`Trials@uspto.gov
`Tel: 571-272-7822
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` Paper 11
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` Entered: October 16, 2014
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`
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`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.
`
`
`
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`
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`CBM2014-00116
`Patent 6,826,548 B2
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`
`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 on
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`April 15, 2014, requesting a covered business method patent review of claims 39–
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`44 of U.S. Patent No. 6,826,548 B2 (Ex. 1001, “the ’548 Patent”). Paper 2
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`(“Pet.”). In response, Return Mail, Inc. (“Return Mail”) filed a Patent Owner
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`Preliminary Response on July 16, 2014. Paper 6 (“Prelim. Resp.”).
`
`We also authorized the filing of a Supplemental Response (Paper 9) by
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`USPS, limited to addressing Patent Owner’s arguments, based on Alice Corp. Pty,
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`Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014) (“the Alice decision”), with respect
`
`to Petitioner’s asserted ground of unpatentability under 35 U.S.C. § 101 in the
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`Petition. Paper 7. We also authorized the filing of a Sur-Reply (Paper 10) to
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`Petitioner’s Supplemental Response. Paper 7.
`
`We have jurisdiction under 35 U.S.C. § 324, which provides that a post-
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`grant review may not be instituted “unless … the information presented in the
`
`petition … would demonstrate that it is more likely than not that at least 1 of the
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`claims challenged in the petition is unpatentable.” Taking into account the
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`arguments presented in Return Mail’s Preliminary Response, we determine that the
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`information presented in the Petition establishes that claims 39–44 are more likely
`
`than not unpatentable. Pursuant to 35 U.S.C. § 324 and § 18(a) of the AIA,1 we
`
`
`1 Section 18(a) of the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125
`Stat. 284, 329 (2011) (“AIA”).
`
`
`
`2
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`CBM2014-00116
`Patent 6,826,548 B2
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`hereby institute a covered business method patent review of claims 39–44 of the
`
`’548 Patent.
`
`
`
`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
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`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
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`addresses may then be extracted from the scanned data for processing. Id. at 3:32–
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`51; Fig. 1.
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`3
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`Patent 6,826,548 B2
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`Fig. 1 of the ’548 Patent illustrates the processing flow
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`for the returned mail handling system.
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`
`
`
`
`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
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`Mail applied for a reissue of the ’548 Patent, cancelling the original claims. Pet. 4.
`4
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`Patent 6,826,548 B2
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`The challenged claims in this proceeding were obtained during a reexamination of
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`the ’548 Patent requested by USPS (Reexamination Control No. 90/008,470, Ex
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`Parte Reexamination Certificate issued January 4, 2011 as U.S. Patent No.
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`6,826,548 C1). Ex. 1002, 1:21–2:32; Prelim. Resp. 3.
`
`In addition, Return Mail brought a suit against the United States for
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`infringement of the ’548 Patent in the U.S. Court of Federal Claims. See Return
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`Mail, Inc. (RMI) v. United States, No. 1:11-cv-00130 (Fed. Cl. Filed Feb. 28,
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`2011). The Court construed the subject claims in an Order issued on October 4,
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`2013. Ex. 1011.
`
`
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`D. Illustrative Claims
`
`The challenged claims include four independent claims, claims 39–42, and
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`dependent claims 43 and 44, which depend from claim 42. Claims 39 and 42
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`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
`
`
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`5
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`Patent 6,826,548 B2
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`electronically transmitting an updated address of the 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:
`
`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;
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`determining if the sender wants a corrected address provided for
`intended recipients based on the decoded data;
`
`if the sender wants a corrected address provided, 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.
`
`
`
`
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`6
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`
`USPS relies upon the following prior art references:
`
`E. Prior Art Relied Upon
`
`Uhl
`Krause
`Jatkowski
`Park2
`
`US 6,292,709
`US 7,778,840
`US 6,457,012
`
`Sep. 18, 2001
`May 16, 2002
`Sep. 24, 2002
`
`(Ex. 1005)
`(Ex. 1006)
`(Ex. 1007)
`
`KR 2001-0076609 Aug. 16, 2001
`
`(Ex. 1013)
`
`
`United States Postal Service, Address Change Service, Publication 8 (July 1997)
`(Ex. 1004) (hereinafter “1997 ACS”).
`
`
`F. Asserted Grounds of Unpatentability
`
`USPS challenges claims 39–44 of the ’548 Patent based on the
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`asserted grounds of unpatentability set forth in the table below (Pet. 17–74):
`
`Claims
`
`Basis
`
`Reference(s)
`
`39–44
`
`39–44
`
`39–44
`
`39–41
`
`39 and 40
`
`39 and 40
`
`§ 101
`
`
`
`§ 102
`
`Park
`
`§ 102
`
`1997 ACS
`
`§ 102
`
`Uhl
`
`§ 103
`
`Uhl and Krause
`
`§ 103
`
`Uhl and 1997 ACS
`
`42, 43, and 44
`
`§ 103
`
`Uhl and Jatkowski
`
`42, 43, and 44
`
`§ 103
`
`Uhl, Jatkowski, and 1997 ACS
`
`39–44
`
`§ 305
`
`
`
`
`
`2 Park is a Korean-language patent reference. The citations to Park are to the
`certified English-language translation submitted by USPS (Ex. 1003).
`7
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`II. ANALYSIS
`
`A.
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`Claim Construction
`
`In a covered business method patent review, we interpret claim terms in an
`
`unexpired patent according to the broadest reasonable interpretation in light of the
`
`specification of the patent in which it appears. 37 C.F.R. § 42.300(b). Under the
`
`broadest reasonable interpretation standard, and absent any special definitions, we
`
`give claim terms their ordinary and customary meaning, as would be understood by
`
`one of ordinary skill in the art at the time of the invention. In re Translogic Tech.,
`
`Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definitions for claim terms
`
`must be set forth with reasonable clarity, deliberateness, and precision. In re
`
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`
`USPS argues that the following claim terms are subject to special
`
`construction: “decode” and “encode,” and uses thereof in the claims, “returned
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`mail items” and “mail items returned,” “returned service provider,” “detector”
`
`“processor,” “network,” and “posting.” Pet. 13–17. USPS acknowledges that the
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`claims have been construed by the U.S. Court of Federal Claims (Pet. 13, citing
`
`Ex. 1011), but argues that we should give the subject claim limitations a broader
`
`construction than the Court did. Id. Return Mail disagrees, and points out that we
`
`may consider the court’s claim construction order and determine whether it is
`
`consistent with the broadest reasonable interpretation, in light of the Specification
`
`of the ’548 Patent. Prelim. Resp. 17. Additionally, Return Mail argues for a
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`construction of the above-cited claim limitations that is consistent largely with the
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`Court’s Order. Id. at 17–22 (citing Ex. 1011). We also note that the parties
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`additionally agreed to constructions for specific claim terms in the case pending
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`before the U.S. Court of Federal Claims. Exs. 2003–2005.
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`Upon review of the parties’ arguments, as well as the Court’s Order and the
`
`agreed constructions, we are persuaded that the Court’s construction and the
`
`parties’ agreed constructions are consistent with the broadest reasonable
`
`interpretation, in light of the Specification. In the cases of “detector” “processor,”
`
`“network,” and “posting,” although we accept that these terms should be construed
`
`according to their plain and ordinary meanings, we supply such constructions for
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`sake of completeness. As such, we adopt the following constructions for purposes
`
`of this decision:
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`
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`9
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`
`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.
`
`Consideration of AIA § 18(a)(1)(C)
`
`AIA § 18(a)(1)(C) requires that a challenge to a claim in a covered business
`
`method patent be supported by prior art that is (i) described by pre-AIA 35 U.S.C.
`
`§ 102(a), or (ii) (I) that discloses the invention more than one year before the date
`
`of application for patent in the United States and (II) would be described by pre-
`
`AIA 35 U.S.C. § 102(a) if the disclosure had been made by another before the
`
`invention thereof by the applicant for patent.
`
`
`
`Certain references cited in the Petition are prior art to the challenged claims
`
`of the ’548 Patent only under 35 U.S.C. § 102(e). Under AIA § 18(a)(1)(C), these
`
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`10
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`references are not available for consideration in a covered business method review.
`
`The application that issued as the ’548 Patent was filed January 24, 2002. USPS
`
`asserts that claims 39–44 are not entitled to any priority date earlier than that filing
`
`date. Pet. 27–30. Consequently, Krause and Jatkowski, based on their publication
`
`or issuance dates, which occur after the application filing date, may not be the
`
`basis for a covered business method review of the ’548 Patent. This removes
`
`USPS’s asserted grounds, as recited below:
`
`Claims
`
`39 and 40
`
`Basis
`
`References
`
`§ 103
`
`Uhl and Krause
`
`42, 43, and 44
`
`§ 103
`
`Uhl and Jatkowski
`
`42, 43, and 44
`
`§ 103
`
`Uhl, Jatkowski, and 1997 ACS
`
`
`
`C.
`
`Covered Business Method Patent
`
`1. Financial Product or Service
`
`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
`
`“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—
`
`
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`11
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`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,” but “is also
`
`applicable to any mail user who experiences and must deal with quantities of
`
`returned mail each month.” Id. at 8 (citing Ex. 1001, 2:60–65). Return Mail
`
`does not dispute that claim 39 recites subject matter that is financial in
`
`nature. Prelim. Resp. 10–14. We agree with USPS that independent claim
`
`39 satisfies the “financial product or service” component of the definition set
`
`forth in AIA § 18(d)(1).
`
`In addition, we note that independent claim 40 is directed to a
`
`computer program embodied on a computer-readable medium, yet recites
`
`similar claim limitations as those recited in independent claim 39. Compare
`
`Ex. 1002, 1:21–33, with id. at 1:34–51. Therefore, for the same reason
`
`discussed above with respect to independent claim 39, independent claim 40
`
`also satisfies the “financial product or service” component of the definition
`
`set forth in § 18(d)(1) of the AIA.
`
`
`
`
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`12
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`2. Technological Invention
`
`The definition of a “covered business method patent” does not include
`
`patents for “technological inventions.” When determining whether a patent
`
`is for a technological invention, we consider “whether the claimed subject
`
`matter as a whole recites a technological feature that is novel and unobvious
`
`over the prior art; and solves a technical problem using a technical solution.”
`
`37 C.F.R. § 42.301(b). The following claim drafting techniques, for
`
`example, typically do not render a patent a “technological invention”:
`
`(a) Mere recitation of known technologies, such as computer
`hardware, communication or computer networks, software, memory,
`computer-readable storage medium, scanners, display devices or
`databases, or specialized machines, such as an ATM or point of sale
`device.
`
`(b) Reciting the use of known prior art technology to
`accomplish a process or method, even if that process or method is
`novel and non-obvious.
`
`(c) Combining prior art structures to achieve the normal,
`expected, or predictable result of that combination.
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48763-64 (Aug. 14, 2012).
`
`USPS 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
`
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`nonobvious, nor do they introduce a technical solution to a technical
`
`problem. Id. at 9–10.
`
`Return Mail alleges that USPS failed to demonstrate that claim 39 is
`
`not a technical invention. Prelim. Resp. 11–12. Return Mail argues that
`
`USPS has referred only to some elements of that claim, made conclusory
`
`statements, and failed to consider the claim as a whole. Id. at 12.
`
`Additionally, Return Mail argues that the “decoding” step in claim 39 relates
`
`to technology, and that the U.S. Court of Federal Claims found that
`
`“electronic terms such as ‘decoding’ and ‘electronically transmitting’ are
`
`used.” Id. (citing Ex. 1011, 18).
`
`Per the above claim construction, “decoding” is interpreted as
`
`“deciphering information into useable form,” which does not necessarily
`
`require an electronic means to accomplish. Information can be deciphered
`
`in several ways, and does not mean that claim 39 is drawn to a technical
`
`invention. Moreover, 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. See, e.g., Ex. 1001, 3:11–15. Similarly, the ’548 Patent
`
`Specification provides that the electronic transmission can occur through a
`
`connection “electronically linked by a data line, which may be any
`
`conventional telecommunications data line.” Id. at 3:52–54. Therefore, we
`
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`14
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`conclude that claim 39 of the ’548 Patent does not solve a technical problem
`
`using a technical solution. We find the above analysis of the technical
`
`invention aspect of claim 39 to be equally attributable to claim 40.
`
`The current situation does not require us to assess whether all of the
`
`claimed subject matter of the ’548 Patent, as a whole, recites a technological
`
`feature that is novel and unobvious over the prior art. Because we conclude
`
`that the claimed subject matter of claims 39 and 40 of the ’548 Patent does
`
`not solve a technical problem using a technical solution, the ’548 Patent is a
`
`covered business method patent eligible for a covered business method
`
`patent review.
`
`
`
`D.
`
`Standing Under AIA Section 18
`
`AIA Section 18 limits covered business method patent reviews by requiring
`
`that “[a] person may not file a petition for a transitional proceeding with respect to
`
`a covered business method patent unless the person or the person's real party in
`
`interest or privy has been sued for infringement of the patent or has been charged
`
`with infringement under that patent.” AIA § 18(a)(1)(B) (emphasis added); see 37
`
`C.F.R. § 42.302.
`
`Return Mail argues that for a suit for infringement to be brought, it must be
`
`brought under 35 U.S.C. §§ 271 and 281, whereas Return Mail sued the United
`
`States 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. Prelim. Resp. 6–8.
`
`Return Mail points out that “the Federal Circuit has held that the ‘plain language of
`
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`§ 1498(a) indicates that § 1498(a) operates independently from Title 35.’” Id. at 8
`
`(citing Zoltek Corp. v. U.S., 672 F.3d 1309, 1321 (Fed. Cir. 2012)). On this basis,
`
`Return Mail alleges that the United States lacks proper standing to petition for
`
`covered business method patent review of the ’548 Patent. Id. at 8–10.
`
`We disagree with Return Mail. The plain language of § 18(a) of the AIA
`
`limits covered business method patent reviews to persons sued or charged with
`
`infringement of the covered business method patent. There is no dispute that
`
`Return Mail sued the United States in the U.S. Court of Federal Claims under
`
`28 U.S.C. § 1498 for unlicensed use of the ’548 Patent. See Prelim. Resp. 6-8;
`
`Pet. 10. The question before us, then, is whether an action brought against the
`
`United States under Section 1498(a) is a suit for infringement.
`
`Section 1498(a) states the following:
`
`Whenever an invention described in and covered by a patent of the
`United States is used or manufactured by or for the United States
`without license of the owner thereof or lawful right to use or
`manufacture the same, the owner's remedy shall be by action against
`the United States in the United States Court of Federal Claims for the
`recovery of his reasonable and entire compensation for such use and
`manufacture.
`
`28 U.S.C. § 1498(a) (emphasis added). Section 271(a) states that “whoever
`
`without authority makes [or] uses . . . any patented invention, within the United
`
`States . . . during the term of the patent therefor, infringes the patent.” 35 U.S.C.
`
`§ 271(Infringement of patent). Because 28 U.S.C. § 1498(a) indicates the United
`
`States is liable for its use or manufacture of a patented invention without license or
`
`lawful right, which falls within the definition of patent infringement under
`
`35 U.S.C. § 271, the United States is liable under 28 U.S.C. § 1498(a) for
`16
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`infringement of a patent when those circumstances are met.
`
`Accordingly, because the United States has been sued for infringement of
`
`the ’548 Patent under 28 U.S.C. § 1498(a), the United States has standing, under
`
`Section 18 of the AIA, to seek a covered business method patent review of the
`
`’548 Patent. The fact that 28 U.S.C. § 1498(a) further specifies that a patent
`
`owner’s remedy for patent infringement by the United States “shall be by action
`
`against the United States in the United States Court of Federal Claims” does not
`
`disqualify the United States from seeking a covered business method patent review
`
`of the ’548 Patent. The plain language of § 18(a) of the AIA does not limit
`
`covered business method patent reviews to persons sued for infringement under
`
`35 U.S.C. §§ 271 and 281, as Return Mail contends. See Prelim. Resp. 6-10.
`
`Return Mail has not pointed to any of the legislative history, or particular portion,
`
`of the AIA that would suggest that covered business method patent reviews should
`
`be limited to persons sued for infringement under 35 U.S.C. §§ 271 and 281 or that
`
`the United States should be barred from petitioning for a covered business method
`
`patent review under Section 18(a) of the AIA.
`
`Moreover, 37 C.F.R. § 42.302 provides, in part, that in the context of a
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`covered business method patent review, “[c]harged with infringement means a real
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`and substantial controversy regarding infringement of a covered business method
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`patent exists such that the petitioner would have standing to bring a declaratory
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`judgment action in Federal court.” The latter makes clear that it is the ability to
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`seek relief in Federal court that is important to the standing inquiry, and not the
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`specific court or action.
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`17
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`CBM2014-00116
`Patent 6,826,548 B2
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`Return Mail also analogizes that inter partes reviews under 35 U.S.C.
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`§ 315(b) must be brought under 35 U.S.C. §§ 271 and 281, such that “sued for
`
`infringement of the patent,” per 37 C.F.R. § 42.302, should have the same meaning
`
`as “served with a complaint alleging infringement of the patent,” per § 315(b).
`
`Prelim. Resp. 7 (citing Amkor Technology, Inc. v. Tessera, Inc., Case IPR2013-
`
`00242, slip op. at 18 (PTAB Jan. 31, 2014) (Paper 98)). We are not persuaded that
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`“has been sued for infringement of the patent” for purposes of determining
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`eligibility for a covered business method patent review should be interpreted the
`
`same way as “served with a complaint alleging infringement of the patent” is
`
`interpreted with respect to whether a petition for inter partes review is timely. Nor
`
`are we persuaded that “charged with infringement under that patent,” in 37 C.F.R.
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`§ 42.302(a) relating to covered business method patent reviews, has the same
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`legislative history as § 315(b), alluded to in decision cited by Return Mail and
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`relating to inter partes reviews. See Amkor Technology, Inc. v. Tessera, Inc., Case
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`IPR2013-00242, slip op. at 12–15 (PTAB Jan. 31, 2014) (Paper 98).
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`As such, we are not persuaded that the United States lacks standing under
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`Section 18(a) of the AIA or 37 C.F.R. § 42.302 to petition for covered business
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`method patent review.
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`
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`E. 35 U.S.C. § 101 Ground of Unpatentability
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`USPS contends that claims 39–44 of the ’548 Patent are directed to non-
`
`statutory subject matter under 35 U.S.C. § 101. Pet. 17–27. Return Mail argues
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`that claims 39–44 recite patent-eligible subject matter. Prelim. Resp. 22–36. We
`
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`18
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`CBM2014-00116
`Patent 6,826,548 B2
`
`have also reviewed the arguments provided in the Supplemental Response (Paper
`
`9) and Sur-Reply (Paper 10). Although we have not relied on those arguments, we
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`disagree with Return Mail’s contention (Sur-Reply 3) that supplemental briefing is
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`not permitted before institution of a covered business method patent review. The
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`rule relied on by Return Mail addresses filing supplemental information after
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`institution, and does not preclude supplemental briefing before institution. Sur-
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`Reply 3 (citing 37 C.F.R. § 42.223). In the particular circumstances of this case
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`and in view of the challenged claims, supplemental briefing on the recent Supreme
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`Court case addressing 35 U.S.C. § 101, which was decided after the Petition was
`
`filed, was warranted. See Paper 7.
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`Upon reviewing Petitioner’s analysis and supporting evidence, we are
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`persuaded that USPS has established that claims 39-44 more likely than not are
`
`directed to non-statutory subject matter under § 101.
`
`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, natural phenomena, and abstract ideas. Alice Corp., 134 S. Ct. at
`
`2354; 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
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`2355. We must consider “the elements of each claim both individually and ‘as an
`
`
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`19
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`CBM2014-00116
`Patent 6,826,548 B2
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`ordered combination’ to determine whether the additional elements ‘transform the
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`nature of the claim’ into a patent-eligible application.” Id. (citing Mayo, 132 S. Ct.
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`at 1298). The claim must contain elements or a combination of elements that are
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`“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).
`
`
`
`1. Claims 39 and 40
`
`Claims 39 and 40 are independent claims, and we are persuaded that, on the
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`current record, USPS has shown sufficiently that those claims are more likely than
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`not directed to non-statutory subject matter. USPS contends that claim 39 recites
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`the abstract idea of relaying mailing address data, with only insignificant extra-
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`solution activity and fails the machine-or-transformation test. Pet. 19–22. USPS
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`cites Dealertrack, Inc. v. Huber, 674 F.3d 1315 (Fed. Cir. 2012) and CyberSource
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`Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011), and argues that
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`claim 39 uses conventional technology to relay mailing address data. Id. at 19–20.
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`USPS also argues that “electronically transmitting” applies conventional
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`telecommunications systems, and is not integral to the claimed subject matter, and
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`further argues that claim 39 fails to transform any article. Id. at 20–22. Return
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`Mail responds that claim 39 deals with “actual hard copy mail,” and not just
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`abstract ideas. Prelim. Resp. 26. Return Mail also argues that claim 39 does not
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`rely merely on a computer to be patent-eligible. Id. at 27. We do not agree with
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`Return Mail.
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`Claim 39, as a whole, is directed to the processing of returned mail items,
`
`
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`20
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`CBM2014-00116
`Patent 6,826,548 B2
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`involving decoding information, obtaining an updated address, and electronically
`
`transmitting that updated address to a transferee. We are persuaded that the steps
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`are directed to the abstract idea of relaying mailing address data, with the inclusion
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`of an electrical transmission step.
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`Regarding whether claim 39 includes limitations that amount to significantly
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`more than the abstract idea of relaying mailing address data, per our claim
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`construction, we find that the “decoding” step is “deciphering information into
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`useable form,” but that does not necessarily bring it out of the realm of processes
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`performed in the past by human beings. In fact, all of the claimed steps could be
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`performed in the human mind, with the exception of the transmitting step.
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`Additionally, on the current record, we are persuaded that what the data might be
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`deemed to represent to the human mind — e.g., “information indicating whether
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`the sender wants a corrected address to be provided for the intended recipient” —
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`does not substantially affect the underlying structure or function of the claim or
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`any machine on which it is carried out. Consistent with USPS’s position, the ’548
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`Patent disclosure does not describe any particular hardware to perform the steps
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`recited in claim 39, but refers merely in broad terms to generic computer hardware
`
`and software.
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`
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`In addition, even if we agree with Return Mail that claim 39 uses data
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`provided on “actual hard copy mail,” (Prelim. Resp. 26), this would not, in itself,
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`amount to being significantly more than the abstract idea of relaying mailing
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`address data. Most abstract ideas have some tether to real world objects, but that
`
`tether does not bring with it subject matter eligibility.
`
`
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`21
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`CBM2014-00116
`Patent 6,826,548 B2
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`Additionally, like the terms “computer-aided” in Dealertrack, and
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`“transaction database” in Accenture Global Servs., GmbH v. Guidewire
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`Software,Inc., 728 F.3d 1336 (Fed. Cir. 2013), the last limitation in claim 39,
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`namely “electronically transmitting an updated address of the intended recipient to
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`a transferee, wherein the transferee is a return mail service provider,” does not
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`amount to significantly more than the abstract idea of relaying mailing address
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`data. The transmission technology is employed only for the purposes of creating
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`more efficient communication, and would be a basic function of any electrical
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`transmission system.
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`As such, we are persuaded that USPS has shown that claim 39 is more likely
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`than not directed to non-statutory subject matter.
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`With respect to claim 40, USPS argues that the claim merely embodies the
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`steps of claim 39, and cites Dealertrack for the proposition that apparatus claims
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`directed to a “computer readable medium” that simply transcribed, applied, or
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`embodied an abstract method claim would not render the claim patentable.
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`Pet. 22–23. USPS further argues that claim 40 differs from claim 39 in substance
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`only that it includes a step of “causing a computer to store decoded information,”
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`and the claims should be considered equivalent for purposes of patent eligibility.
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`Id. Return Mail relies on the analysis for claim 39 and argues that USPS has
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`failed to address the steps of claim 40 as a whole. Prelim. Resp. 29–30.
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`
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`We are persuaded, based on the current record, that the analysis of claim 40
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`should be similar to that of claim 39. Claim 40 also recites
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