`Entered: August 21, 2019
`
`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.
`_______________
`
`CBM2014-00116
`Patent 6,826,548 B2
`_______________
`
`
`Before KEVIN F. TURNER, BARBARA A. BENOIT, and
`JO-ANNE M. KOKOSKI, Administrative Patent Judges.
`
`
`TURNER, Administrative Patent Judge
`
`
`ORDER
`Termination of Proceeding
`37 C.F.R. § 42.71, 42.72
`
`
`
`
`
`CBM2014-00116
`Patent 6,826,548 B2
`
`
`
`
`
`Previously, the United States Postal Service and United States of America,
`as represented by the Postmaster General (“Petitioner”) filed a Petition requesting a
`covered business method patent review of claims 39–44 of U.S. Patent
`No. 6,826,548 B2 (Ex. 1001), pursuant to § 18 of the Leahy-Smith America
`Invents Act (“AIA”). Paper 2. In response, Return Mail, Inc. (“Patent Owner”)
`filed a Patent Owner Preliminary Response. Paper 6. On October 16, 2014, we
`instituted a transitional covered business method patent review (Paper 11) based
`upon Petitioner’s assertion that the challenged claims are unpatentable based on
`multiple grounds of unpatentability. Subsequent to institution, Patent Owner filed
`a Patent Owner Response (Paper 21) and Petitioner filed a Reply (Paper 22) to
`Patent Owner’s Response. An oral hearing was held on May 12, 2015, and we
`subsequently issued a Final Written Decision (Paper 41), on October 15, 2015,
`ordering that all challenged claims were determined to be unpatentable. Patent
`Owner then appealed that Decision to the Court of Appeals for the Federal Circuit
`on December 11, 2015 (Paper 42).
`The Court of Appeals for the Federal Circuit affirmed the Decision on
`August 28, 2017 (Return Mail, Inc. v. U.S. Postal Service, 868 F.3d 1350 (Fed.
`Cir. 2017)), determining, in part, that Petitioner had not failed to meet the statutory
`standing requirements to petition for a transitional covered business method patent
`review because Petitioner was a “person” per AIA § 18(a)(1)(B). Return Mail, 868
`F.3d at 1356, 1365–66, 1372–76. Patent Owner appealed to the Supreme Court of
`the United States, which held that a federal agency is not a “person” able to seek
`review of the validity of a patent post-issuance pursuant to the three types of
`administrative review proceedings set forth in the Leahy-Smith America Invents
`Act of 2011 (AIA). Return Mail, Inc. v. U.S. Postal Service, 139 S. Ct. 1853
`(2019). The Court of Appeals for the Federal Circuit, in response, vacated our
`
`2
`
`
`
`
`
`
`CBM2014-00116
`Patent 6,826,548 B2
`
`
`Decision and remanded to the Board to dismiss for lack of jurisdiction in its Order
`dated August 9, 2019.
`Under these circumstances, we determine that it is appropriate to vacate the
`Final Written Decision (Paper 41) and dismiss the Petition. See 35 U.S.C.
`§§ 42.72 (“The Board may terminate a trial without rendering a final written
`decision, where appropriate.”), 42.302(b) (“Who may file a petition for a covered
`business method patent review.”).
`Accordingly, it is
`ORDERED that the Final Written Decision (Paper 41) is vacated;
`FURTHER ORDERED that the Petition is dismissed; and
`FURTHER ORDERED transitional covered business method patent review
`of claims 39–44 of U.S. Patent No. 6,826,548 B2 is terminated.
`
`
`
`
`3
`
`
`
`
`
`
`
`
`CBM2014-00116
`Patent 6,826,548 B2
`
`PETITIONER:
`Lionel Lavenue
`Erika Arner
`Elizabeth Ferrill
`Joshua Goldberg
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP
`lionel.lavenue@finnegan.com
`erika.arner@finnegan.com
`elizabeth.ferrill@finnegan.com
`joshua.goldberg@finnegan.com
`USPS-RMI-CBM@finnegan.com
`
`
`PATENT OWNER:
`Douglas H. Elliot
`Eric M. Adams
`The Elliott Law Firm, PLLC
`delliott@elliottiplaw.com
`eric@elliottiplaw.com
`
`
`
`4
`
`
`
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