Paper No. _____
`
`
`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
`____________
`
`PATENT OWNER RETURN MAIL, INC.’S
`RESPONSE TO PETITION
`
`
`
`
`
`
`
`
` 
`
`

`

`TABLE OF CONTENTS
`
`
`
`
`
`PRELIMINARY STATEMENT
`
`BACKGROUND
`
`A.
`
`The ‘548 Patent
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`EXHIBIT LIST
`
`I.
`
`II.
`
`
`
`III. PETITIONER LACKS STANDING FOR CBM REVIEW
`
`
`B.
`
`Prosecution History
`
`
`
`
`
`
`
`
`
`
`
`A.
`
`Eminent domain litigation brought under
`28 U.S.C. § 1498 is not a proper ground for
`standing for CBM review
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`iv
`
`viii
`
`1
`
`2
`
`2
`
`3
`
`4
`
`4
`
`10
`
`B.
`
`The ‘548 patent is not a CBM patent under the AIA
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`
`A.
`
`B.
`
`Claims 39-44 are patentable
`
`Claim Construction
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`“decode,” “decoding,” “decoded information,”
`and “decoded data”
`
`
`
`
`
`“encode,” “encoding,” “encoded information,”
`and “encoded data”
`
`
`
`
`
`“returned mail items” and “mail items returned”
`
`“return mail service provider”
`
`
`
`
`
`“detector,” “processor,” and “network”
`
`“posting”
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`16
`
`16
`
`16
`
`17
`
`19
`
`20
`
`22
`
`24
`
`26
`
`i
`
`
`IV.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`A.
`
`B.
`
`A.
`
`B.
`
`
`V.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`VI.
`
`
`
`
`
`
`
`
`
`CLAIMS 39-44 OF THE ‘548 PATENT RECITE
`PATENT-ELIGIBLE SUBJECT MATTER
`
`
`
`
`
`Legal standards relating to subject matter patentability
`
`
`
`
`
`27
`
`27
`
`The ‘548 patent claims are patent-eligible under 35 U.S.C. § 101 28
`
`The ‘548 patent claims do not address
`only an abstract concept
`
`
`
`
`
`
`
`
`
`30
`
`1.
`
`2.
`
`The ‘548 patent method claims 39 and 42, and
`also the product and system claims 40 and 41, and
`dependent claims 43 and 44, have an inventive concept
`
`a.
`
`b.
`
`The ‘548 patent claims are a
`technological improvement
`
`
`
`
`
`The ‘548 patent claims meet the “machine or
`transformation test”
`
`
`
`
`
`
`
`
`i.
`
`ii.
`
`The ‘548 patent claims meet the machine test
`
`The ‘548 patent claims meet the transformation test 45
`
`c.
`
`The ‘548 patent claims cannot be performed
`in the human mind
`
`
`
`
`
`
`d.
`
`The ‘548 patent claims do not preempt the field
`
`31
`
`34
`
`39
`
`39
`
`46
`
`48
`
`52
`
`52
`
`52
`
`1997 ACS DOES NOT ANTICIPATE CLAIMS 39-44
`
`Level of Ordinary Skill in the Art
`
`
`
`
`
`
`
`
`
`
`
`
`
`1997 ACS describes a process in which information from
`hard copy change of address forms is input into a look-up
`database by clerks, and later there is an attempt by clerks to
`compare name and address information on hard copy
`mail items to information in the look-up database
`
`
`
`
`ii
`
`

`

`1.
`
`2.
`
`3.
`
`The ACS participant code arbitrarily assigned by
`the USPS is not encoded data or decoded data
`
`The plain-English endorsements disclosed
`in 1997 ACS are not encoded data or decoded data
`
`
`
`
`
`1997 ACS does not describe or disclose any means
`for decoding information indicating whether a sender
`wants a corrected address
`
`
`
`
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
`
`Claim 39 is not anticipated by 1997 ACS
`
`Claim 40 is not anticipated by 1997 ACS
`
`Claim 41 is not anticipated by 1997 ACS
`
`Claim 42 is not anticipated by 1997 ACS
`
`Claim 43 is not anticipated by 1997 ACS
`
`H.
`
`Claim 44 is not anticipated by 1997 ACS
`
`
`VII. CONCLUSION
`
`
`
`
`
`55
`
`58
`
`59
`
`62
`
`65
`
`69
`
`72
`
`76
`
`77
`
`78
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`iii
`
`

`

`TABLE OF AUTHORITIES
`
`
`CASES
`
`Advanced Software Design Corp. v. Federal Reserve Bank of St. Louis,
`583 F.3d 1371 (Fed. Cir. 2009)
`
`
`
`
`
`
`
`
`
`34
`
`
`Advanced Software Design Corp. v. Fiserv, Inc.,
`No. 4:07CV185 CDP, 2012 WL 1684495
`(E.D. Mo. May 15, 2012)
`
`
`
`
`Alice Corp. Pty. Ltd. v. CLS Bank Int’l,
`134 S.Ct. 2347 (2014)
`
`
`
`
`
`
`
`Bilski v. Kappos,
`561 U.S. 593 (2010)
`
`
`
`
`
`
`
`
`California Inst. of Tech. v. Hughes Comm. Inc.,
`No. 2:13-cv-07245-MRP-JEM,
`2014 WL 5661290 (C.D. Cal. Nov. 3 2014)
`
`
`
`
`
`
`
` 42, 43, 44, 45, 51
`
`
`
`
`
`
`
`
`
`passim
`
` 27, 28, 30, 31
`
`
`
` 31, 32, 33, 36, 38, 40, 48
`
`
`Card Verification Solutions, LLC v. Citigroup, Inc.,
`No. 13 C 6339, 2014 WL 4922524 (N.D. Ill. Sept. 29, 2014)
`
`
`CLS Bank Int’l v. Alice Corp,
`717 F.3d 1269 (Fed. Cir. 2013) (en banc), aff’d, 134 S.Ct. 2347 (2014)
`
` 38, 44, 46
`
`44
`
`46
`
`33-34
`
`9
`
`
`
`
`
`
`
`
`Cybersource Corp. v. Retail Decisions, Inc.,
`654 F.3d 1366 (Fed. Cir. 2011)
`
`
`DDR Holdings, LLC v. Hotels.com, L.P.,
`No. 2013-1505, 2014 WL 6845152 (Fed. Cir. Dec.5, 2014)
`
`
`
`
`
`
`
`
`
`
`
`
`Decca Ltd. v. United States,
`225 Ct.Cl. 326, 640 F.2d 1156 (Ct.Cl. 1980)
`
`
`
`
`
`
`
`
`Diamond v. Diehr,
`450 U.S. 175 (1981)
`
`
`
`
`
`
`
`
`
`
`
` 29, 31, 32, 38
`
`
`France Telecom S.A. v. Marvell Semiconductor Inc.,
`No. 12-cv-04967-WHO, 2014 WL 1478850 (N.D. Cal. April 14, 2014) 46, 50
`
`
`
`iv
`
`

`

`
`Gottschalk v. Benson,
`409 U.S. 63 (1972)
`
`
`
`
`In re Translogic Tech., Inc.,
`504 F.3d 1249 (Fed. Cir. 2007)
`
`
`IRIS Corp. v. Japan Airlines Corp.,
`769 F.3d 1359 (Fed. Cir. 2014)
`
`
`Mayo Collab. Servs. v. Prometheus Labs., Inc.,
`132 S.Ct. 1289 (2012)
`
`
`
`
`Motorola, Inc. v. United States,
`729 F.2d 765 (Fed. Cir. 1984)
`
`
`Netcraft Corp. v. eBay, Inc.,
`549 F.3d 1394 (Fed. Cir. 2008)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`28, 31
`
`17
`
`34
`
` 28, 30, 31
`
`
`
`
`
`9
`
`21
`
` 65, 69, 72, 76
`
`
`Net MoneyIN, Inc. v. VeriSign, Inc.,
`545 F.3d 1359 (Fed. Cir. 2008)
`
`
`Orion IP, LLC v. Hyundai Motor Am.,
`605 F.3d 967 (Fed. Cir. 2010)
`
`
`Parker v. Flook,
`437 U.S. 584 (1978)
`
`
`
`
`Rambus Inc. v. Infineon Techs., AG,
`318 F.3d 1081 (Fed. Cir. 2003)
`
`
`
`
`
`
`
`
`
`
`Regents of Univ. of Minn. V. AGA Med. Corp.,
`717 F.3d 929 (Fed. Cir. 2013)
`
`
`
`Research Corp. v. Tech. Inc. v. Microsoft Corp.,
`627 F.3d 859 (Fed. Cir. 2010)
`
`
`
`SiRF Tech, Inc. v. Int’l Trade Comm’n,
`601 F.3d 1319 (Fed. Cir. 2010)
`
`
`
`
`
`
`
`
`v
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`62
`
`31
`
`21
`
`50
`
` 38, 46, 51
`
`
`
`39
`
`

`

`TQP Develop., LLC v. Intuit Inc.,
`No. 2:12-CV-180-WCB, 2014 WL 651935
`(E.D. Tex. Feb. 19, 2014)
`
`
`
`
`
`
`
`
`
`
`
` 38, 44, 46, 47
`
`
`
` 2, 7, 8
`
`
`
`
`
`
`Triton Group, Ltd. v. U.S.,
`10 Cl.Ct. 128 (Cl.Ct. 1986)
`
`
`Zoltek Corp. v. U.S.,
`672 F.3d 1309 (Fed. Cir. 2012)
`
`
`PTAB PROCEEDINGS
`
`Alcon Research, Ltd. v. Dr. Joseph Neev,
`IPR2014-00217, Paper 21, 2014 WL 1917933 (PTAB May 9, 2014)
`
`
`
`
`
`
`
`
`Amkor Technology, Inc. v. Tessera, Inc.,
`IPR2013-00242, Paper 98 (PTAB Jan. 31, 2014)
`
`
`BAE Sys. v. Cheetah Omni, LLC,
`IPR2013-00175, Paper 15 (PTAB July 3, 2013)
`
`
`Experian Marketing Solutions, Inc. v. RPost Communications Ltd,
`CBM2014-00010, Paper 20 (PTAB Apr. 22, 2014)
`
`
`Google Inc. v. SimpleAir, Inc.,
`CBM2014-00054, Paper 19 (PTAB May 13, 2014)
`
`
`Int’l Flavors & Fragrances Inc. v. U.S. Dept. of Agriculture,
`IPR2013-00124, Paper 6 (PTAB June 27, 2013)
`
`
`STATUTES
`
`28 U.S.C. § 1498
`
`35 U.S.C. § 101
`
`35 U.S.C. § 271
`
`35 U.S.C. § 281
`
`35 U.S.C. § 315(b)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`vi
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`8
`
`6, 8
`
`6
`
`8
`
` 10, 11, 12, 14, 16
`
`
`
`
`
`
`
`
`
`17
`
`8
`
` 2, 4, 7, 8, 9, 10
`
`
`
`
`
`passim
`
` 1, 4, 5, 6, 7, 8, 9, 10
`
` 1, 2, 4, 5, 6, 7, 8, 9, 10
`
`
`
`
`
`
`
`6, 7
`
`

`

`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` 1, 4, 5
`
`
`
`
`
`
`
`16
`
`10, 12
`
`11
`
` 4, 5, 6, 7, 8, 10
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`4, 10
`
`10
`
`10
`
`5
`
`
`REGULATIONS
`
`37 C.F.R. § 42.200(b)
`
`37 C.F.R. § 42.301(a)
`
`37 C.F.R. § 42.301(b)
`
`37 C.F.R. § 42.302
`
`37 C.F.R. § 42.304(a)
`
`77 Fed. Reg. 48,734 (Aug. 14, 2012)
`
`77 Fed. Reg. 48,736 (Aug. 14, 2012)
`
`LEGISLATIVE HISTORY
`
`157 Cong. Rec. S1360, 1379-80
`(daily ed. Mar. 8, 2011) (statement of Sen. Kyl)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Section 18 of the Leahy-Smith America Invents Act,
`Pub. L. No. 112-29, 125 Stat. 284, 329-31 (2011)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`vii
`
`

`

`EXHIBIT LIST
`
`
`Description
`Number
`Exhibit 2001 Park U.S. Patent Publication 2001/0010334
`Exhibit 2002 Return Mail, Inc. v. United States, No. 11-00130 (Fed. Cl. Feb. 28, 2011)
`[Doc. No. 1, Complaint]
`Exhibit 2003 Return Mail, Inc. v. United States, No. 11-00130 (Fed. Cl. Aug. 13, 2012)
`[Doc. No. 39, Joint Claim Construction Statement]
`Exhibit 2004 Return Mail, Inc. v. United States, No. 11-00130 (Fed. Cl. Aug. 13, 2012)
`[Doc. No. 39-1, Appendix A—Agreed Constructions for Patent
`Claim Terms]
`Exhibit 2005 Return Mail, Inc. v. United States, No. 11-00130 (Fed. Cl. Aug. 13, 2012)
`[Doc. No. 39-2, Appendix B—Patent Claim Terms for Construction
`by the Court]
`Exhibit 2006 MCGRAW-HILL DICTIONARY OF COMPUTING & COMMUNICATIONS
`(6th ed. 2003)
`Exhibit 2007 Return Mail, Inc. v. United States, No. 11-00130 (Fed. Cl. Feb. 11, 2014)
`[Doc. No. 58, Scheduling Order]
`Exhibit 2008 Updated CV of Joe Lubenow provided to RMI at the deposition of
`Joe Lubenow on November 13, 2014.
`Exhibit 2009 U.S. Patent No. 5,715,398 entitled “System for distributing items from
`an origin to a plurality of destinations.” Inventors Josef K. Lubenow
`and Charles T. Albright.
`Exhibit 2010 U.S. Patent No. 4,674,052 entitled “Collating and binding system and
`method with postage indication.” Inventors Did-Bun Wong and Josef
`K. Lubenow.
`Exhibit 2011 Random Houston Webster’s College Dictionary (2d ed. 1998)
`Exhibit 2012 Webster’s New World Computer Dictionary (9th ed. 2001)
`Exhibit 2013 21st Century Dictionary of Computer Terms (1994)
`Exhibit 2014 Microsoft Press Computer Dictionary (1991)
`Exhibit 2015 Declaration of Scott M. Nettles, dated December 15, 2014
`Exhibit 2016 One Code ACS Version 1.0 Scope Document, attached to U.S.
`Provisional Application for “Providing one code address correction.”
`Exhibit 2017 Planet/ACS Pilot
`Exhibit 2018 Planet/ACS Project Charter
`Exhibit 2019 Mailer Requirements for Participation
`Exhibit 2020 Planet – ACS Project Plan, Version 01, dated July 17, 2003
`Exhibit 2021 U.S. Patent No. 7,904,197 entitled “Methods and systems for
`providing one code address correction service.” Issued on March 8,
`2011.
`
`
`
`viii
`
`

`

`Description
`Number
`Exhibit 2022 U.S. Patent No. 8,195,575 entitled “Systems and methods for
`providing change of address services over a network.” Issued on June
`5, 2012
`Exhibit 2023 U.S. Patent No. 8,598,482 entitled “Intelligent barcode systems.”
`Issued December 3, 2013
`Exhibit 2024 U.S. Patent No. 8,829,379 entitled “Intelligent barcode systems.”
`Issued September 9, 2014
`Exhibit 2025 U.S. Patent No. 8,103,716 entitled “Methods and systems for
`forwarding an item to an alternative address.” Issued January 24, 2012
`Exhibit 2026 U.S. Patent No. 8,825,201 entitled “Processing of undeliverable as
`addressed mail.” Issued September 2, 2014
`Exhibit 2027 U.S. Patent No. 8,275,734 entitled “Systems and methods for returned
`mail.” Issued September 25, 2012
`Exhibit 2028 U.S. Patent No. 8,311,667 entitled “Processing of undeliverable as
`addressed mail.” Issued November 3, 2012
`Exhibit 2029 U.S. Patent No. 8,350,173 entitled “Determining disposition of
`undeliverable as addressed mail.” Issued January 8, 2013
`Exhibit 2030 Article entitled “PARS excellence: New Processing System
`Deployment Complete” (Aug. 23, 2005)
`Exhibit 2031 “Computerized Forwarding System Managers and Supervisors
`Guide,” Handbook PO-602 (dated June 2003)
`Exhibit 2032 Prosecution History for U.S. Patent No. 8,195,575 entitled “Systems
`and methods for providing change of address services over a
`network.”
`Exhibit 2033 157 Cong. Rec. S1360 (daily ed. Mar. 8, 2011)
`Exhibit 2034 Curriculum Vitae of Scott M. Nettles
`Exhibit 2035 U.S. Patent No. 8,688,265 entitled “Processing of undeliverable as
`addressed mail.” Issued April 1, 2014
`Exhibit 2036 U.S. Patent No. 8,637,783 entitled “Determining disposition of
`undeliverable as addressed mail.” Issued January 28, 2014
`Exhibit 2037 U.S. Patent No. 8,528,817 entitled “Methods and systems for data
`interchange.” Issued September 10, 2013
`Exhibit 2038 U.S. Patent No. 8,521,623 entitled “Return payment card process.”
`Issued August 27, 2013
`Exhibit 2039 U.S. Patent No. 8,499,046 entitled “Method and system for updating
`business cards.” Issued July 30, 2013
`Exhibit 2040 U.S. Patent No. 8,412,372 entitled “Processing of undeliverable as
`addressed mail.” Issued April 2, 2013
`
`
`
`
`ix
`
`

`

`Description
`Number
`Exhibit 2041 U.S. Patent No. 8,386,528 entitled “System and method of data
`processing for a communications operation.” Issued February 26,
`2013
`Exhibit 2042 U.S. Patent No. 8,386,516 entitled “Registration and maintenance of
`address data for each service point in a territory.” Issued February 26,
`2013
`Exhibit 2043 U.S. Patent No. 8,282,001 entitled “Method for data interchange.”
`Issued October 9, 2012
`Exhibit 2044 U.S. Patent No. 8,249,998 entitled “System for resolving distressed
`shipments.” Issued August 21, 2012
`Exhibit 2045 U.S. Patent No. 8,165,909 entitled “System and method for
`automated management of an address database.” Issued April 24,
`2012
`Exhibit 2046 U.S. Patent No. 8,157,173 entitled “Method for tagged bar code data
`interchange.” Issued April 17, 2012
`Exhibit 2047 U.S. Patent No. 8,129,646 entitled “System and method for validating
`mailings received.” Issued March 6, 2012
`Exhibit 2048 U.S. Patent No. 8,063,332 entitled “Mail piece consolidation and
`accountability using advanced tracking methods.” Issued November
`22, 2011
`Exhibit 2049 U.S. Patent No. 7,974,882 entitled “Method and system for creating a
`comprehensive undeliverable-as-addressed database for the
`improvement of the accuracy of marketing mailing lists.” Issued July
`5, 2011
`Exhibit 2050 U.S. Patent No. 7,942,328 entitled “Method for data interchange.”
`Issued May 17, 2011
`Exhibit 2051 U.S. Patent No. 7,934,641 entitled “Method and apparatus for bar
`code data interchange.” Issued May 3, 2011
`Exhibit 2052 U.S. Patent No. 7,912,854 entitled “Registration and maintenance of
`address data for each service point in a territory.” Issued March 22,
`2011
`
`
`
`
`
`x
`
`

`

`I.
`
`
`PRELIMINARY STATEMENT
`
`Claims 39-44 of U.S. Patent No. 6,826,548 (“the ‘548 patent”) are patent-
`
`eligible under 35 U.S.C. § 101. Claims 39-44 are patent-eligible because they have
`
`meaningful steps that form an unconventional combination and improve the
`
`technology of return mail processing. Further, these claims cannot be performed
`
`entirely in the human mind (or by the human mind with the aid of pencil and paper).
`
`Claims 39-44 do not preempt the field of processing returned mail. Also, these claims
`
`are tied to specific machines in a specific sequence for specific purposes, and there is a
`
`transformation of encoded information, which is decoded transforming incorrect
`
`address information into correct address information.
`
`Claims 39-44 are not anticipated by 1997 ACS. 1997 ACS describes a process
`
`in which the information from hard copy change-of-address forms is input into a
`
`look-up database by clerks, and later there is an attempt by clerks to compare name
`
`and address information on hard copy mail items to information in the look-up
`
`database. Neither the participant code arbitrarily assigned by the USPS nor the
`
`standard, plain-English endorsements are encoded data. Further, a detailed review of
`
`the claim limitations shows many other limitations not describe or disclosed by 1997
`
`ACS.
`
`Further, Petitioner has no standing to seek CBM review. Neither Petitioner nor
`
`the United States were sued for patent infringement under 35 U.S.C. §§ 271 and 281.
`
`The language of AIA Section 18 and the legislative history of that section both
`
`
`
`1
`
`

`

`specifically refer to suits for patent infringement under § 281. Thus, the suit against
`
`the United States under the eminent domain statute 28 U.S.C. § 1498 does not convey
`
`standing. Also, neither Petitioner nor the United States have been charged with
`
`infringement since neither can initiate a suit for declaratory judgment under § 1498.
`
`Triton Group, Ltd. v. U.S., 10 Cl.Ct. 128, 133-34 (Cl.Ct. 1986).
`
`
`
`Thus, Petitioner lacks standing to petition for CBM review. Further, Petitioner
`
`has failed to meet its burden of proof. Claims 39-44 of the ‘548 patent are patent
`
`eligible under 35 U.S.C. § 101, and they are not anticipated by 1997 ACS.
`
`II. BACKGROUND
`
`
`A.
`
`The ‘548 Patent
`
`
`
`The ‘548 patent is entitled a “System and Method for Processing Returned
`
`Mail.” (Ex.1001). The Patent Owner, Return Mail, Inc., has been practicing the
`
`methods described and claimed in the ‘548 patent since 2001. 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). At least one of the key limitations 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
`
`
`
`2
`
`

`

`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).
`
`The ‘548 patent is a novel approach for processing returned mail using modern
`
`technology. Claims 39-44 are patent eligible under 35 U.S.C. § 101, and as shown
`
`below, 1997 ACS does not anticipate or render obvious Claims 39-44 of the ‘548
`
`patent. Petitioner’s smoke-and-mirrors approach of selecting certain words and
`
`phrases out of context cannot overcome the failure of its arguments.
`
`
`
`B.
`
`Prosecution History
`
`The ‘548 patent originally issued on November 30, 2004. (Ex.1001). On
`
`January 31, 2007, the USPS petitioned the U.S. Patent and Trademark Office (“PTO”)
`
`to institute a reexamination of the ‘548 patent. (Ex.1009 at 4-46). On April 17, 2007,
`
`the PTO granted the USPS’s request, instituting the reexamination. (Id. at 76-91). In
`
`the three-and-a-half years between April 17, 2007 and September 27, 2010, the PTO
`
`conducted a thorough reexamination of the ‘548 patent, including an assessment of
`
`arguments made by the USPS through its counsel. In fact, 1997 ACS was considered
`
`during the reexamination proceeding.
`
`In its reexamination request, USPS devoted 31 pages of argument to 1997
`
`ACS, referring to it at that time as “Publication 8.” (Ex.1009 at 4-18; 30-45). It was
`
`also considered in detail by the examiner during reexamination. (Id. at 81-87, 92).
`
`
`
`3
`
`

`

`After the reexamination certificate issued, Patent Owner sued the United States under
`
`the eminent domain statute 28 U.S.C. § 1498.
`
`III. PETITIONER LACKS STANDING FOR CBM REVIEW
`
`
`A. Eminent domain litigation brought under 28 U.S.C. § 1498 is not a
`proper ground for standing for CBM review.
`
`There is no standing for Petitioner to request CBM review because neither
`
`
`
`Petitioner nor its alleged real party-in-interest, the United States, have been sued for
`
`infringement of the ‘548 patent or charged with infringement under the ‘548 patent.
`
`Under “Grounds for standing” for CBM petitions, the petitioner must demonstrate that
`
`it “meets the eligibility requirements of § 42.302.” 37 C.F.R. § 42.304(a). Section
`
`42.302 requires that “the petitioner, the petitioner’s real party-in-interest, or a privy of
`
`the petitioner has been sued for infringement of the patent or has been charged
`
`with infringement under that patent.”1 37 C.F.R. § 42.302(a) (emphasis added).
`
`A suit for infringement of a patent is brought under 35 U.S.C. §§ 271 and 281.
`
`Section 271 explains what actions amount to infringement of a patent. 35 U.S.C.
`
`§ 271. Section 281 states that “[a] patentee shall have remedy by civil action for
`
`infringement of his patent.” 35 U.S.C. § 281. AIA Section 18 lays out the parameters
`
`
`
`1 “Charged with infringement means a real and substantial controversy regarding
`
`infringement of a covered business method patent exists such that the petitioner
`
`would have standing to bring a declaratory judgment action in Federal court.”
`
`37 C.F.R. § 42.302(a) (emphasis added).
`
`
`
`4
`
`

`

`for the Transitional Program for Covered Business Method Patents. Section 18 of the
`
`Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284, 329-31 (2011)
`
`(“AIA”). Under AIA Section 18, there are two indications that § 42.302’s requirement
`
`of “sued for infringement of the patent” is limited to suits brought under §§ 271 and
`
`281.
`
`Under subsection 18(b), the AIA states, “If a party seeks a stay of a civil action
`
`alleging infringement of a patent under section 281 of title 35, United States Code,
`
`relating to a transitional proceeding for that patent, the court shall decide whether to
`
`enter a stay based on…” (Id. at § 18(b)). Under subsection 18(c), the AIA states, “In
`
`an action for infringement under section 281 of title 35, United States Code, of a
`
`covered business method patent, an automated teller machine…” (Id. at § 18(c)).2
`
`Further, during Senate debate on the AIA, Senator Kyl remarked, “In order to ensure
`
`consistency in decisions whether to stay, regardless of the court in which a section
`
`281 action is pending, paragraph (2) of subsection (c) requires consistent application
`
`of ‘established precedent.’” (Ex.2033 at 20-21 [157 Cong. Rec. S1360, 1379-80 (daily
`
`ed. Mar. 8, 2011) (statement of Sen. Kyl)] (emphasis added). Thus, the legislative
`
`
`
`2 This addresses the Board’s concern, as expressed in its Decision, Paper 11, as to
`
`whether there are any particular portions 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. (Decision, Paper 11, at 17).
`
`
`
`5
`
`

`

`history of the AIA, and the AIA itself, indicate that it was Congress’ intent to limit
`
`CBM reviews to suits brought under § 281. This is consistent with other Board
`
`rulings.
`
`Although there have been no CBM decisions addressing the meaning of “sued
`
`for infringement of the patent” under § 42.302 to date,3 in Alcon Research, Ltd. v. Dr.
`
`Joseph Neev, the Board evaluated the meaning of “served with a complaint alleging
`
`infringement of the patent” as stated in 35 U.S.C. § 315(b). IPR2014-00217, Paper 21,
`
`2014 WL 1917933 at *4-5 (PTAB May 9, 2014). In that decision, the Board explained,
`
`In Amkor Technology, Inc. v. Tessera, Inc., IPR2013-00242, Paper 98 (Jan.
`31, 2014), the Board construed section 315(b)’s requirement that the
`petitioner or real party-in-interest be “served with a complaint alleging
`infringement of the patent…” to require service of a complaint in a
`civil action. Amkor, slip op. at 6. The Board stated that: “The plain
`meaning of the term ‘Action’ in the narrowing context of the phrase
`‘served with a complaint’ dictates an interpretation of section 315(b)
`that limits its applicability to when the patent owner brings a civil action
`for patent infringement.” Id. at 8-9. The Board then went on to
`determine that civil actions for the purpose of section 315(b) are
`
`civil actions brought under 35 U.S.C. §§ 271 and 281 and not
`arbitration proceedings. See id. at 18.
`Alcon Research, 2014 WL 1917933 at *5 (bold-style added). Therefore, the phrase “sued
`
`for infringement of the patent” in § 42.302 should have the same meaning as “served
`
`
`
`
`3 Of course, the Board did address this issue in its Decision, Paper 11.
`
`6
`
`

`

`with a complaint alleging infringement of the patent” in 35 U.S.C. § 315(b), i.e., an
`
`action brought under 35 U.S.C. §§ 271 and 281.
`
`
`
`Patent Owner 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.
`
`(Ex.2002). The United States was not sued for infringement of the ‘548 patent under
`
`35 U.S.C. §§ 271 and 281. (Id.).
`
`
`
`The second option for standing under Section 42.302 is when “the petitioner,
`
`the petitioner’s real party-in-interest, or a privy of the petitioner has been…charged
`
`with infringement under that patent.” 37 C.F.R. § 42.302(a). “Charged with
`
`infringement means a real and substantial controversy regarding infringement of a
`
`covered business method patent exists such that the petitioner would have
`
`standing to bring a declaratory judgment action in Federal court.” 37 C.F.R.
`
`§ 42.302(a) (emphasis added). In its decision, the Board stated that “it is the ability to
`
`seek relief in Federal court that is important to the standing inquiry…” (Decision, Paper
`
`11, at 17). However, the United States has not been “charged with infringement”
`
`because it does not have the ability to seek relief in Federal court.
`
`
`
`The United States cannot initiate a suit for declaratory judgment under § 1498
`
`against other persons. Triton Group, 10 Cl.Ct. at 133-34 (holding that the Claims Court
`
`generally does not have jurisdiction over claims by the United States against other
`
`persons). Thus, the § 42.302 requirement for standing is not met: “Charged with
`
`infringement means a real and substantial controversy regarding infringement of a
`
`
`
`7
`
`

`

`covered business method patent exists such that the petitioner would have
`
`standing to bring a declaratory judgment action in Federal court.” 37 C.F.R.
`
`§ 42.302(a) (emphasis added). Any dispute between Petitioner and Patent Owner
`
`would also fall under the eminent domain statute, § 1498, rather than §§ 271 and 281.
`
`Thus, Petitioner would not have standing to bring a declaratory judgment action
`
`under §§ 271 and 281, and it also lacks standing to initiate a suit against Patent Owner
`
`under § 1498.4 Triton Group, 10 Cl.Ct. at 133-34.
`
`
`
`Consistent with the Board’s understanding, as expressed in Alcon Research, that
`
`“patent infringement” is an action under Title 35, the Federal Circuit has held that the
`
`“plain language of § 1498(a) indicates that § 1498(a) operates independently from Title
`
`35.” Zoltek Corp. v. U.S., 672 F.3d 1309, 1321 (Fed. Cir. 2012). Further, the Federal
`
`
`
`4 Petitioner does not assert that the United States can petition for CBM review. It
`
`merely states that the United States is eligible to participate in Board review. (Pet.
`
`at 11). In fact, the two Board decisions it cites are IPR decisions. (Id.) (citing BAE Sys.
`
`v. Cheetah Omni, LLC, IPR2013-00175, Paper 15 (PTAB July 3, 2013) and Int’l Flavors
`
`& Fragrances Inc. v. U.S. Dept. of Agriculture IPR2013-00124, Paper 6 at 2 (PTAB June
`
`27, 2013)). Neither applies to this proceeding because they address different standing
`
`requirements, and the petitioners in those proceedings were private company
`
`defendants—not the United States. Cheetah Omni, Paper 15 at 2 and Int’l Flavors &
`
`Fragrances, Paper 6 at 2.
`
`
`
`8
`
`

`

`Circuit explained that “[a]lthough a section 1498 action may be similar to a Title 35
`
`action, it is nonetheless only parallel and not identical.” Id. (citing Motorola, Inc. v.
`
`United States, 729 F.2d 765, 768 (Fed. Cir. 1984)). In fact, Ҥ 1498(a) creates its own
`
`independent cause of action.”5 Id.
`
`
`
`Similarly, the Court of Federal Claims has held that “Section 1498 provides the
`
`sole remedy available to a patentee for an eminent domain taking of a license in his
`
`patent. The remedy is monetary and must be pursued by means of an action in
`
`this court.” Decca Ltd. v. United States, 225 Ct.Cl. 326, 640 F.2d 1156, 1166 (Ct.Cl.
`
`1980) (emphasis added). In Motorola, Inc. v. United States, the Federal Circuit held that
`
`as a compulsory, nonexclusive licensee, the United States is treated as a voluntary
`
`licensee, and not as a private, unlicensed infringer. 729 F.2d at 768 n.3.6
`
`
`
`5 The Board recognized that § 1498(a) operates independently from Title 35.
`
`(Decision, Paper 11, at 16). Thus, the eminent domain statute (§ 1498) is separate and
`
`distinct from the patent infringement statute (§§ 271 and 281).
`
`6 The Federal Circuit also held that “[a]lthough concepts, phrases and words
`
`commonly used in the patent field may connote or denote a panoply of rights and
`
`remedies under Title 35, the same concepts, phrases and words do not and
`
`cannot always connote or denote the same meaning under section 1498.
`
`Although a section 1498 action may be similar to a Title 35 action, it is nonetheless
`
`only parallel and not identical.” Id. at 768 (emphasis added).
`
`
`
`9
`
`

`

`
`
`Thus, Petitioner had no standing to petition for CBM review of the ‘548 patent.
`
`Neither it nor the United States have been sued for infringement of (or charged with
`
`infringement under) the ‘548 patent under 35 U.S.C. §§ 271 and 281 as required by
`
`§ 42.302. Instead, Patent Owner sued the United States under an eminent domain
`
`statute, 28 U.S.C. § 1498, for unlicensed use of the ‘548 patent. Therefore, because
`
`there is no standing for CBM review of the ‘548 patent, the Petition for CBM review
`
`should be dismissed.
`
`
`
`B.
`
`The ‘548 patent is not a CBM patent under the AIA.
`
`A CBM 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.” 37 C.F.R. § 42.301(a) (emphasis added).
`
`Petitioner has the burden to show that the ‘548 patent is a CBM patent. 37 C.F.R.
`
`§ 42.304(a). “For purposes of determining whether a patent is eligible for a covered
`
`business method patent review, the focus is on the claims.” Experian Marketing
`
`Solutions, Inc. v. RPost Communications Ltd, CBM2014-00010, Paper 20 at 5 (PTAB Apr.
`
`22, 2014) (citing 77 Fed. Reg. 48,734, 48,736 (Aug. 14, 2012)). Petitioner merely
`
`
`
`10
`
`

`

`asserts that the ‘548 patent is a CBM patent based on Claim 39.7 Yet, if Claim 39 is
`
`not a covered business method, then the ‘548 patent is not a CBM patent.
`
`
`
`“To determine whether a patent is for a technological invention, [the Board]
`
`consider[s] ‘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.’” Experian Marketing, Paper 20 at 7 (quoting 37 C.F.R.
`
`§ 42.301(b)). In Experian Marketing, the Board found that the petitioner failed to meet
`
`its burden of disproving a technological invention. Id. at 9. More specifically, the
`
`Board found that the petitioner analyzed the steps of the method claims separately,
`
`instead of examining each claim as a whole, as required. Id. Further, the petitioner
`
`failed to show that the claimed processes would only achieve the normal, expected, or
`
`predictable result of that combination. Id. The Board then held as follows:
`
`Lastly, merely because an invention’s claims recite a method, and such
`a method is applicable to a financial process, which (sic) does not
`obviate the need to determine whether the invention is directed to a
`
`
`
`7 Petitioner only asserts that Claim 39 recites a covered business method. It does not
`
`assert that Claims 40-44 recite covered business methods. Thus, there is no need to
`
`address whether Claims 40-44 are technological inventions. Patent Owner does so
`
`only for the sake of completeness. Further, Patent Owner respectfully recognizes that
`
`the Board has addressed this issue preliminarily, but it is reiterated give