Secured Mail Solutions LLC v. Universal Wilde, Inc.

• Citation: 873 F.3d 905
• Decision Date: 16 October 2017
• Docket Number: 2016-1728.
• Parties: SECURED MAIL SOLUTIONS LLC, Plaintiff–Appellant v. UNIVERSAL WILDE, INC., Defendant–Appellee
• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit

873 F.3d 905

SECURED MAIL SOLUTIONS LLC, Plaintiff–Appellant

v.UNIVERSAL WILDE, INC., Defendant–Appellee

2016-1728.

United States Court of Appeals, Federal Circuit.

Decided: October 16, 2017

William J. O'Brien , One LLP, Beverly Hills, CA, argued for plaintiff–appellant.

Gregory H. Lantier , Wilmer, Cutler, Pickering, Hale and Dorr LLP, Washington, DC, argued for defendant–appellee. Also represented by Robert Manhas .

Before Prost, Chief Judge, Clevenger, and Reyna, Circuit Judges.

Reyna, Circuit Judge.

Secured Mail Solutions LLC appeals from the United States District Court for the Central District of California's grant of a motion to dismiss on grounds that the claims of seven asserted patents are directed to subject matter ineligible for patenting under 35 U.S.C. § 101. Because the claims of the asserted patents are directed to an abstract idea and the claims contain no additional elements that transform the nature of the claims into a patent-eligible application of the abstract idea, we affirm .

BACKGROUND

This appeal involves seven patents that Secured Mail groups into three categories. U.S. Patent Nos. 7,814,032, 7,818,268, and 8,073,787 are the "Intelligent Mail Barcode" patents. U.S. Patent Nos. 8,260,629 and 8,429,093 are the "QR Code" patents. U.S. Patent Nos. 8,910,860 and 9,105,002 are the "Personalized URL" patents.

All the patents involve methods whereby a sender affixes an identifier on the outer surface of a mail object (e.g. envelope or package) before the mail object is sent. Computers and networks are used to communicate the information about the mail object's contents and its sender after the mail object is delivered.

The Intelligent Mail Barcode patents recite a method for verifying the authenticity of the mail object. The identifier or barcode is a single set of encoded data that is generated by concatenating a sender-assigned unique identifier with sender data, recipient data, and shipping method data. '268 patent, J.A. 76–77. The barcode is affixed to the outside of the mail object and an authenticating portion of the barcode is stored in a database. The recipient of the mail object can access the database and use that authenticating portion to verify that a mail object is authentic.

The QR Code and Personalized URL patents additionally require that a reception device (e.g., personal computer) be used to scan the encoded data and display the resulting data on the reception device's display screen. See, e.g. , '629 patent, J.A. 98; '093 patent, J.A. 107; '860 patent, J.A. 120. In the QR Code patents, the identifier is a QR code (two-dimensional barcode) which a user can scan to look up additional electronic information related to the mail object. Specifically, the barcode includes data that allows the recipient of the mail object to request data directly from the sender and allows the sender to provide personalized data directly to the recipient, without the involvement of the mail carrier. For example, a customer might scan the QR code and be directed straight to her account rather than having to log in to access the account.

In the Personalized URL patents, a method similar to the QR Code patents is used, except the identifier is a personalized network address, or URL. For example, the user can type the URL into her web browser and be directed straight to a specific account, or to other personalized information. The types of data provided by the sender include content information, warranty information, and account information.

For the Intelligent Mail Barcode patents, claim 1 of the '268 patent is representative:

1. A method of verifying mail identification data, comprising:

affixing mail identification data to at least one mail object, 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;

storing at least a verifying portion of said mail identification data;

receiving by a computer at least an authenticating portion of said mail identification data from at least one reception device via a network, wherein said authenticating portion of said mail identification data comprises at least said sender data and said shipping method data; and

providing by said computer mail verification data via said network when said authenticating portion of said mail identification data corresponds with said verifying portion of said mail identification data.

J.A. 76 at col. 6 ll. 18–37.

For the QR Code patents, claim 1 of the '093 patent is representative:

1. A method for providing electronic data to a recipient of a mail object, comprising:

Generating, by a processor, a barcode for a mail object, said barcode including at least a first set of mail data, said first set of mail data including data corresponding to said recipient of said mail object;

affixing said barcode to said mail object;

submitting said mail object to a mail carrier for delivery to said recipient of said mail object;

receiving said first set of mail data, including data corresponding to said recipient of said mail object, from a reception device of said recipient via a network;

providing said electronic data to said reception device via said network in response to receiving said first set of mail data, said electronic data including a content of said mail object;

wherein said reception device displays said electronic data to a recipient of said mail object by displaying said electronic data on a screen of said reception device.

J.A. 107 at col. 6 ll. 22–40.

For the Personalized URL patents, claim 1 of the '860 patent is representative:

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 including data on a content of said mail object;

wherein said reception device displays said electronic data to a recipient of said mail object by displaying said electronic data on a screen of said reception device.

J.A. 120 at col. 6 ll. 34–51.

Universal moved to dismiss Secured Mail's complaint under Fed. R. Civ. P. 12(b)(6), arguing that Secured Mail's patents were not patent-eligible under Section 101. On February 16, 2016, the district court found that all seven patents were directed to patent-ineligible subject matter. It reasoned that "the asserted claims, viewed individually or in combination, do not meaningfully limit the abstract idea of communicating information about a mailpiece by use of marking." Secure Mail Sols. LLC v. Universal Wilde, Inc. , 169 F.Supp.3d 1039, 1058 (C.D. Cal. 2016).

Secured Mail appeals. We have jurisdiction under 28 U.S.C. § 1295(a)(1).

STANDARD OF REVIEW

We review procedural questions that are not unique to patent law, such as a grant of a motion to dismiss for failure to state a claim, according to the law of the regional circuit, which in this case is the Ninth Circuit. See, e.g. , Univ. of Utah v. Max–Planck–Gesellschaft Zur Forderung Der Wissenschaften E.V. , 734 F.3d 1315, 1319 (Fed. Cir. 2013). The Ninth Circuit reviews de novo a dismissal for failure to state a claim. See, e.g. , Livid Holdings Ltd. v. Salomon Smith Barney, Inc. , 416 F.3d 940, 946 (9th Cir. 2005). This court also reviews a district court's determination of patent eligibility under 35 U.S.C. § 101 de novo. See, e.g. , McRO, Inc. v. Bandai Namco Games Am. Inc. , 837 F.3d 1299, 1311 (Fed. Cir. 2016).

DISCUSSION

The Patent Act defines patent-eligible subject matter as "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof." 35 U.S.C. § 101. The courts have created certain exceptions to the literal scope of § 101, determining that laws of nature, natural phenomena, and abstract ideas are not patent-eligible. Alice Corp. v. CLS Bank Int'l , ––– U.S. ––––, 134 S.Ct. 2347, 2354, 189 L.Ed.2d 296 (2014) (quoting Ass'n for Molecular Pathology v. Myriad Genetics, Inc. , 569 U.S. 576, 133 S.Ct. 2107, 2116, 186 L.Ed.2d 124 (2013) ).

In Alice , the Supreme Court applied a two-step framework for analyzing whether claims are patent-eligible under section 101. First, we determine whether the claims at issue are "directed to" a judicial exception, such as an abstract idea. 134 S.Ct. at 2355. If not, the inquiry ends. Thales Visionix Inc. v. United States , 850 F.3d 1343, 1346 (Fed. Cir. 2017) ; Enfish, LLC v. Microsoft Corp. , 822 F.3d 1327, 1339 (Fed. Cir. 2016). If the claims are determined to be directed to an abstract idea we next consider under step two whether the claims contain an "inventive concept" sufficient to "transform the nature of the claim into a patent-eligible application." Alice , 134 S.Ct. at 2355.

1. Alice Step One

Under Alice step one we consider the claims in their entirety to ascertain whether they are directed to ineligible subject matter. Internet Patents Corp. v. Active Network, Inc. , 790 F.3d 1343, 1346 (Fed. Cir. 2015). We look to whether the claims "focus on a specific means or method [, ...] or are instead directed to a result or effect that itself is the abstract idea and merely invokes generic processes and machinery." McRO , 837 F.3d at 1314 (citation omitted).

The district court found that the claims of all seven of the asserted patents "are directed to the abstract idea of communicating information about a [mail object] by...