“The more you examine the Court of Appeals for the Federal Circuit’s recent decision in Secured Mail Solutions v. Universal Wilde, which upheld the district court’s ruling that Secured Mail’s seven asserted patents were ineligible for patenting under 35 U.S.C. Section 101, the more you find its logic curiouser and curiouser…”
It would be so nice if something made sense for a change.” ― Lewis Carroll, Alice in Wonderland
The more you examine the Court of Appeals for the Federal Circuit’s recent decision in Secured Mail Solutions v. Universal Wilde, which upheld the district court’s ruling that Secured Mail’s seven asserted patents were ineligible for patenting under 35 U.S.C. Section 101, the more you find its logic curiouser and curiouser, as Lewis Carrol’s Alice might have put it. These Secured Mail patents all address tracking mail through an encoded marking, e.g., a barcode, QR code or URL, on the outside of a mailer which is intended to provide information to the recipient about the contents and the sender.
To nonjudicial eyes—including the expert eyes of highly-trained patent examiners at the U.S. Patent and Trademark Office (USPTO)—Secured Mail’s patents appear to describe something practical and useful, an innovation the likes of which the patent system was designed to protect. But to the esteemed judges of the Federal Circuit hearing the Secured Mail case, there was not a single thing even eligible for patent protection in these patents, let alone patentable.
To reach this strange decision the Federal Circuit judges used the Alice test—not Lewis Carroll’s Alice, but one based on similar illogic)—which is derived from the Alice Corp. v. CLS Bank International case and is the type of analytical guide intended to help in the application of case law to the actual facts of a given case. While the need for such analytical guides spotlights the often-convoluted nature of what jurists write, they can often be helpful to practitioners. But not always, for in this case, the two-step Alice test has only served to make bad law even worse.
Indeed, in the hands of the Federal Circuit, the Alice test has already condemned dozens of issued patents containing hundreds of claims, each representing a property right duly issued by the U.S. government and paid for by the applicant in the form of research and development costs as well as patent application fees. In the Secured Mail case, the Federal Circuit continued, a la Alice’s trip to Wonderland, down that rabbit hole, the bottom of which in this case unfortunately contains nothing but the property rights they have stripped from patent owners.
In the application of step one of the Alice test to the Secured Mail case, the court must, to quote the Federal Circuit opinion, “ascertain whether the claims are directed to ineligible subject matter.” In tackling this first step, the district court had determined that the claims of all seven of the asserted patents “are directed to the abstract idea of communicating information about a mail object by use of a marking.”
Let’s take a time out right there: What is “abstract” about communicating tangible information by physically marking a physical object—i.e., an old-fashioned piece of snail mail?
You don’t know? Me, either—but let’s move on.