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By Peter Leung
A set of patents related to scannable codes used to verify the content of mailed packages are ineligible for patent protection, a federal appeals court ruled Oct. 16.
The U.S. Court of Appeals for the Federal Circuit said that Secured Mail Solutions LLC’s patents cover the unpatentable abstract idea of communicating information about a piece of mail through use of a marking on the package ( Secured Mail Solutions LLC v. Universal Wilde, Inc. , 2017 BL 369282, Fed. Cir., No. 2016-1728, 10/16/17 ).
The decision is further guidance from the nation’s patent appeals court on how to determine what constitutes patentable subject matter, which is especially important with software-related patents. In 2014, the U.S. Supreme Court in Alice Corp. v. CLS Bank Int’l, provided a two-step test, but some critics say it is vague and hard to apply and hits the software industry particularly hard.
Under Alice, an invention is unpatentable if it covers an abstract idea, unless there is an inventive concept that goes beyond that abstract idea.
Secured Mail’s patents involve scannable codes, such as QR codes, and customized web addresses that recipients of physical mail can use to get information about their packages, such as confirming their authenticity. One set of patents, which the court referred to as “intelligent mail barcode” patents, covers methods for verifying a mailed package or letter by having an identifier on the package that is linked to a database with information. Another set covers the use of a different device, such as a computer or a barcode scanner, to read the identifier.
Secured Mail sued Universal Wilde Inc., a marketing company, for patent infringement in the U.S. District Court for the Central District of California. The trial court ruled that the asserted patent claims were ineligible for protection because they cover an abstract idea and had no inventive concept. Secured Mail appealed.
Secured Mail argued that the district court took an overly abstract approach when considering the purpose of the patent. The Federal Circuit’s decision in Enfish LLC v Microsoft Corp., one of the few decisions where the court found that a patent survived the Alice test, warned that if the analysis is too high level, any patent claim could be considered abstract.
However, the Federal Circuit said the lower court didn’t make that mistake. It said that Secured Mail’s “intelligent mail barcode” patent claims were abstract because they generically call for encoding data onto a piece of mail but don’t describe how to actually do it. The claims also don’t provide special rules or details for the equipment used.
Secured Mail’s attempts to draw a comparison with the patent claims in Enfish also failed. The Enfish patents weren’t abstract because they focused on specific improvements to computer functionality. Secured Mail argued that its patents were also improvements, specifically on communications between the sender and receiver of a piece of mail. The Federal Circuit rejected that argument, saying a patent that purportedly makes a process more efficient doesn’t automatically mean it’s not an abstract idea.
The court also said that Secured Mail’s patents didn’t have an inventive concept, something that would have made them more than an attempt to patent an abstract idea. The claims were mostly routine steps involving the use of commonplace technologies, the court said.
The Federal Circuit contrasted Secured Mail’s patents to the ones in DDR Holdings LLC v. Hotels.com LP, another case where the challenged claims survived an Alice challenge. The patents in DDR described a specific way to automatically create web pages that are composites of several others, and addressed a specific problem related to internet commerce. By contrast, Secured Mail’s patents “are non-specific and lack technical detail,” merely claiming well known and conventional communication technologies, the court said.
Chief Judge Sharon Prost wrote the decision, which Judges Raymond C. Clevenger III and Jimmie V. Reyna joined. One LLP represented Secured Mail, while Wilmer Cutler Pickering Hale and Dorr LLP represented Universal Wilde. The lawyers for the parties didn’t immediately respond to Bloomberg Law’s requests for comment.
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