Experian Marketing Solutions, Inc.v.Rpost International Limited

Patent Trial and Appeal Board

Jul 31, 2014

12838340 (P.T.A.B. Jul. 31, 2014)

Trials@uspto.gov Paper 13
571-272-7822 Entered: July 31, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

EXPERIAN MARKETING SOLUTIONS, INC., EPSILON
DATA MANAGEMENT, LLC, and CONSTANT CONTACT, INC.,
Petitioner,

v.

RPOST COMMUNICATIONS LIMITED,
Patent Owner.
____________

Case CBM2014-00064
Patent 8,161,104 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

CBM2014-00064
Patent 8,161,104 B2

2

I. BACKGROUND
Experian Marketing Solutions, Inc., Epsilon Data Management, LLC,
and Constant Contact, Inc. (collectively, “Petitioner”) filed a Petition (Paper
1; “Pet.”) requesting institution of a covered business method patent review
of claims 1 and 27 of U.S. Patent No. 8,161,104 B2 (Ex. 1001, “the ’104
Patent”) pursuant to 35 U.S.C. §§ 321-29. RPost Communications Limited
(“Patent Owner”) filed a Preliminary Response (Paper 12; “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 and 27 as unpatentable under 35 U.S.C.
§§ 102, 103, and 112. For the reasons that follow, the Petition is denied.

A. The’104 Patent (Ex. 1001)
The ’104 Patent, entitled “SYSTEM AND METHOD FOR
VERIFYING DELIVERY AND INTEGRITY OF ELECTRONIC
MESSAGES,” issued on April 17, 2012. The ’104 Patent relates to a system
and method of later providing proof regarding the delivery and content of an
e-mail message. Ex. 1001, 1:20-25. Certain header information is added to
an e-mail such that, when the e-mail is opened, the recipient’s Mail User
Agent (“MUA”) returns a response e-mail called a MUA notice to the
CBM2014-00064
Patent 8,161,104 B2

3

sender. Id. at 8:61-9:3. An e-mail is transmitted first from the sender to an
intermediary server, which adds a notification header to the e-mail, and
thereafter the intermediary server forwards the e-mail to the recipient, where
the addition of the specialized header results in a compliant MUA sending a
notification back. Id. at 9:57-61. When the intermediary server receives
such a notification, the server determines to which e-mail the notice relates
and generates and sends a read receipt to the e-mail sender. Id. at 9:62-10:3;
15:53-16:22.

B. Related Matters
The ’104 Patent has been asserted in the proceedings listed in the
Petition. Pet. 3. The ’104 Patent currently is asserted against Petitioner in
RPost Holdings, Inc. v. Epsilon Data Management, LLC, Civil Case No.
2:12-cv-00511-JRG (E.D. Tex.); RPost Holdings, Inc. v. Experian
Marketing Solutions, Inc., Civil Case No. 2:12-cv-00513-JRG (E.D. Tex.);
and RPost Holdings, Inc. v. Constant Contact, Inc., Civil Case No. 2:12-cv-
00510-JRG (E.D. Tex.). Exs. 1002-1004.

C. Illustrative Claim
Claim 1 of the ’104 Patent is illustrative of the claims at issue:
1. A method of transmitting a message from a sender to a
recipient and providing an indication that the message was
opened by the recipient, comprising:
receiving the message at a server from the sender, the
server being displaced from the recipient,
adding a link to the message by the server, the link
configured to execute when the message is opened at the
CBM2014-00064
Patent 8,161,104 B2

4

recipient to provide an indication that the message has been
opened by a recipient,
transmitting the message and the link from the server to the
recipient,
executing the link when the message is opened at the
recipient to control the server to provide an indication that the
message has been opened at the recipient,
providing an authenticatible information related to the
message, including the indication of the opening of the message
at the recipient, at the server, and
transmitting the indication of the opening of the message at
the recipient, and the authenticatible information from the
server to the sender.

D. Asserted References
In its petition, Petitioner relies on the following references:
Yamazaki JP H10-293732 Nov. 4, 1998 Ex. 1011
Micali US 5,629,982 May 13, 1997 Ex. 1013
Venkatraman WO 98/49643 Nov. 5, 1998 Ex. 1014

Richard Smith, The Web Bug FAQ Version 1.0, Nov. 11, 1999,
http://w2.eff.org/Privacy/Marketing/web_bug.html. (Ex. 1023, hereinafter
“Web Bug FAQ”).

Petitioner also seeks to demonstrate that claims 1 and 27 are
unpatentable in view of a public use of “PostX Envelope Version 2.0,” not
cited as a published reference, but through corroboration of its public use.
Pet. 67-68.

E. Asserted Grounds of Unpatentability
Petitioner challenges the patentability of claims 1 and 27 of the
’104 Patent based on the following asserted grounds of unpatentability:
CBM2014-00064
Patent 8,161,104 B2

5

Description/Reference(s) Basis Claims challenged
“Written Description” § 112 1 and 27
“Lack of Enablement” § 112 1 and 27
Yamazaki § 102 1 and 27
Micali and Venkatraman § 103 1 and 27
Micali and PostX Envelope Version 2.0 § 103 1 and 27
Micali and Web Bug FAQ § 103 1 and 27

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, 77 Fed. Reg.
48,734, 48,736 (Aug. 14, 2012) (Final Rule). 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 48735. The
CBM2014-00064
Patent 8,161,104 B2

6

“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 ’104 Patent details
that the claimed electronic messaging system and methods are
complementary to the financial activity of selling products and services.
Pet. 7. Specifically, Petitioner notes 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 10; Ex. 1001, 26:57-60. 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. Id. at 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,
CBM2013-00019, 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 or incidental to the financial activity of sales.” Pet. 9.
Patent Owner argues that even under a broad definition of covered
business method patent, the ’104 Patent is not encompassed by that
definition. Prelim. Resp. 7. Patent Owner also argues that the steps of the
CBM2014-00064
Patent 8,161,104 B2

7

method claims are unrelated to financial activities (id. at 7-8) 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 8).
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
directed to financial processes. Patent Owner’s argument that its claimed
subject matter “would be no more related to the financial institution as
would be a stapler” (id. at 8) ignores the specific recitations in the
’104 Patent discussed above. Further, we do not agree with Patent Owner
that the ’104 Patent has nothing to do with finance. The Specification of the
’104 Patent states that the disclosed method may be used in e-commerce, as
discussed above. See Ex. 1001, 26:57-60.
As such, we are persuaded that the challenged claims of the
’104 Patent meet the “financial product or service” component of § 18(d)(1)
of the AIA.

B. Technological Invention
The definition of “covered business method patent” in § 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
CBM2014-00064
Patent 8,161,104 B2

8

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).
Pet. 12-14. Petitioner argues that the ’104 Patent does not recite any
novel and unobvious technological feature, and does not solve a technical
problem. Pet. 13. Petitioner also argues that “[m]oreover, the problem
purportedly solved by the ’104 Patent is determining whether someone
opened a particular email. . . . That is not a technical problem, it a social or
commercial one—did the recipient read my letter, receive my purchase
order, or open my advertisement?” Id. at 14. We must weigh these
arguments against the counterarguments raised by Patent Owner. We are
unpersuaded by Petitioner’s arguments that the ’104 Patent is not directed
to a technological invention.
Patent Owner argues that the “technical problem is more complex
than Petitioners allude.” Prelim. Resp. 12. The ability to provide proof
that an e-mail has been opened is required, via the Specification of the the
CBM2014-00064
Patent 8,161,104 B2

9

’104 Patent, to be platform-independent and need not require the
cooperation of the email recipient. Id. at 12-13; Ex. 1001, 2:15-61. Patent
Owner further maintains that skilled artisans would have understood that
this is not merely a social problem and that existing technology did not
provide such capabilities. Prelim. Resp. 15. Patent Owner asserts that the
’104 Patent provides a technical solution of an intermediary server, without
requiring special e-mail software by the sender or the recipient. Id. at 16-
17. While the testimony of Petitioner’s affiant, Dr. Paul Clark, was
proffered to demonstrate a lack of proper written description of specific
claims (Pet. 32; Ex. 1009 ¶¶ 27-28), Dr. Clark acknowledges that the
receipt of a corroboration of the opening of the e-mail would work only in
specific systems, as pointed out by Patent Owner. Prelim. Resp. 16. As
such, we are not persuaded that Petitioner has demonstrated that the
claimed platform-independent processes and systems were generally known
in the art.
While Petitioner argues that providing some form of proof of delivery
and providing an indication to a sender that an e-mail has been opened were
known (Pet. 13-14), that does not mean necessarily that the use of the
specific steps of independent claims 1 and 27 are not novel or unobvious.
Petitioner has provided insufficient analysis of the specific steps of claims 1
and 27 in arguing that claims of the ’104 Patent fail to address a technical
problem and lack a technical solution (id.), but has alleged instead that
aspects thereof are wholly unsupported by the Specification. Petitioner also
has failed to demonstrate that the use of the electronic message systems, per
the claimed processes, would achieve only the normal, expected, or
predictable result of that combination. Additionally, Petitioner has not
CBM2014-00064
Patent 8,161,104 B2

10

persuaded us that such a server configuration and method, as discussed in
the ’104 Patent, were known at that time. In contrast, Patent Owner
provides that
[t]he technical problem solved by the '104 patent is summarized
by the statement: Therefore, there exists a need for an e-mail
system/method that can provide reliable proof of the content
and delivery of electronic messages which does not require the
compliance or co-operation of the recipient, which requires no
special e-mail software on the part of sender or recipient, which
operates with the same or nearly the same convenience and
speed of use as conventional e-mail, and which can be operated
economically by a service provider.
Prelim. Resp. 15 (citing Ex. 1001, 2:62-3:2).
Lastly, merely because a patent’s claims recite a method, and such a
method is applicable to a financial process, that does not obviate the need to
determine whether the invention is directed to a technical invention.
Providing conclusory language in a petition to the effect that the claims do
not require any novel and unobvious technological implementation, or solve
a technical problem, without more, is not sufficient to demonstrate that a
patent is not a technical invention.
In view of the foregoing, we are not persuaded that the claims of the
’104 Patent are directed to a covered business method patent under AIA
§ 18(d)(1).

III. CONCLUSION
For the foregoing reasons, we conclude that the information presented
in the Petition fails to establish that it is more likely than not that Petitioner
CBM2014-00064
Patent 8,161,104 B2

11

would prevail in establishing the ’104 Patent is the proper subject of
covered business method patent review.

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.

CBM2014-00064
Patent 8,161,104 B2

12

PETITIONER:
Kenneth J. Sheehan
John Hilten
BAKER & HOSTETLER LLP
ksheehan@bakerlaw.com
jhilten@bakerlaw.com

Arthur Dresner
Jarrad M. Gunther
DUANE MORRIS LLP
ADresner@duanemorris.com
JMGunther@duanemorris.com

Michael Eisenberg
Richard G. Frenkel
LATHAM & WATKINS LLP
michael.eisenberg@lw.com
rick.frenkel@lw.com

PATENT OWNER:
Lewis E. Hudnell, III
COLVIN HUDNELL LLP
lewis@colvinhudnell.com

John K. Fitzgerald
FULWIDER PATTON LLP
jfitzgerald@fulpat.com