Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 41
`Entered: October 15, 2015
`
`
`
`
`
`
`
`
`
`
`
`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.
`
`TURNER, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`
`35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 41
`Entered: October 15, 2015
`
`
`
`
`
`
`
`
`
`
`
`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.
`
`TURNER, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`
`35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`CBM2014-00116
`Patent 6,826,548 B2
`
`I.
`
`INTRODUCTION
`
`A.
`
`Background
`
`The United States Postal Service and United States of America, as
`
`represented by the Postmaster General (collectively “USPS”), 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, “the ’548 Patent”),
`
`pursuant to § 18 of the Leahy-Smith America Invents Act (“AIA”).
`
`Paper 2 (“Pet.”). In support of that Petition, USPS also included a
`
`declaration from Joe Lubenow, Ph.D. (Ex. 1008, “Lubenow Decl.”). In
`
`response, Return Mail, Inc. (“Return Mail”) filed a Patent Owner
`
`Preliminary Response. Paper 6 (“Prelim. Resp.”). On October 16, 2014,
`
`we instituted a transitional covered business method patent review (Paper
`
`11, “Dec.”) based upon Petitioner’s assertion that the challenged claims are
`
`unpatentable based on the following grounds:
`
`Reference
`
`
`
`1997 ACS1
`
`Dec. 35.
`
`Basis
`
`§ 101
`
`§ 102
`
`Claims Challenged
`
`39–44
`
`39–44
`
`Subsequent to institution, Return Mail filed a Patent Owner Response
`
`(Paper 21, “PO Resp.”) and, in support, a declaration from Scott M. Nettles,
`
`Ph.D. (Ex. 2015, “Nettles Decl.”). Petitioner filed a Reply (Paper 22,
`
`“Reply”) to Patent Owner’s Response, and, in support, a supplemental
`
`declaration from Dr. Lubenow (Ex. 1028, “Lubenow Supp. Decl.”).
`
`
`1 United States Postal Service, Address Change Service, Publication 8 (July
`1997) (Ex. 1004, “1997 ACS”).
`
`2
`
`
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`CBM2014-00116
`Patent 6,826,548 B2
`
`An oral hearing was held on May 12, 2015, and a transcript of the
`
`hearing is included in the record (Paper 40, “Tr.”).
`
`We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
`
`Decision is issued pursuant to 35 U.S.C. § 328(a) and 37 C.F.R. § 42.73.
`
`For the reasons that follow, we determine that Petitioner has shown by
`
`a preponderance of the evidence that claims 39–44 of the ’548 Patent are
`
`unpatentable.
`
`
`
`B. The ’548 Patent
`
`The ’548 Patent relates to a system and method of processing returned
`
`mail. Ex. 1001, Abs. Returned mail is received from United States Postal
`
`Service 90 and passed through high volume mail sorter 20 and optical
`
`scanner 40, where the optical scanner reads the information previously
`
`optically encoded onto each mail piece before it was sent. This information
`
`is stored through application server 50 in mass storage device 60, containing
`
`a plurality of subscriber databases 62. The addresses may then be extracted
`
`from the scanned data for processing. Id. at 3:32–51; Fig. 1.
`
`3
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`
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`CBM2014-00116
`Patent 6,826,548 B2
`
`Fig. 1 of the ’548 Patent illustrates the processing flow
`for the returned mail handling system.
`
`
`
`
`
`C. Procedural History
`
`The ’548 Patent issued on November 30, 2004, based on a provisional
`
`application, No. 60/263,788, filed January 24, 2001, and a non-provisional
`
`application, No. 10/057,608, filed January 24, 2002. USPS points out that
`
`Return Mail applied for a reissue of the ’548 Patent (reissue application No.
`
`11/605,488, filed November 29, 2006), which was subsequently abandoned.
`
`Pet. 4. The challenged claims in this proceeding were obtained during a
`
`reexamination of the ’548 Patent requested by USPS, also cancelling the
`
`original claims (Reexamination Control No. 90/008,470, Ex Parte
`
`4
`
`
`
`CBM2014-00116
`Patent 6,826,548 B2
`
`Reexamination Certificate issued January 4, 2011 as U.S. Patent No.
`
`6,826,548 C1). Ex. 1002, 1:21–2:32; Prelim. Resp. 3.
`
`In addition, Return Mail sued the United States for infringement of the
`
`’548 Patent in the U.S. Court of Federal Claims. See Return Mail, Inc.
`
`(RMI) v. United States, No. 1:11-cv-00130 (Fed. Cl. Filed Feb. 28, 2011).
`
`The Court construed the subject claims in an Order issued on October 4,
`
`2013. Ex. 1011.
`
`
`
`D. The Instituted Claims
`
`The challenged claims include four independent claims, claims 39–42,
`
`and dependent claims 43 and 44, which depend from claim 42. Claims 39
`
`and 42 are illustrative of the subject matter of the claims at issue and are
`
`reproduced below:
`
`39. A method for processing returned mail items sent by a
`sender to an intended recipient, the method comprising the
`steps of:
`
`decoding, subsequent to mailing of the returned mail items,
`information indicating whether the sender wants a corrected
`address to be provided for the intended recipient, on at least
`one of the returned mail items;
`
`obtaining an updated address of the intended recipient
`subsequent to determining that the sender wants a corrected
`address to be provided for the intended recipient; and
`
`the
`transmitting an updated address of
`electronically
`intended recipient to a transferee, wherein the transferee is a
`return mail service provider.
`
`
`
`42. A method for processing a plurality of undeliverable
`mail items, comprising:
`
`5
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`CBM2014-00116
`Patent 6,826,548 B2
`
`receiving from a sender a plurality of mail items, each
`including i) a written addressee, and ii) encoded data
`indicating whether the sender wants a corrected address to
`be provided for the addressee;
`
`identifying, as undeliverable mail items, mail items of the
`plurality of mail items that are returned subsequent to
`mailing as undeliverable;
`
`decoding the encoded data incorporated in at least one of the
`undeliverable mail items;
`
`creating output data that includes a customer number of the
`sender and at least a portion of the decoded data;
`
`determining if the sender wants a corrected address provided
`for intended recipients based on the decoded data;
`
`the sender wants a corrected address provided,
`if
`electronically transferring to the sender information for the
`identified intended recipients that enable the sender to
`update the sender's mailing address files; and
`
`if the sender does not want a corrected address provided,
`posting return mail data records on a network that is
`accessible to the sender to enable the sender to access the
`records.
`
`
`
`II. ANALYSIS
`
`A. Claim Construction
`
`We construe all terms, whether or not expressly discussed here, using
`
`the broadest reasonable construction in light of the ’548 Patent specification.
`
`See 37 C.F.R. § 42.300(b); see also In re Cuozzo Speed Techs., LLC, 93 F.3d
`
`1268, 1278–80 (Fed. Cir. 2015) (“Congress implicitly approved the broadest
`
`reasonable interpretation standard in enacting the AIA,” and “the standard
`
`was properly adopted by PTO regulation.”).
`
`During the pre-trial stage of this proceeding, the parties submitted
`
`their constructions for specific claim terms and we adopted constructions
`
`6
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`CBM2014-00116
`Patent 6,826,548 B2
`
`consistent with the constructions adopted by the U.S. Court of Federal
`
`Claims (Ex. 1011). Dec. 8–10. Return Mail does not dispute the
`
`constructions adopted. PO Resp. 16–27.
`
`Upon review of the parties’ explanations and supporting evidence
`
`before us, we discern no reason to modify our claim constructions set forth
`
`in the Decision on Institution with respect to these claim terms. Dec. 8–10.
`
`For convenience, our claim constructions are reproduced in the table below:
`
`Claim Term(s)
`
`Claims
`
`Construction
`
`“decode,” “decoding,”
`“decoded information,”
`“decoded data”
`
`“encode,” “encoding,”
`“encoded information,”
`“encoded data”
`
`“returned mail items”
`“mail items returned”
`
`“returned service
`provider”
`
`“detector”
`
`“processor”
`
`“network”
`
`“posting”
`
`
`
`39–42
`
`41, 42,44
`
`39, 40
`
`39–41
`
`41
`
`41
`
`42
`
`42
`
`“decipher information into
`useable form,” “deciphered
`usable information,”
`“deciphered, usable data”
`“convert information into
`code,” “information converted
`into code,” “data converted
`into code”
`“items that are mailed and
`come back to a post office
`facility”
`“an entity that performs
`electronic return mail
`processing”
`“a device for detecting
`information”
`
`“a computing device”
`
`“electronic connections
`enabling access”
`“making available on a
`network”
`
`B. Covered Business Method Patent
`
`Under AIA § 18(a)(1)(E), we may institute a transitional review
`
`proceeding only for a patent that is a covered business method patent. A
`
`7
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`CBM2014-00116
`Patent 6,826,548 B2
`
`“covered business method 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.” AIA § 18(d)(1); see 37 C.F.R. § 42.301(a). A patent need have
`
`only one claim directed to a covered business method to be eligible for
`
`review. See Transitional Program for Covered Business Method Patents—
`
`Definitions of Covered Business Method Patent and Technological
`
`Invention; Final Rule, 77 Fed. Reg. 48,734, 48,736 (Aug. 14, 2012).
`
`USPS contends that independent claim 39 of the ’548 Patent includes
`
`subject matter that is financial in nature because it “provides a method for
`
`easing the administrative burden of finance companies, mortgage
`
`companies, and credit card companies by making relaying updated mailing
`
`address data more cost effective.” Pet. 7–8 (citing Ex. 1001, 1:25–38).
`
`USPS also points out that method of claim 39 “is particularly applicable to
`
`high volume (bulk) mail users such as credit card companies.” Id. at 8
`
`(citing Ex. 1001, 2:60–65). Return Mail has not disputed that claim 39
`
`recites subject matter that is financial in nature. Prelim. Resp. 10–14; PO
`
`Resp. 10–16. In the Decision on Institution, we agreed with USPS that
`
`independent claim 39 satisfies the “financial product or service” component
`
`of the definition set forth in AIA § 18(d)(1). Dec. 11–12.
`
`For the following reasons, we maintain our determination. First, as
`
`recently confirmed by the Federal Circuit, “[t]he plain text of the statutory
`
`definition contained in § 18(d)(1)—‘performing . . . operations used in the
`
`practice, administration, or management of a financial product or service’—
`
`on its face covers a wide range of finance-related activities.” Versata Dev.
`
`8
`
`
`
`CBM2014-00116
`Patent 6,826,548 B2
`
`Grp., Inc. v. SAP Am., Inc., 2015 WL 4113722 at *16 (Fed. Cir. July 9,
`
`2015). The method recited in claim 39 performs operations used in the
`
`practice, administration, or management of a financial product or service and
`
`are incidental to a financial activity. As noted by Petitioner, the ’548 Patent
`
`itself indicates “[t]he return mail process is particularly applicable to high
`
`volume (bulk) mail users such as credit card companies . . . .” Ex. 1001,
`
`2:60–62; Pet. 8 (citing same). The ’548 Patent also describes an
`
`embodiment related to a credit card company. Ex. 1001, 3:15–24. The ’548
`
`Patent is directed to solving problems related to returned mail processing.
`
`Id. at 1:20–60. Thus, the ’548 Patent covers the ancillary activity related to
`
`a financial product or service of processing return mail for credit card
`
`companies.
`
`We recognize that the legislative history of the AIA has “competing
`
`statements from various legislators with regard to the possible scope of
`
`[these] issues.” Versata Dev. Grp., 2015 WL 4113722 at *12. We note
`
`nonetheless that at least one legislator viewed “transmission or management
`
`of data” and “back office operations—e.g., payment processing,” at issue
`
`here, as ancillary activities intended to be encompassed by the language
`
`“practice, administration and management” of a financial product or service.
`
`157 Cong. Rec. S1364–65 (daily ed. Mar. 8, 2011) (statement of Sen.
`
`Schumer) (indicating the language “practice, administration and
`
`management” of a financial product or service “is intended to cover any
`
`ancillary activities related to a financial product or service, including,
`
`without limitation, marketing, customer interfaces, Web site management
`
`and functionality, transmission or management of data, servicing,
`
`9
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`CBM2014-00116
`Patent 6,826,548 B2
`
`underwriting, customer communications, and back office operations—e.g.,
`
`payment processing, stock clearing”).
`
`USPS also contends that the claimed features merely eliminate the
`
`very labor intensive task of manually updating individual mailing address
`
`records. Pet. 9 (citing Ex. 1015, 250). USPS argues that the claims employ
`
`no specific technology, and “recite only nominal, generic, long-existing
`
`technologies, such as the common telephone, any computer, or any Internet
`
`or intranet address or location.” Id. USPS also argues that, even if these
`
`claimed features could be characterized as technical, they are not novel or
`
`nonobvious, nor do they introduce a technical solution to a technical
`
`problem. Id. at 9–10. In the Decision on Institution, we concluded that the
`
`subject matter of claim 39 of the ’548 Patent does not solve a technical
`
`problem using a technical solution, and that the ’548 Patent is a covered
`
`business method patent eligible for a covered business method patent
`
`review. Dec. 15.
`
`In its Patent Owner Response, Return Mail argues that the ’548 Patent
`
`is not a covered business method patent under the AIA. PO Resp. 10–16.
`
`Return Mail cites Experian Marketing Solutions, Inc. v. RPost
`
`Communications Ltd, CBM2014-00010, slip op. at 5–9 (PTAB Apr. 22,
`
`2014) (Paper 20), and argues that the ’548 Patent solves technical problems
`
`in processing return mail, including an inability to handle large volumes of
`
`mail efficiently and inaccuracy of processing. Id. at 10–12. Return Mail
`
`emphasizes the use of a processor and an optical scanner in its system, and
`
`“the specification’s preferred embodiment encodes the sender’s preference
`
`by creating a bar code with the information.” Id. at 12–13. However, these
`
`aspects are not present in claim 39, upon which the determination of
`
`10
`
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`CBM2014-00116
`Patent 6,826,548 B2
`
`eligibility for covered business method patent review was made. Although
`
`claim 39 could encompass those technological features, they are not recited
`
`therein, and the subject claim must have a greater breadth than those
`
`features.
`
`Return Mail also argues that USPS has described the ‘548 Patent as a
`
`technological improvement over the existing technology and USPS has
`
`failed to meet its burden to demonstrate that the claimed subject matter is not
`
`a technological invention, making only conclusory assertions and failing to
`
`evaluate claim 39 as a whole. Id. at 13–14. We do not agree. We were
`
`persuaded by USPS’s analysis and did not find it insufficient. Dec. 14–15.
`
`The degree of specificity that a petition must supply is dependent on the
`
`nature of the technology and the facts of the case. USPS pointed to the
`
`nature of the steps, and based on an understanding of the nature of the
`
`technology at the time of the invention, we concurred that claim 39 does not
`
`solve a technical problem using a technical solution. Id. As we stated in the
`
`Decision on Institution:
`
`at the time of the invention of the ’548 Patent, neither decoding,
`such as bar code reading, nor electronically transmitting, was
`unknown, unachievable, or incapable of being combined in the
`manner claimed. In fact, the ’548 Patent discloses that such
`encoding and decoding were old and well-known at the time the
`application leading to the ’548 Patent was filed.
`
`Id. (citations omitted). Therefore, we remain persuaded by USPS that claim
`
`39 of the ’548 Patent does not solve a technical problem using a technical
`
`solution, and that the ’548 Patent is a covered business method patent
`
`eligible for a covered business method patent review.
`
`
`
`11
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`CBM2014-00116
`Patent 6,826,548 B2
`
`C. Standing Under AIA Section 18
`
`Return Mail asserts, as it did in its Preliminary Response, that USPS
`
`lacks standing to petition for covered business method patent review of the
`
`’548 Patent because Return Mail sued USPS 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, and, therefore, USPS has not been sued for, or
`
`charged with, infringement of the ’548 Patent under 35 U.S.C. §§ 271 and
`
`281; compare Prelim Resp. 6–10 with PO Resp. 4–10. We discern no
`
`significant difference between Return Mail’s arguments in the Preliminary
`
`Response and the Patent Owner Response. As such, we incorporate our
`
`previous analysis regarding USPS’s standing under AIA § 18 (Dec. 15–18),
`
`and determine that USPS has demonstrated that is has standing under this
`
`section.
`
`
`
`D. Unpatentability under 35 U.S.C. § 101; Claims 39–44
`
`USPS contends that claims 39–44 are directed to non-statutory subject
`
`matter under 35 U.S.C. § 101. Pet. 17–27. After considering the arguments
`
`and evidence presented in the Petition and the Preliminary Response, we
`
`instituted trial with respect to claims 39–44, concluding that USPS was
`
`likely to prevail in showing unpatentability under 35 U.S.C. § 101. Dec. 19,
`
`35.
`
`Section 101 provides that: “Whoever invents or discovers any new
`
`and useful process, machine, manufacture, or composition of matter, or any
`
`new and useful improvement thereof, may obtain a patent therefor, subject to
`
`the conditions and requirements of this title.” The Supreme Court
`
`recognizes three exceptions to these statutory classes: laws of nature,
`
`12
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`Patent 6,826,548 B2
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`natural phenomena, and abstract ideas. Alice Corp. Pty, Ltd. v. CLS Bank
`
`Int’l, 134 S. Ct. 2347, 2354 (2014); Mayo Collaborative Servs. v.
`
`Prometheus Labs., Inc., 132 S. Ct. 1289, 1293 (2012). Although an abstract
`
`idea by itself is not patentable, a practical application of an abstract idea may
`
`be deserving of patent protection. Alice, 134 S. Ct. at 2355. We must
`
`consider “the elements of each claim both individually and ‘as an ordered
`
`combination’ to determine whether the additional elements ‘transform the
`
`nature of the claim’ into a patent-eligible application.” Id. (citing Mayo, 132
`
`S. Ct. at 1298). The claim must contain elements or a combination of
`
`elements that are “sufficient to ensure that the patent in practice amounts to
`
`significantly more than a patent upon the [abstract idea] itself.” Id. (citing
`
`Mayo, 132 S. Ct. at 1294).
`
`We have reviewed the Petition, the Patent Owner Response, and
`
`Petitioner’s Reply, as well as the relevant evidence discussed in those
`
`papers, and we are persuaded that claims 39–44 are directed to non-statutory
`
`subject matter. We address USPS’s contentions and showings, and then
`
`address Return Mail arguments in response.
`
`USPS contends that claim 39 recites the abstract idea of relaying
`
`mailing address data with only insignificant extra-solution activity, and fails
`
`the machine-or-transformation test. Pet. 19–22. USPS cites Dealertrack,
`
`Inc. v. Huber, 674 F.3d 1315 (Fed. Cir. 2012) and CyberSource Corp. v.
`
`Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011), and argues that claim
`
`39 uses conventional technology to relay mailing address data. Id. at 19–20.
`
`USPS also argues that “electronically transmitting” applies conventional
`
`telecommunications systems and is not integral to the claimed subject
`
`13
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`CBM2014-00116
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`matter, and further argues that claim 39 fails to transform any article. Id. at
`
`20–22. We agree.
`
`USPS has shown, by a preponderance of the evidence, that claim 39,
`
`as a whole, is directed to the processing of returned mail items, involving
`
`decoding information, obtaining an updated address, and electronically
`
`transmitting that updated address to a transferee. USPS has shown that the
`
`steps are directed to the abstract idea of relaying mailing address data, with
`
`the inclusion of an electrical transmission step.
`
`Regarding whether claim 39 includes limitations that amount to
`
`significantly more than the abstract idea of relaying mailing address data,
`
`per our claim construction, USPS has shown that the “decoding” step is
`
`“deciphering information into useable form,” but that does not necessarily
`
`bring it out of the realm of processes performed in the past by human beings.
`
`In fact, all of the claimed steps could be performed in the human mind, with
`
`the exception of the transmitting step. Additionally, USPS has shown that
`
`what the data might be deemed to represent to the human mind — e.g.,
`
`“information indicating whether the sender wants a corrected address to be
`
`provided for the intended recipient” — does not substantially affect the
`
`underlying structure or function of the claim or any machine on which it is
`
`carried out. Consistent with USPS’s position, the ’548 Patent disclosure
`
`does not describe any particular hardware to perform the steps recited in
`
`claim 39, but refers merely in broad terms to generic computer hardware and
`
`software.
`
`Additionally, like the terms “computer-aided” in Dealertrack and
`
`“transaction database” in Accenture Global Servs., GmbH v. Guidewire
`
`Software,Inc., 728 F.3d 1336 (Fed. Cir. 2013), the “electronically
`
`14
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`CBM2014-00116
`Patent 6,826,548 B2
`
`transmitting an updated address of the intended recipient to a transferee,
`
`wherein the transferee is a return mail service provider” limitation in claim
`
`39 does not amount to significantly more than the abstract idea of relaying
`
`mailing address data. The transmission technology is employed only for the
`
`purposes of creating more efficient communication, and would be a basic
`
`function of any electrical transmission system.
`
`With respect to claim 40, USPS argues that the claim merely
`
`embodies the steps of claim 39, citing Dealertrack for the proposition that
`
`apparatus claims directed to a “computer readable medium” that simply
`
`transcribed, applied, or embodied an abstract method claim would not render
`
`the claim patentable. Pet. 22–23. USPS further argues that claim 40 differs
`
`from claim 39 in substance only that it includes a step of “causing a
`
`computer to store decoded information,” and the claims should be
`
`considered equivalent for purposes of patent eligibility. Id. We agree.
`
`USPS has shown, by a preponderance of the evidence, that the
`
`analysis of claim 40 should be similar to that of claim 39. Claim 40 also
`
`recites a “customer number,” and determining decoded data based on that
`
`number. It does little to further limit the same abstract idea embodied in
`
`claim 39. As such, USPS has shown that claim 40 is directed to non-
`
`statutory subject matter.
`
`USPS argues that claim 41 merely recites a detector and a processor,
`
`and adds an encoding limitation. Pet. 23. According to USPS, a detector
`
`and a processor are alleged to be generic and only capable of performing the
`
`method steps of claim 39. Id. at 23–24. USPS emphasizes the format of a
`
`claim does not change its patent eligibility analysis under § 101. Id. at 23
`
`(citing Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Canada, 687
`
`15
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`CBM2014-00116
`Patent 6,826,548 B2
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`F.3d 1266, 1276-1277 (Fed. Cir. 2012)). USPS also alleges that “detector”
`
`is broad enough to encompass all forms of optical scanning, including by a
`
`person, and the encoded information could be a zip code. Id. at 24. USPS
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`also urges that even if claim 41 requires a particular detector, decoder, or
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`computer, that claim still is not a “‘technical advance used to implement an
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`abstract idea unrelated to that technology.’” Id. at 24 (citing CRS Adv. Tech
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`Inc., v. Frontline Tech Inc., Case CBM2012–00005, slip op. at 15 (PTAB
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`Jan. 23, 2014) (Paper 66)). We agree with USPS’s analysis of claim 41.
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`Thus, USPS has shown that claim 41 is directed to non-statutory subject
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`matter.
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`USPS acknowledges that claim 42 adds posting and creating output
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`data steps to the steps recited in claim 39, but argues that those steps are
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`“conventional, non-technological steps that simply ensnare the abstract
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`business process of relaying mailing address data.” Pet. 25. We agree.
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`USPS has shown, by a preponderance of the evidence, that claim 42 is
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`directed to non-statutory subject matter. Claim 42 recites steps that (1)
`
`receive mail items including certain types of data, (2) identify mail items
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`that are returned subsequent to mailing as undeliverable, (3) decode encoded
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`data indicating whether the sender wants a corrected address to be provided,
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`(4) create output data including a customer number and decoded data, and
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`(5) determine if the sender wants a corrected address. The method of claim
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`42 also recites steps based on whether the sender wants a corrected
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`address—electronically transferring information if a corrected address is
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`wanted, and posting return mail data records on a network if the sender does
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`not want to receive the corrected address.
`
`16
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`CBM2014-00116
`Patent 6,826,548 B2
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`USPS has shown that claim 42 is directed to the abstract idea of
`
`relaying mailing address data and does not recite limitations that amount to
`
`significantly more than that abstract idea. For reasons discussed previously,
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`we are persuaded, on this record, that decoding, encoding, and electronically
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`transferring information do not impart meaningful limitations to the abstract
`
`idea of relaying mailing address data.
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`Claims 43 and 44 depend from independent claim 42. Claim 43
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`recites transmitting a name and address, and claim 44 recites that the
`
`encoded data indicates a name and address of the intended recipient. USPS
`
`asserts that the limitations of claims 43 and 44 do not recite non-generic
`
`technological limitations and, therefore, do not amount to significantly more
`
`than the abstract concept of relaying mailing address data. Pet. 26–27. As
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`discussed above, we are not persuaded, on this record, that the limitations of
`
`claim 42 add significantly more to the abstract idea of relaying mailing
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`address data. USPS, in its contentions that claims 43 and 44 are
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`unpatentable under 35 U.S.C. § 101, addresses the additional limitations
`
`recited by claimed 43 and 44 and asserts the limitations do not amount to
`
`significantly more than the abstract concept of relaying mailing address data.
`
`Pet. 26–27. As such, USPS has shown claims 43 and 44 are directed to non-
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`statutory subject matter.
`
`Turning now to Return Mail’s arguments, Return Mail argues that the
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`challenged claims improve the technological process of return mail
`
`processing and do not exclude other methods of doing the same, citing
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`others obtaining patents in the same technology space. PO Resp. 28–29
`
`(citing Ex. 2015 ¶¶ 43–69, 85–94). However, given the recentness of the
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`Alice decision, we are not persuaded that the presence of other patentees
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`17
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`CBM2014-00116
`Patent 6,826,548 B2
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`necessarily means that the technology space is “open.” Additionally, the
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`claims of the other patents may be drawn to more specific methods and
`
`systems, such that they could fall within the broad scope of the challenged
`
`claims and still be patentable.
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`We also agree with USPS that whether a claim recites statutory
`
`subject matter under 35 U.S.C. § 101 is a question of law. Reply 3–4. We
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`do not, however, discount the testimony of Dr. Nettles, although we agree
`
`that his opinion appears to be directed to his own two-part test. Ex. 2015 ¶¶
`
`50–64; Reply 3–4. We credit Dr. Nettles’s testimony but do not agree that
`
`we need to consider the “architecture” that supports automation, when that
`
`architecture is not specifically claimed or when the claimed architecture is
`
`well-known and/or conventional technology.
`
`Return Mail also argues that challenged claims do not only involve an
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`abstract idea but have meaningful limitations, such as decoding information
`
`that has been encoded on the mail item, storing and processing of that
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`decoded information, and providing the desired type of updated address
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`information. PO Resp. 30. Return Mail’s argument is not persuasive
`
`because any embodiment of the abstract idea of “relaying mailing address
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`data” would likely determine information contained on the returned item and
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`store and provide that information, which is the most generic form of
`
`implementing the idea. The “encoding” and “decoding” of such information
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`is acknowledged by Return Mail to be conventional (Ex. 1001, 2:66–3:15),
`
`such that they do not transform the abstract idea into a distinct embodiment
`
`with statutory subject matter under 35 U.S.C. § 101.
`
`Return Mail also argues that the challenged claims have an inventive
`
`concept that contains technical features that solve a technical problem. PO
`
`18
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`CBM2014-00116
`Patent 6,826,548 B2
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`Resp. 31–38. Return Mail argues that the prior art methods have many flaws
`
`and the ’548 Patent “contemplates information encoded directly onto the
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`piece of mail, the information on the piece of mail can be read directly by an
`
`optical scanner, and then automatically processed by the application server.”
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`Id. at 36 (citing Ex.2015 ¶¶ 56-65). We do not agree.
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`We are persuaded by USPS’s argument that the challenged claims do
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`not recite an “optical scanner” or “application server,” and to consider the
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`claims reciting such, we would need to read limitations into those claims, in
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`violation of proper claim construction principles. Reply 4. As stated in the
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`Decision on Institution, “at the time of the invention of the ’548 Patent,
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`neither decoding, such as bar code reading, nor electronically transmitting,
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`was unknown, unachievable, or incapable of being combined in the manner
`
`claimed. In fact, the ’548 Patent discloses that such encoding and decoding
`
`were old and well-known at the time the application leading to the ’548
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`Patent was filed.” Dec. 14. Although it is true that claims are evaluated in
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`the context of the specification, we disagree with Return Mail that we must
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`determine what the claim limitations “relate to” and continue our analysis
`
`from there. See Tr. 36–39. In the instant case, Return Mail urges that the
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`decoding step of claim 39 “relates to the discussion in the specification of an
`
`optical scanner,” and that the obtaining step, from the same claim, “relates to
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`the specifically programmed application server in the specification.” Id. at
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`38. We are not persuaded that such a “relate to” analysis is called for under
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`Mayo or Alice.
`
`Return Mail also argues that the claims satisfy both the machine or
`
`transformation tests. PO Resp. 39. Specifically, Return Mail argues that the
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`claims require “a number of machines arranged, interlinked and
`
`19
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`CBM2014-00116
`Patent 6,826,548 B2
`
`programmed to perform specific tasks that are integral to performing the
`
`purposes of the patent.” Id. at 40. However, we agree with USPS that the
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`claims recite, at most, conventional and generic hardware that existed before
`
`the ’548 Patent was filed, and are not limited to a particular or specific-
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`purpose machine. Reply 5. Recitation of conventional or generic hardware
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`cannot render a claim drawn to non-statutory subject matter to be statutory.
`
`See Dealertrack, 674 F.3d at 1333–34; CyberSource, 654 F.3d at 1375.
`
`Return Mail also discusses the use of the application server which is a
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`special purpose computer (PO Resp. 43–44), but, again, no such server is
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`claimed.
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`Return Mail also argues that the challenged claims meet the
`
`transformation test, in that the decode step transforms information from one
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`state into another. PO Resp. 45–46. To the extent that scanned information
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`is transformed, we are not persuaded that such a process was not
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`conventional or well-known at the time the application for the ’548 Patent
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`was filed. Additionally, we agree with USPS that the claims do not recite
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`“transform[ing] incorrect address information into correct address
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`information after checking the available database” or providing a
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`“notification that the prior address is incorrect.” Re
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