Paper No. _____
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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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`THE UNITED STATES POSTAL SERVICE (USPS)
`AND THE UNITED STATES OF AMERICA,
`AS REPRESENTED BY THE POSTMASTER GENERAL
`Petitioner,
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`v.
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`RETURN MAIL, INC.
`Patent Owner.
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`____________
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`Case CBM2014-00116
`Patent 6,826,548
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`PATENT OWNER RETURN MAIL, INC.’S PRELIMINARY SURREPLY
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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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`THE UNITED STATES POSTAL SERVICE (USPS)
`AND THE UNITED STATES OF AMERICA,
`AS REPRESENTED BY THE POSTMASTER GENERAL
`Petitioner,
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`v.
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`RETURN MAIL, INC.
`Patent Owner.
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`____________
`
`Case CBM2014-00116
`Patent 6,826,548
`____________
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`PATENT OWNER RETURN MAIL, INC.’S PRELIMINARY SURREPLY
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`TABLE OF CONTENTS
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`Alice merely reiterates previous U.S. Supreme Court holdings
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`Claims 39-44 are patent eligible under § 101
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`Supplemental briefing is not allowed during the CBM preliminary stage 3
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`I.
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`II.
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`III.
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`TABLE OF AUTHORITIES
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`CASES
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`Alice Corp. Pty. Ltd. v. CLS Bank Int’l,
`134 S.Ct. 2347 (2014)
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`Mayo Collaborative Svcs. v. Prometheus Labs., Inc.,
`132 S.Ct. 1289 (2012)
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`PTAB PROCEEDINGS
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`Anova Food LLC v. Kowalski,
`IPR2013-00114 (PTAB)
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`International Securities Exchange, LLC v. Chicago Board Options Exchange, Inc.,
`CBM2013-00049 (PTAB)
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`International Securities Exchange, LLC v. Chicago Board Options Exchange, Inc.,
`CBM2013-00050 (PTAB)
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`International Securities Exchange, LLC v. Chicago Board Options Exchange, Inc.,
`CBM2013-00051 (PTAB)
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`LinkedIn Corp. v. AvMarkets Inc.,
`CBM2013-00025, Paper 13 (PTAB Nov. 12, 2013)
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`STATUTES
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`35 U.S.C. § 101
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`RULES
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`77 Fed. Reg. 48,693 (Aug. 14, 2012)
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`REGULATIONS
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`37 C.F.R. § 42.223
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`ii
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` 1, 2
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`1
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`I. Alice merely reiterates previous U.S. Supreme Court holdings.
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`Alice does not establish a “new standard,” but instead applies an existing
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`standard.1 As explained in the Preliminary Response, the two-part analysis for
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`evaluating patent eligibility in Alice is set forth in Mayo Collaborative Svcs. v. Prometheus
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`Labs., Inc., 132 S.Ct. 1289 (2012). (Paper 6 at 22-25). The legal standards and holdings
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`expressed in Alice date back at least to Supreme Court decisions from the 1970’s.
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`Petitioner already has relied on Mayo and the other Supreme Court holdings;
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`Petitioner’s Reply adds nothing substantive to the § 101 discussion. Petitioner
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`essentially repeats its Petition arguments, which still fail because they ignore many of
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`the claims’ limitations. LinkedIn Corp. v. AvMarkets Inc., CBM2013-00025, Paper 13 at
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`19 (PTAB Nov. 12, 2013). Moreover, Alice reiterates that at “some level, ‘all
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`inventions…embody, use, reflect, rest upon, or apply laws of nature, natural
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`phenomena, or abstract ideas,’” and thus, “an invention is not rendered ineligible for
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`patent simply because it involves an abstract concept.” Alice, 134 S.Ct. at 2354.
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`Applications of such concepts to a new and useful end remain eligible, as they were
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`before Alice, for patent protection. Id. Claims 39-44 are patent eligible.
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`II. Claims 39-44 are patent eligible under § 101.
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`In its Preliminary Response, Patent Owner showed in detailed discussions that
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`Claims 39-44 each contains meaningful limitations that are significantly more than just
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`an abstract idea and that these claims do not simply rely on a computer to be patent
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`1 Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S.Ct. 2347 (2014).
`1
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`eligible.
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`(Paper 6 at 22-36). Petitioner’s Reply
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`is nothing more
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`than a
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`mischaracterization of Alice’s meaning combined with a scrambled hash of
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`unsupported assertions already made in the Petition.
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`Claim 39 is a method claim “for processing returned mail items sent by a
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`sender to an intended recipient.” It recites three elements, and each contains
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`meaningful limitations that are significantly more than just an abstract idea. Petitioner
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`does not address any of these limitations in its Reply. Further, its assertion that “hard
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`copy mail” is not a part of Claim 39 is incorrect in view of the limitation “returned
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`mail items.” Also, Claim 39’s “decoding” limitation clearly establishes that it passes
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`the machine-or-transformation test. Claim 40 is directed to a “computer program
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`product residing on a computer readable medium comprising instructions for causing
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`a computer” to perform certain steps. Petitioner continues to ignore Claim 40’s
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`second and third elements completely, and it ignores most of the limitations
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`associated with the first and fourth elements for “stor[ing] decoded information” and
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`“transmitting the updated address.” Likewise, for Claim 41, Petitioner discusses the
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`“detector” and “processor,” but fails to address the limitations associated with these
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`elements, as required. Claim 42 has seven elements, and each one contains many
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`meaningful limitations none of which Petitioner addressed. Petitioner merely asserts
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`2
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`that Claim 42’s steps are conventional.2 Dependent Claims 43 and 44 provide
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`additional limitations to Claim 42, and there is no support for the assertion that they
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`are “post-solution” activity.
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`III. Supplemental briefing is not allowed during the CBM preliminary stage.
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`The Federal Register explains, “As the institution of the post-grant review is
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`not based upon supplemental information, the rule provides that motions identifying
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`supplemental information be filed after the institution of the post-grant review.” 77
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`Fed. Reg. 48,693 (Aug. 14, 2012) (discussing 37 C.F.R. § 42.223). In each of the CBM
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`proceedings Petitioner cited during the conference call, the supplemental briefing was
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`after the CBM proceeding was instituted. (Ex. 1020 at 11:19-12:22) (citing CBM2013-
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`00049, CBM2013-00050, and CBM2013-00051). Further, the IPR proceeding
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`Petitioner cites in its Reply is not applicable since the regulations above apply to CBM
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`proceedings. (Paper 9 at 1, n1) (citing Anova Food LLC v. Kowalski, IPR2013-00114).
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`Thus, supplemental briefs are not allowed during the CBM preliminary stage.
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`Dated: August 7, 2014
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`By: /Douglas H. Elliott/
`Douglas H. Elliott, Reg. No. 32,982
`E-mail: delliott@elliottiplaw.com
`Attorneys for Patent Owner
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`2 Petitioner’s assertion that “creating output data that includes…” is “never used” is
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`incomprehensible, and the limitation “mail items” throughout Claim 42 shows that
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`Petitioner’s assertion that there is no reference to “hard copy mail” is incorrect.
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that the foregoing Patent Owner Return Mail, Inc.’s
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`Surreply was served on August 7, 2014, by FEDERAL EXPRESS standard overnight
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`shipping to the following attorneys of record for Petitioner as well as by electronic
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`service at the e-mail address listed below.
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`Lionel Lavenue
`Erika Arner
`Finnegan, Henderson, Farabow, Garrett & Dunner LLP
`Two Freedom Square
`11955 Freedom Drive
`Reston, VA 20190
`USPS-RMI-CBM@finnegan.com
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`/Douglas H. Elliott/
`Douglas H. Elliott
`Registration No. 32,982
`Attorney for Patent Owner
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