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
`____________
`
`Declaration of Scott M. Nettles, Ph.D. Under 37 C.F.R. § 1.68
`
`
`
`
`Page 1
`
`RMI EXHIBIT 2015
`CBM2014-00116
`
`

`

`TABLE OF CONTENTS
`
`I.  QUALIFICATIONS AND PROFESSIONAL EXPERIENCE ........................... 1 
`
`II.  THE PATENT INVOLVED IN THIS PROCEEDING ...................................... 3 
`
`III. MATERIALS REVIEWED ................................................................................. 4 
`
`IV. SCOPE OF ASSIGNMENT ................................................................................ 4 
`
`V.  SUMMARY OF MY OPINIONS ........................................................................ 5 
`
`VI. LEGAL PRINCIPLES USED IN ANALYSIS .................................................... 5 
`
`VII. 
`
`‘548 PATENT ................................................................................................ 9 
`
`VIII.  PERSON OF ORDINARY SKILL IN THE RELEVANT ART ................ 12 
`
`A.  Relevant Field ............................................................................................. 12 
`
`B.  Person of Ordinary Skill in the Art ............................................................. 12 
`
`IX. INTERPRETATION OF CLAIM TERMS ....................................................... 13 
`
`A.  The Board’s Interpretation .......................................................................... 13 
`
`B.  The Petitioner’s Interpretation .................................................................... 15 
`
`X.  CLAIMS 39-44 OF THE ‘548 PATENT RECITE PATENT-ELIGIBLE
`SUBJECT MATTER ............................................................................................... 16 
`
`A.  The ‘548 Patent claims do not address only an abstract concept. .............. 17 
`
`B.  The ‘548 patent method claims 39 and 42, as well as the dependent
`claims 43 and 44, and also the product and system claims 40 and 41,
`have an “inventive concept.” ...................................................................... 18 
`
`1.  The ‘548 claims are a technological improvement. .............................. 18 
`
`2.  The ‘548 claims meet the “machine or transformation test.” ............... 31 
`
`3.  The ‘548 patent claims do not preempt the field. ................................. 37 
`
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`ii
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`XI. 1997 ACS DOES NOT ANTICIPATE CLAIMS 39-44. .................................. 41 
`
`A.  The 1997 ACS Process ............................................................................... 42 
`
`B.  Non-Anticipation Arguments That Cut Across Claims 39-44 ................... 43 
`
`1.  There is no encoded data or decoding of encoded data ........................ 43 
`
`2.  1997 ACS does not disclose any means for decoding
`information indicating whether a sender wants a corrected address. .......... 46 
`
`C.  Claim 39 is not anticipated by 1997 ACS. ................................................. 47 
`
`D.  Claim 40 is not anticipated by 1997 ACS. ................................................. 49 
`
`E.  Claim 41 is not anticipated by 1997 ACS. ................................................. 52 
`
`F.  Claim 42 is not anticipated by 1997 ACS. ................................................. 56 
`
`G.  Claim 43 is not anticipated by 1997 ACS. ................................................. 61 
`
`H.  Claim 44 is not anticipated by 1997 ACS. ................................................. 62 
`
`I.  Conclusion .................................................................................................. 63 
`
`XII.  AVAILABILITY FOR CROSS-EXAMINATION .................................... 63 
`
`XIII.  RIGHT TO SUPPLEMENT ........................................................................ 64 
`
`XIV. 
`
`JURAT ......................................................................................................... 64 
`
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`I, Scott M. Nettles, pursuant to 28 U.S.C. § 1746, declare under penalty of
`
`perjury that the following statements are true and correct:
`
`I.
`
`QUALIFICATIONS AND PROFESSIONAL EXPERIENCE
`
`1.
`
`I have been retained in this matter by Return Mail, Inc. (RMI) to
`
`provide various opinions regarding U.S. Patent No. 6,826,548 B2 (the ’548 patent).
`
`I am being compensated at my usual rate of $550 per hour, plus expenses, which is
`
`my standard consulting fee, for my work in this matter. My compensation is not
`
`dependent on the outcome of this matter. Nor is my compensation dependent upon
`
`the outcome of any related litigation proceedings, the opinions I express, or my
`
`testimony. I have no financial interests in RMI.
`
`2. My qualifications are set forth in my curriculum vitae, a copy of
`
`which is included as Exhibit 2034. A list of the cases during at least the last five
`
`years in which I have signed a Protective Order, have testified as an expert either at
`
`a trial, hearing, or deposition, or have submitted statements and/or opinions is also
`
`included.
`
`3.
`
`I attended Michigan State University from 1977 to 1981 as a Merit
`
`Scholar and an Alumni Distinguished Scholar, and received a bachelor’s degree in
`
`Chemistry. I later attended Carnegie Mellon University from 1988 to 1995, during
`
`which time I received both a master’s degree (1992) and a Ph.D. (1996) in
`
`Computer Science. My dissertation was entitled “Safe and Efficient Persistent
`
`
`
`1
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`Heaps” and focused on high performance automatic storage management for
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`advanced database systems.
`
`4.
`
`Before earning my Ph.D., I worked for over four years in industry at
`
`Silicon Solutions, Inc. and Digital Equipment Corporation, developing computer
`
`aided design (CAD) software for the semiconductor and computer sectors. For
`
`example, I designed and implemented systems for VLSI mask generation and
`
`VLSI design rule checking. I also built the first graphical drawing editor for the X
`
`window system, Artemis, which included a sophisticated graphical user interface.
`
`5.
`
`I have worked as a professor at three universities since 1995; the
`
`University of Pennsylvania, the University of Arizona, and The University of
`
`Texas at Austin. I was the recipient of a National Science Foundation CAREER
`
`award for “CAREER: Advancing Experimental Computer Science in Storage
`
`Management and Education” while I was an Assistant Professor at the University
`
`of Pennsylvania. During this time, I also was part of the DARPA funded
`
`SwitchWare project, which was one of the pioneering groups in the area of Active
`
`Networking (“AN”). My group developed PLAN, the first domain-specific
`
`programming language for programmable packets, as well as PLANet, the first
`
`purely active inter-network.
`
`6.
`
`I joined the faculty of The University of Texas at Austin (“UT”), in
`
`the Department of Electrical and Computer Engineering in 1999. In 2005, I was
`
`
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`2
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`

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`appointed Associate Professor with tenure. At UT, my graduate teaching has
`
`focused on networking, including numerous advanced seminars on mobile and
`
`wireless networking. My undergraduate teaching has included networking,
`
`operating systems, and one of UT’s required programming class, which focuses on
`
`programming with abstractions, Java, and data structures.
`
`7.
`
`At UT, I continued to develop AN technology and in 2002, my Ph.D.
`
`student, Mike Hicks, won the ACM SIGPLAN dissertation award for our joint
`
`work on software updating. Along with my Ph.D. student, Seong-kyu Song, I
`
`focused my AN work on mobile and wireless networking. As a result, my research
`
`shifted away from AN to mobile and wireless networking in general, especially
`
`interactions between the network, the radios, and the physical world. Most of my
`
`current research involves the development of Hydra, which is a working prototype
`
`of an advanced software-implemented WiFi network funded primarily by NSF.
`
`8.
`
`In the Spring of 2013, I retired from UT and became an Adjunct
`
`Associate Professor. I now primarily work as a consultant on technical matters.
`
`II. THE PATENT INVOLVED IN THIS PROCEEDING
`
`9.
`
`I am informed that the Patent Trial and Appeal Board (Board) granted
`
`a petition by the United States Postal Service (USPS) and the United States of
`
`America, as represented by the Postmaster General, seeking covered business
`
`method review of U.S. Patent No. 6,826,548 B2 (’548 patent), filed on January 24,
`
`
`
`3
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`

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`2002, as U.S. Patent Application No. 10/057,608.
`
`10.
`
`I am informed that the ’548 patent patent lists Ralph Mitchell
`
`Hungerpiller and Ronald C. Cagle, both of Birmingham, AL (US) as the inventors
`
`and Return Mail, Inc. (RMI) of Birmingham, AL (US) as the original assignee.
`
`RMI retains ownership.
`
`III. MATERIALS REVIEWED
`
`11.
`
`In performing the analysis that is the subject of my testimony, I
`
`reviewed the ‘548 patent and its file history.
`
`12.
`I have also reviewed:
` The Petition for Post-Grant Review of the ‘548 patent (Petition)
`including exhibits,
` The Declaration of Joe Lubenow, Ph.D. (Lubenow Dec.),
` The Patent Owner RMI’s Preliminary Response (Response),
` The Decision – Institution of Covered Business Method Review
`(Institution Decision or ID),
` The Transcript of the November 13, 2014, Deposition of Joe Lubenow,
`Ph.D. and the exhibits referred to in the deposition transcript, (Lubenow
`Deposition),
` All exhibits referenced in the declaration.
`IV. SCOPE OF ASSIGNMENT
`
`13.
`
`I have been retained to opine on whether claims 39-44 of the ‘548
`
`patent satisfy the requirements for patent eligibility under 35 U.S.C. §101 and
`
`whether claims 39-44 are anticipated by 1997 ACS under 35 U.S.C. §102. The
`
`
`
`4
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`scope of my assignment was limited to claims 39-44 of the ‘548 patent and
`
`consideration of the documents enumerated in the Materials Considered section
`
`above and to addressing issues concerning §101 and §102, as set forth throughout
`
`this declaration.
`
`V.
`
`SUMMARY OF MY OPINIONS
`
`14. Based upon my investigation and analysis, it is my opinion that claims
`
`39-44 of the ‘548 patent satisfy the requirements for patent eligibility under 35
`
`U.S.C. §101. It is also my opinion that claims 39-44 of the ‘548 patent are not
`
`anticipated by 1997 ACS under 35 U.S.C. §102. The reasons and bases for my
`
`opinions are found throughout this declaration.
`
`VI. LEGAL PRINCIPLES USED IN ANALYSIS
`
`15.
`
`I am not a patent attorney nor have I independently researched the law
`
`on patent validity. Attorneys for the patent owner have explained certain legal
`
`principles to me that I have relied on in forming my opinions set forth in this
`
`declaration.
`
`16. The Patent Act defines the subject matter eligible for patent protection
`
`as follows: “Whoever invents or discovers any new and useful process, machine,
`
`manufacture or composition of matter, or any new and useful improvement
`
`thereof…” 35 U.S.C. § 101. The Supreme Court has referred to § 101 as a
`
`“threshold,” and has recognized that Congress took a “permissive approach” to
`
`
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`5
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`patentability. Bilski v. Kappos, 561 U.S. 593, 601-02 (2010).
`
`17. Section 101 has an important implicit exception—laws of nature,
`
`natural phenomena, and abstract ideas are not patentable. Alice Corp. Pty. Ltd. v.
`
`CLS Bank Int’l, 134 S.Ct. 2347, 2354 (2014). In Alice, the Supreme Court clarified
`
`that “the concern that drives this exclusionary principle is one of pre-emption,” i.e.
`
`where the patent “would pre-empt use of this approach in all fields, and would
`
`effectively grant a monopoly over an abstract idea.’” Id. (quoting Bilski, 561 U.S.
`
`at 611-12). The Alice Court recognized that “we tread carefully in construing this
`
`exclusionary principle lest it swallow all of patent law,” and noted that “[a]t some
`
`level, ‘all inventions…embody, use, reflect, rest upon, or apply laws of nature,
`
`natural phenomena, or abstract ideas.’” Id. (citing and quoting Mayo Collab. Servs.
`
`v. Promethus Labs., Inc., 132 S.Ct. 1289, 1293 (2012)). The Alice Court concluded
`
`by stating that patents applying abstract ideas “’to a new and useful end’” will
`
`“remain eligible for patent protection.” Id. at 2354 (quoting Gottschalk v. Benson,
`
`409 U.S. 63, 67 (1972)).
`
`18. The Alice Court further confirmed the Mayo two-part analysis: (1)
`
`whether the patent claims are directed to a patent-ineligible concept, and (2) if so,
`
`whether there is an “inventive concept,” which the Supreme Court defined as a “an
`
`element or combination of elements that is ‘sufficient to ensure that the patent in
`
`practice amounts to significantly more than a patent upon the [ineligible concept]
`
`
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`6
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`itself.’” Id. at 2355 (quoting Mayo, 132 S.Ct. at 1294).
`
`19. Because every patent involves an “abstract idea” at some level, the
`
`Supreme Court has recognized that a broad interpretation of the abstract ideas and
`
`other exceptions “could eviscerate patent law,” Mayo Collaborative Servs. v.
`
`Prometheus Labs, Inc., 132 S.Ct. 1289, 1293 (2012).
`
`20. Assuming that an abstract idea is found, the second step requires a
`
`determination of whether the patent claims contain an “inventive concept” that
`
`makes the claim patent-eligible, i.e., additional features ensuring that the claim “is
`
`more than a drafting effort designed to monopolize” the abstract idea. Alice, 134
`
`S.Ct. at 2357. The Supreme Court has not established a definitive test for what
`
`constitutes an inventive concept, but has analyzed lines of cases to determine by
`
`analogy whether there is an inventive concept. See e.g. id. at 2357-59; see also
`
`California Inst. of Tech. v. Hughes Comm. Inc., No. 2:13-cv-07245-MRP-JEM,
`
`2014 WL 5661290 at *4-6 (C.D. Cal. Nov. 3 2014) (analyzing case law from
`
`Gottschalk through Alice). The “ordered combination” of steps may be patent-
`
`eligible, even where only “conventional” technology is used. The driving principle
`
`behind the § 101 case law is whether the patent claims will preempt a particular
`
`field. Alice Corp., 134 S.Ct. at 2354; CIT, 2014 WL 5661290 at *12.
`
`21. The Federal Circuit has recognized that encoded information can
`
`create a technological advantage or benefit. IRIS Corp. v. Japan Airlines Corp.,
`
`
`
`7
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`769 F.3d 1359, 1362 (Fed. Cir. 2014) (discussing and approving Advanced
`
`Software Design Corp. v. Federal Reserve Bank of St. Louis, 583 F.3d 1371 (Fed.
`
`Cir. 2009)).
`
`22.
`
`In determining whether there is an “inventive concept,” courts
`
`continue to analyze whether the claims satisfy the machine or transformation test.
`
`The “machine” prong is met where a machine “play[s] a significant part in
`
`permitting the claimed method to be performed.” SiRF Tech, Inc. v. Int’l Trade
`
`Comm’n, 601 F.3d 1319, 1333 (Fed. Cir. 2010).
`
`23. The Federal Circuit has found that a method claim is not abstract
`
`where it cannot be performed entirely in the human mind, or by the human mind
`
`with the aid of pencil and paper. Cybersource Corp. v. Retail Decisions, Inc., 654
`
`F.3d 1366, 1372-73 (Fed. Cir. 2011); Research Corp. Techs, Inc. v. Microsoft
`
`Corp., 627 F.3d 859, 867 (Fed. Cir. 2010).
`
`24. A patent claim is anticipated if a single prior art reference expressly or
`
`inherently discloses every limitation of the claim. Orion IP, LLC v. Hyundai Motor
`
`Am., 605 F.3d 967, 975 (Fed. Cir. 2010). Further, the alleged prior art reference
`
`must show the claimed invention arranged or combined in the same way as recited
`
`in the claim in order to anticipate. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d
`
`1359, 1370-71 (Fed. Cir. 2008)
`
`
`
`8
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`VII. ‘548 PATENT
`
`25. The ‘548 patent is entitled a “System and Method for Processing
`
`Returned Mail.” Ex.1001. The claims challenged in this proceeding, Claims 39-44,
`
`describe the invention. Ex.1002. As explained in its Background section, a need
`
`existed for an improved method of processing returned mail that would overcome
`
`the historical problems with prior art manual handling. Ex.1001 at 1:55-57.
`
`Further, a need existed to do so “quickly, more accurately, and at a substantially
`
`less cost.” Id. at 1:57-58. A key limitation in Claims 39-44 is encoding, on the mail
`
`items, information indicating whether the sender wants a corrected address when
`
`there has been a failed attempt to deliver the mail item to the intended recipient.
`
`Ex.1002 at Cls.39-44. The ‘548 patent suggests using a barcode to encode this
`
`information. Ex.1001 at 2:66-3:3. As explained in the discussion of Figure 1 cited
`
`by the Board, “[t]he optical scanner 40 reads the information previously optically
`
`encoded onto each mail piece before it was sent.” Id. at 3:36-38.
`
`26. The claims at issue follow:
`
`CLAIM 39
`39. [39.0] A method for processing returned mail items sent by a sender to an
`intended recipient, the method comprising:
`[39.1] 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;
`[39.2] obtaining an updated address of the intended recipient subsequent to
`determining that the sender wants a corrected address to be provided for the
`
`
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`intended recipient; and
`[39.3] electronically transmitting an updated address of the intended recipient to a
`transferee, wherein the transferee is a return mail service provider.
`
`CLAIM 40
`40. [40.0] A computer program product residing on a computer readable medium
`comprising instructions for causing a computer to:
`[40.1] store decoded information indicating whether a sender wants a corrected
`address to be provided and a customer number, each associated with at least one of
`a plurality of mail items returned subsequent to mailing as being undeliverable;
`[40.2] determining from the decoded data that the customer wants a corrected
`address to be provided for at least one of the plurality of undeliverable mail items;
`
`[40.3] receive an updated address of an intended recipient for at least one of the
`plurality of undeliverable mail items, subsequent to and based upon the
`determining step; and
`[40.4] transmit the updated address to a transferee, wherein the transferee is a
`return mail service provider.
`
`CLAIM 41
`41. [41.0] A system for processing a plurality of undeliverable mail items
`comprising:
`[41.1] a first detector, wherein the first detector detects, subsequent to mailing the
`undeliverable mail items, encoded information on at least one of the plurality of
`undeliverable mail items indicating whether a sender wants a corrected address to
`be provided for at least one of the undeliverable mail items; and
`
`[41.2] a processor that uses a computer program comprising instructions that cause
`the system to: i) decode the information indicating whether the sender wants a
`corrected address to be provided; ii) encode and decode intended recipient
`identification information; and iii) enable an updated address of an intended
`recipient to be sent to a transferee, wherein the transferee is a return mail service
`provider.
`
`CLAIM 42
`
`
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`42. [42.0] A method for processing a plurality of undeliverable mail items,
`comprising:
`[42.1] 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;
`[42.2] identifying as undeliverable mail items, mail items of the plurality of the
`plurality mail items that are returned subsequent to mailing as undeliverable;
`[42.3] decoding the encoded data incorporated in at least one of the undeliverable
`mail items;
`[42.4] creating output data that includes a customer number of the sender and at
`least a portion of the decoded data;
`[42.5] determining if the sender wants a corrected address provided for intended
`recipients based on the decoded data;
`
`[42.6] 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
`[42.7] 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.
`
`CLAIM 43
`43. [43.0] The method of claim 42,
`[43.1] further comprising transmitting the name and address of the intended
`recipients to a mail service provider, subsequent to the determining step, in order to
`obtain an updated address for each intended recipient of an undeliverable mail
`item.
`
`CLAIM 44
`44. [44.0] The method of claim 42,
`[44.1] wherein the encoded data further indicates a name and address of the
`intended recipient.
`
`
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`VIII. PERSON OF ORDINARY SKILL IN THE RELEVANT ART
`
`A. Relevant Field
`27.
`In my opinion, the field relevant to the invention of the ‘548 patent is
`
`processing returned mail items.
`
`B.
`28.
`
`Person of Ordinary Skill in the Art
`
`In my opinion, a person of ordinary skill in the relevant field as of
`
`January 2001, would have had at least one year of experience designing,
`
`developing, and/or implementing large-scale software systems and a Bachelor’s
`
`degree in one of computer science, electrical and computer engineering, or
`
`equivalent industry experience designing, developing, and/or implementing large-
`
`scale software systems in the area of return mail processing. Strength in one of
`
`these areas can compensate for a weakness in another.
`
`29.
`
`I also understand that Dr. Lubenow used the time period January 2001
`
`or January 2002 based on the dates of the provisional patent application and non-
`
`provisional patent application, respectively. My opinion as to a person of ordinary
`
`skill in the art would apply to both January 2001 and January 2002.
`
`30. With over 30 years of experience in designing, developing, and
`
`implementing large-scale software systems, I am well acquainted with the level of
`
`ordinary skill in the art to which the claimed subject matter pertains and the
`
`capabilities necessary to understand the applicable scientific (i.e., computer
`
`
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`science) and engineering principles. In addition, both as part of my industry
`
`experience and especially my experience as a college professor, I have known and
`
`am personally familiar with the abilities of a very large number of people meeting
`
`this level of ordinary skill in the relevant field. I have experience with and am
`
`capable of rendering an informed opinion on what the level of ordinary skill in the
`
`relevant field was as of January 2001 (and as of January 2002), and on the patent
`
`eligibility of the subject matter of the challenged claims.
`
`31. For the reasons set forth above in this section, I disagree with Dr.
`
`Lubenow’s description of a person of ordinary skill in the art. Further, I note that
`
`Dr. Lubenow did not define the relevant field of the invention in his declaration.
`
`IX.
`
`INTERPRETATION OF CLAIM TERMS
`
`32.
`
`I understand that the meanings of certain terms in the claims are
`
`disputed. In this section I discuss the interpretation of various elements of the
`
`challenged claims.
`
`A. The Board’s Interpretation
`33.
` I understand that the Board interpreted the meaning of the disputed
`
`claim terms as follows:
`
`
`
`
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`Claim Term
`
`“decode,” “decoding,”
`“decoded information,”
`“decoded data”
`
`“encode,” “encoding,”
`“encoded information,”
`“encoded data”
`
`Meaning
`
`“decipher information into useable form,”
`“deciphered usable information,” “deciphered,
`usable data”
`
`“convert information into code,” “information
`converted into code,” “data converted into code”
`
`“returned mail items” “mail
`items returned”
`
`“items that are mailed and come back to a post
`office facility”
`
`“returned service provider”
`
`“an entity that performs electronic return mail
`processing”
`
`“detector”
`
`“processor”
`
`“network”
`
`“a device for detecting information”
`
`“a computing device”
`
`“electronic connections enabling access”
`
`“posting”
`“making available on a network”
`34. For purposes of my analysis in this declaration, I am using the
`
`Board’s interpretation of the claim terms. With regard to the other language of the
`
`claims, I understand that in this proceeding the Board has taken the position that
`
`the claims should be given the broadest reasonable interpretation in light of the
`
`specification. I further understand that, under the broadest reasonable construction
`
`standard, claim terms are given their ordinary and customary meaning, as would be
`
`understood by one of ordinary skill in the art at the time of the invention and in the
`
`context of the entire patent disclosure. For purposes of my opinion in this
`
`
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`declaration, that is the interpretation I have given them.
`
`B.
`The Petitioner’s Interpretation
`35. Obviously, the Petitioners could not use the Board’s decision, but they
`
`did have available the Federal Court’s decision and they could have used those
`
`constructions. In fact, the Board’s construction was based on the Court’s. Instead,
`
`the Petitioner used (essentially) the claim interpretation that they proposed to the
`
`Court and that was substantially rejected. The following is the meaning of the
`
`disputed terms used by the Petitioner:
`
`Claim Term
`
`Meaning
`
`“decode,” “decoding,”
`“decoded information,”
`“decoded data”
`
`“to convert into intelligible form”, “information
`converted into intelligible form,” “data converted into
`intelligible form”
`
`“encode,” “encoding,”
`“encoded information,”
`“encoded data”
`
`“convert information from one system of communication
`into another,” “information that is converted from one
`system of communication into another,” “data converted
`from one system of communication into another”
`
`“returned mail items”
`“mail items returned”
`
`“mail subject to being sent back”
`
`“returned service
`provider”
`
`“any mail-processing organization or individual that
`process return mail items”
`
`“detector”
`
`“processor”
`
`
`
`“one that detects”
`
`“one that processes”
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`“network”
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`“an interconnected system”
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`“posting”
`“making available”
`36. As you can see, these meanings vary from the Board’s substantially.
`
`
`X. CLAIMS 39-44 OF THE ‘548 PATENT RECITE PATENT-ELIGIBLE
`SUBJECT MATTER
`
`37.
`
`In my opinion, claims 39-44 of the ‘548 patent recite patent-eligible
`
`subject matter and meet the requirements of 35 U.S.C. § 101. I reached this
`
`conclusion by a consideration of the facts and applied the legal standards explained
`
`to me by RMI’s counsel. I reached this conclusion by considering the facts and
`
`issues directly and independently of the Petitioner’s claims. The reasons and bases
`
`for this opinion are found throughout this declaration, including the 1997 ACS
`
`section, but primarily in the section directly following.
`
`38.
`
`I have been provided by RMI’s counsel a summary of the legal
`
`standards that apply to the § 101 issue. In general, I understand that §101 eligibility
`
`in this matter concerns whether the ‘548 patent claims are directed to only an
`
`abstract idea. I understand that to make this determination, there are two parts to
`
`the analysis. First, determining whether the patent claims are directed to an
`
`“abstract idea,” and, if so, second, determining whether there is an “inventive
`
`concept.” I further understand that the Supreme Court recently defined an
`
`“inventive concept” as “an element or combination of elements that is ‘sufficient to
`
`
`
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`ensure that the patent in practice amounts to significantly more than a patent upon
`
`the [ineligible concept] itself.’” I have structured my discussion to follow this two-
`
`part analysis.
`
`A.
`39.
`
`The ‘548 Patent claims do not address only an abstract concept.
`
` I understand that the concept of what is an “abstract idea” has not
`
`been fully explained or defined by the Supreme Court or the lower courts. Of
`
`course, every patent involves at some level an abstract idea. The Petitioner asserts
`
`that the ‘548 patent claims are directed to the abstract idea of “relaying mailing
`
`address data,” while this PTAB Board has stated that it is the idea of “processing
`
`of returned mail.”
`
`40. Although both of these different, general views of the underlying
`
`abstract ideas are a very general description of aspects of the inventions of the ‘548
`
`patent, its claims are not directed simply to or only to either of these ideas.
`
`Instead, as discussed further below, the ‘548 patent claims are directed to a specific
`
`and concrete invention centered on the automated processing of return mail,
`
`including steps beginning with the decoding of information that has been encoded
`
`on the face of a mail item regarding whether a mailer wants updated address
`
`information, continuing to storing and processing that information, and ending
`
`with providing updated address information to mailers.
`
`
`
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`B.
`
`The ‘548 patent method claims 39 and 42, as well as the
`dependent claims 43 and 44, and also the product and system
`claims 40 and 41, have an “inventive concept.”
`
`41.
`
`I understand that if an abstract idea is identified, the next step is to
`
`determine whether there is an inventive concept in a claim that would make it
`
`patent eligible. In general, I understand that an inventive concept is an additional
`
`feature or features ensuring that the claim is more than a drafting effort designed to
`
`monopolize the abstract idea.
`
`42.
`
`It is my opinion that the ‘548 patent claims are patent eligible because
`
`they contain more than an abstract idea. I understand that the Supreme Court and
`
`lower courts have considered a number of factors in examining whether there is an
`
`inventive concept. In general, though, my opinions are that (a) the ‘548 patent
`
`claims solve a technological problem and improve return mail processing, (b) the
`
`‘548 patent claims meet the machine or transformation (MOTT) test, (c) the ‘548
`
`patent claims cannot be wholly performed in the human mind, and (d), perhaps
`
`most importantly, the ‘548 patent claims have not and will not preempt the field of
`
`return mail processing.
`
`1.
`
`The ‘548 claims are a technological improvement.
`
`43.
`
`I understand that, in determining whether there is an inventive
`
`concept, the Supreme Court recently has stated that an important consideration is
`
`whether there is an “ordered combination” of steps that “improve the functioning
`
`
`
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`of the computer itself” or “effect an improvement in any other technology or
`
`technical field.” It is my opinion that the ‘548 patent claims effect an improvement
`
`in the field of return mail processing.
`
`44.
`
`I have more than 35 years of experience in programming, computer
`
`science and engineering, electrical engineering, and related topics. I have a Ph.D.
`
`in Computer Science from CMU and was a faculty member in Computer Science
`
`or Computer and Electrical Engineering departments at 3 major universities,
`
`including The University of Texas at Austin where I received tenure and served for
`
`14 years. Essentially all of those 35 years have involved evaluating technology at
`
`various levels and by various metrics. For example, I often review technical
`
`papers and NSF grant proposals, to (help) decide which ones are accepted or
`
`funded. Most recently, I have extensive experience, spelled out in my CV,
`
`evaluating technology as a part of legal proceedings. I do not offer a formal test or
`
`framework, but the following analysis shows why in my opinion there is no
`
`question or doubt that the ‘548 patent claims are a technological improvement.
`
`45.
`
`In considering whether an invention is a technological improvement,
`
`the first (and obvious) question is “What is being improved and how.” At the time
`
`of the ‘548 patent invention, the system described in the 1997 ACS was the state of
`
`the art for the USPS, and so it is an ideal point of comparison. In addition, both the
`
`1997 ACS and the ‘548 patent claims are in the “field” of “processing of returned
`
`
`
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`mail,” and in fact the same subfield, essentially that of providing updated address
`
`information to mailers.
`
`46. There were a number of obvious technical shortcomings with the
`
`return mail processing that existed before the ‘548 patent, including an i