By Thomas Long, J.D.
Patent claims for methods for a mail sender to affix an identifier to the outer surface of an envelope or package before sending the mail, so that information about the mail’s contents and its sender could be communicated via computer network, were directed to an abstract idea and contained no additional elements making the claims patent-eligible, the U.S. Court of Appeals for the Federal Circuit has held. Therefore, a district court’s grant of a motion to dismiss infringement claims because the claims were ineligible for patent protection under 35 U.S.C. §101 was affirmed (Secured Mail Solutions LLC v. Universal Wilde, Inc., October 16, 2017, Reyna, J.).
Secured Mail Solutions LLC owned seven patents that it grouped into three categories: the "Intelligent Mail Barcode" patents, the "QR Code" patents, and the "Personalized URL" patents. The patents involved methods whereby a sender affixed an identifier on the outer surface of a mail object (such as an envelope or package) before the mail object was sent. Computers and networks were used to communicate the information about the mail object’s contents and its sender after the mail object was delivered. The Intelligent Mail Barcode patents recited a method for verifying the authenticity of the mail object. The QR Code and Personalized URL patents additionally require that a reception device (such as a personal computer) be used to scan the encoded data and display the resulting data on the reception device’s display screen.
Secured Mail brought infringement claims against Universal Wilde, Inc. Universal moved to dismiss the lawsuit, arguing that the patents were not eligible for protection under Section 101. The district court granted Universal’s motion to dismiss, and Secured Mail appealed.
Abstract idea. The district court found that the claims of all seven patents were directed to the abstract idea of communicating information about a mail object by use of a marking. Secured Mail argued that its claims were patent-eligible under the Federal Circuit’s decision in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (2016), in which the appellate court held that a district court, in making a Section101 ruling, had described the claims at issue at too high a level of abstraction. However, in the Federal Circuit’s view Enfish was distinguishable from the present case. The court in Enfish held the claims relating to a computer database implementation to be patent-eligible because the claims focused on an improvement to computer functionality itself, not on economic or other tasks for which a computer is used in its ordinary capacity. In contrast, the Federal Circuit explained, the claims of Secured Mail’s patents were not directed to any improvement in computer functionality. The claims were not directed to a new barcode format, an improved method of generating or scanning barcodes, or similar improvements in computer functionality. The claims of the Intelligent Mail Barcode patents were not directed to specific details of the barcode or the equipment for generating and processing it. Rather, the claims generically provided for the encoding of various data onto a mail object and did not set out how this was to be performed. The QR code method claims were not limited to any particular technology of generating, printing, or scanning a barcode, of sending a mail object, or of sending the recipient-specific information over a network. The Personalized URL patents were directed to the same abstract idea, namely, the abstract process of communicating information about a mail object using a personalized marking.
Inventive concept. Turning to the second part of the Section 101 analysis, the appellate court affirmed the district court’s determination that no additional aspect of the claims transformed them from unpatentable expressions of an abstract idea to patentable subject matter. The district court properly considered whether the claims contained an inventive concept, and explained in detail that the claims were "replete" with routine steps. The district court did not err in focusing on the component that Secured Mail argued was the inventive concept: the sender-generated barcode. The appellate court noted that the claim language did not explain how the sender generated the information, only that the information itself was unique or new. The claims said nothing specific about what was inventive about the identifier or about the technology used to generate or process it. The use of barcodes was commonplace at the time the patent applications were filed, in 2001. Nor was sending a personalized URL to a recipient an unconventional use of the Internet at that time. The patent claims were nonspecific and lacked technical detail; they cited well-known and conventional ways to allow generic communication between a sender and a recipient using generic computer technology. Therefore, the Federal Circuit affirmed the district court’s finding that all of the asserted claims were ineligible under Section 101.
The case is No. 2016-1728.
Attorneys: William J. O’Brien (One LLP) Secured Mail Solutions LLC. Gregory H. Lantier (Wilmer, Cutler, Pickering, Hale and Dorr LLP) for Universal Wilde, Inc.
Companies: Secured Mail Solutions LLC. Universal Wilde, Inc.
MainStory: TopStory Patent FedCirNews
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