Experian Marketing Solutions, Inc. et al v Rpost Communications Limited

Patent Trial and Appeal Board

Apr 22, 2014

12981371 (P.T.A.B. Apr. 22, 2014)

Trials@uspto.gov Paper 21
571-272-7822 Entered: April 22, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

EPSILON DATA MANAGEMENT, LLC and
EXPERIAN MARKETING SOLUTIONS, INC.
Petitioners

v.

RPOST COMMUNICATIONS LIMITED
Patent Owner
____________

Case CBM2014-00017
Patent 8,209,389 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

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I. BACKGROUND
Petitioner, Epsilon Data Management, LLC and Experian Marketing
Solutions, Inc., filed a petition (Paper 5, “Pet.”) to institute a covered
business method patent review of claims 1-16 of U.S. Patent No. 8,209,389
B2 (“the ’389 Patent”) pursuant to 35 U.S.C. §§ 321-29. Patent Owner,
RPost Communications Limited, filed a preliminary response (Paper 17,
“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 1-16 as unpatentable under 35 U.S.C.
§§ 101, 112, 102, and 103. For the reasons that follow, the petition is
denied.

A. The’389 Patent (Ex. 1001)
The ’389 Patent, titled “System and Method for Verifying Delivery
and Integrity of Electronic Messages,” issued on June 26, 2012. The ’389
Patent relates to systems and methods of later providing proof regarding the
delivery and content of an e-mail message. Ex. 1001, 1:20-24. 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 3:16-35. The receipt includes,
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among other things: the original message, the digital signature of the
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 ’389 Patent has been asserted in the proceedings listed in the
petition. Pet. 7-8. The ’389 Patent currently is being asserted against
Petitioners 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.). Ex. 1005.

C. Illustrative Claim
Claim 1 of the ’389 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 displaced from the recipient, the steps
at the server comprising:
receiving the message at the server from the sender;
transmitting the message to the recipient;
receiving at the server at least a portion of a mail
transport protocol dialog generated during transmission of the
message from the server to the recipient; and
receiving at the server from the recipient an indication of
the receipt of the message by the recipient;
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forming at the server a first information from the at least
a portion of the mail transport protocol dialog and the
indication of the receipt of the message by the recipient; and
transmitting, before any authentication of the message, a
copy of the message and the first information to the sender from
the server.

D. Asserted References
In its petition, Petitioner refers to the following references:
A. Bahreman et al., Certified Electronic Mail (CEM), in Proceedings
of the 1994 Network and Distributed Systems Security Conference,
February 1994 (Ex. 1006, hereinafter “CEM94”).
B. Al-Hammadi et al., Certified Exchange of Electronic Mail
(CEEM), Proceedings IEEE Southeastcon ’99, March 25 – 28, 1999 (Ex.
1007, hereinafter “CEEM”).
Feldbau WO 97/08869 A1 March 6, 1997 Ex. 1008

E. Asserted Grounds of Unpatentability
Petitioner challenges the patentability of claims 1-16 of the ’389
Patent based on the following asserted grounds of unpatentability:
Reference(s) Basis Claims challenged
N/A § 101 14 and 15
N/A § 112(b) 2, 7, 14, and 15
CEM94 § 102 1, 4, 7, 8, 10-12, and 14-16
CEM94 § 103 1, 4, 7, 8, 10-12, and 14-16
CEM94 and Feldbau § 103 2, 3, 5, 6, 9, and 13
CEEM § 102 1, 7, 14, and 15
Feldbau § 102 1-16
Feldbau § 103 1-16
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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 ’389 Patent details
that the claimed electronic messaging system and methods are directed to
financial, monetary, and commercial applications. Pet. 3. Specifically,
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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 SMTP server
38.” Id. at 4; Ex. 1001 at 26:53-55. 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. 4. 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 Tech., 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 2, 4.
Patent Owner argues that, even under a broad definition of covered
business method patent, the ’389 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 12).
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. Further, we are not persuaded by Patent
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Owner that the ’389 Patent has nothing to do with finance. The
Specification of the ’389 Patent states that the disclosed and claimed method
may be used in e-commerce, as discussed above.
As such, we are persuaded that the claims of the ’389 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.
Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,763-64 (Aug.
14, 2012).
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We are not persuaded by Petitioner’s arguments that the ’389 Patent is
not directed to a technological invention. Pet. 5-6. Petitioner argues that
the ’389 Patent does not recite any novel and unobvious technological
feature, and does not solve a technical problem. Id. at 6. Petitioner also
argues that the “technological features recited by the ’389 Patent were well-
known at the relevant time period,” and that all of the limitations of the
claims of the ’389 Patent refer to generic software and hardware. Id. 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 ’389 Patent
a covered business method patent. Prelim. Resp. 15. 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 18-19. Patent
Owner argues specifically that the forming step of the method claims is a
technical feature that solves the technical problem identified. Id. at 18. As
argued by Patent Owner, Petitioner has failed to provide persuasive
evidence that such forming of the first information, per claim 1, was known
at the time of the invention of the subject matter of the ’389 Patent. Id. In
addition, although Patent Owner addresses the analysis in the Declaration
of Paul C. Clark, Dsc. (id. at 19), which Petitioner submitted with the
Petition, this analysis was not included in the relevant portion of the
Petition (Pet. 2-6), and need not be considered in determining that the ’389
Patent is a covered business method patent.
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Although Petitioner argues that providing proof of delivery was
known, and use of digital signatures was known (id. at 6), that does not
mean, necessarily, that the use of the specific steps in independent claims 1,
7, and 14 are not novel or unobvious. Petitioner has provided some
analysis of certain claim limitations (id.), but has not analyzed 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. 5-6. Additionally, Petitioner has not persuaded us
that such server configurations and methods, as discussed and claimed in
the ’389 Patent, were known at that time.
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.
In view of the foregoing, we conclude that Petitioner fails to
demonstrate that the claims of the ’389 Patent are directed to a covered
business method patent under AIA Section 18(d)(1).

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III. CONCLUSION
For the foregoing reasons, we determine that the information
presented in the petition does not establish that the ’389 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.

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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