QR Code Lawsuit: Could You Be Sued For Using a Barcode on Direct Mail?

qr_codeA few days ago, I learned from an industry source that a group calling themselves “Secured Mail Solutions” is filing lawsuits against a number of high-profile companies claiming infringement on two patents related to QR codes.  At MindFire, a number of our Clients utilize QR codes within their multi-channel marketing automation workflows, so my interest was piqued.

The lawsuit includes some fairly well-known companies like RR Donnelley, Harte-Hanks, Microdynamics, Vertis and others.

It was explained to me that these patents both pertain to the use of a barcode on direct mail, where the barcode is linked to a database for purposes of tracking. This description seems to include QR codes, as well as POSTNET barcodes.

Please note that I have not had time to personally investigate these claims — nor seek legal counsel — so don’t take my post as a statement of fact, nor any official position from our company.  I’m merely musing on what I’ve heard.

Secured Mail Solutions appears to be a company that owns the patents that are being enforced; you can see more here: http://securedmailsolutions.com/Intellectual_Property.html. If the lawsuits have merit, it could be somewhat disruptive for the industry, since there’s so much hoopla about using QR codes in marketing campaigns.

It also seems like this lawsuit would eventually have to involve the US Postal Service, since they now require the use of barcodes.

Lawsuit Information

Here’s what I’ve found:

Filed on: Jan. 30, 2013

Type: Complaint for Patent Infringement

Defendant(s):
1. Microdynamics Inc
2. Envelopes Unlimited Inc
3. Harte-Hanks Direct Inc
4. Harte-Hanks Direct Marketing Cincinnati Inc
5. Harte-Hanks Direct Marketing Baltimore Inc
6. Harte-Hanks Direct Marketing Jacksonville LLC
7. Harte-Hanks Direct Marketing Dallas Inc
8. Harte-Hanks Direct Marketing Fullerton Inc
9. Harte-Hanks Inc
10 Harte-Hanks Direct Marketing Kansas City LLC
11. Harte-Hanks Print Inc
12. Microdynamics Group Inc
13. Microdynamics Corporation
14. R R Donnelley and Sons Company
15. Vertis Inc
16. Vertis Holdings Inc
17. Advanced Image Direct LLC

Plaintiff(s): Secured Mail Solutions LLC

Patent(s) in Suit:
• 7,814,032: “System and method for mail verification” by Fitzsimmons.. Includes 22 claims (2 indep.). Was application 11/519,739. Filed 9/11/2006 & Granted 10/12/2010.
• 7,818,268: “System and method for mail verification” by Fitzsimmons.. Includes 56 claims (3 indep.). Was application 10/271,471. Filed 10/15/2002 & Granted 10/19/2010.

What do you think?  If you have time to look into this, leave me your thoughts in the comments.  As soon as I have more information, I’ll post an update.

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About David Rosendahl
Husband, father, co-founder of MindFireInc, two-time Inc500 software company. I love building things.

33 Responses to QR Code Lawsuit: Could You Be Sued For Using a Barcode on Direct Mail?

  1. David,
    It seems that Secured Mail Solution is a company that was established In order to “blackmail” other companies by taking them to court for patent infringements, and than to settle” for undisclosed high amount.
    Recently there was a detailed article about it in a business magazine.

    • Hi Yaakov, what magazine did you see this in? Appreciate any insight you may provide.

      • David,
        I found the article: It is called “THE TROLL TOLL” by kris Frieswick it is in Inc. Magazine, Feb.2013.
        BTY -liked you reports from Israel.
        regards

        Yaakov Reshef

        • Oh, and thank you for the comment on the reports from my trip in Israel. It was absolutely fantastic and I can’t wait to go back :)

      • Ah, yes. The article is here: http://www.krisfrieswick.com/Files/inc_0213.pdf

        I thought you meant that this specific case was mentioned — but this is a good article nonetheless. Thank you :)

  2. Renee Turner says:

    Please let us know what you learn and I will do the same. Thanks!

    • Absolutely. Have spoken to a few others in the industry and we are thinking of working together if this becomes an issue. I’ve heard that one of the parties is local to us here in Orange County. Had you heard of this prior to today’s post?

      • Renee says:

        No, I hadn’t heard anything. You “Scooped” my trade info channels!

  3. Thanh Nguyen says:

    Dave, I found this interesting post on How to Avoid Patent Trolls. Relevant to Advertising industry. http://bit.ly/18wiU4J

    Also, another insightful look at Patent Trolls by This American Life. http://www.thisamericanlife.org/radio-archives/episode/441/when-patents-attack

    Good Luck.

    • Hi Thanh, I *love* This American Life. Will definitely check out the episode. Sorry for the late reply :)

  4. Gina Montgomery says:

    “Secured Mail Solutions LLC” is simply a Patent TROLL –
    They have a “virtual” mail address listed at 9550 S. Eastern Ave, Suite 253 Las Vegas, NV 89123
    There are many virtual companies listed at this exact same address (and same suite #253)

    Personally, I put patent trolls and their attorneys right down there with terrorists.

    • Hi Gina, thank you for stopping by and the additional insight.

      • Gina Montgomery says:

        Additionally – All Public information.
        If you lookup the Domain owner for “Secured Mail Solutions” website – you will notice it is owned by an attorney named; Todd Fitzsimmons – from the firm O’Melveney & Meyers (his profile is listed on their website), this is the firm who is “representing” the shell Las Vegas company known as “Secured Mail Solutions”……
        Call the Las Vegas phone number from the website and you will be directed to the same individual at O’Melveney & Meyers here in California….
        Secured Mail Solutions is not a “real” company, does not produce a product or gainfully employ individuals.

        Point is: Patent Trolling is a $29B yr scheme that hurts businesses, cost jobs, kills innovation, costs taxpayers and is being practiced by some of the nation’s largest law firms. Economically speaking, comparable to terrorism.

  5. PLL says:

    What I find interesting is that the biggest players in the mail tracking space have not been named in this lawsuit… Really makes me stop and wonder if they have hired the patron trolls to knock out or deter their competition…

  6. Cameron says:

    PPL, as one of the biggest players in the mail tracking space I can assure you that is not the case. Truth is the troll known as Todd Fitzsimmons and his firm O’Melveny is going after my clients which tend to be larger companies and could pay more money. He is simply looking for a pay day after these barcodes become mandatory in January and this is his warm up.

    • Thanks for stopping by Cameron and participating in the discussion. I hope you’ve been able to withstand and keep the legal fees at a reasonable level — although I know how quickly they add up.

      Do you have any advice for the folks on here?

      Take care,

      -dr-

    • Rochelle M. says:

      Cameron – The use of an IMb will be mandatory starting in January 2014 with Full Service in order to have the USPS automated discounts. The QR code nor the POSTNET will be mandatory, which the latter has pretty much gone the way of the dinosaur with most DM since the introduction of the IMb.

      • Cameron says:

        Sorry but I don’t get your point. Agreed that IMb will be mandatory and QR not, but the “inventions” mentioned in Fitzsimmons patents cites a single barcode such as QR or IMb. So, whenever one uses either of them to track or identify he thinks his patent applies. I went through 3 days of deposition with an O’Melveny lawyer.

        • Rochelle M says:

          The article above only mentioned QR and POSTNET barcodes, but not IMb so I didn’t realize that it was included. My clients have all moved away from POSTNETs over the past couple of years and with the onset of the requirement or Full Service IMb usage for automated discounts in January, well, that’s why I thought that this wouldn’t be as large of an issue.

          • Cameron Bellamy says:

            I’ve recently advised industry groups (PostCom and DMA) and the PMG and other top level postal folks of this matter. My lawyers tried in the past but USPS lawyers were not concerned for the USPS because nobody can sue the USPS. If this thing is allowed to have a life it will be another nail in the postal coffin. I was the second person to ever use the PLANET code for tracking back in 1995 so I hope to beat this but in doing so I’m racking up serious legal fees.

  7. Cameron says:

    I do have advice and to your comment about the fees, its been tough on me, the legal fees have been significant. As for my comments or advice, if you are targeted by a troll identify those that would also be targeted and band together. One way trolls succeed is to win over some people for a settlement which funds the battle on the rest, they can go on forever that way. The other way is to fight back, use social media and what ever press events you can muster. Exactly as I am doing here. O’Melveny is a large firm and their top people write articles about trolls all the time. In this case they are working based on a contingency, I’d like to think that if the top folks at O’Melveny knew they supported trolls pro bono they’d put a stop to it quick.

  8. Todd Butler says:

    How can he go after postnet when his paten application is from 2006 and postnet has been in use since the late 80′s? Planet Code, used for tracking, predates 2006 also. IMB (a 4-state code) predates 1992 and is just a postnet/planetcode combination on steroids.

    I do not see the case here. Sounds like he patented something in common use at the time of his application.

    • Cameron Bellamy says:

      Todd, the patent cites a single barcode but does not name it as POSTNET, PLANET or IMb. They can all fit under his definition.

  9. Gina Montgomery says:

    For Folks who don’t understand – What Patent Trolls do is submit a patent long after there is a technology that exists. Long worded, confusing & open for interpretation Patents are awarded that simply should not be awarded – but because they are, gives Trolls like Todd FItzsimmons over at O’Melveney & Meyers ammunition to wage a “legal” attack on hard working American companies.

    Example: When O.J. Simpson killed his ex – he received “due process” of the law – Patent litigation doesn’t work that way – the system enables the Trolls to exact hardship and great costs over a long period of time to enable them to achieve their primary goal; extract a percentage of their targets business to make them go away and on to their next target.

    Bottom line is that it is BIG business (extortion business) for bottom dwellers – In this case the bottom dweller happens to be an associate at the third largest law firm in the U.S. = O’Melveney & Meyers.

    The toll on American businesses and ultimately consumers is in the billions of dollars and growing yearly – on par with terrorism both monetarily and with the legal process that enables this type activity that kills innovation, businesses and costs hard working people – their jobs.

    If you want to do something – call my husband; Perry Wilson at Advanced Image Direct (714) 502-3900 Advanced Image Direct is one of the “targets” of these trolls listed above.

    • Thank you Gina for the insight and narrative. I know that it has been suggested that a group of us in the industry band together and do something about this.

      Do you have such a group organized? If not, do you think it is a good idea?

    • Cameron Bellamy says:

      Thank you Gina for that explanation. As you know my company, GrayHair Software is right there with you and AID fighting the fight. One area of confusion I have encountered is that people think these trolls are trying to win a lawsuit case, but they are not. They only want to shake down business owners to settle. If you could extract say $500,000 from each big mailer out there that’s not a bad living.

  10. Gina Montgomery says:

    Hi David, Give Perry a call at your leisure.

  11. Eric Pearson says:

    There is “Patent Troll” legislation before the House right now — HR 3309. The companion legislation in the Senate is S. 1720. Hopefully they’ll get this type of stuff stopped!

  12. Mark Cordes says:

    If these patents are issued on existing use technologies, can’t the patent be challenged? I realize this is a complex issue (and process), not to mention time consuming and expensive. But if the patent is challenged and nullified the patent trolls no longer have leverage.

    • Cameron Bellamy says:

      You are correct, I firmly believe, as do the rest of us involved in this case, that we can win. But when you do the math its cheaper by far to settle, that’s what the trolls count on. And right now I look to be the last one standing.

  13. Pingback: My Letter to Senator Leahy | Thoughts from the Chief GrayHair

  14. Cameron Bellamy says:

    Just had a face-to-face with the PMG yesterday and outlined this case to him and asked for his help. Hopes are high that he will do as he said and step in to correct this mess. We as the mailing community can’t be held hostage by trolls when we use tools and technology provided by the USPS.

    • Hi Cameron, that’s great news. I saw your letter to Senator Leahy, and appreciate you moving this effort forward. Thanks for keeping us up-to-date on everything and your participation here on the blog!

      Let’s rock!!

      -dr-

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