Paper No.
`Filed: October 30, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`__________________
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`
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`THE UNITED STATES POSTAL SERVICE (USPS)
`AND THE UNITED STATES OF AMERICA,
`AS REPRESENTED BY THE POSTMASTER GENERAL,
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`Petitioner,
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`v.
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`RETURN MAIL, INC.,
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`Patent Owner.
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`__________________
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`
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`Case: CBM2014-00116
`Patent: 6,826,548
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`__________________
`
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`Petitioner’s Request for Rehearing
`Pursuant to 37 C.F.R. § 42.71(d)
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`Filed: October 30, 2014
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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.
`
`__________________
`
`
`
`Case: CBM2014-00116
`Patent: 6,826,548
`
`__________________
`
`
`Petitioner’s Request for Rehearing
`Pursuant to 37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`
`
`Case CBM2014-00116
`Patent 6,826,548
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`Table of Contents
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`Statement of Relief Requested .......................................................................... 1
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`Legal Standards ................................................................................................. 2
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`I.
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`II.
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`III. Reason for Rehearing ........................................................................................ 2
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`IV. Conclusion ........................................................................................................ 5
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`Case CBM2014-00116
`Patent 6,826,548
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`TABLE OF AUTHORITIES
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`Page(s)
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`FEDERAL CASES
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`Atl. Research Mktg. Sys. v. Troy,
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`659 F.3d 1345 (Fed. Cir. 2011) .......................................................................................... 2
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`PPG Indus. Inc. v. Celanese Polymer Specialties Co. Inc.,
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`
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`840 F.2d 1565 (Fed. Cir. 1988) .......................................................................................... 2
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`FEDERAL STATUTES
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`35 U.S.C. § 102 .................................................................................................................. 1, 2, 5
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`35 U.S.C. § 103 ....................................................................................................................... 2, 5
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`35 U.S.C. § 326 ....................................................................................................................... 1, 3
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`35 U.S.C. § 328 ........................................................................................................................... 4
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`FEDERAL REGULATIONS
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`37 C.F.R. § 42.1 .......................................................................................................................... 4
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`37 C.F.R. § 42.24 ....................................................................................................................... 3
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`37 C.F.R. § 42.71 .............................................................................................................. 1, 2, 3
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`Board Decisions
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`Illumina, Inc. v. The Trustees of Columbia University in the City of New York,
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`IPR2012-00006, Paper 43 ................................................................................................... 2
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`ii
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`I.
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`Statement of Relief Requested
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`Pursuant to 37 C.F.R. §§ 42.71(c)-(d), the United States Postal Service and the
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`United States of America (collectively, “Petitioner”) request partial rehearing of the
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`Patent Trial and Appeal Board’s Decision, entered October 16, 2014 (Paper 11, the
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`“Decision”). The Decision instituted review of claims 39-44 of U.S. Patent No.
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`6,826,548, adopting the proposed grounds of unpatentability of these claims under 35
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`U.S.C. § 101 and the proposed grounds of unpatentability of these claims under 35
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`U.S.C. § 102 as being anticipated by 1997 ACS. While Petitioner certainly agrees with
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`the Decision’s institution of these proposed grounds, and while Petitioner recognizes
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`that 35 U.S.C. § 326(b) contemplates “the efficient administration of the office” and
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`“the ability of the office to timely complete [instituted] proceedings,” Petitioner
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`requests rehearing of any reliance on 35 U.S.C. § 326(b) to deny institution of certain
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`other proposed grounds to explicitly preserve its rights to later argue the same
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`grounds before the Court of Appeals for the Federal Circuit and/or the Court of
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`Federal Claims, or in a future post-grant proceeding. Thus, in effect, Petitioner only
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`seeks rehearing to ensure that those remaining unpatentability grounds are either
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`instituted as part of this proceeding or are available later. The Decision’s deferral of
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`the remaining unpatentability grounds based on “administrative necessity” leaves
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`Petitioner with uncertainty. Petitioner seeks certainty.
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`1
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`II. Legal Standards
`“When rehearing a decision on petition, a panel will review the decision for an
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`Case CBM2014-00116
`Patent 6,826,548
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`abuse of discretion.” 37 C.F.R. § 42.71(c). “An abuse of discretion occurs when a
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`‘decision was based on an erroneous conclusion of law or clearly erroneous factual
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`findings, or . . . a clear error of judgment.’” Illumina, Inc. v. The Trustees of Columbia
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`University in the City of New York, IPR2012-00006, Paper 43 at 2 (May 10, 2013)
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`(quoting PPG Indus. Inc. v. Celanese Polymer Specialties Co. Inc., 840 F.2d 1565, 1567 (Fed.
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`Cir. 1988)). “A decision based on an erroneous view of the law . . . invariably
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`constitutes an abuse of discretion.” Atl. Research Mktg. Sys. v. Troy, 659 F.3d 1345,
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`1359 (Fed. Cir. 2011)(emphasis added). The party seeking rehearing bears the burden
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`of demonstrating grounds for the relief it seeks and must “specifically identify all
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`matters the party believes the Board misapprehended or overlooked.” 37
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`C.F.R. § 42.71(d).
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`III. Reason for Rehearing
`Petitioner respectfully seeks rehearing for institution of:
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`(1) the proposed grounds of unpatentability of claims 39-44 under 35 U.S.C.
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`§ 102 as being anticipated by Park;
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`(2) the proposed grounds of unpatentability of claims 39-41 under 35 U.S.C.
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`§ 102 as being anticipated by Uhl; and
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`Case CBM2014-00116
`Patent 6,826,548
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`(3) the proposed grounds of unpatentability of claims 39 and 40 under 35
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`U.S.C. § 103 as being obvious based on Uhl and 1997 ACS.
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`Petitioner respectfully seeks rehearing because the Board failed to substantively
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`address these grounds in its Decision. See Decision at 33.
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`The Decision acknowledges the standard for institution of a covered business
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`method review, but the Decision does not then provide any analysis regarding the
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`merits of why Petitioner has not met its burden in showing that it is more likely than
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`not that at least one of the challenged claims is additionally unpatentable in view of
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`Park, Uhl, and/or Uhl in combination with 1997 ACS. Id.
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`Instead, the Decision relies on “administrative necessity” to defer addressing
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`the challenged claims as additionally unpatentable in view of Park, Uhl, and/or Uhl in
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`combination with 1997 ACS, but the Decision cites no statutory authority providing
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`the Board with the authority or discretion to deny grounds on the basis of
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`“administrative necessity.” Congress has empowered the director of the PTO to set
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`forth regulations to ensure “the efficient administration of the Office” and “the ability
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`of the Office to timely complete [instituted] proceedings.” 35 U.S.C. § 326(b). To
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`that end, the PTO issued certain regulations, for example, 37 C.F.R. 42.24(a)(1)(iii)
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`regarding page limits for petitions. Here, Petitioner complied with the statutory and
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`regulatory requirements, particularly 37 C.F.R. 42.24(a)(1)(iii), which sets forth the
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`page-limit requirement for covered business method patent review. The rules provide
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`3
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`a mechanism for petitioners to request additional pages when a waiver of the page
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`Case CBM2014-00116
`Patent 6,826,548
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`limits is in the interests of justice, see 37 C.F.R. 42.24(a)(2), but here, Petitioner did not
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`request such additional pages. The Decision fails to explain how denying a few
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`grounds of unpatentability set forth within the defined page limits can be necessary
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`for efficiency when the rules contemplate additional pages being in the interests of
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`justice. Thus, the denial for “administrative necessity” seems inapplicable to the full
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`set of prior art references that are correctly set forth in the Petition, and for that
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`reason, we kindly ask the Board to include the identified challenged grounds.
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`Further, as support for the deferral of the remaining unpatentability grounds
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`based on “administrative necessity,” the Decision cites to the mandate in 37 C.F.R.
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`§ 42.1(b), which provides that “[t]his part shall be construed to secure the just, speedy,
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`and inexpensive resolution of every proceeding.” However, Petitioner kindly notes
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`that 35 U.S.C. § 328 requires that the PTAB issue a final written decision “with
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`respect to the patentability of any patent claim challenged by the petitioner.” 35 U.S.C.
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`§ 328(a) (emphasis added). As the set of challenged claims is defined by the Petitioner
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`in the Petition, the Board has not followed the statute, thus abusing its discretion by
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`exceeding its authority. Additionally, because it is unclear whether consideration has
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`been given to the possible estoppel effect that may result in unrecoverable defensive
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`rights to the Petitioner, the Board should reconsider the denial of the remaining
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`grounds and institute those grounds of unpatentability. For example, if the Board
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`does not intend for the deferral of certain grounds to result in estoppel as to those
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`Case CBM2014-00116
`Patent 6,826,548
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`grounds, then the Board should at least make that clear, so that the Petitioner can
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`preserve its rights to later argue the same grounds in this proceeding on appeal before
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`the Court of Appeals for the Federal Circuit and/or at the Court of Federal Claims, or
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`in a future post-grant proceeding.
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`IV. Conclusion
`Therefore, Petitioner alternatively asks the Board either to (1) grant rehearing
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`and reverse its Decision not to institute covered business method patent review of
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`claims 39-44 under 35 U.S.C. § 102(a) over Park; claims 39-41 under 35 U.S.C.
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`§ 102(a) over Uhl; and claims 39 and 40 under 35 U.S.C. § 103 over Uhl in
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`combination with 1997 ACS, or (2) clarify that the decision to defer consideration of
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`the other grounds based on “administrative necessity” does not affect the Petitioner’s
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`ability to argue the same grounds in this proceeding on appeal before the Court of
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`Appeals for the Federal Circuit and/or at the Court of Federal Claims, or in a future
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`post-grant proceeding.
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`Dated: October 30, 2014
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`
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`Respectfully submitted,
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`By: /Lionel M. Lavenue/
`Lionel Lavenue, Reg. No. 46,859
`Finnegan, Henderson, Farabow, Garrett &
`Dunner LLP
`Two Freedom Square
`11955 Freedom Drive
`Reston, VA, 20190-5675
`Phone:
`571.203.2750
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`Case CBM2014-00116
`Patent 6,826,548
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`571.203.2777
`Fax:
`E-mail: USPS-RMI-CBM@finnegan.com
`Attorney for Petitioner
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`6
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`Case CBM2014-00116
`Patent 6,826,548
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that the foregoing Petitioner’s Request for
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`Rehearing Pursuant to 37 C.F.R. § 42.71(d) was served on October 30, 2014, by
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`Express Mail to the following attorneys of record for Petitioner as well as by
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`electronic service at the e-mail address listed below.
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`Douglas H. Elliott
`doug@elliotiplaw.com
`Eric M. Adams
`eric@elliottiplaw.com
`Renea Mattox
`renea@elliottiplaw.com
`Sarah Kelly
`sarah@elliottiplaw.com
`THE ELLIOTT LAW FIRM, PLLC
`6750 West Loop South, Suite 995
`Bellaire, Texas 77401
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`
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`/Ashley F. Cheung/
`Ashley F. Cheung
`Case Manager
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`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
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`7
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