Searching for How: The Federal Circuit’s Continued Quest under Alice
On October 16, 2017, the Federal Circuit affirmed the district court’s ruling that the claims in Secured Mail Solutions LLC, v. Universal Wilde, Inc. (“Secured Mail”) were directed to patent-ineligible subject matter under 35 U.S.C. § 101. This ruling provides another data point as to what level of concreteness and specificity courts should consider when analyzing patent-eligibility questions under § 101.
Procedural History
The claims at issue involved various methods where a sender of a mail object (e.g., envelope or package) would affix an identifier (e.g., a barcode) to the outer surface of the mail object before the mail is sent. Secured Mail at 2. The barcode information would then be “stored in a database” such that the “recipient of the mail [] can access the database” along with information regarding the mail. Id. at 2. Claim 1 of the 8,429,093 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.
Following the two-step test from Alice Corp. v. CLS Bank Int’l., 134 S.Ct. 2347 (2014), the District Court for the Central District of California found that the claims were patent-ineligible at step-two of the analysis and granted the defendant’s motion to dismiss for failure to state a claim. Secured Mail Solutions LLC appealed, stating that the claims were analogous to those found eligible in DDR Holdings v. Hotels.com, 773 f. 3d 1245 (Fed. Cir. 2014). Re-applying the Alice two-step framework, the Federal Circuit agreed with the district court. Secured Mail at 12. The Federal Circuit held that the claims “lack[ed] technical detail” and did not recite “a specific way to solve a specific problem,” as the claims did in DDR Holdings. Id. at 12.
Analysis under Alice Framework
Step One
At Alice step one, the primary question is “whether [the claims in their entirety] are directed to ineligible subject matter,” such as an abstract idea. Id. at 7 (citing Internet Patents, 790 f. 3d 1346). At step one, the court “look[s] 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.” Id. (citing McRO, 837 f. 3d at 1314). Secured Mail Solutions LLC argued that the claims were eligible by analogy to the claims in Enfish because they “improved on [an] existing process both by reliably identifying the sender of the mail object and by permitting the sender to create a bi-directional communication channel between the sender and recipient of the mail object.” Secured Mail at 8. The Court found that the claims here were more focused on making an existing process more efficient, rather than improving computer functionality. Id. at 8. Improving efficiency “does not necessarily render an abstract idea less abstract.” Id.
The Federal Circuit also noted the claims lacked specificity as to how certain features recited in the claim were to be carried out. Unlike the claims at issue in McRO, the Federal Circuit found that no special rules or details were recited regarding functionality that would make the idea more concrete. Id. at 9. The Court specifically noted that there was “no description of how the unique identifier [would be] generated or how [it] differs from a personal name, or return address.” Id. at p. 9. The Federal Circuit was unable to find claims “limited by rules or steps that establish how the focus of the methods is achieved” such that they could end the inquiry at step one. Id.at 10. Thus, agreeing with the District Court’s finding that the claims were directed to an abstract idea, the analysis continued to step two of the Alice framework.
Step Two
At Alice step two, the inquiry is whether there is some “inventive concept, which is something sufficient to ensure that the claim amounts to significantly more than the abstract idea itself.” Id. at 10. Specifically, the Court at this step is searching for some indication as to “what is inventive about the [claim elements] or about the technology” involving those elements. Id. at 11. Secured Mail Solutions LLC argued that the claims were similar to those found eligible in DDR Holdings. Id. at 12. The Court disagreed finding the claims to be “non-specific and lack[ing] technical detail.” Id. The Court concluded that “the asserted claims cite well known and conventional ways to allow generic communication between a sender and recipient using generic computer technology.” Id. To support this conclusion, the Court noted that “[t]he patents mention that the invention can be performed using many types of hardware … suggesting that the hardware used is conventional.” Id. Therefore, because the claims were directed to an abstract idea without reciting significantly more than the abstract idea, the claims were confirmed as being ineligible under § 101.
Observations
This decision reminds applicants that claims can be found patent-ineligible at the motion to dismiss stage based solely on intrinsic evidence gathered from the written description. Secured Mail at 13. At this time, the courts do not seem willing to engage in any formal claim construction and the court can “simply conclude[] from the claims that they [are] directed to patent-ineligible subject matter.” Id. at 13. Applicants concerned with § 101 challenges should consider articulating technical details in the specification as courts seem willing to make an eligibility determination early in litigation with little, if any, evidence beyond the issued patent.
When preparing a patent application, it may be desirable to ensure that the claims provide sufficient details that can demonstrate what is inventive about the individual claim elements or the processes involving those elements. The claims should also include details that can be traced to further descriptive text included in the body of the application. Including these in the specification can support the ways that the claim elements recited are more than generic processes that are simply being applied or implemented by generic hardware. Patent eligibility can be bolstered by focusing claims on a specific means or method and claiming specifically how those means improve computer functionality, rather than simply an existing process that could, in theory, be performed without computer implementation entirely. Consider including special rules or details within the claim limitations to further ground the claimed features.
Links to the Challenged Patents
“Intelligent Mail Barcode” patents
“QR Code” patents
“Personalized URL” patents