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.