The US Court of Appeals for the Federal Circuit found a software patent directed to the transmission of digital communication using a sender-generated identifier to be ineligible subject matter because the claims contained “no additional elements that transform the nature of the claims into a patent-eligible application of the abstract idea.” Secured Mail Solutions LLC v. Universal Wilde, Inc., Case No. 16-1728 (Fed. Cir., Oct. 16, 2017) (Reyna, J).
The patent at issue involves methods whereby a sender affixes an identifier on an outer surface of a mail object before the mail object is sent. The identifier takes different forms, such as an “intelligent” barcode, a QR code or a personalized URL. The barcode consists of sender/recipient data and shipping method data that is concatenated into a set of encoded data. An authenticating portion of the barcode is stored for later retrieval by the recipient to verify that the mail object is authentic. The QR code is simply data that enables the recipient to request and receive personalized data from the sender. The personalized URL is a network address that directs the site visitor to personalized information.
After Secured Mail sued Universal alleging patent infringement, the district court dismissed the complaint, concluding that the patent was directed to patent-ineligible subject matter and therefore failed to state a claim under Rule 12(b)(6). The district court explained that the claims were directed to the abstract idea of “communicating information about a [mail object] by use of a marking,” and found no additional elements to transform the claims into patent-eligible subject matter because the sender-generated identifier was not a sufficiently inventive concept. Secured Mail appealed.
The Federal Circuit affirmed, finding that the challenged claims were indeed ineligible for patenting. Regarding step one of the Alice inquiry, the Court found that the challenged claims were directed to an abstract idea because the claims simply “embrace the abstract idea of using a marking affixed to the outside of a mail object to communicate information about the mail object.” The Court concluded that the claimed methods of affixing the sender-generated identifier for communicating information to a recipient were void of any rules or steps that establish how the focus of the methods is achieved, citing Enfish (IP Update, Vol. 19, No. 6), McRO (IP Update, Vol. 19, No. 10) and Thales (IP Update, Vol. 20, No. 4) for guidance.
Unlike the “self-referential table” in Enfish, the claims were silent on a new barcode format, an improved method of generating or scanning barcodes, or similar improvements in computer functionality. The Court concluded that an encoded identifier that is used to make a process more efficient does not necessarily render an abstract idea less abstract, and dismissed Secured Mail’s argument that the sender-generated identifier improved on the existing process. In contrast to the “automatic use of rules of a particular type” in McRO and “the particular configuration of inertial sensors” in Thales, the claims were void of any special rules or details of computers, databases, printers or scanners. The common observation raised by the Court in its analysis was the lack of detail in the claims regarding how the “unique identifier” is generated or how it is different from other identifiers aside from the fact that it is unique and generated by the sender.
Regarding step two of the Alice inquiry, the Federal Circuit found that the sender-generated identifier was not a sufficiently inventive concept, explaining that the claim language recited a conventional use of a barcode generated using generic computer technology for permitting generic communication between a sender and a recipient. The Court also concluded that the claim language lacked any specific showing of how the sender generates the information from various pieces of data, explaining that the claims were non-specific and lacked technical detail.