Secured Mail Solutions LLC v. Universal Wilde, Inc. (Fed. Cir. 2017)

by McDonnell Boehnen Hulbert & Berghoff LLP
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Patents Directed to Mail Barcodes Found to be Directed to Ineligible Subject Matter

Secured Mail Solutions LLC appealed from the U.S. District Court for the Central District of California's grant of a motion to dismiss on grounds that the claims of seven asserted patents are directed to subject matter ineligible for patenting under 35 U.S.C. § 101.

The Federal Circuit analyzed the claims under the two-step procedure set forth by the Supreme Court in Alice, and found that because the claims of the asserted patents are directed to an abstract idea and the claims contain no additional elements that transform the nature of the claims into a patent-eligible application of the abstract idea, the claims are ineligible for patenting under 35 U.S.C. § 101.

This appeal involved seven patents that Secured Mail grouped into three categories.  U.S. Patent Nos. 7,814,032, 7,818,268, and 8,073,787 are the "Intelligent Mail Barcode" patents.  U.S. Patent Nos. 8,260,629 and 8,429,093 are the "QR Code" patents.  U.S. Patent Nos. 8,910,860 and 9,105,002 are the "Personalized URL" patents.  All of the patents involve methods whereby a sender affixes an identifier on the outer surface of a mail object (e.g., envelope or package) before the mail object is sent.  Computers and networks are used to communicate information about the mail object's contents and its sender after the mail object is delivered.

The Intelligent Mail Barcode patents recite a method for verifying the authenticity of the mail object.  The identifier or barcode on the outer surface of the package 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.

For the Intelligent Mail Barcode patents, claim 1 of the '268 patent is representative:

1.  A method of verifying mail identification data, comprising:
    affixing mail identification data to at least one mail object, said mail identification data comprising a single set of encoded data that includes at least a unique identifier, sender data, recipient data and shipping method data, wherein said unique identifier consists of a numeric value assigned by a sender of said at least one mail object;
    storing at least a verifying portion of said mail identification data;
    receiving by a computer at least an authenticating portion of said mail identification data from at least one reception device via a network, wherein said authenticating portion of said mail identification data comprises at least said sender data and said shipping method data; and
    providing by said computer mail verification data via said network when said authenticating portion of said mail identification data corresponds with said verifying portion of said mail identification data.

The QR Code and Personalized URL patents additionally require that a reception device (e.g., personal computer) be used to scan the encoded data and display the resulting data on the reception device's display screen.  In the QR Code patents, 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.  For example, a customer might scan the QR code and be directed straight to her account rather than having to log in to access the account.  In the Personalized URL patents, a method similar to the QR Code patents is used, 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 types of data provided by the sender include content information, warranty information, and account information.

For the QR Code patents, claim 1 of the '093 patent is representative:

1.  A method for providing electronic data to a recipient of a mail object, comprising:
    generating, by a processor, a barcode for a mail object, said barcode including at least a first set of mail data, said first set of mail data including data corresponding to said recipient of said mail object;
    affixing said barcode to said mail object;
    submitting said mail object to a mail carrier for delivery to said recipient of said mail object;
    receiving said first set of mail data, including data corresponding to said recipient of said mail object, from a reception device of said recipient via a network;
    providing said electronic data to said reception device via said network in response to receiving said first set of mail data, said electronic data including a content of said mail object;
    wherein said reception device displays said electronic data to a recipient of said mail object by displaying said electronic data on a screen of said reception device.

For the Personalized URL patents, claim 1 of the '860 patent is representative:

1.  A method for providing electronic data to a recipient of a mail object, comprising:
    using an output device to affix a single set of mail ID data to said mail object, said single set of mail ID data including at least recipient data, said recipient data comprising a personalized network address associated with said recipient of said mail object;
    submitting said mail object to a mail carrier for delivery to said recipient of said mail object;
    receiving said recipient data from a reception device of said recipient via a network; and
    providing by at least one processor said electronic data to said reception device via said network in response to receiving said recipient data, said electronic data including data on a content of said mail object;
    wherein said reception device displays said electronic data to a recipient of said mail object by displaying said electronic data on a screen of said reception device.

The Defendant, Universal Wilde, Inc., moved to dismiss Secured Mail's complaint under Fed. R. Civ. P. 12(b)(6), arguing that Secured Mail's patents were not patent-eligible under Section 101.  The District Court found that all seven patents were directed to patent-ineligible subject matter.  It reasoned that the asserted claims, viewed individually or in combination, do not meaningfully limit the abstract idea of communicating information about a mailpiece by use of marking.

1.  Alice Step One

On appeal, the Federal Circuit followed the two-step procedure set forth by the Supreme Court in Alice.  Under Alice, it is considered whether the claims focus on a specific means or method or are instead directed to a result or effect that itself is the abstract idea and merely invokes generic processes and machinery.

The District Court found that the claims of all seven of the asserted patents are directed to the abstract idea of communicating information about a mail object by use of a marking.

First, with the Intelligent Mail Barcode patents, the Federal Circuit found that they are not directed to specific details of the barcode or the equipment for generating and processing it.  Rather, 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 claims state that various identifiers are affixed to a mail object, stored in a database, scanned from the mail object, and retrieved from the database.  No special rules or details of the computers, databases, printers, or scanners are recited.  There is also 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 fact that the sender generates a barcode, which itself is not claimed, does not render the idea any less abstract.

The Federal Circuit continued with the next set of patents and found that the claims of the QR Code patents fared no better.  The Federal Circuit found that the claims of these patents provide a method whereby a barcode is generated, affixed to a mail object, and sent through the mail system.  Then, upon receipt, the barcode is scanned, and data corresponding to the sender is sent to the recipient over the network and displayed on the recipient's device.  This method is 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, 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.  The claims recite a personalized network address that is affixed to a mail object using an output device, the mail object is submitted to a mail carrier, and then once the mail object is received, a request is made by the recipient over the network using the personalized network address, and data is displayed on a screen.  As with the other patents, each step of the process uses an identifier, in this case a personalized network address, to communicate information about a mail object.

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, the Federal Circuit turned to the second step of the Alice inquiry.

2.  Alice Step Two

In step two, the Federal Circuit considered whether the elements of the claims transform the nature of the claim into a patent-eligible application of the abstract idea.  This is the search for an inventive concept, which is something sufficient to ensure that the claim amounts to significantly more than the abstract idea itself.

In the Intelligent Mail Barcode patents, the sender generated identifier is created by combining various pieces of data, such as a unique identifier, sender data, recipient data and shipping method data.  The data need not even be in the form of a barcode, much less a specific new type of barcode.  The claim language does not explain how the sender generates the information, only that the information itself is unique or new.  The claim language does not provide any specific showing of what is inventive about the identifier or about the technology used to generate and process it.  The Federal Circuit found that the District Court was correct in determining that the sender-generated identifier is not a sufficiently inventive concept.

For the QR Code and Personalized URL patents, the District Court concluded that there was no inventive concept, and again, the Federal Circuit agreed.  The claims merely provide that an identifier is affixed to a mail object that is used by the recipient to request and display electronic information.  The use of barcodes was commonplace and conventional in 2001.  In addition, sending a personalized URL to a recipient was not an unconventional use of the Internet in 2001, for example, in emails that contained a personalized response URL.

Moreover, some of the claim elements, such as submitting a mail object to a mail carrier or affixing information to a mail object, are routine to persons that have mailed a letter.  The Federal Circuit found no inventive concept that transforms the nature of the claims into a patent-eligible application of the abstract idea.

Thus, the Federal Circuit found all claims ineligible for patenting under 35 U.S.C. § 101, and affirmed the District Court's grant of Universal's motion to dismiss.

Secured Mail Solutions LLC v. Universal Wilde, Inc. (Fed. Cir. 2017)
Panel:  Chief Judge Prost and Circuit Judges Clevenger and Reyna
Opinion by Circuit Judge Reyna

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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