Return to Sender: Mail Tracking with Barcodes and URLs Found Not Patent Eligible

In Secured Mail Solutions LLC v. Universal Wilde, Inc., No. 16-1728 (Fed. Cir. Oct. 16, 2017), the Federal Circuit affirmed the lower court’s dismissal for failure to state a claim, finding that Secured Mail’s patents were directed to the patent-ineligible abstract idea of communicating information about a mail object using markings. Secured Mail sued Universal Wilde, alleging infringement of seven patents directed to attaching identifiers, such as barcodes or URLs, to mail objects. The district court held that the patents were not directed to patent-eligible subject matter.

On appeal, the Federal Circuit affirmed, rejecting Secured Mail’s argument that the district court characterized the claims at an unduly high level of abstraction and that the claims were directed to a “sender-generated unique identifier,” which improved existing processes. The court held that Secured Mail’s patents’ claims were directed to the abstract idea of using a marking on the outside of a mail object to communicate information about the mail object. The court determined that the claims were directed to the abstract concept itself, not improved methods of generating or scanning barcodes, or any particular rules to implement the claimed methods. Accordingly, the court held that the claims were directed to an abstract idea.

The court next rejected Secured Mail’s argument that the district court erred by examining whether the underlying technology was “conventional.” The court explained that the district court found that the claims were “replete” with routine steps and that the purported innovation of a sender-generated identifier was “non-specific and lack[ing] technical detail,” and thus did not transform the abstract concept into patent-eligible subject matter.