Claims that fail to explicitly recite a specific way to solve a specific technological problem are at risk under §101, especially when the underlying technology is known and only implements routine steps. Such claims fail to transform the abstract idea into patent eligible subject matter.
The Federal Circuit recently affirmed a ruling out of the Central District of California that the claims of seven asserted patents are directed to ineligible subject matter under 35 U.S.C. § 101, in part because the patent specifications admitted that certain actions were “routine” and performed by well-known technology.
The patents at issue are US7,814,032, US7,818,268, and US8,073,787 (the “Intelligent Mail Bar- code” patents), US8,260,629 and US8,429,093 (the “QR Code” patents), and US8,910,860 and US9,105,002 (the “Personalized URL” patents).
As explained in the opinion,
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 Federal Circuit identified representative claims from each patent and applied the two-part test set forth in Alice. The Federal Circuit characterized the Alice test as follows: the first step is to ascertain whether the claims are directed to an abstract idea. If so, the second step is to determine whether the claim elements transform the nature of the claim into a patent-eligible application of the abstract idea.
In applying the test, the Federal Circuit found that the first step is satisfied for all patents. “[T]he claims [of all seven patents] embrace the abstract idea of using a marking affixed to the outside of a mail object to communicate information about the mail object…”
The Federal Circuit further found that the claims fail the second part of the test. Namely, the claim recitations of all seven patents fail to transform the abstract idea into something patent-eligible. “Some of the claim elements, such as submitting a mail object to a mail carrier or affixing information to a mail object, are routine to persons that have mailed a letter.” The Federal Circuit found these actions customary based on statements in the patents themselves. “We see no inventive concept that transforms the nature of the claims into a patent-eligible application of the abstract idea.”
“Rather than citing a specific way to solve a specific problem as in DDR, the asserted claims cite well known and conventional ways to allow generic communication between a sender and recipient using generic computer technology.”
The case is Secured Mail Solutions LLC, v. Universal Wilde, Inc., No. 2016-1728 (Fed. Cir. 2017). The panel included Chief Judge Prost and Circuit Judges Clevenger and Reyna. Judge Reyna delivered the opinion for the Court.
Lessons for Practice
It was easy for the Federal Circuit to find the claims directed to ineligible subject matter under §101. Here, the specifications admitted that how to take certain actions involved in the claims were “routine” and “well-known” using existing technology. Moreover, the claims did not explicitly recite a solution to a specific problem.
One takeaway is to avoid admissions of what is routine and well-known in your specifications. Another takeaway is to make sure that you draft claims that clearly explain how the elements work to solve a particular technological problem.