IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Attorney Docket No. 38784-0006CP2
`CBM Control No. CBM2016-00085
`
`Richard Marc Libman
`In re Patent of:
`U.S. Patent No.: 8,234,184
`Issue Date:
`July 31, 2012
`Appl. Serial No.: 11/182,386
`Filing Date:
`
`July 15, 2005
`Title:
`Automated Reply Generation Direct Marketing System
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`PETITION FOR COVERED BUSINESS METHOD PATENT REVIEW OF
`UNITED STATES PATENT NO. 8,234,184 PURSUANT TO 35 U.S.C. § 321
`AND § 18 OF THE LEAHY-SMITH AMERICA INVENTS ACT
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`Attorney Docket No 38784-0006CP2
`CBM Control No. CBM2016-00085
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`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1 
`I. 
`II.  MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1) .......................... 3 
`A.  Real Parties-In-Interest under 37 C.F.R. § 42.8(b)(1) ..................................... 3 
`B.  Related Matters under 37 C.F.R. § 42.8(b)(2) ................................................. 4 
`C.  Lead and Back-Up Counsel and Service Information ..................................... 5 
`III.  PAYMENT OF FEES – 37 C.F.R. § 42.15 ..................................................... 5 
`IV.  SUMMARY OF THE ’184 Patent .................................................................. 5 
`A.  Background ...................................................................................................... 5 
`B.  ’184 Patent Summary ...................................................................................... 6 
`C.  Summary of the Relevant Prosecution History ............................................. 11 
`D.  The Claims of the ’184 Patent ....................................................................... 16 
`V.  GROUNDS FOR STANDING (37 CFR § 42.302) ...................................... 18 
`A.  The ’184 Patent is a Covered Business Method Patent ................................. 23 
`B.  The ’184 Patent Does Not Fall under the Technological Invention Exception
` ....................................................................................................................... 24 
`C.  Claim Construction Under 37 C.F.R. § 42.304(B)(3) ................................... 26 
`VI.  CHALLENGE AND RELIEF REQUESTED............................................... 29 
`IT IS MORE LIKELY THAN NOT THAT AT LEAST ONE CLAIM OF
`VII. 
`THE ’184 PATENT IS UNPATENTABLE UNDER 35 U.S.C. § 101 FOR
`CLAIMING PATENT-INELIGIBLE SUBJECT MATTER ........................ 29 
`A.  Legal Standard ............................................................................................... 31 
`B.  Step 1: The Challenged Claims Are Directed to the Abstract Idea of
`Following Up on Customer Responses to a Financial Product or Service
`Marketing Campaign ..................................................................................... 35 
`The Challenged Claims recite traditionally mental and manual
`1. 
`methods for following up on customer responses, and therefore are
`directed to an abstract idea ............................................................. 48 
`The Challenged Claims recite building blocks of the modern
`economy and longstanding commercial practices, and therefore are
`directed to an abstract idea ............................................................. 52 
`C.  Step 2: The Challenged Claims Fail to Recite an “Inventive Concept”
`Sufficient to Transform the Claimed Abstract Idea into Patent-Eligible
`Subject Matter ................................................................................................ 59 
`
`2. 
`
`i
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`1. 
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`2. 
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`ii
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`Attorney Docket No 38784-0006CP2
`CBM Control No. CBM2016-00085
`The ’184 Patent’s touted innovation of providing a greater degree
`of automation of an admittedly mental and manual process fails to
`confer patent eligibility .................................................................. 63 
`The ’184 Patent’s conventional use of Internet communication fails
`to confer patent eligibility .............................................................. 78 
`D.  The Challenged Dependent Claims are also Patent-Ineligible under 35
`U.S.C. § 101 ................................................................................................... 79 
`E.  The Challenged Claims are Patent-Ineligible under 35 U.S.C. § 101 ........... 86 
`VIII.  CONCLUSION .............................................................................................. 87 
`
`

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`ACXM-1001–04
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`ACXM-1005
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`ACXM-1006
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`ACXM-1007
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`Attorney Docket No 38784-0006CP2
`CBM Control No. CBM2016-00085
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`EXHIBITS
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`(RESERVED)
`
`U.S. Patent No. 5,987,434 to Libman (“’434 Patent”)
`
`(RESERVED)
`
`Don Peppers and Martha Rogers, The One to One Future
`(1996)
`
`ACXM-1008–11
`
`(RESERVED)
`
`ACXM-1012
`
`Montgomery Ward, About Us from Montgomery Ward
`(2015), available at
`http://www.wards.com/custserv/custserv.jsp?pageName=
`About_Us
`
`ACXM-1013–1100
`
`(RESERVED)
`
`ACXM-1101
`
`ACXM-1102
`
`ACXM-1103
`
`ACXM-1104
`
`ACXM-1105
`
`ACXM-1106
`
`ACXM-1107
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`ACXM-1108
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`ACXM-1109
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`ACXM-1110
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`ACXM-1111
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`ACXM-1112
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`U.S. Patent No. 6,999,938 to Libman (“’938 Patent”)
`
`
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`Prosecution History of the ’938 Patent
`
`(RESERVED)
`
`(RESERVED)
`
`Lester Wunderman, Being Direct (1996)
`
`James Cornell, Jr., The People Get The Credit (1964)
`
`Philip Kotler, Marketing Management (8th ed. 1994)
`
`Ed Morrow, The Importance of Business Reply Envelopes
`
`U.S. Pat. No. 354,138 to Homan (“’138 Patent”)
`
`U.S. Pat. No. 2,328,380 to Feder (“’380 Patent”)
`
`U.S. Pat. No. 6,076,072 to Libman (“’072 Patent”)
`
`Stan Rapp and Thomas L. Collins, The New Maxi-
`Marketing (1996)
`
`iii
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`
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`ACXM-1113
`
`ACXM-1114
`
`ACXM-1115
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`ACXM-1116
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`ACXM-1117
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`ACXM-1118
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`ACXM-1119
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`ACXM-1120
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`ACXM-1121
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`ACXM-1122
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`ACXM-1123
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`ACXM-1124
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`ACXM-1125
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`CBM Control No. CBM2016-00085
`W. J. E. Crissy and Gary A. Marple, What about Reader
`Service Cards?, Journal of Marketing 27, No. 1 (Jan. 1963)
`
`(RESERVED)
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`Prosecution History of the ’434 Patent
`
`Letters and Quote, SelectQuote Insurance Services of San
`Francisco, California, Jun. 12–27, 1995 (non-patent
`literature from ’434 Prosecution History) (“SelectQuote”)
`
`Letter and Quote, Sommers-Moreland & Associates, Inc.,
`Atlanta, Georgia, Jul. 8, 1995 (non-patent literature
`from ’434 Prosecution History) (“Sommers-Moreland”)
`
`Claim Construction Memorandum and Order, Phoenix
`Licensing v. AAA Life Insurance et al, No. 2:13-cv-1081
`(E.D. Tex. April 20, 2015)
`
`Second Amended Complaint for Patent Infringement,
`Phoenix Licensing v. Gerber Life Ins. Co., No. 2:13-cv-
`1092 (E.D. Tex. Dec. 11, 2013)
`
`Walter Dill Scott, The Psychology of Advertising (1902)
`
`David L. Kurtz, Principles of Contemporary Marketing
`(14th ed. 2010)
`
`James Janega, Mail-order retail (1872), Chicago
`Tribune, Oct.16 2013, available at
`http://www.chicagotribune.com/bluesky/series/chicago-
`innovations/chi-mail-order-retail-1872-innovations-bsi-
`series-story.html
`
`David Shepard Associates Inc., The New Direct Marketing
`(2d ed. 1995)
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`Arthur M. Hughes, The Complete Database Marketer
`(1996)
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`Jeremy I. Reitman, Beyond 2000: The Future of Direct
`Marketing (1995)
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`iv
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`ACXM-1126
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`ACXM-1127
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`ACXM-1128
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`ACXM-1129
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`Attorney Docket No 38784-0006CP2
`CBM Control No. CBM2016-00085
`Prosecution History of U.S. Patent No. 8,234,184
`
`Amended Complaint for Patent Infringement, Phoenix
`Licensing v. AAA Life Ins. Co., No. 2:13-cv-1081 (E.D.
`Tex. Sept. 10, 2014)
`
`Declaration of Brian Williamson
`
`Redacted copy of Services and Data Agreement
`
`ACXM-1130–1300
`
`(RESERVED)
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`ACXM-1301
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`ACXM-1302
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`U.S. Patent No. 8,234,184 to Libman (“’184 Patent”)
`
`(RESERVED)
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`ACXM-1303-1950
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`(RESERVED)
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`ACXM-1951
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`Complaint for Patent Infringement, Phoenix Licensing,
`L.L.C. et al. v. TIAA-CREF Life Insurance Co., No. 2:15-
`cv-01379 (E.D. Tex. July 30, 2015)
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`ACXM-1952 Redacted copy of Agreement
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`ACXM-1953 Letter
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`ACXM-1954 Redacted copy of Statement of Work
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`ACXM-1955 Redacted copy of Statement of Work
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`ACXM-1956 Redacted copy of Statement of Work
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`ACXM-1957 Letter
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`ACXM-1958 Declaration of Mark Fougerousse
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`ACXM-1959 Brochure
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`ACXM-1960 Letter
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`ACXM-1961 Declaration of Sarah Timme
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`ACXM-1962-1967
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`(RESERVED)
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`v
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`ACXM-1968
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`Declaration of Professor Tom Collinger re the ’184 Patent
`(“Decl.”)
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`vi
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`I.
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`INTRODUCTION
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`Pursuant to 35 U.S.C. § 321 and 37 C.F.R. § 42.300 et seq., Acxiom Corpora-
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`tion (“Acxiom”), TIAA-CREF Life Insurance Company (“TIAA-CREF”), and
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`Teachers Insurance and Annuity Association of America (“TIAA”) (collectively,
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`“Petitioner”) petition for Covered Business Method patent (“CBM”) review of
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`claims 1, 4, 5, 7, 9–12, 14–18, 20, 21, 24, 27–30, and 32–37 (the “Challenged
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`Claims”) of U.S. Patent No. 8,234,184 (ACXM-1301) (“the ’184 Patent”), assigned
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`to Phoenix Licensing, LLC (“Patent Owner”). As explained in this petition, it is more
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`likely than not that at least one of the Challenged Claims is invalid under 35 U.S.C.
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`§ 101 as being directed to patent ineligible subject matter.
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`For more than a century, basic human interaction has included direct marketing
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`of products to potential customers. Marketing material sent to potential customers
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`often covers multiple products or product options, and it often allows its recipients
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`to select an option of greatest interest. This, in turn, creates an opportunity for a
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`salesperson to contact these interested customers to make sales. This simple back-
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`and-forth between a salesperson and a potential customer is the focus of the ’184
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`Patent. Specifically, the Challenged Claims require little more than following up on
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`customer responses to a financial product or service marketing campaign. Claim 1,
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`for example, includes five basic steps: (1) creating a marketing communication that
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`includes distinct choices, (2) sending the communication to the customer, (3) receiv-
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`ing the customer’s response, (4) creating a customized reply based on the response,
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`and (5) sending the reply to the customer. As explained below, these steps were
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`individually and collectively well-known long before the ’184 Patent was filed. Tra-
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`ditionally, each had been performed mentally and manually by human agents, based
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`on nothing more than the professional judgment of those human agents and the in-
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`formation that they gathered. The Challenged Claims simply take these well-known
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`steps and perform them “automatically” and “via the internet.”
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`Moreover, the Challenged Claims do not contain any “inventive concept suffi-
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`cient to transform the claimed abstract idea into a patent-eligible application.” See
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`Alice Corp. v. CLS Bank Int’l., 134 S. Ct. 2347, 2355 (2014); Mayo Collaborative
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`Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294 (2012). Indeed, the only
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`description in the specification of how these steps are performed “automatically” is
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`by reference to conventional, generic computer components. As stated by the Su-
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`preme Court in Alice, “[g]iven the ubiquity of computers, wholly generic computer
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`implementation is not generally the sort of ‘additional featur[e]’ that provides any
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`‘practical assurance that the process is more than a drafting effort designed to mo-
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`nopolize the [abstract idea] itself.’” Alice, 134 S. Ct. at 2358 (alterations in original)
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`(quoting Mayo, 132 S. Ct. at 1297). While the Challenged Claims restrict the appli-
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`cation of the abstract idea to the Internet, this also fails to confer patent eligibility.
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`“Narrowing the abstract idea … to the Internet is an ‘attempt[] to limit the use’ of
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`the abstract idea ‘to a particular technological environment,’ which is insufficient to
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`save a claim.” Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014)
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`(quoting Alice, 134 S. Ct. at 2358). “Given the prevalence of the Internet, implemen-
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`tation of an abstract idea on the Internet … is not sufficient to provide any ‘practical
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`assurance that the process is more than a drafting effort designed to monopolize the
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`[abstract idea] itself.’” Id. (quoting Mayo, 132 S. Ct. at 1297). The Challenged
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`Claims simply “recite a commonplace business method aimed at processing business
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`information, applying a known business process to the particular technological en-
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`vironment of the Internet, … using generic computer functions and conventional
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`network operations.” DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1259
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`(Fed. Cir. 2014). Such claims, like “the claims in Alice, Ultramercial, buySAFE,
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`Accenture and Bancorp, are ‘directed to’ little more than an abstract concept” and,
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`therefore, are not patent eligible. Id.
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`Petitioner respectfully submits that CBM review should be instituted, and that
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`the Challenged Claims should be canceled as unpatentable.
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`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1)
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`A. Real Parties-In-Interest under 37 C.F.R. § 42.8(b)(1)
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`TIAA-CREF Life Insurance Company, Teachers Insurance and Annuity Asso-
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`ciation of America, and Acxiom Corporation are the real parties-in-interest.
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`B. Related Matters under 37 C.F.R. § 42.8(b)(2)
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`The ’184 Patent has been asserted in the Eastern District of Texas against
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`TIAA-CREF Life Insurance Company in Civil Action No. 2:15-cv-01379 (filed July
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`30, 2015).1
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`The ’184 Patent is a continuation of Application No. 09/354,802, now Patent
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`No. 6,999,938, which is a continuation-in-part Patent No. 6,076,072, filed Apr. 15,
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`1997, which is a continuation-in-part of Patent No. 5,987,434, filed Jun. 10, 1996.
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`Patent No. 5,987,434 was the subject of Reexamination Nos. 90/007,498 and
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`90/008,900; Patent No. 6,076,072 was the subject of Reexamination No. 90/009,226;
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`and Patent No. 6,999,938 was the subject of Reexamination No. 90/012,501.
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`Petitioner previously filed petitions to institute CBM review against this patent
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`and related patents in Control Nos.: CBM2015-00068, 134–40, and 180, and in Con-
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`trol Nos. CBM2016-00055, 57-59, 67, 69, and 71. Those petitions were not instituted
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`because Patent Owner settled the underlying district court cases and the Board found
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`that Acxiom (the sole remaining Petitioner) had not established that it satisfied the
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`1 The ’184 Patent has been asserted in the following Eastern District of Texas cases:
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`2:13-cv-01081-1092, 01094-01101; 2:14-cv-00636, 00965, 00967, 00968, 00970-
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`00981; 2:15-cv-01367, 01370, 01371, 01373-01378; 2:16-cv-00152, 00153, 00156-
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`00161, 00163, and 00164.
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`standing requirement. See, e.g., CBM2015-00140, Paper No. 22. This Petition is not
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`duplicative under 35 U.S.C. § 325(d) because the Board never reached the grounds
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`presented and because Patent Owner filed a new round of lawsuits that provide
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`standing.
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`C. Lead and Back-Up Counsel and Service Information
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`Petitioner designates W. Karl Renner, Reg. No. 41,265, as Lead Counsel, and
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`Roberto Devoto, Reg. No. 55,108 as Backup Counsel. Please direct correspondence
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`and service to Mr. Renner and Mr. Devoto at 3200 RBC Plaza, 60 South Sixth Street,
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`Minneapolis, MN 55402 (T: 202-783-5070). Petitioner also consents to electronic
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`service by email at CBM38784-0006CP2@fr.com.
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`III. PAYMENT OF FEES – 37 C.F.R. § 42.15
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`Petitioner authorizes the Patent and Trademark Office to charge Deposit Ac-
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`count No. 06-1050 for the fee set forth in 37 C.F.R. § 42.15 for this Petition, and any
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`additional fees.
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`IV. SUMMARY OF THE ’184 PATENT
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`A. Background
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`“The importance of widely-distributed written or printed client communica-
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`tions such as advertising, solicitations, etc. is well known in the marketing and ad-
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`vertising field.” ’184 Patent at 1:31–33 (ACXM-1301). In the “Description of the
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`Related Art,” the ’184 Patent explains that previous mass marketing automation ef-
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`forts enabled “delivery of customized communications to each client.” Id. at 2:30–
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`34. The ’184 Patent further describes that while automated systems for delivering
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`customized communications is known in a purchase/no-purchase situation, current
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`technologies may not address various contingencies such as creating communica-
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`tions when a client requests further information, requests a modification of the prod-
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`uct, etc. Id. at 2:34–40. Because of the human involvement required in these contin-
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`gencies, according to the ’184 Patent, “[o]ther responses are generally too time con-
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`suming and costly to process and reply to individually so that a potentially large
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`number of purchases are foregone. If these clients have concerns or questions about
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`the product that could be responded to in order to facilitate a purchase decision, the
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`response rate from mass marketing campaigns could be increased, but current mass
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`marketing response generation and delivery methods costs makes this prohibitive
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`for most direct marketed sales campaigns.” Id. at 2:40–48. Therefore, the ’184 Patent
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`concludes, “[t]here exists a need in direct marketing for an automatic reply mecha-
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`nism that is flexible, and able to respond to a wide range of client inquiries, in an
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`ongoing ‘conversational’ manner.” Id. at 2:49–53.
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`B.
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`’184 Patent Summary
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`The bulk of the ’184 Patent’s specification describes background information
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`regarding Patent Owner’s prior patent applications. See ’184 Patent at 9:31–30:8;
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`Figs 1–17. The disclosure of the “present invention” begins at column 30, line 8,
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`which describes “The Automatic Reply System Module” as “software that automat-
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`ically generates a reply to responses received from clients responding to a mass com-
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`munication.” ’184 Patent at 30:12–14. The “preferred embodiment of the invention”
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`(id. at 30:16) is illustrated in Figure 18:
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`An “initial mass communication is mailed to a plurality of clients … in
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`step 1000. The mass communication elicits client responses 1010, and these are
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`(preferably electronically) read into a logic system 1020 through an appropriate in-
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`put device. The logic system 1020 reviews the client response, analyzes the re-
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`sponse 1030 and then determines whether a reply letter must be generated 1040.” Id.
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`at 30:17–25. “[I]f the client has made a ‘purchase response’, then the response is
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`routed out of the system to step 1060 where the purchase is further processed and a
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`‘thank you’ letter or additional follow up is generated, as needed. On the other hand,
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`if it is determined from the response that the client requires additional information,
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`an appropriate letter is generated addressing the specific client’s requirements. This
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`letter is then delivered to the client [step 1050].” Id. at 30:33–40. If additional re-
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`sponses are received from the customer, additional “follow-up replies” are sent “un-
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`til the client either makes a purchase, or fails to respond. In the latter instance, fol-
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`low-up communications may be sent to determine why the client has ceased respond-
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`ing, and to encourage further communication until a purchase decision is made.” Id.
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`at 30:50–55.
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`By codifying various if/then decisions, the ’184 Patent attempts to automate
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`“the back-and-forth that takes place between a salesperson and a customer, as the
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`salesperson attempts to sell a financial product or service to the customer.” See Sec-
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`tion IV.C, infra (quoting ’938 Pros. History at 344 (ACXM-1102)). Figure 19 pro-
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`vides an example decision tree used by an agent to sell term life insurance that would
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`be coded into the Automated Reply Module (see id. at 31:4–32:52):
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`The Automatic Reply Module logic system/processor module is described as
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`running on standard, off-the-shelf computer components. For instance, Figure 21
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`shows “reply module 2510” running on a “Processor” which accesses “Database
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`2000.” Id. at 33:30–57.
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`The processor “includes a central processing unit (CPU),” the design and con-
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`figuration of which is described as “not limiting, and may include any of the CPU
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`designs sold as standard components.” Id. at 8:20–27. The ’184 Patent explains that
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`“[w]ith the continuous and ongoing improvements in computer and electronic tech-
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`nology, many modifications may be made to the specific nature of hardware com-
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`ponents required. Accordingly, one of skill in the art may select any hardware com-
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`ponents that would rapidly and efficiently process the number of client communica-
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`tions anticipated.” Id. at 8:30–36 (emphasis added). Furthermore, while not shown
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`in Figure 21, the system may optionally include a “commercially available” modem
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`“or similar on-line or networked connection,” the design of which “also is not limit-
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`ing.” Id. at 8:66–9:7; 9:29–30; see also Fig. 1. As to content, database 2000 “contains
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`relevant information regarding clients” and “may be maintained by a bank, insurance
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`company, retail institution or any other entity that has a large client database.” Id. at
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`33:31–33.
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`Through this and other related disclosure, the ’184 Patent describes a human
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`agent’s decision tree and simply suggests replacing the human agent with software
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`running on generic hardware, all the while proclaiming increases in speed and re-
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`ductions in labor costs typical of computer automation. In other words, the ’184 Pa-
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`tent proclaims invention in automating mental and manual tasks traditionally per-
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`formed by human agents, and it touts advantages that are perfectly consistent with
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`automation of human endeavors and that therefore naturally flow from performance
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`of any otherwise mental or manual process on a conventional computer system.
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`C. Summary of the Relevant Prosecution History
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`The Patent Office issued a restriction requirement against the initially filed
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`claims, and Patent Owner elected to pursue Group VI, “drawn to a method for auto-
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`matically creating reply data to responses from one or more client’s financial prod-
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`ucts or services, which are classified in class 705, subclass 35.” ’184 Pros. History
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`at 630, 636 (ACXM-1126). The Patent Office then rejected all elected claims of the
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`’184 application for obviousness-type double patenting over its parent ’938 Patent
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`(ACXM-1101) because, while the ’938 Patent “does not expressly teach using a
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`computer in the preparation of communications and selection of clients,” it would
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`have been obvious “to provide significant cost savings by utilizing electronic means
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`of presenting offers.” Id. at 525–26 (01/12/2010 Office Action). The Patent Office
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`also rejected the claims as not directed to patentable subject matter under 35 U.S.C. §
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`101:
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`Despite reciting “using a computer” in the preparation of communications
`and the selection of clients to receive the communications, Applicant has
`not adequately demonstrated how the recited computer is particular in na-
`ture. Furthermore, the claims fail to recite how the computer is “used” (i.e.
`is the computer simply used by a user as a general purpose computer or is
`there some automated determination performed by the computer). Addi-
`tionally, although the claim recites using a website and the internet to pre-
`sent an offer, such recitations merely amount to insignificant extra-solu-
`tion activity (e.g. mere display of information) and do not create a mean-
`ingful tie to a particular machine or apparatus.
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`Id. at 527. A phone interview was conducted on June 16, 2010 in which the Examiner
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`suggested that the double patenting rejection could be overcome by filing a Terminal
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`Disclaimer and that the § 101 rejection could be overcome by adding the phrase
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`“automatically generating ‘by at least one processor’” to the claims. Id. at 520. Patent
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`Owner eventually filed the Terminal Disclaimer and made the requested amend-
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`ments (as well as others) to the claims after Final Rejection and another telephone
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`conference. Id. at 384–423.
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`Patent Owner then requested Continued Examination in which it argued that
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`various claim elements—including “at least one component adapted for website
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`viewing”—need not be explicitly supported by the specification because they were
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`well known and conventional. See, e.g., id. at 409 (“Viewing documents on websites
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`or creating documents for website viewing was not new or unconventional.”); id.
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`(“Converting electronic data to be displayed on displays for website viewing was
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`certainly well within the ordinary skill of programmers of the time.”); id. at 410
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`(“[N]owhere has the Applicant identified the form of output (e.g., the medium of
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`output such as paper, electronic, etc.) as essential or critical to the invention.”).
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`Patent Office issued another rejection on August 12, 2011 to which Patent
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`Owner responded on January 30, 2012, arguing that additional limitations—includ-
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`ing “the component configured for viewing on a display accessible via the internet
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`is transmitted to a location controlled by a provider of the product or service in the
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`offering”—need not be supported by the specification because they were well known
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`and conventional. See, e.g., id. at 307 (“It was well known at the time of the invention
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`that the internet is a network of devices controlled by various entities with no one
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`entity having control over all the entities that make up the internet. Thus, one of
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`ordinary skill would know that output transmitted over the internet, including the
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`intended destination of a component output, can include destinations that can be
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`controlled by other entities.”); see also id. at 308 (The disclosed technology “was
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`intended to replace an agent or middle man in the process of selling products.”).
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`Patent Owner also distinguished prior art based on the prior art’s disclosure of hu-
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`man input being required for operation of the prior art’s systems and for execution
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`of the prior art’s processes. Id. at 312 (“For each and every insurance contract to be
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`written, a human must sit at a terminal and enter in initial client information and
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`operate the terminal to get a quote, requote, insurance contract, etc. In other words,
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`Luchs does not receive any responsive communication and automatically generate
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`an answer without human input.”); id. at 313 (“A specially programmed processor
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`(not a human agent pushing the correct button) provides the necessary intelligence
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`to choose and compose (i.e. generate) the proper outgoing response for the incoming
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`responsive communication.”)
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`The Patent Office issued another rejection on February 17, 2012 and Patent
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`Owner filed a Response after Final Action on May 23, 2012, providing an affidavit
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`and additional evidence to support a June 10, 1996 priority date to swear behind the
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`prior art. The Patent Office entered the affidavit and issued a Notice of Allowance,
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`and the ’184 Patent issued on July 31, 2012.
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`The prosecution histories for patents related to the ’184 Patent provide useful
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`background information and insight. For example, the ’184 Patent is a continuation
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`of the ’938 Patent and thus the two patents share the same specification and claim
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`the same invention. MPEP § 201.07. In the ’938 Patent prosecution history, Patent
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`Owner provides a helpful overview of what it believed this invention to be:
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`
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`Briefly stated, the invention is directed to automated systems and methods
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`for conversing with customers . . . for the purpose of selling financial
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`products and/or services to the customers.
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`. . .
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`Such “conversation” achieved by the invention is analogous to the back-
`and-forth that takes place between a salesperson and a customer, as the
`salesperson attempts to sell a financial product or service to the customer.
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`
`’938 Pros. History at 342–44 (emphasis added) (ACXM-1102); see also id. at 349
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`(“[T]he invention is directed to convincing a consumer to buy financial products or
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`services … best achieved by having an automated back-and-forth ‘conversation’
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`with the consumer.”).
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`The prosecution history of the original application from which the ’184 Patent
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`stems is also instructive. See generally ’434 Pros. History (ACXM-1115). For ex-
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`ample, during prosecution, Patent Owner submitted an Information Disclosure State-
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`
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`ment explaining that “a large number of insurance agencies and other organizations
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`[] have sent marketing letters to potential customers in an attempt to sell them insur-
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`ance products,” but that Patent Owner was “unaware of any software” that would
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`prepare the letters automatically. Id. at 159. Patent Owner attached several examples
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`of these insurance quote letters from various companies. Id. at 159–61 (describing,
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`e.g., Letters and Quote, SelectQuote Insurance Services of San Francisco, Califor-
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`nia, Jun. 12–27, 1995 (ACXM-1116) (“SelectQuote”), Letter and Quote, Sommers-
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`Moreland & Associates, Inc., Atlanta, Georgia, Jul. 8, 1995 (ACXM-1117) (“Som-
`
`mers-Moreland”)). These prior art letters look similar to the “client communications
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`prepared using the preferred system and method” shown in the Appendix to the ’434
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`Patent. See ’184 Patent at 25:21–27; ’434 Patent, App’x (ACXM-1005).
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`Each of these prosecution histories reinforces the fact that the ’184 Patent
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`simply attempts to mimic traditional marketing and sales practice using conventional
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`computer hardware.
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`D. The Claims of the ’184 Patent
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`The ’184 Patent has 42 claims. Of the Challenged Claims, only claims 1, 30,
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`and 37 are independent claims. Claim 1 is representative:
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`At a high level, claim 1 covers (1) creating a marketing communication with
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`an offer for a financial product or service, (2) sending the communication to the
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`customer, (3) receiving the customer’s response, (4) creating a customized reply to
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`the customer based on the response, and (5) sending the reply. Claim 30 recites the
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`same functionality in the form of a system claim instead of a method claim, while
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`claim 37 uses means-plus-function language. See Section VII.B.
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`V. GROUNDS FOR STANDING (37 CFR § 42.302)
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`In Civil Action No. 2:15-cv-01379, filed July 30, 2015, Patent Owner asserted
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`the ’184 Patent against TIAA-CREF in the Eastern District of Texas, and TIAA-
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`CREF is not barred or estopped from requesting CBM review of the Challenged
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`Claims. See ACXM-1951, ACXM-1953, ACXM-1957, ACXM-1958. Thus, under
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`35 U.S.C. § 321 and 37 C.F.R. § 42.302, TIAA-CREF has standing to file this
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`petition to institute CBM review of the Challenged Claims. See, e.g., Lib. Mut. Ins.
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`Co. v. Progress. Cas. Ins. Co., CBM2012-00004, Pap. No. 10 at 3 (PTAB Jan 25,
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`2013).
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`TIAA is a real-party-in-interest of its wholly-owned subsidiary TIAA-CREF,
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`which TIAA controls, and TIAA is not barred or estopped from requesting CBM
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`review of the Challenged Claims. See ACXM-1951-61. Thus, under 35 U.S.C. § 321
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`and 37 C.F.R. § 42.302, TIAA also has standing to file this petition to institute CBM
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`review of the Challenged Claims. See, e.g., ZO