea of “relaying mailing address data.” Indeed, even if the
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`claims are directed to “hard copy mail” (which they are not), generic “relaying mailing
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`address data” for “hard copy mail” is also abstract and not patent eligible. Therefore,
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`like the ineligible claims in Alice, RMI is grasping at any physical element (“deal[ing]”
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`with “hard copy mail”) in a vain effort to save its claims under § 101.
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`1 The Board may consider supplemental briefing on institution. Anova Food LLC v.
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`Kowalski, IPR2013-00114, Order, Paper No. 11 at 4 (June 25, 2013) (considering
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`supplemental briefing on real party in interest); see also 37 CFR § 42.5 (a).
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`1
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`Case CBM2014-00116
`Patent 6,826,548
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`I. Alice Builds and Expands the Mayo Test for Patent Ineligibility
`Alice adds to the existing jurisprudence in two ways—and thereby demonstrates
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`that claims 39-44 are not patent eligible under § 101. First, Alice confirms that the
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`Mayo Collaborative Services v. Prometheus test should be used to determine if abstract ideas
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`are ineligible under § 101. Id. at 7. Building on Mayo, the Supreme Court in Alice
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`reiterated that abstract ideas are not patentable, because granting a monopoly over an
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`abstract idea threatens innovation. And, to be patentable, a claim that recites an
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`abstract idea must include “additional features” to ensure “that the [claim] is more than
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`a drafting effort designed to monopolize the [abstract idea].” Id. at 11 (citation
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`omitted). Second, Alice also confirms that the same two-step Mayo analysis should be
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`applied to all types of claims—method, system, and media claims.2 Id. at 16. Thus, for
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`all types of claims, the Supreme Court in Alice applies the single two-step framework
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`from Mayo to assess the existence of any “additional features”: (1) whether the claims
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`at issue are “directed to one of those patent ineligible concepts,” such as an abstract
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`idea, and (2) if so, whether the claim has an “inventive concept”—an element or
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`combination of elements “sufficient to ensure that the patent in practice amounts to
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`significantly more than a patent upon the ineligible concept itself.” Id. at 7 (citation
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`omitted). For corresponding system and media claims, if nothing of substance is added to
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`2 Accord USPTO Preliminary Examination Instructions, June 25, 2014, at 2 (Alice
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`“establishes that the same analysis should be used for all categories of claims . . .”).
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`2
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`Case CBM2014-00116
`Patent 6,826,548
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`ineligible method claims, these claims also fail to meet § 101. Id. at 10.
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`II. The Claims at Issue by RMI Are Not Patent Eligible Under Alice
` Just as the claims in Alice were deemed abstract (and patent ineligible) because
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`they were directed to a “building block of the modern economy,” Id. at 9, RMI’s
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`claims are also directed to the idea of “relaying mailing address data,” which is a
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`building block of the modern postal system and its cousin the Internet. Merely
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`automating an abstract idea is insufficient to constitute an “inventive concept” under
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`Alice. Id. at 3. For instance, method claim 39 does no more than instruct a practitioner
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`to implement the abstract idea of relaying data with a generic computer. As noted in
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`the Petition, claims 39-44 have a direct, one-to-one correspondence with conventional
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`handling of return mail information techniques performed manually by humans for
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`decades. Paper 2, pp. 17-27. RMI does not provide any evidence to the contrary.
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`Paper 6, pp. 22-36.
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`According to Alice, viewed individually or as a combination of elements, claims
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`must amount to “significantly more” than a patent on an abstract idea—there must be
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`“additional features.” Alice, Slip. op. at 7. The generic components of RMI’s claims
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`“ad[d] nothing . . . that is not already present when the steps are considered
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`separately.” Id. at 15. In its Response, RMI attempts to improperly import “hard copy
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`mail” into claims 39 and 42-44. Response at 26, 33. Even though “hard copy mail” is
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`not a part of the claims it is, not the “significantly more” that Alice requires.
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`In Alice, the Supreme Court also found the system claim invalid even though it
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`Patent 6,826,548
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`“recited a handful of generic computer components configured to implement the
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`same idea” as the method claim. Id. at 16. And, claims 39-44 recite even less than
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`Alice. For example, the elements of claim 39 are not tied to any particular component,
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`and claim 39 taken individually or as a combination of elements does not recite
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`“significantly more” than “decoding,” “obtaining an updated address,” and
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`“electronically transmitting an updated address,” which is hardly “additional features”
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`per Alice. Similarly, claim 40 recites “stor[ing]” information including a “customer
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`number” and “transmitting” address data, and claim 41 recites a “detector” and a
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`“processor.” Under Alice, it is clear that generic memory to store, generic
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`transmission lines to transmit, a “detector” to detect, and a “processor” that performs
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`generic computer instructions “add[s] nothing of substance” to the abstract idea of
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`relaying data—thus, ineligible under § 101. Thus, media claim 40 and system claim 41
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`“add nothing of substance to the underlying abstract idea” and are likewise ineligible
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`under § 101. Id. at 17. Mere recitation of known technologies, such as computer
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`hardware, communication or computer networks, memory, computer-readable
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`storage medium, or scanners are not eligible under § 101. 37 C.F.R. § 42.301(b).
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`In one argument under Alice, RMI alleges that claim 42 is drawn to “hard copy
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`mail” and is somehow different than claim 39 because claim 42 “specifies ‘receiving
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`from a sender a plurality of mail items.’” (Response at 33.) Yet, RMI still points to no
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`“additional features” under Alice, and tries to import limitations into the claims. Even
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`if claim 42 was limited to “hard copy mail,” which it is not, this “receiving” element
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`Case CBM2014-00116
`Patent 6,826,548
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`does not distinguish itself from claim 39 because you cannot decode data not
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`received. Claim 42 recites “creating output data” that is never used or tied to a
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`component. Further, it recites generic transmission lines used to transmit and “post[s]
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`return mail data records to a network.” But “[s]imply appending conventional steps,
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`specified at a high level of generality” is not “enough” to supply an “inventive
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`concept.” Alice, Slip. op. at 11 (quoting Mayo). For decades, a “plurality of mail items”
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`has been received that include a “written addressee” and “encoded information” and
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`mail has been “identifi[ed], as undeliverable mail items.” And, “encoded data” has
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`been decoded and “output data” has been created. And, “determin[ations]” have been
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`made “if the sender wants a corrected address provided.” (Ex. 1018.) None of these
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`elements amount to more than “conventional steps.” A generic computer
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`“electronically transfers” information or could “post return mail data records on a
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`network.” Whether alone or in combination, these are conventional non-technological
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`steps that simply ensnare the abstract idea of relaying mailing address data. The
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`limitations added by dependent claims 43 and 44 are also well-known “conventional
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`steps” in the prior art. These additions are not “significantly more” than “adding
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`token postsolution activity,” which does not make an abstract concept patentable.
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`Alice, Slip. op. at 15; see Diamond v. Diehr, 450 U.S. 175, 191-92 (1981).
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`Dated: August 1, 2014
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`By:/Lionel M. Lavenue/
`Lionel Lavenue, Reg. No. 46,859
`Erika Arner, Esq., Reg. No. 57,540
`E-mail: USPS-RMI-CBM@finnegan.com
`Attorneys for Petitioner
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`Case CBM2014-00116
`Patent 6,826,548
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that the foregoing Petitioner The United States
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`Postal Service’s Supplemental Brief was served on August 1, 2014, by Express Mail
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`to the following attorneys of record for Petitioner as well as by electronic service at
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`the e-mail address listed below.
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`Douglas H. Elliott
`Eric M. Adams
`THE ELLIOTT LAW FIRM, PLLC
`6750 West Loop South, Suite 995
`Bellaire, Texas 77401
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`/Ashley F. Cheung/
`Ashley F. Cheung
`Case Manager
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`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
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