Paper 20
` Entered: April 22, 2014
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`EXPERIAN MARKETING SOLUTIONS, INC. and
`EPSILON DATA MANAGEMENT, LLC
`Petitioner
`
`v.
`
`RPOST COMMUNICATIONS LIMITED
`Patent Owner
`____________
`
`Case CBM2014-00010
`Patent 8,224,913 B2
`
`
`
`Before KEVIN F. TURNER, TREVOR M. JEFFERSON, and
`JAMES B. ARPIN, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`
`
`GOOG 1011
`CBM of U.S. Patent 7,774,280
`Page 1
`
`Petitioner Apple Inc. - Ex. 1011, p. 1
`
`
` Entered: April 22, 2014
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`EXPERIAN MARKETING SOLUTIONS, INC. and
`EPSILON DATA MANAGEMENT, LLC
`Petitioner
`
`v.
`
`RPOST COMMUNICATIONS LIMITED
`Patent Owner
`____________
`
`Case CBM2014-00010
`Patent 8,224,913 B2
`
`
`
`Before KEVIN F. TURNER, TREVOR M. JEFFERSON, and
`JAMES B. ARPIN, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`
`
`GOOG 1011
`CBM of U.S. Patent 7,774,280
`Page 1
`
`Petitioner Apple Inc. - Ex. 1011, p. 1
`
`
`
`Case CBM2014-00010
`Patent 8,224,913 B2
`
`
`
`I. BACKGROUND
`Petitioner, Experian Marketing Solutions, Inc. and Epsilon Data
`Management, LLC, filed a petition (Paper 1, “Pet.”) to institute a covered
`business method patent review of claims 1-11 of U.S. Patent No. 8,224,913
`B2 (“the ’913 Patent”) pursuant to 35 U.S.C. §§ 321-29. Patent Owner,
`RPost Communications Limited, filed a preliminary response (Paper 18,
`“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 324.
`The standard for instituting a covered business method patent review
`is set forth in 35 U.S.C. § 324(a):
`THRESHOLD.—The Director may not authorize a post-grant
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 321, if
`such information is not rebutted, would demonstrate that it is
`more likely than not that at least 1 of the claims challenged in
`the petition is unpatentable.
`Petitioner challenges claims 1-11 as unpatentable under 35 U.S.C.
`§§ 102 and 103. For the reasons that follow, the petition is denied.
`
`
`A. The’913 Patent (Ex. 1001)
`The ’913 Patent, titled “System and Method for Verifying Delivery
`and Integrity of Electronic Messages,” issued on July 17, 2012. The ’913
`Patent relates to systems and methods of later providing proof regarding the
`delivery and content of an e-mail message. Ex. 1001, 1:21-24. This is
`accomplished when a system delivers the electronic message to all
`recipients, and, thereafter, the system returns a receipt of delivery to the
`originator of the electronic message. Id. at 3:18-37. The receipt includes,
`among other things: the original message, the digital signature of the
`
`
`
`2
`
`GOOG 1011
`CBM of U.S. Patent 7,774,280
`Page 2
`
`Petitioner Apple Inc. - Ex. 1011, p. 2
`
`
`
`Case CBM2014-00010
`Patent 8,224,913 B2
`
`
`
`message, and a handshaking and delivery history including times of delivery
`to the recipients. Id. To later verify and authenticate information contained
`in the receipt, the originator or user sends a copy of the receipt to the system,
`and the system then verifies that the digital signature matches the original
`message and the rest of the receipt. Id.
`
`
`B. Related Matters
`The ’913 Patent has been asserted in the proceedings listed in the
`
`petition. Pet. 7. The ’913 Patent currently is being asserted against
`Petitioner in RPost Holdings, Inc. v. Epsilon Data Management, LLC, No.
`2:12-cv-00511-JRG (E.D. Tex.) and RPost Holdings, Inc. v. Experian
`Marketing Solutions, Inc., No. 2:12-cv-00513-JRG (E.D. Tex.). Exs. 1009,
`1010.
`
`
`C. Illustrative Claim
`Claim 1 of the ’913 Patent is reproduced below and is illustrative of
`the claims at issue:
`1. A method of transmitting a message from a sender to a
`recipient through a server acting as a Mail Transport Agent,
`including the steps at the server of:
`recipient’s Mail
`the
`to
`
`transmitting
`the message
`Transport Agent in a protocol dialog selected from a group
`consisting of the selected one of the SMTP and ESMTP
`protocols; and
`
`recording at the server some portion of the selected one
`of the SMTP and ESMTP protocol dialog between the server
`and the recipient through the server including those portions of
`the selected one of the SMTP and ESMTP protocol dialog
`between the server and the recipient in which the receiving Mail
`3
`
`
`
`GOOG 1011
`CBM of U.S. Patent 7,774,280
`Page 3
`
`Petitioner Apple Inc. - Ex. 1011, p. 3
`
`
`
`Case CBM2014-00010
`Patent 8,224,913 B2
`
`
`
`Transport Agent accepts or declines delivery of the transmitted
`message.
`
`
`
`D. Asserted References
`In its petition, Petitioner refers to the following references:
`B. Al-Hammadi et al., Certified Exchange of Electronic Mail
`(CEEM), Proceedings IEEE Southeastcon ’99, 40-43 (Mar. 25–28, 1999)
`(Ex. 1012, hereinafter “CEEM”).
`
`A. Bahreman et al., Certified Electronic Mail (CEM), Proceedings —
`Symposium on Network and Distributed Systems Security, 3-19 (Feb. 1994)
`(Ex. 1013, hereinafter “CEM”).
`
`Michael A. Gurski, Privacy-Enhanced Mail (PEM), Oct. 24, 1995,
`available at: http://www.csee.umbc.edu/~woodcock/cmsc482/proj1/pem.
`html (Ex. 1014, hereinafter “PEM”).
`
`
`Release notes from the 1999 version of Postfix, available at:
`http://web.archive.org/web/19990508202510/http:/www.postfix.org/RELEA
`SE_NOTES (Ex. 1016, hereinafter “Postfix”).
`
`
`E. Asserted Grounds of Unpatentability
`Petitioner challenges the patentability of claims 1-11 of the ’913
`Patent based on the following asserted grounds of unpatentability:
`Reference(s)
`Basis
`Claims challenged
`CEEM
`§ 102
`1-11
`CEM
`§ 102
`1-9
`CEM and PEM
`§ 103
`10 and 11
`Postfix
`§ 102
`1-3
`
`
`
`
`
`
`
`
`4
`
`GOOG 1011
`CBM of U.S. Patent 7,774,280
`Page 4
`
`Petitioner Apple Inc. - Ex. 1011, p. 4
`
`
`
`Case CBM2014-00010
`Patent 8,224,913 B2
`
`II. ANALYSIS
`A. Financial Product or Service
`A “covered business method patent” is a patent that “claims a method
`or corresponding apparatus for performing data processing or other
`operations used in the practice, administration, or management of a financial
`product or service, except that the term does not include patents for
`technological inventions.” Leahy-Smith America Invents Act, Pub. L. No.
`112-29, 125 Stat. 284 (2011) (“AIA”) § 18(d)(1); see 37 C.F.R. § 42.301(a).
`For purposes of determining whether a patent is eligible for a covered
`business method patent review, the focus is on the claims. See Transitional
`Program for Covered Business Method Patents—Definitions of Covered
`Business Method Patent and Technological Invention; Final Rule, 77 Fed.
`Reg. 48,734, 48,736 (Aug. 14, 2012). A patent need have only one claim
`directed to a covered business method to be eligible for review. Id.
`In promulgating rules for covered business method patent reviews, the
`Office considered the legislative intent and history behind the AIA’s
`definition of “covered business method patent.” Id. at 48,735-36. The
`“legislative history explains that the definition of covered business method
`patent was drafted to encompass patents ‘claiming activities that are
`financial in nature, incidental to a financial activity or complementary to a
`financial activity.’” Id. (citing 157 CONG. REC. S5432 (daily ed. Sept. 8,
`2011) (statement of Sen. Schumer)). The legislative history indicates that
`“financial product or service” should be interpreted broadly. Id.
`As Petitioner points out, the Specification of the ’913 Patent details
`that the claimed electronic messaging systems and methods are directed to
`financial, monetary, and commercial applications. Pet. 10-11. Specifically,
`5
`
`
`
`
`
`GOOG 1011
`CBM of U.S. Patent 7,774,280
`Page 5
`
`Petitioner Apple Inc. - Ex. 1011, p. 5
`
`
`
`Case CBM2014-00010
`Patent 8,224,913 B2
`
`Petitioner cites that “[t]he registered queries, complaints, orders[,] offers to
`purchase, and other information 46 are sent to the e-business 30 by the
`system. Receipts are then provided to the customers 34 via SMPT server
`38.” Id. at 11; Ex. 1001 at 26:36-39. As identified by Petitioner, the e-
`commerce embodiments are directed to the buying and selling of products or
`services over electronic systems, such as the Internet. Pet. 11. We are
`persuaded that this comports with “an agreement between two parties
`stipulating movements of money or other consideration now or in the
`future.” Apple Inc. v. Sightsound Techs., LLC, CBM2013-0019, slip op. at
`*12 (PTAB Oct. 8, 2013) (Paper 17) (internal citations omitted). We also
`are persuaded by Petitioner that these e-commerce transactions represent the
`type of activities that are “complementary to a financial activity” and “relate
`to monetary matters.” Id. at 12.
`Patent Owner argues that, even under a broad definition of a covered
`business method patent, the ’913 Patent is not encompassed by that
`definition. Prelim. Resp. 11. Patent Owner also argues that the steps of the
`method claims are unrelated to financial activities (id. at 12) and have
`“nothing to do with movement of money; financial institution; sale of a
`service, product or digital content; agreement for consideration; valuing an
`object; insuring an object; or anything else remotely related to something
`monetary” (id. at 13).
`Patent Owner’s arguments are not persuasive. The Board reviews
`petitions on their own facts to determine whether the challenged patent is a
`“covered business method patent” under the AIA definition. The presence
`of the e-commerce embodiment makes clear that the method claims have
`utility to financial processes. Patent Owner’s argument that “literally
`6
`
`
`
`
`
`GOOG 1011
`CBM of U.S. Patent 7,774,280
`Page 6
`
`Petitioner Apple Inc. - Ex. 1011, p. 6
`
`
`
`Case CBM2014-00010
`Patent 8,224,913 B2
`
`
`
`anything even remotely related to a commercial transaction may be
`considered a CBM patent” if Petitioner’s position is accepted (id. at 14), it
`ignores the specific recitations in the ’913 Patent discussed above. Further,
`we are not persuaded by Patent Owner that the ’913 Patent has nothing to do
`with finance. The specification of the ’913 Patent states that the disclosed
`and claimed methods may be used in e-commerce, as discussed above.
`As such, we are persuaded that the claims of the ’913 Patent meet the
`“financial product or service” component of Section 18(d)(1) of the AIA.
`
`
`B. Technological Invention
`The definition of “covered business method patent” in Section
`18(d)(1) of the AIA does not include patents for “technological inventions.”
`To determine whether a patent is for a technological invention, we consider
`“whether the claimed subject matter as a whole recites a technological
`feature that is novel and unobvious over the prior art; and solves a technical
`problem using a technical solution.” 37 C.F.R. § 42.301(b). The following
`claim drafting techniques, for example, typically do not render a patent a
`“technological invention”:
`(a) Mere recitation of known technologies, such as
`computer hardware, communication or computer networks,
`software, memory, computer-readable
`storage medium,
`scanners, display devices or databases, or specialized machines,
`such as an ATM or point of sale device.
`(b) Reciting the use of known prior art technology to
`accomplish a process or method, even if that process or method
`is novel and non-obvious.
`(c) Combining prior art structures to achieve the normal,
`expected, or predictable result of that combination.
`
`
`
`7
`
`GOOG 1011
`CBM of U.S. Patent 7,774,280
`Page 7
`
`Petitioner Apple Inc. - Ex. 1011, p. 7
`
`
`
`Case CBM2014-00010
`Patent 8,224,913 B2
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,763-64 (Aug.
`14, 2012).
`
`We are not persuaded by Petitioner’s arguments that the ’913 Patent is
`not directed to a technological invention. Pet. 15-17. Petitioner argues that
`the ’913 Patent does not recite any novel and unobvious technological
`feature, and does not solve a technical problem. Id. at 16. Petitioner also
`argues that “the claims of the ’913 patent merely recite using well-known
`technology (e-mail), in a well-known manner (using SMTP or ESMTP to
`transmit e-mail), to perform a well-known task (applying digital
`signatures).” Id. at 17. We must weigh these arguments against the
`counterarguments raised by Patent Owner.
`
`Patent Owner argues that Petitioner’s arguments are conclusory,
`detailing that known hardware and software programs make the ’913 Patent
`a covered business method patent. Prelim. Resp. 19. Patent Owner
`identifies the technical problem to be providing reliable proof of content
`and delivery of electronic messages, and argues that the claims provide a
`technical solution of an intermediary server, without requiring use of
`special e-mail software by the sender or the recipient. Id. at 19-22. Patent
`Owner argues specifically that the recording step of the method claims is a
`technical feature that solves the technical problem identified. Id. at 22. As
`argued by Patent Owner, Petitioner has failed to provide persuasive
`evidence that such recording by the server configurations was known at the
`time of the invention of the subject matter of the ’913 Patent. Id.
`
`Although Petitioner argues that sending of e-mail through SMTP or
`ESMTP protocols was known, and use of digital signatures was known
`(Pet. 16-17), that does not mean, necessarily, that the use of the specific
`8
`
`
`
`
`
`GOOG 1011
`CBM of U.S. Patent 7,774,280
`Page 8
`
`Petitioner Apple Inc. - Ex. 1011, p. 8
`
`
`
`Case CBM2014-00010
`Patent 8,224,913 B2
`
`
`
`steps in independent claims 1 and 10 are not novel or unobvious. Petitioner
`has provided some analysis of claims 1 and 10 (id. at 17), but has analyzed
`the method steps separately, instead of examining each claim as a whole, as
`required. Id. Petitioner also has failed to demonstrate that the use of the
`electronic message systems, per the claimed processes, only would achieve
`the normal, expected, or predictable result of that combination. See Pet. 15-
`17. Additionally, Petitioner has not persuaded us that such server
`configurations and methods, as discussed and claimed in the ’913 Patent,
`were known at that time. In contrast, Patent Owner provides that:
`[w]hile persons skilled in the art would have been aware of the
`flow of information that is part of the protocol, Applicant alone
`recognized the importance of storing the dialog that occurs
`between server and destination address that is generated when
`using mail transport protocol such as SMTP for later use in
`proof of the message and proof of the delivery of the message.
`Ex. 1003 at 150-151 (emphasis added).
`
`Lastly, merely because an invention’s claims recite a method, and
`such a method is applicable to a financial process, which does not obviate
`the need to determine whether the invention is directed to a technical
`invention. See 37 C.F.R. § 42.301(a) (“except that the term [covered
`business method patent] does not include patents for technological
`inventions” (emphasis added)). Petitioner’s conclusory language in the
`petition that none of the steps of a claim requires any novel and unobvious
`technological implementation, or solves a technical problem, without more,
`is not sufficient to demonstrate that the claimed subject matter is not a
`technical invention.
`
`
`
`9
`
`GOOG 1011
`CBM of U.S. Patent 7,774,280
`Page 9
`
`Petitioner Apple Inc. - Ex. 1011, p. 9
`
`
`
`Case CBM2014-00010
`Patent 8,224,913 B2
`
`
`
`In view of the foregoing, we conclude that Petitioner fails to
`
`demonstrate that the claims of the ’913 Patent are directed to a covered
`business method patent under AIA Section 18(d)(1).
`
`
`III. CONCLUSION
`For the foregoing reasons, we determine that the information
`presented in the petition does not establish that the ’913 Patent is eligible for
`review as a covered business method patent under AIA Section 18(d)(1).
`
`
`IV. ORDER
`
`
`
`Accordingly, it is
`ORDERED that the petition is denied as to all challenged claims.
`FURTHER ORDERED that no covered business method patent
`review is instituted.
`
`
`
`
`
`
`10
`
`GOOG 1011
`CBM of U.S. Patent 7,774,280
`Page 10
`
`Petitioner Apple Inc. - Ex. 1011, p. 10
`
`
`
`Case CBM2014-00010
`Patent 8,224,913 B2
`
`
`
`For Petitioners:
`Kenneth J. Sheehan
`Shawnna M. Yashar
`BAKER & HOSTETLER LLP
`ksheehan@bakerlaw.com
`syashar@bakerlaw.com
`
`Arthur Dresner
`Jordana Garellek
`Jarrad M. Gunther
`DUANE MORRIS LLP
`ADresner@duanemorris.com
`JGarellek@duanemorris.com
`JMGunther@duanemorris.com
`
`For Patent Owner:
`Lewis E. Hudnell, III
`COLVIN HUDNELL LLP
`lewis@colvinhudnell.com
`
`John K. Fitzgerald
`FULWIDER PATTON LLP
`jfitzgerald@fulpat.com
`docketla@fulpat.com
`
`
`
`
`
`11
`
`GOOG 1011
`CBM of U.S. Patent 7,774,280
`Page 11
`
`Petitioner Apple Inc. - Ex. 1011, p. 11
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