In IOEngine, LLC v. Ingenico Inc.1, the U.S. Court of Appeals for the Federal Circuit (CAFC) reversed in part the U.S. Patent Trial and Appeal Board's (PTAB) Final Written Decisions in several Inter Partes Reviews (IPR) finding anticipation under 35 U.S.C. § 102 of various claims of U.S. patents relating to a tunneling client access point (TCAP) that is a "highly secure, portable, power efficient storage and data processing device." The CAFC concluded that the PTAB erred as a matter of law by incorrectly applying the printed matter doctrine to accord no patentable weight to certain limitations reciting "encrypted communications" and "program code." In correcting the PTAB's legal error, the CAFC made clear that "[p]rinted matter encompasses what is communicated—the content or information being communicated—rather than the act of a communication itself."
What is the printed matter doctrine?
At its core, the printed matter doctrine excludes "mere information" from patent-eligible subject matter. When considering patentable weight or patent eligibility of claimed subject matter, analysis often defers to (1) identification of at least one of the four statutory categories set forth in 35 U.S.C. § 101 (processes, machines, manufactures, and compositions of matter); and (2) a determination of patent-eligible subject matter, as described in the Alice/Mayo framework.2 While not explicitly described in either 35 U.S.C. § 101 or the Alice/Mayo framework, the printed matter doctrine may nonetheless be cited to preclude eligibility of claims.3 Furthermore, as pointed out in IOEngine, the printed matter doctrine is also a consideration in claim construction for analyzing other patentability requirements, including novelty under 35 U.S.C. § 102, and nonobviousness under 35 U.S.C. § 103.
What constitutes "printed matter"?
Historically, the U.S. Court of Customs and Patent Appeals (the CAFC's predecessor court), considered "printed matter" as an arrangement of characters or text on paper. The advancement of technology has expanded this horizon substantially. Today, the printed matter doctrine is relevant to communicative content (e.g., content of data, signals, labels, instructions) of nearly any type (i.e., medium).
How is the "printed matter doctrine" applied?
The printed matter doctrine is applied as a two-step analysis to determine whether or not a claim limitation is patent eligible: (1) determine whether or not the claim limitation, as a whole, is directed toward the "printed matter" itself, and, if and only if condition (1) is satisfied, then (2) determine whether the "printed matter" has functional or structural relation to a substrate of the invention.4 The CAFC demonstrated an abbreviated application of this analysis in IOEngine and identified misconceptions that incorrectly expand the printed matter doctrine beyond its current scope.
In the patents involved in the IOEngine case, the relevant limitations recite "the communication caused to be transmitted to the communication network node facilitates the transmission of encrypted communications from the communication network node to the terminal" and "the communication caused to be transmitted to the communication network node facilitates the download of program code on the communication network node to the terminal."
In the PTAB's Final Written Decisions, the "encrypted communications" and the "program code" recited in the claims were identified as "printed matter." The PTAB determined that these claim limitations are directed to content (i.e., printed matter) that is conveyed (i.e., transmitted and downloaded) from the communication network node to the terminal. Furthermore, the PTAB determined that the claim limitations did not include a functional relationship with the structural elements of the claims (i.e., neither the communication network node nor the terminal used the content). Accordingly, the PTAB assigned no patentable weight to these claim limitations and ultimately determined the corresponding claims to be unpatentable on grounds of anticipation under 35 U.S.C § 102.
In reversing the PTAB's judgments, the CAFC determined that the PTAB erred in the first step of the two-step analysis of the printed matter issue. The CAFC reasoned that "printed matter is matter that is claimed for its communicative content—i.e., the content specifically being communicated." Because the claim limitations in question do not rely on any content that is being communicated in the "encrypted communications" and the "program code," the "encrypted communications" and the "program code" are not "printed matter" in the context of the claims in which they appear. Based on this determination, the CAFC ultimately reversed the PTAB's anticipation determinations.
While the CAFC declined to proceed to the second step of the two-step analysis of the printed matter doctrine, it is possible to envision a similar rationale for reversal at the second step as well. When considered as a whole, the relevant claim limitations are directed to a functional relationship between the "the communication caused to be transmitted to the communication network node" and the specific acts of "the transmission of encrypted communications" and "the download of program code" between the communication network node to the terminal.
Practice point
In the context of electronic communications, this CAFC opinion highlights that a communication itself is not content, nor is the form of a communication, such as whether the communication is encrypted, considered to be content. Printed matter encompasses what is communicated—the content or information being communicated—rather than the act of a communication itself. Therefore, when a claim limitation is directed to actual communicative content, the communicative content should be clearly and explicitly tied to a structure or function of a structure of the invention. Similarly, when a claim limitation is deemed ineligible as "printed matter" during prosecution or litigation, thoughtful application of the two-step analysis should be performed before conceding the examiner's rejection or the opponent's validity challenge.
Footnotes
1. IOEngine, LLC v. Ingenico Inc., 100 F.4th1395 (Fed. Cir. 2024).
2. https://www.uspto.gov/web/offices/pac/mpep/s2106.html
3. See, e.g., Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1349–50 (Fed. Cir. 2014).
4. MPEP § 2111.05
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.