Secured Mail Solutions LLC v. Universal Wilde, Inc.
873 F.3d 905
Fed. Cir.2017Background
- Secured Mail Solutions owned seven patents across three groups (Intelligent Mail Barcode; QR Code; Personalized URL) claiming methods of affixing identifiers to mail and using networks/computers to provide recipient-specific electronic data after delivery.
- Representative claims recite generating/affixing a single set of mail ID data (e.g., sender-generated unique identifier, QR code, or personalized URL), storing/verifying portions in a database, and providing electronic data to a recipient’s device when the identifier is submitted over a network.
- Universal moved to dismiss under Fed. R. Civ. P. 12(b)(6), arguing the asserted claims are patent-ineligible under 35 U.S.C. § 101 as directed to an abstract idea and lacking an inventive concept.
- The district court dismissed, holding the claims were directed to the abstract idea of communicating information about a mailpiece by use of a marking and that the claims contained only routine, conventional steps.
- Secured Mail appealed; the Federal Circuit reviewed de novo and applied the Alice two-step framework to affirm dismissal.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the claims are directed to an abstract idea under Alice step one | Claims are specific improvements (sender-generated unique identifier; bi-directional communication) and not abstract | Claims recite only the abstract concept of using markings to communicate mail information | Held: Claims are directed to the abstract idea of using a marking on mail to communicate information |
| Whether the claims contain an inventive concept under Alice step two | The sender-generated identifier and use of networks and devices provide the requisite inventive concept | The claims add only generic computer/network and conventional mailing steps, not an inventive concept | Held: No inventive concept; elements are routine/conventional and do not transform the abstract idea |
| Whether dismissal on Rule 12(b)(6) was premature (fact questions) | Secured Mail contends factual issues (e.g., conventionality) preclude dismissal | Defendant argues the record and intrinsic patent disclosures allow resolution at motion to dismiss | Held: Dismissal appropriate; §101 inquiry can be resolved on the pleadings using intrinsic evidence |
| Whether the district court improperly shifted burden regarding conventionality | Secured Mail says it was required to prove unconventionality | Defendant says district court relied on the claims/specification, not a burden shift | Held: No improper burden shift; court permissibly relied on claim language and specification to conclude elements were conventional |
Key Cases Cited
- Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014) (establishes the two-step test for §101: determine if directed to an exception and, if so, look for an inventive concept)
- Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107 (2013) (identifies laws of nature, natural phenomena, and abstract ideas as judicial exceptions)
- Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) (claims improving computer functionality may not be abstract)
- McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016) (claims involving specific rules that transform information can be patent-eligible)
- DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) (claims that specify how Internet interactions are manipulated to yield a desired result can be eligible)
- Content Extraction & Transmission LLC v. Wells Fargo Bank, 776 F.3d 1343 (Fed. Cir. 2014) (inventive concept must be evident in the claims; §101 inquiries can be resolved on the pleadings)
- In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607 (Fed. Cir. 2016) (upholding §101 dismissal on the pleadings using intrinsic evidence)
- Thales Visionix Inc. v. United States, 850 F.3d 1343 (Fed. Cir. 2017) (distinguishing claims directed to particular hardware/configurations from abstract ideas)
- Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306 (Fed. Cir. 2015) (use of generic computer components does not make an abstract idea patent-eligible)