Do you get the Gist: Tracking Mail is an Abstract Idea

Secured Mail v. Universal Wilde (Fed. Cir. 2017)

The district court dismissed this case for failure to state a claim upon which relief can be granted – R.12(b)(6) – after finding that the claims of all seven asserted patents were ineligible under 35 U.S.C. 101.  On appeal, the Federal Circuit has affirmed.  U.S. Patent Nos. 7,814,032, 7,818,268, and 8,073,787 (“Intelligent Mail Barcode”); Nos. 8,260,629 and 8,429,093 (“QR Code”); and Nos. 8,910,860 and 9,105,002 (“Personalized URL”).

The patents all involve an mailer (i.e. package or envelope) with an identifier on the outside such as a barcode, QR code, or URL.  Once delivered, information is communicated (via computers) to the recipient about the contents and the sender.

As Patently-O readers understand, abstract ideas themselves are not patentable. Likewise a patent directed to an abstract idea is also unpatentable, unless the claims include an additional inventive concept that goes beyond the unpatentable idea to “transform the nature of the claim into a patent-eligible invention.” Alice.

The Alice two-step inquiry first asks whether the claims are directed to an abstract idea.  Here, the courts agreed that the claims “are directed to the abstract idea of communicating information about a [mailer] by use of a marking.”  Under Step Two, the appellate panel found that the claims merely recited “well known and conventional ways to allow generic communication between a sender and recipient using generic computer technology.”  Invalid.

I have included claim 1 of the ‘002 patent below (issued post-Alice):

 

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 comprising a sender’s web page that identifies said recipient of said mail object and includes data corresponding to a content of said mail object;

wherein said electronic data is configured to be displayed to said recipient via a web browser on a display of said reception device.

Note – the patentee has at least one additional patent issued in the family (US 9,390,394). However, that new patent does not appear to include any new inventive elements that go beyond the prior family members.

Read it and weep: [Federal Circuit Opinion]

I’ll note here that I believe the force behind the patentee is patent attorney Todd Fitzsimmons who also runs his own LA County patent firm.

 

115 thoughts on “Do you get the Gist: Tracking Mail is an Abstract Idea

  1. What I see is a claim where great drafting effort was taken to avoid talking about the enabling back-end and to focus on the information handling or kinds of information. It appears to have been written to capture a type of infringement that’s easier to identify than that back-end system and probably won’t involve any parties other than a mail carrier.

    D.C. office affixes a mail ID to a package and sends the package to their St. Louis office. St. Louis office scans that ID and someone looks at the information – or St. Louis Office scans the ID and info about the package is updated in the mail carrier’s system. I bet there are FAQ’s or manuals that disclose all of this.

    If the majority of a claim is simply a list of types of information, descriptions of doing something to information to get more information, compiling information, or displaying information, then the PTAB and Fed. Cir. are going to kill it. The way the PTAB and Fed. Cir view it, all that information handling has to improve something else that is specifically claimed.

    1. If the majority of a claim is simply a list of types of information, descriptions of doing something to information to get more information, compiling information, or displaying information, then the PTAB and Fed. Cir. are going to k – ll it.

      Yes, they will. But it’s worth reminding everyone that a skilled attorney will be able to concince the PTAB or the CAFC to destroy any claim where the point of novelty is information processing. It really is a matter of skill and knowing how to swat aside the dust that gets kicked up.

      “The claim doesn’t pre-empt everything” <– folks, this is a patentee's weakest pitch and when you see it you know that that you have won. This is the kind of softball that a 1st year should be able to belt out of the park so hard and so fast that the patentee doesn't even know what happened until (in a just world) they are sanctioned for throwing the pitch in the first place.

  2. Greg has a question: Please explain to me how we recognize a claim (such as those, I am given to understand, at issue in Enfish or McRo) that recites an abstract idea, but is not “directed to” that abstract idea?

    1. A method comprising validating an account, wherein said account was created at 12:18 Wednesday and wherein said account relates to cat food disbursements.

    2. A computer implemented system, wherein said system comprises a programmable computer, wherein said programming instructs said computer to validate an account, wherein said account was created at 12:18 Wednesday and wherein said account relates to cat food disbursements.

    Claim 1 recites an abstract idea. Claim 2 is directed to an abstract idea. There’s no difference whatsoever for the purpose of the analysis. The different phraseology exists simply to address the inane whining from the maximalists that inserting reference to “computer” changes everything. It doesn’t change anything. The Supreme Court told us that, and they were absolutely right.

    The underlying fundamental principle, of course, is that logic applied to information isn’t eligible for patenting.

    Note: nothing in the above explanation is meant to suggest that the mere presence of the term “computer” in a claim renders the claim ineligible, nor is there any suggestion that *every* device can be legally read out of every claim and thereby render every claim ineligible.

    Note also: this account was incredibly valuable! Worth millions, in fact. I have post-filing data to prove it. Very unexpected.

    Note also: this isn’t difficult to understand. It’s much more difficult to pretend not to understand. This latter activity is a specialty of a certain class of patent attorney.

    Now put your head back in the sand, Greg. We all know that’s what you’re going to do anyway.

      1. If you’re confused about anything in my comment, Greg, please ask a specific question and I’ll gladly provide more explanation.

        As I said, this isn’t complicated. You can make it complicated if you like. That’s your problem, not mine.

        1. Your problems Malcolm are more easily identified as stemming from the incredible cognitive dissonance of your supposed working to obtain something for your clients that you are philosophically opposed to (that being personal property rights).

          Maybe spend more time resolving your own problems before spewing about others and what you think their problems may be…

    1. Claim 1 recites an abstract idea. Claim 2 is directed to an abstract idea. There’s no difference whatsoever for the purpose of the analysis.

      The “directed to” inquiry, therefore, cannot simply ask whether the claims involve a patent-ineligible concept, because essentially every routinely patent-eligible claim involving physical products and actions involves a law of nature and/or natural phenomenon — after all, they take place in the physical world. See Mayo, 132 S.Ct. at 1293 (“For all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.”)

      Enfish LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016)

      Your explanation does not seem quite consistent with the precedent. That could well be because the precedent is a self-contradictory welter of reasoning in circles (that would be consistent with my view). I thought, however, that you were volunteering to explain to me why the precedent is not so self-contradictory as I had been complaining. So far, I do not see any such explanation.

      1. Greg, you ask a very good question regarding what “directed to” means and it seems there is a lack of clarity from the CAFC about this point. Ignore MM’s response above, as it avoids the question entirely.

        It’s a tough one, but I would say as the cases continue to develop they will point out that one would have to look at a number of factors which include: 1) what is the patentee really attempting to patent (reviewing the spec and the objects of the invention may help here). 2) the preamble of the claim. 3) what kind of conduct/devices would be covered by the claim. 4) what is novel in the claims (important these days, Rehnquist’s prohibition about this in Diehr has been largely eviscerated by later decisions)

        #4 is difficult to apply in a situation like Secured Mail, where there was nothing generally unconventional in the individual steps, only the ordered combination. Which is probably why this particular panel tanked these claims.

        I’d like to see the CAFC do a more thorough “directed to” analysis in each further 101 case they decide.

        1. Ignore MM’s response above, as it avoids the question entirely.

          ROTFLMAO

          I responded with specific examples falling under each category and explained the difference.

          You said “it’s tough” and then you hand-waved a bunch of nonsense that amounts to nothing.

          the preamble of the claim <– really? what about it? you think you can get around ineligibility with your preamble??? wow

          what is novel in the claims (important these days, Rehnquist’s prohibition about this in Diehr has been largely eviscerated by later decisions

          There was never any “prohibition” against setting aside recitations of the prior art in the course of performing an eligibility analysis. The so-called “printed matter doctrine” requires that you do this. More importantly, common sense and logic requires that you do this. Otherwise a two year old can scriven its way around 101. My goodnesss but you people never cease to amaze.

          there was nothing generally unconventional in the individual steps, only the ordered combination.

          What was “unconventional” about the “ordered combination”? Comparing info to a list? That’s “unconventional”? Comparing info to a list in the context of permitting access to a moving vehicle? That’s “unconventional”? What? Using logic in a context? Is that “unconventional”? Tell everyone. You’re a very serious person! You’ve thought about this a lot, I’m sure.

          I’d like to see the CAFC do a more thorough “directed to” analysis in each further 101 case they decide.

          LOL Because why? Because you’re “confused”?

      2. Your explanation does not seem quite consistent with the precedent.

        Nothing in my comment is inconsistent with that passage from Enfish (a ridiculous farcical decision, by the way, from top to bottom, and only underscored further by the district court tanking the “revolutionary” claims as obvious, which should have been apparent to everyone in the first place).

        the precedent is ….so self-contradictory as I had been complaining

        Right. The precedent is “self-contradictory” because — as Judge Crybaby admitted — it’s impossible to come up with something concrete and consistent when we are talking about abstractions in the first place. This is why logic and information doesn’t belong in the patent system, period. Structurally defined and distinguished new machines that carry out logic? Sure. But not the logic tasks themselves or (LOL) the instructions for those machines or the method of writing those instructions. That’s absurd on its face.

        You want something consistent and coherent? Here it is: expunge the system of claims that protect logical data processing and information, in any pre-existing context. There you go.

        Don’t like it? Let’s hear your alternative. Too hard for you? My goodness, Greg, then you’ll just have to clam up maybe and listen for a change instead of whining about a problem that you apparently do not even understand.

        Also: you asked a question and I answered it. Most of the CAFC judges know what’s going on. A few don’t. Here’s a clue: the ones that don’t are the one’s you shouldn’t be paying attention to. I know that’s hard because I know you dearly dearly wish that you could patent newly printed words and all kinds of other junk but we’re never ever going back to that.

  3. Ned:

    Absolutely. My main concern is what you are advocating for is mere attorney argument which will never carry the day at the PTO or in court. Subjective judge or examiner opinion without evidence is okie-dokie and taken as objective fact.

    The claims include enough detail to capture this improvement. What the claims cannot be protected from is a judge or examiner removing all of what disntiguishes the claims from old uses and embodies the improvement.

    In essence, you could just say “the claim is directed to delivering mail.”

    DONE

    The rest of the analysis could be cobbled together by a middle school child with a chart. No factual analysis between cases and claims are ever really undertaken. Panels cherry pick cases that have no factual correlation to claims under consideration.

    Just like the USPTO, courts don’t analogies facts of cases to claims, they compare legal conclusions of prior cases to claims and then make up justifications for why an ineligible method for antenatal screening is analogous to a telecommunications method.

    The whole 101 regime is absurd.

    1. >>The whole 101 regime is absurd.

      To wit:

      “the process is directed to the abstract process of communicating information about a mail object using a personalized marking.”

      Tell me a set of claims (of a commercially viable product) that cannot be characterize at this level of abstraction as an abstraction.

    2. all of what disntiguishes the claims

      If “all of what distinguishes the claims” is an abstraction (e.g., “mail” object; “grandma’s” object; “thing you just noticed” object; “recipient”, “licensed user”, etc.) devoid of structural meaning then there is no “distinguishing” that is meaningful from a patent perspective. What’s being claimed is not new technology but rather a scrivened description of old technology applied in some context.

      You might as well claim an old car and call it a “service promoting translation device”. Then when the old car is cited against you, you just fill your diapers and screech “but you’re ignoring the words of the claim! it’s not a car! it’s not a car!”

      This is really how st 00 p it you maximalists sound when you try to defend this stuff. Stop it already. You’ve turned the entire profession into a f ing j 0ke.

      1. The point is the analysis that is used. Whether it should be invalid under 103 is another question. Your comments are not responsive.

      2. Can you please cite any evidence that a method of obtaining the contents of a sealed envelope without opening the envelope was “well known” prior to this disclosure? If not, no one should bother listening to a word you have to say.

        1. In the old days, I guess you could make a photocopy of a letter and place the original in a sealed envelope.

          In 2001, you could digitally scan the original letter, mail it, and store the digital scan on a webpage at a URL, which could be accessed by the recipient. No new technology was needed in order to carry out the (business) method.

          1. Sounds like an obviousness rejection with a bunch of “could have” or “might have” motivation statements. Providing evidence that those exact method steps (in the claimed order, as a whole) were well known used prior to this invention would get you closer, but I’m guessing you can’t provide me with any evidence that the steps existed, especially in the ordered combination claimed.

            Claims don’t need “new technology” to be eligible. McRO and Amdocs killed off that requirement.

        2. Can you please cite any evidence that a method of obtaining the contents of a sealed envelope without opening the envelope was “well known” prior to this disclosure?

          I was maybe eight when I figured out that you could quite often see what was in a sealed envelope by holding it up to the light. That was before the filing date.

          The other thing you could do was contact the sender based on info outside the envelope and ask him what was in it.

          There’s two answers. You’re question is very silly and anybody defending this claim — particularly a patent attorney — should have their head examined.

          1. Your reply is absurd but I’m glad everyone can see it. This type of silliness is as morbidly fascinating as most 101 rejections from the PTO.

            1. Your reply is absurd

              Your question was absurd. You got the answer you deserved.

              The irony, of course, is that you’re here pretending to be a professional defending logic patents and whining about “incoherent tests.” But you can’t even ask the right questions. Are you too lazy or do you lack the chops? Either way, you’re very typical. The brightest people aren’t defending this stuff because they know they can’t. Then there are the people like you.

              [shrugs]

              1. The irony, of course,

                Malcolm trying to tell others – ANY others – of irony….

                Stultifying.

  4. “Rather, each step of the process is directed to the abstract process of communicating information about a mail object using a personalized
    marking.”

    This is a ridiculous holding. Under this type of logic any claim can be captured by an abstract idea. Shameful. What Reyna (the one who admitted to knowing nothing about patent law, science, or innovation just a few short years ago) seems to want is the innovation in one of the steps rather than the combination.

    Should this have been invalid under 103? Maybe. Apparent the CAFC doesn’t feel it necessary to follow patent law anymore.

    “Secured Mail argues that because the district court’s conclusions address questions of fact,” Reyna then yaps about intrinsic evidence side stepping the fact that holding of fact were made about what the intrinsic evidence showed.

    1. Thank you Dennis for tracking these patent cases. One thing that would have been worthwhile discussing (not just by you, but by everyone with an opinion commenting here) is the advantages provided by the claimed invention(s). This seems like a key consideration under the wise Alice guidance of “significantly more”. Without thorough thought and discussion of the benefits of the claimed subject matter, how can anyone arrive at a conclusion?

      1. I invented that, I agree. The source of the doctrine that appeared in both Le Roy v. Tatham and O’Reilly v. Morse originated in the English Nielsen case that concerned one of the great inventions of all time, the hot air blast furnace for smelting iron. The use of hot air as opposed to cold air in the blast increased efficiency by 50% or more. It revolutionized iron making in England. But the question before the Court of Appeals (Exchequer Chamber) was whether by stating the principal and effectively claiming all apparatus for carrying it out, the inventors were claiming a principal in the abstract. The case was resolved primarily on the basis that resulting blast furnace provided a great improvement and was a “manufacture” within the statute deserving of protection.

        1. The blast furnace case should be easy to understand with a modern understanding of innovation. Someone came up with an improvement to blast furnaces by adding hot air. They should be entitled to a patent for that which includes all conventional ways of adding the hot air. Another person can get a patent on a non-conventional way of adding hot air to the blast furnace.

          That is a modern view.

          1. Notice too the way this provides incentives for new structure. And notice that the new methods of adding hot air would be improvement patents and would need to license adding the hot air. But, this modern provides incentive to innovate at each stage for all the new structure.

            1. But this is the precise point that causes trouble for those that believe in MathS (the philosophical underpinning related to software.

              Then combine that difficulty with the patent law basis of equivalency (and to keep the dust-kickers at bay, this patent law basis is expressly NOT concerned with “exactly the same as”) and you are led to the massive conflation and dissembling of the anti-software patent “folks.”

    2. I ALSO THINK SO.
      Steps from start to finish are not claims, it is instruction. So then Origami is patentable too? How about putting together a Bicycle from instruction? Or a recipe?

      1. ARE WE ANY CLOSER TO THE USPS BEING ABLE TO KNOW WHAT’S GOING TO THE USPTO OR COPYRIGHT OFFICE IN THEIR AWESOME BAR CODE? AFTER ALL THEY WON’T HAVE TO OPEN AND REPACKAGE IT AFTER THEY PEEK. OOPSY , MY IDEA YOU CAN’T PATENT IT.

        1. NOW THAT WILL BE SOME AWESOME SOFTWARE IDEA THAT WOULD BE PATENTABLE. STEPS SAVED, AND NO PROOF THE BARCODE WAS READ.

      2. Well, how do “steps from start to finish are not claims” relate to Alice? And, how is that different than a method? I think you need to tell us how to tell when something is a “steps from start to finish.”

        1. SHOW ME A PATENT THAT IS INSTRUCTION NIGHT WRITER. EACH CLAIM DESCRIBES WHAT YOU ARE CLAIMING IT IS. AND WHAT IT CONTAINS. ARE YOU GOING TO TELL ME THAT THE CONTENTS OF A PILL IS MEASURED AND WRITTEN IN THE PATENT AND CLAIMS? ISN’T THAT WHY THE PATENTS WRITTEN ABOUT EARLIER TRIED TO DESCRIBE AMOUNTS TO BE TAKEN WERE INVALID? WHICH WE ALL KNOW DIFFERENT SIZED PEOPLE WOULD TAKE DIFFERENT AMOUNTS OF MEDICINE. OR THAT BLOWING UP A SWIM MATTRESS DESCRIBES HOW TO BLOW IT UP TO MAKE IT COMPLETE. OR A GYM MAT AND HOW TO USE IT, OR EVEN HOW TO MAKE IT.

      3. Method of constructing an origami-style of foldable picture frame from a unitary blank of sheet material

        US5365684A (so, no. Origami is not next. Origami was previous)

        link to patents.google.com

      4. Or perhaps closer to what you had in mind:

        4. A method for making a pyramid structure from a square sheet of foldable material, the method comprising the step of:
        folding the four corners of the sheet toward a single point over the center of the sheet to create the pyramid structure.

        link to patents.google.com

        US5842630A

  5. DC the force behind the patentee is patent attorney Todd Fitzsimmons

    This is what happens when you open the gates up to scriveners and game-players: they rush in and destroy the system. All this was predictable, by the way. We’ve been discussing it here for years. Also: this is the same wealthy entitled class of “innovators” who spend endless hours whining and crying on blogs about how unfair everything it is that they can’t “monetize” their junk more easily because “Big Corp”. And most of them are glibertarian types who don’t care about anything at all except themselves. It’s not a pretty picture. But it is reality. You can’t run away from it.

    Now let’s look at this junky claim for five seconds:

    A method for providing electronic data to a recipient of a mail object

    Right there in bold is where the red flag should be going up at the PTO. There is no structure whatsoever associated with the term “mail”. It’s absolutely meaningless from a technological perspective and should be simply swept out of the claim.

    Then we’re left with this:

    A method for providing electronic data to a recipient of an object

    We’re all “recipients of objects.” This is just pure nonsense. There is nothing in this claim. It’s vapor laid on top of the prior art. That’s why it’s abstract.

    The prior art taught that information could be stored in bar codes and bar codes could be put on literally any object (and lets’ be clear: the prior art taught a lot more than that about using information on objects). It doesn’t matter where the object is going to or where it’s coming from. It doesn’t matter who is sending the object or receiving it. It doesn’t matter what’s in the object. It doesn’t matter how much the object cost. The “technology” (printed information has meaning! wowee zowee!) is unchanged.

    My goodness people open your eyes for a change.

    1. “And most of them are glibertarian types”

      What if most inventors are glibertarian types? They have to be 1. interested in the useful arts as opposed to the purely creative ones (where leftists dominate) and 2. very innovative (creative). Sounds like a recipe for a glibertarian to me.

      1. Sound more like a recipe for Sullivanians than Gilbertarians.

    2. So the claim expressed in EPC (or Jepson) form would be as follows:

      “A method……………………characterized in that the object is a mail object”.

      No wonder Jepsons are not popular.

    3. People and institutions that, like the Clintons, use government to become rich are the problem, MM. Libertarians who do the same are not libertarians at all.

  6. At # 1.2 Dennis writes:

    “..the win here on 12(b)(6) means that there is a huge reduction in cost-to-defend as compared with an obviousness challenge.”

    Two questions for you, readers. First, how big is “huge”?

    Second, are courts (mindful of procedural economy) really influenced (in their choice which legal hammer to use to nail a claim) by “huge” differences in “cost-to-defend”?

    1. The better question: should they be?

    2. 1. At a napkin’s-back guess since no one else has responded as yet, dispensing at MTD phase maybe 30K-80K (depending on how outlandishly the defendant lawyered up) vs. merits trial for invalidity maybe a few million?

      2. I think it’s not a strong influence, but as you already note judicial economy is relevant. And there is a lot of work for the court between MTD and through trial. If a judge can validly dispose of the case at MTD, why not do so?

      OTOH, maybe this could become an overly-tempting hammer for overloaded dockets.

      1. Mellow, yes, the cost difference is huge, but even at only $700 per hour per litigation attorney, $30K-$80K would only be 43-114 attorney billing hours. Very little time to get up to speed enough to be able to answer unpredictable questions from the judge at the motion hearing, much less find the prior art needed to show what is well known, draft the motion, file an appearance, counsel the client, etc. Even an IPR could be 2 or 3 times that.
        [However, your sole courageous relative cost estimate may well get the usual rant from those objecting to making policy arguments even if that is all they make themselves.]

        1. You absolutely miss the point Paul (vis a vis which branch of the government should be making patent law based on policy).

          Your snide comments about people on blogs discussing policy is nothing more than a sign of your own cowardice. YOU have no problem posting with “policy” in mind all the while continue to attempt to denigrate those who want to discuss a fully legitimate topic.

          It’s not as if you actually try to engage on the merits of any discussion and simply fail to hold your own in any discussion. You F A 1 L to even come close to that rather low standard. Instead you merely want to snipe from the sidelines.

    3. I suspect that is why the 101 regime, as currently formulated, exists.

      The reason that so many 101 cases look like 103 cases is because the PTO, PTAB, District courts, and eventually Fed. Cir. were so incompetent at throwing out obvious 103 cases that another standard had to be innovated to get around duncemanship.

      1. Alex, perhaps. But the need for Bilski/Alice was directly related to State Street Bank that overruled the business method exception. This coupled with the Feds idea of “nominalism,” where if the claim was nominally directed to an apparatus or method, even if literally old, it could be patented if the claim included otherwise ineligible subject matter not disclosed by the prior art.

        Thus, one could, according to Feds, get the Bilski claims if one recited the use of a generic computer; or claim to information regarding the need to change dosages in combination with a completely old and conventional blood test.

  7. JCD that jurisprudence at times seems to be developing for policy reasons without a thorough consideration of all sides of the relevant policy issues.

    LOL Totally different from the “jurisprudence” which shoe-horned logic into the patent system simply by declaring that stored data is the “essence of electronic structure”?

    You weren’t complaining then but other people were. And then we all watched the system implode with a zillion junky “do it on the Internet” claims.

    And now you want to complain about a lack of thoughtful consideration of the issues? Too funny.

    All that’s happening is that the gates are being closed on junk that should never have been in the system in the first place.

    1. Your dissembling on “shoehorning Logic” is noted.

    2. MM, it might be good to emphasize that any inventive application involves a new or improved manufacture (machine, manufacture, composition or related process). An improved method of doing business alone is not a manufacture even if new and even if as non obvious as all get out.

      1. It might be just as good to emphasize that since 1952, the statutory category of “process” is NOT a handmaiden to the hard goods categories and is a full and equal category unto itself.

      2. No need to even go that far.

        “For purposes of evaluating an invention under section 102 or 103 of title 35, United States Code, any business practice, whether known or unknown at the time of the invention or application for patent, shall be deemed insufficient to differentiate a claimed invention from the prior art.”

        The Patron Saint of patents would surely approve of using an undefined term in a critical passage, and then using the courts to cram a definition down everyone’s throats…

  8. Does anyone have evidence of a method that existed prior to this where a recipient could read the contents of a written letter sealed in an envelope without opening the envelope?

    Surely Carnac the Magnificent would have been cited as prior art by this panel.

    1. “Does anyone have evidence of a method that existed prior to this where a recipient could read the contents of a written letter sealed in an envelope without opening the envelope?”

      Since that’s not what is claimed, I dont know why anyone would even present that evidence. Find me the limitation in the claim that covers “reading the contents of a written letter sealed in an envelope without opening the envelope.” You will be looking for a while.

  9. DC: “Read it and weep:”

    Dennis, I can’t tell if you think the Federal Circuit has gone too far here, or if you are just being sarcastic because the patents are so basic?

    Aside from all of the 101 / 103 issues, I will just say that this doesn’t seem like a bad idea. The next letter you get in the physical mail, just scan the envelope barcode with your phone camera and you can read the contents without having to open the envelope.

    1. you can read the contents without having to open the envelope.

      Also known as a postcard.

  10. I can easily agree that the tanked claims here are invalid. This seems to me, however, like the textbook example of why §103 can deal with much of what we are now using §101 to accomplish. Mail was old in the art. QR codes were (as of the time of invention here) old in the art. Using QR codes on the mail to achieve exactly the sorts of things that QR codes are meant to accomplish is obvious.

    Why do violence to the English language by insisting that a claim that requires that one print printing on an envelope is an “abstract idea”? Whatever other fault you might find in this claim, printing on envelopes is neither “abstract” nor an “idea.”

    1. I agree. The other question I have is whether the new 101 jurisprudence may effectively be used to shorten a patent term. The court identified the abstract idea because the claims were “well-known and conventional.” However, at what point did they become “well-known and conventional?” This patent family has a priority date of 2001. Wast his technology well-known and conventional then? Under the new 101, we don’t have to ask.

      1. Ah…”well-known and conventional” with, I’m guessing, no evidence in the record that the actual method steps were well-known and conventional at the time of patenting. Being a judge or examiner is so easy with this magic wand.

        1. I agree BlutoBlutarsky. It is not applying the law to say well-known and conventional without evidence, and it is not patent law to disassemble claims and discuss only the elements of the claims without considering the elements in combination.

          1. You cannot be serious in suggesting that bar coding of numerous objects indicative of their contents or use was not well known as of that filing date. Were you not around when Lemelson was suing everyone for that years ago on his patents having filing dates 25 years before that?
            Nor can you be serious in suggesting that if the claim elements were novel that the patent owner’s attorneys would not have strongly made that argument in its response to the 101 motion, and on appeal.

            1. There should be no hand waving in patent law by judges. And, we all know that hindsight reasoning is something that most of the judges on the CAFC do not understand.

            2. Give me a break. Generic knowledge of a QR code preempts a method that allows a recipient of a letter placed in a sealed envelope to read the contents of that sealed envelope without opening? This is why the gist analysis is so absurd. It ignores the actual limitations of the claim.

              1. Bluto, one needs to frame the argument about inventive application in terms of improvements to one of the statutory classes. Here I agree that placing a QR code on an item of mail for the purpose provided an improved article of manufacture.

                1. Ned:

                  Absolutely. My main concern is what you are advocating for is mere attorney argument which will never carry the day at the PTO or in court. Subjective judge or examiner opinion without evidence is okie-dokie and taken as objective fact.

                  The claims include enough detail to capture this improvement. What the claims cannot be protected from is a judge or examiner removing all of what disntiguishes the claims from old uses and embodies the improvement.

                  In essence, you could just say “the claim is directed to delivering mail.”

                  DONE

                  The rest of the analysis could be cobbled together by a middle school child with a chart. No factual analysis between cases and claims are ever really undertaken. Panels cherry pick cases that have no factual correlation to claims under consideration.

                  Just like the USPTO, courts don’t analogies facts of cases to claims, they compare legal conclusions of prior cases to claims and then make up justifications for why an ineligible method for antenatal screening is analogous to a telecommunications method.

                  The whole 101 regime is absurd.

              2. Give you a break? How about you learn more about hindsight reasoning and treating inventions as a whole. Any analysis that short circuits that process is not patent law, but witch law.

              3. “a method that allows a recipient of a letter placed in a sealed envelope to read the contents of that sealed envelope without opening”..

                Yeha, that is nowhere in the claim (claim 1 that Denis posted above). There is nothing about a QR code being placed on the outside of a sealed envelope, or any limitation about a sealed envelope not being opened, or any limitation about reading the contents of the sealed envelope without opening it. You managed to read an awful lot into that claim that doesnt exist as written.

                Claim 1 as Denis posted above could be a QR code printed on a sheet of paper and placed inside an envelope, where you have to open the envelope to get to the QR code….

        2. Ah…”well-known and conventional” with, I’m guessing, no evidence in the record

          Are you joking? The admission of the conventionality was right there in the specification, which is where it is in 99% of these junky “do it on a computer” patents.

          You think this patent attorney invented the bar code scanner?

          LOLOLOLOLOLOLOLOLOLOLOLOLOLOLOL

        3. Yes…. are you paying attention MM?

          Once again, the courts have applied the logic you insist they have not. Once again something has been declared abstract because it is old, with no evidence provides as to its age and after the Patent Office has come to the contrary conclusion that it is new and not obvious.

    2. Greg – I totally hear you except: (1) the PTO has now issued eight patents in this family over a period of many years and with several different examiners; and (2) the win here on 12(b)(6) means that there is a huge reduction in cost-to-defend as compared with an obviousness challenge.

      1. Dennis,

        That makes total sense, but… that’s obviously a policy argument for why the law should be a certain way rather than a legal argument that the law is a certain way. There are very real policy issues that are worth considering, but it is concerning that jurisprudence at times seems to be developing for policy reasons without a thorough consideration of all sides of the relevant policy issues.

        JCD

        1. * Just as a point of clarification, I don’t necessarily have a problem with the result of this decision. I have only briefly reviewed it, but nothing struck me as surprising, and I think it can be found to be consistent with some sort of coherent analytical framework for these issues.

      2. [T]he win here on 12(b)(6) means that there is a huge reduction in cost-to-defend as compared with an obviousness challenge.

        I am not sure that I buy that. Granted that it cost less to get to victory in the district court on the §101 grounds than it would have cost to get there on §103 grounds. However, §101 law is (shall we say) unclear, and the results of appeal in §101 disputes are (shall we say) panel dependent. Therefore, by deciding this case on §101 grounds, the court is fairly well inviting an appeal. By contrast, if they had decided it on a very solid §103 basis, I would not be surprised if the disappointed patentee would have simply said “there is no point in throwing good money after bad to appeal this.”

        Appeals to the CAFC are not cheap. Did the challenger really save any coin here, when you throw in the added cost of appeal, relative to what would have been spent getting to the same result for the right (IMHO) reason?

        1. Greg, that would be nice in theory but it rarely works that way. Because the Fed. Cir. has made it very difficult to get a summary judgement on 103 sustained, thus requiring full discovery and full trial in the D.C. on that AND all other possible issues AND an appeal. Typically for $2 million or more.

          1. Because the Fed. Cir. has made it very difficult to get a summary judgement on 103 sustained,

            I have seen absolutely NO data supporting that supposition.

          2. Greg, that would be nice in theory but it rarely works that way.

            Fair enough, Paul. This is a question where actual numbers really matter, and I do not pretend to be familiar with the relevant numbers. I will defer to your greater familiarity with the relevant figures on this point.

            1. Greg, first, D.C. judges have a lot of discretion to not even entertain S.J. motions, or not until on the eve of trial. Secondly, an S.J. can get reversed as not properly granted if there are any relevant disputed facts. Thirdly, a 103 S.J. requires “clears an convincing evidence” by the defendant. That is very different and far less common than S.J. motions granted for non-infringement, where the patent owner has the burden of proof and the judge gets to define the claims in a pre-trial Markman.
              Also very different and far less common than S.J. motions re unpatentable subject matter granted on the pleadings since Alice.

    3. Yep. When the law gets bent to achieve desired outcomes, the law remains bent, and undesired outcomes follow.

      1. Not only is the law bent, but we have a professor of law (and involved in patent law, no less) not seeing the problem with the law being bent.

        Further, with the write-up including such phrases as “read it and weep” and “X patent attorney is a driving force,” I was wondering if Malcolm had been invited to write the article.

        No wonder that Malcolm can post up to 26 times (and running) on one thread, while my posts are capped at 8.

        1. The ones “not seeing the problem” are the ones urging personally bending of real law by defiance of decisions of the United States Supreme court clearly calling for a preliminary or initial disposal of claims directed to what it has held to be unpatentable subject matter.

          1. Your “Ends justify the Means” is showing Paul.

            Calling out a court (even the Court) is something that SHOULD happen when attorneys take their particular State Oaths*** seriously and do not place the judicial branch ABOVE the Constitution.

            ***the Commonwealth of Massachusetts being a rare exception as to contents of that oath.

            1. How long would any actual bar membership last for an attorney constantly just telling clients and judges “I don’t care what the Supreme Court says, I know the law better than they do, and they are legally wrong.” No competent law school would graduate students who constantly responded like that in classes all the time either.

              1. “Constantly just” is a classic mischaracterization that completely misses the point of what nearly all state attorney oaths DO say.

                It simply is NOT a matter merely of “I don’t care” – and it never has been that.

                The Supreme Court is NOT above the Constitution and no one should think otherwise.

          2. The Supreme Court that issued Dredd Scott, Plesy v Ferguson, Korematsu (Japanese-American internment), Bowers v Hardwick, etc. ?

            “Because the Supreme Court said so” isn’t a good argument when discussing what the law and policy _ought_ to be. Section 101 is an expansive statute, it encoded case law that was generous with respect to eligibility, and the Supreme Court has set forth a vague standard that does not provide predictability. The case law enables dismissal of causes of action based on facts that come from a judge’s brain, ignores dependent claims, and shifts the cost of incompetent examination to those who are paying for the examination, among other problems.

            1. ““Because the Supreme Court said so” isn’t a good argument when discussing what the law and policy _ought_ to be”

              No but it is the supreme argumentation when discussing what the lawl and policy _is_. You can whatever argumentations you have about “ought to be” to congress.

            2. Not great examples. Dredd Scott only got reversed by a bloody civil war. Korematsu was done under war powers and never actually reversed, only belatedly apologized for by Congress. Numerous other old Sup. Ct. decisions [e.g, striking down child labor laws] actually did get reversed by later Sup. Ct. decisions, and thus could be ignored thereafter, but that was not accomplished by mere unsupported individual complaints, nor effective until accomplished.

      2. When the law gets bent to achieve desired outcomes, the law remains bent, and undesired outcomes follow.

        Why weren’t you complaining when the CAFC bent the law to allow logic to be eligible for patenting because “computer” and “new context”?

        The undesired outcomes were pretty plain for most of to see then.

        Where were you?

        1. The simple set theory explication amply displays your (ongoing) dissembling, Malcolm.

        2. Isn’t that a trick of the Right, Malcom? Divert and distract? Whatever happened in the past and whatever I thought of it is irrelevant.

          I’m not even that concerned with whether the law is expansive or constrictive. I’m concerned with whether my clients, who generally try to benefit the public, can have somewhat reliable predictions about their strategies and expenditures. The courts have failed to do their job and have given judges too much discretion to destroy IP rights, often in cases where many IP professionals (in-house counsel, patent examiners, PTAB judges, prosecuting attorneys, etc.), who are more familiar with the relevant technology, have reasonably considered subject matter patentable.

    4. Greg, I see your point, but I don’t think it is that simple. Merely printing something shouldn’t be (in itself) a threshold step to remove an “abstract idea.” Look at 20050282140 (i’ve referred to this before because it is a good example of ridiculousness). What if the claim ended with, “printing elements of the story in a book.” Of course that wouldn’t be enough to pass muster under 101. If printing were merely enough, then any abstract claim could be rescued with some kind of printing or displaying step.

      Of course, printing a barcode on an envelope is a little different in that the barcode on the envelope itself is essential to the invention. If analyzed under the printed matter doctrine it should not be ignored (the printed matter doctrine is, in some respects, a cousin to the eligibility doctrine). I don’t know if the attorneys for patentee made this argument.

      I don’t know if I agree with this decision or not in view of the precedent we are stuck with. It is in tension with Bascom (which is notably absent from the opinion). While each individual step of the claims are conventional, the ordered combination apparently is not.

      1. If printing were merely enough, then any abstract claim could be rescued with some kind of printing or displaying step.

        In a sane world, merely printing something would be enough to make a claim §101 eligible. Section 101 was always meant to be a wide gate. It is not a mark of a well functioning patent system when lots of claims are being excluded on §101 grounds.

        That is not to say that I weep copious tears for many of these claims. Many of them deserve to be tanked. But they should fail for the right reasons (i.e. §§103 or 112).

        I don’t know if I agree with this decision or not in view of the precedent we are stuck with.

        In view of the precedent that we are stuck with, I also (like yourself) do not know whether I agree or disagree with this decision. I take strenuous exception to that precedent in the first place, however. For one thing, part of the reason why one cannot know whether this case is or is not consistent with the previous precedent is that the previous precedent is an incoherent welter of contradictory end-justifying the means by walking in logical circles.

        God only knows what it means for a claim to be “directed to” an exception category. This precedent certainly does not give us any sort of clear rule for making that determination. Just more of “I know it when I see it.”

        1. . It is not a mark of a well functioning patent system when lots of claims are being excluded on §101 grounds.

          Please define “lots”.

          More patents are being granted now than in any time in history.

          Also, the fact that a large number of patents are failing eligibility challenges is not because 101 is being expanded. It’s because a ton of ineligible junk was filed upon and then granted by a PTO incapable of dealing with it. And it’s still incapable of dealing with it.

          There’s nothing wrong with a system that’s cleaning itself up. Eligibility failures will be more rare when there is far less junk clogging up the system. That’s going to take years, by the way.

          1. Please define “lots”.

            You have me there. I cannot, meaningfully, define “lots.” Please consider that particular gripe withdrawn.

        2. God only knows what it means for a claim to be “directed to” an exception category.

          Are you asking for some assistance, Greg?

          I’m here to help.

          1. Are you asking for some assistance, Greg?

            I’m here to help.

            Excellent. Lord knows I need some help.

            Please explain to me how we recognize a claim (such as those, I am given to understand, at issue in Enfish or McRo) that recites an abstract idea, but is not “directed to” that abstract idea?

            1. Let’s start with the Court affirmatively defining (and not hand waving) definitions like “directed to,” “Gist,” “abstract,” and “significantly more.”

      2. It is in tension with Bascom (which is notably absent from the opinion).

        One of the worst decisions ever written. No surprise the CAFC is running away from it.

    5. The issue on “inventive application” is whether the claim provides a new or improved manufacture (engine, manufacture, composition and related process). Whether the claimed subject matter is obvious or not is entirely beside the point as it asks entirely the wrong question.

      1. Your “and related process” is NOT in accord with the Act of 1952.

        You know this Ned, because it has been pointed out to you in great detail with points that you never want to acknowledge, let alone treat with any type of inte11ectual honesty.

        1. anon, MOT baby. It is the default rule and will remain so sub silencio.

          1. Except not – and very publicly by your own Supreme Court.

    6. Why do violence to the English language by insisting that a claim that requires that one print printing on an envelope is an “abstract idea”? Whatever other fault you might find in this claim, printing on envelopes is neither “abstract” nor an “idea.”

      Because you’re confusing “a claim” and “the invention” which is borne out of the mistaken view the CAFC has pushed about 112b “particularly pointing out and claiming the invention” requirement.

      Lets say you invent a new lock. You can (under current CAFC jurisprudence) claim a system comprising the lock, the door, the wall and the building. But the Supreme Court simply doesn’t care whether you claim your lock or your system comprising a bunch of conventional relationships + your lock. You can’t prevail under any statutory test by referring to what the art already knows. It doesn’t matter how many references it would take to teach the door/wall/building relationship, they simply do not contribute to the question of whether the lock is obvious. Similarly, they simply do not contribute to the question of whether the lock is eligible.

      One “printing printing on an envelope” results in the *claim* being abstract because *the invention* is not plausibly teaching one of skill how to write. *The invention* is an abstract idea which is carried into being using conventional functionality (i.e. printing). Reminding people that printing exists doesn’t suddenly change the character of your invention to something non-abstract.

      Just to remind you how silly you’re being – The Supreme Court explicitly said that E=mc^2 couldn’t be patented, and you just made the argument that *writing down* E=mc^2 could be, because “one printing printing is not an abstract idea.”

      1. Because you’re confusing “a claim” and “the invention” which is borne out of the mistaken view the CAFC has pushed about 112b “particularly pointing out and claiming the invention” requirement.

        There is confusion alright – just not how you think it to be.

        1. TOMATO TOMATO BOTH WOULD BE SUFFICIENT. SOUNDS LIKE ANON ALRIGHT. HE’S THE ONLY ONE THAT KNOWS ALL CARMAK THE GREAT

      2. Random, I have said this before and I will say that again here that the PTO has the power by its rulemaking to require applicants to segregate what was known from what is new in order to assist in the particularly point out function of a claim. The Europeans do this already. It is good practice and we should adopt it.

      3. [Y]ou just made the argument that *writing down* E=mc^2 could be [patentable], because “one printing printing is not an abstract idea.”

        Begging your pardon, but I made no such argument. I made the argument that the paper with “E=mc^2” would be patent eligible. It would not be patentable (even at the time that Einstein first conceived of the relationship between energy and mass) because it would fail §102 (paper with printing has been known in the art since well before the birth of our republic).

        That is my point. We do not need to (nor should we) try to make §101 do all the work of defining patentability vel non.

      4. Lets say you invent a new lock. You can… claim a system comprising the lock, the door, the wall and the building. But… [i]t doesn’t matter how many references it would take to teach the door/wall/building relationship, they simply do not contribute to the question of whether the lock is obvious.

        Agreed. Given that we both agree that, if the invention is the lock, the lock had better be non-obvious or the whole claim will end up unpatentable, I am not sure why one would wish to pursue the point further into §101. Nevertheless, you proceed:

        Similarly, they simply do not contribute to the question of whether the lock is eligible.

        Here I really do not follow you. How can a claim to a lock fail §101. Have you ever seen a case where a claim to a lock failed §101? If I did not see you making this argument with my own two eyes, I would think that this argument is intended as a caricature invented by someone over on Quinn’s site.

        One “printing printing on an envelope” results in the *claim* being abstract because *the invention* is not plausibly teaching one of skill how to write.

        Huh? This is largely unintelligible. Since when is an “invention” meant to teach anyone anything? The specification is there to teach the invention. The invention does not itself teach, nor is it supposed to. You are falling into the same error here of confusing categories of which you accuse me in 1.6.

        1. Greg, you are making some great points here.

        2. As not the OP, I will clarify. In this analogy we assume the lock is ineligible. Say that 101 actually states:

          “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title. But no locks shall be patentable.”

          Given that the lock is ineligible, the argument is therefore that the new lock + conventional door, house, driveway, etc is also.

          1. In this analogy we assume the lock is ineligible

            Your analogy cannot work then – you basically start with NOTHING (recognizable) is eligible.

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