October 16, 2017

Return to Sender: Secure Mail Patents Claim Abstract Idea

In Secured Mail Solutions LLC v. Universal Wilde, Inc., [2016-1728] (October 16, 2017), the Federal Circuit affirmed the grant of a motion to dismiss on the grounds that U.S. Patent Nos. 7,814,032, 7,818,268, and 8,073,787 (the “Intelligent Mail Barcode” patents), U.S. Patent Nos. 8,260,629 and 8,429,093 (the “QR Code” patents), and U.S. Patent Nos. 8,910,860 and 9,105,002 (the “Personalized URL” patents) are directed to subject matter ineligible for patenting under 35 U.S.C. § 101.

The Intelligent Mail Barcode patents recite a method for verifying the authenticity of the mail object.  The identifier or barcode is a single set of encoded data that is generated by concatenating a sender-assigned unique identifier with sender data, recipient data, and shipping method data.  The barcode is affixed to the outside of the mail object and an authenticating portion of the barcode is stored in a database. The recipient of the mail object can access the database and use that authenticating portion to verify that a mail object is authentic.

The QR Code patents, require that the identifier is a QR code (two-dimensional barcode) which a user can scan to look up additional electronic information related to the mail object.  Specifically, the barcode includes data that allows the recipient of the mail object to request data directly from the sender and allows the sender to provide personalized data directly to the recipient, without the involvement of the mail carrier.

The Personalized URL patents are similar to the QR Code patents, except the identifier is a personalized network address, or URL.  For example, the user can type the URL into her web browser and be directed straight to a specific account or to other personalized information.

The Federal Circuit rejected Secured Mail’s argument that the district court described the inventions at too high a level of abstraction at Step 1 of the Alice inquiry.  The Federal Circuit noted that despite the district court’s statement that “a reasonably high level of generality” should be used, the district court’s analysis correctly found that Secured Mail’s claims are directed to an abstract idea.

The Federal Circuit distinguished Enfish, noting that Secured Mail’s patents are not directed to an improvement in computer functionality — that is, they were not directed to a new barcode format, an improved method of generating or scanning barcodes, or similar improvements in computer functionality.

The Federal Circuit rejected Secured Mail’s argument that the claims are specifically directed to a sender-generated unique identifier, which improved on the existing process both by reliably identifying the sender of the mail object and by permitting the sender to create a bi-directional communication channel between the sender and recipient of the mail object.  The Federal Circuit found that the fact that an identifier can be used to make a process more efficient, however, does not necessarily render an abstract idea less abstract.

The Federal Circuit noted that the claims of the Intelligent Mail Barcode patents are not directed to specific details of the barcode or the equipment for generating and processing it.  The claims generically provide for the encoding of various data onto a mail object but do not set out how this is to be performed.  The Federal Circuit noted that in contrast to McRO and Thales, no special rules or details of the computers, databases, printers or scanners are recited.  The Federal Circuit noted that there is no description of how the unique identifier is generated or how a unique identifier is different from a personal name or return address. Rather, the claim language cited by Secured Mail merely recites that the unique identifier is generated by the sender.

The QR Code patents fared no better.  The Federal Circuit noted that their 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.  Rather, the Federal Circuit found that each step of the process is directed to the abstract process of communicating information about a mail object using a personalized marking.

Lastly, the Federal Circuit found that the Personalized URL patents are directed to the same abstract idea as the QR Code patents.

The Federal Circuit concluded:

The claims of the three sets of patents are not limited by rules or steps that establish how the focus of the methods is achieved. Instead, the claims embrace the abstract idea of using a marking affixed to the outside of a mail object to communicate information about the mail  object, i.e., the sender, recipient, and contents of the mail object. Because the claims are directed to an abstract idea, we turn to the second step of the Alice inquiry.

At Step 2 of Alice, the Federal Circuit rejected Secured Mail’s argument that the district court erred by failing to search for an inventive concept, and instead only asking whether the underlying technology were conventional.  The Federal Circuit said that the claims in Secured Mail’s patents are non-specific and lack technical detail.  Rather than citing a specific way to solve a specific problem as in DDR, the asserted claims cite well known and conventional ways to allow generic communication between a sender and recipient using generic computer technology.  The Federal Circuit pointed out that the patents themselves admit that the technologies were well known, describing them as “generally known to those skilled in the art.”

The Federal Circuit affirmed the district court’s invalidation of all seven patents.