Secured Mail Solutions LLC v. Universal Wilde, Inc. Case No. 2016-1728 (Fed. Cir. October 16, 2017):
In Secured Mail Solutions LLC v. Universal Wilde, Inc., Plaintiff Secured Mail Solutions appealed from a decision of the U.S. District Court for the Central District of California that found the claims of seven asserted patents were directed to patent ineligible subject matter. The seven patents were grouped into three categories: Intelligent Mail Barcode patents (US Patent Nos. 7,814,032, 7,818,268, and 8,073,787); QR Code patents (US Patent Nos. 8,260,629, 8,429,093); and Personalized URL patents (US Patent Nos. 8,910,860 and 9,105,002). The Federal Circuit affirmed.
Secured Mail’s patents involve methods whereby a sender affixes an identifier on a mail envelope or package before the mail is sent. Computers and networks are used to communicate the information about the mail’s contents and its sender after the mail object is delivered. The Intelligent Mail Barcode patents describe a method for verifying the authenticity of the mail by using a barcode affixed to the envelope. The QR Code patents and Personalized URL patents require that a reception device (e.g., a personal computer) be used to scan the encoded data and display the resulting data on the reception device’s display screen.
The representative claim of Intelligent Mail Barcode patents recites, inter alia, "affixing mail identification data to at least one mail object," "storing … a verifying portion of said mail identification data," "receiving … an authenticating portion of said mail identification data …," and "providing … mail verification data … when said authenticating portion of said mail identification data corresponds with said verifying portion of said mail identification data." With regard to the "mail identification data," the claim further states "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." The representative claim of the QR Code patents recites features similar to the claim of the Intelligent Mail Barcode patents, but requires that a "barcode" be used as the mail identification data. The representative claim of the Personalized URL patents requires that a reception device be used to scan electronic data and display the resulting data on a screen of the reception device.
At Alice step one, the Federal Circuit held that all the claims at issue are directed to abstract ideas, noting that the claims are not directed to an improvement in computer functionality, for example, a new barcode format or an improved method of generating or scanning barcodes. The Federal Circuit stated that the claims merely recite that the unique identifier is generated by the sender, and do not describe how the unique identifier is generated or how the unique identifier is different from a personal name or return address. At Alice step two, the Federal Circuit held that the claims do not contain an inventive concept sufficient to transform the nature of the claims into patent-eligible applications. With regard to the Intelligent Mail Barcode patents, the Federal Circuit opined that the claim language does not explain how the sender generates an identifier, only that the identifier is unique or new, and therefore, 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. Regarding the QR Code and Personalized URL Patents, the Federal Circuit explained that the use of barcodes was commonplace and conventional in 2001, and also sending a personalized URL to a recipient was not an unconventional use of the Internet in 2001.