by Dennis Crouch
This may be a useful case for patent prosecutors to cite to the USPTO because it creates a strong dividing line for the printed matter doctrine — applying the doctrine only to cases where the claims recite the communicative content of information.
IOEngine, LLC v. Ingenico Inc., 2021-1227 (Fed. Cir. 2024).
In this decision, the Federal Circuit partially reversed a PTAB invalidity finding against several IOEngine patent claims. The most interesting portion of the opinion focuses on the printed matter doctrine. Under the doctrine, certain “printed matter” is given no patentable weight because it is deemed to fall outside the scope of patentable subject matter. C R Bard Inc. v. AngioDynamics, Inc., 979 F.3d 1372 (Fed. Cir. 2020). In this case though the Federal Circuit concluded that the Board erred in giving no weight to IOEngine’s claim limitations requiring “encrypted communications” and “program code.”
The printed matter doctrine a unique and somewhat amorphous concept in patent law that straddles the line between patent eligibility under 35 U.S.C. § 101 and the novelty and non-obviousness requirements of §§ 102 and 103. On the eligibility side, the doctrine serves as a screening tool to exclude claims that are directed solely to the content of information from patent protection. The Federal Circuit’s predecessor court, the Court of Customs and Patent Appeals has long held that “[m]ere printed matter” is not a “manufacture” within the meaning of the Patent Act. See, In re Russell, 48 F.2d 668 (CCPA 1931); Application of Miller, 418 F.2d 1392 (C.C.P.A. 1969). And, since Alice, the Federal Circuit has also regularly held that printed matter caries no weight in the eligibility analysis – either Step One or Step Two. See, In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1165 (Fed. Cir. 2018)
In the separate context of anticipation and obviousness analysis, the printed matter doctrine largely operates as a “blue pencil” to edit out claim limitations that are directed solely to the content of information. By disregarding these limitations, the doctrine makes it easier to invalidate a claim as anticipated under § 102 or obvious under § 103, as the claim’s scope is effectively broadened. The Federal Circuit has explained that “a limitation is printed matter only if it claims the content of information,” and that such a limitation will be given no patentable weight unless it is “functionally or structurally related to the associated physical substrate.” In re Distefano, 808 F.3d 845 (Fed. Cir. 2015). As I discuss below, IOEngine appears further limit the doctrine by suggesting that a claim limitation is not printed matter unless it explicitly recites specific informational content. This holding may make it more difficult to disregard claim limitations as printed matter during § 102 and § 103 analysis, as the content of the information must be claimed rather than merely implied. It may also serve as a cleaving point between how the doctrine is used for eligibility as compared with its use in anticipation/obviousness.
Professor Kevin Collins has written several articles that focus on the printed matter doctrine and its overlap with eligibility, anticipation, and obviousness. His 2017 Authorship Screen article argues that patent laws should apply an “authorship screen” to exclude aesthetic and informational innovation from its domain – a mirror image of copyright law’s functionality screen used to exclude functional innovation from its domain. Kevin Emerson Collins, Patent Law’s Authorship Screen, 84 U. Chi. L. Rev. 1603 (2017). For Collins, a strong printed matter doctrine is one aspect of his proposal, albeit a weak limit.
Although IOEngine does not reference anything like an “authorship screen” or suggest directly that printed matter falls within the realm of copyright protection, the court does provide some articulation of the policy goals that appear in-line. In particular, the court explained that the printed matter doctrine is intended to exclude limitations directed to communicative content of information, rather than the functional aspects of an invention. The underlying policy is that the communicative content itself should not be a basis for patentability, but rather the functional relationship or integration of that content with structural elements of the invention is what may lend patentable weight.
The court typically follows a two-step framework to identify whether to exclude certain printed matter, asking (1) if a limitation is directed to printed matter and (2) if so, whether it should still be given patentable weight based on some functional or structural contribution. In re Distefano, 808 F.3d 845 (Fed. Cir. 2015).
In IOEngine, the board considered certain dependent claims reciting “encrypted communications” and “program code,” and concluded that both constituted printed matter that received no patentable weight.
The three patents at issue here all relate to secure communication for portable devices using a “tunneling client access point.” U.S. Patent Nos. 8,539,047; 9,059,969; and 9,774,703. The basic setup is that a portable device (such as a USB drive) can plug into a terminal (e.g., desktop computer), and use the terminal’s I/O capabilities while the portable device provides storage, execution and processing resources. This allows data to “tunnel” through the terminal, without actually residing on the terminal. The patents particularly claim a portable device configured to communicate with a terminal, with memory storing various program code to present an interactive user interface, facilitate communications, and coordinate with communication network nodes.
On appeal, the Federal Circuit concluded that the “encrypted communications” and “program code” limitations were not printed matter because they did not claim the content of information. Rather, “encrypted communications” relates to the form of the communication, while “program code” just refers to code being downloaded without regard to its contents. The court instructed that the doctrine only excludes “what is communicated— the content or information being communicated—rather than the act of a communication itself.” Since no particular content was being claimed, the court declined to apply the printed matter doctrine to remove those limitations from the claims.
In C R Bard, the court evaluated whether the radiographic markers in Bard’s patents, which identified subdermal vascular access ports as suitable for high-pressure injections, were merely informational (and thus unpatentable under the printed matter doctrine) or if they imparted a functional or technical benefit. The Federal Circuit found that while the markers provided information, this did not alone impart new functionality to the access ports. The markers merely identified the ports’ suitability for a specific use (high-pressure injections), which did not qualify as a functional relationship that enhanced the utility of the product beyond the conveyance of information. IOEngine distinguished C R Bard on its facts. The C R Bard radiographic markers were claimed for their informational content (that whether the subdermal port was suitable for high pressure) while IOEngine’s claimed “encrypted communications” and “program code” were not claimed for their communicative content.
DiStefano focused on a different aspect of the printed matter doctrine. In the case, the Federal Circuit evaluated whether certain aspects of a claimed method for designing web pages fell under the printed matter doctrine and whether they should be given patentable weight. The claims required that certain web assets have a particular origination (i.e., whether they were provided by third-party authors or by the user). And a core issue in the case was whether the designation of origin was an excludable printed matter. The court determined that the origins of these web assets, as described in the claims, did not constitute printed matter themselves because they did not claim the content of information. Thus, the Board erred in treating these origins as printed matter and in not assigning them patentable weight. This is similar to IOEngine in that both cases grappled with defining whether certain aspects of the communication beyond its direct content would constitute “printed matter” under the doctrine. Like the web asset origins in DiStefano, the IOEngine court found that the claimed “encrypted communications” and “program code” were not printed matter because the claims were not directed toward specific informational content being communicated.
In AstraZeneca LP v. Apotex, Inc., the Federal Circuit affirmed a district court holding that the claimed “kit” with a label instructing once-daily dosing of a budesonide drug was invalid because “the instructions in no way function with the drug to create a new, unobvious product.” 633 F.3d 1042, 1064 (Fed. Cir. 2010). The court reasoned that “removing the instructions from the claimed kit does not change the ability of the drug to treat respiratory diseases” and that simply adding new instructions to a known product does not create the functional relationship necessary to distinguish it from the prior art under the printed matter doctrine. This aligns with the IOEngine court’s holding that the claimed “encrypted communications” and “program code” limitations were not printed matter because they were not being claimed for their communicative content, unlike the dosage instructions in AstraZeneca which conveyed specific informational content about administering the drug.
I above cited to Application of Miller, 418 F.2d 1392 (C.C.P.A. 1969), an opinion by Judge Rich. In that decision, the CCPA reversed a Patent Office rejection on printed matter doctrine grounds. The court first recognized that the claimed measuring device was patent eligible under 101 because it constituted a “manufacture.” The key features of the device were volumetric indicia indicating a volume different from the actual volume being measured and a legend specifying the ratio of the indicated volume to the actual volume. The court held that the claimed combination of the measuring receptacle, the indicia, and the legend involved a new and unobvious functional relationship, even if the printed matter itself was not patentable subject matter. The court emphasized that the indicia and legend were functionally related to the receptacle in a way that solved the problem of measuring out fractional recipes, and that their precise position on the receptacle was not critical to this functionality. Accordingly, the court found that the examiner erred in discounting the indicia and legend as “unpatentable printed matter” and in requiring a “cooperative structural relationship” between those elements and the receptacle.
Finally, I wanted to mention the Rand, McNally & Co v. Exchange Scrip-Book Co. decision from 1911 because it provides an interesting analysis. 187 F. 984, 986 (7th Cir. 1911).
In Rand, the court majority upheld the validity of a patent on a “scrip-book” containing coupons that represented monetary values rather than mileage units, which allowed the coupons to be used interchangeably across different transportation carriers with varying fare rates. The court found that while the physical form of the coupon book was similar to prior mileage ticket books, the inventive concept of using a money-based unit rather than a mileage unit was a patentable innovation that solved the problem of accommodating different rates without calculation. This ruling suggests the printed matter on the coupons (the monetary values) was not merely conveying informational content, but had a functional relationship to the physical ticket book. However, the dissent argued forcefully that switching from a mileage to monetary unit did not involve a patentable invention, characterizing it as merely an obvious change in the business system for using the same physical ticket book product. The dissent viewed the printed monetary values as falling squarely within the printed matter doctrine, conveying informational content that should not receive patentable weight. This is a case that would squarely fall on the ineligible side today, although perhaps not because of the printed matter doctrine.
1. The herein-described substitute for a railway-mileage ticket or mileage-credit permit consisting of a scrip-book containing scrip, in any form representing money, detachable in successive portions, for use in purchasing ordinary passage-tickets, and certificate-blanks each comprising a non-detachable certificate or passenger’s stub having appropriately-designated spaces for the description of a passage-ticket and for the signatures of successive conductors honoring such ticket, and a detachable certificate or coupon having appropriately-designated spaces for successive signatures of the passenger to be written in the presence of the respective conductors, the several parts being mutually identified by identical marks such as numbers.
The printed matter doctrine a unique and somewhat amorphous concept in patent law that straddles the line between patent eligibility under 35 U.S.C. § 101 and the novelty and non-obviousness requirements of §§ 102 and 103
Oh, Ok then. We can float unique and somewhat amorphous concepts in patent law whenever we want to, so long as our policy goal is met.
Blue pencils? But I thought “claims as a whole” was sacrosanct….
What should really matter is the nature of the utility of new and useful information, and that nature starts with the entity gaining the proximate utility.
Bravo CAFC! (which I couldn’t shout until I picked myself up off the floor)
Now about that off-the-rails-eligibility morass you helped create . . .
Judge Chen at his worst here:
“ “while “program code” just refers to code being downloaded without regard to its contents.”
Right. And likewise “home residence code” just refers to code being downloaded without regard to its content.
Very deep stuff. Highly technical!
More than certain that you do not understand what “technical” means, Malcolm.
¯\_(ツ)_/¯
Snowflake the adults are having a conversation. Take your lazy ad hominems and run along now. Or try to address the case presented.
You are 0bsess1ng again — over multiple threads, again.
If you do not consider me to be a “grown-up,” this means that you think that you are cyber-stalk1ng a non-grownup.
Do you realize how s1ck that would make you?
Yes, Snowflake, we know you are desperately trying to compensate for an inferiority complex you could drive a Buick through but
i guess there is no but
^^^ That does not make any sense.
Your s1ckness is at point here.
That you are 0bsessed, there is no doubt, but now – by your own words – you show that 0bsess10n is over what YOU consider a non-adult.
Please don’t make us close comments on you again, Snowflake. How would you make a living in the real world?
Has that ever worked for you?
well , yeah.
multiples as you know.
Well, no – please, let’s at least be honest.
Sure, Snowflake. Get your last “bestest” word on the Redefining Patent Continuation Strategy: Sonos v. Google Appeal thread.
Let us know when you’re done.
Given the very very low bar that you present as achieving “bestest” in comparison to your posts, there is ZERO doubt that I have that in the thread that you reference.
There, in black and white, is the reference:
link to patentlyo.com
You missed the March 27 comment before we closed comments.
Poor Snowflake.
Still adding to your list of debacles we see.
Last
AND
“bestest”
We’ll call the latest the “sci fi” debacle and i think we’re all agreed.
You keep on using that word. I do not think that you understand what that word means.
sci fi is two words, Snowflake.
[what a maroon]
Snowflake we’re taking a vote. Henceforth do you prefer “Snowflake” or “Mr. Asked and Answered?”
Another retread (“debacle” is one word)
Try to keep up.
You are correct. mr. asked and answered is too specific so Snowflake it shall be.
That’s not keeping up.
So Snowflake, what is this devastating retort you gave the imaginary examiner that cited authority for the belief that sci fi literature is “improper?”
if asked and and answered as you say no need to repeat just provide the link where you answered.
[what a maroon]
Shhh. Snowflake is adding on to his latest i.e “sci fi” debacle.
Let him talk.
Shifty – you are messing up your multiple personalities and who should be saying what.
But again, your choices are providing me coin, so thank$$.
While it is doubtful that anyone other than you and I are following along this thread at this point, this is the link that you are ‘looking for:’
link to patentlyo.com
Ahh, so the citation, at long last, is not an actual citation to authority but merely pointing to Snowflake making stuff up as an Internet tough guy in his mother’s basement.
Do you understand, Snowflake, that is not helpful to somebody prosecuting an actual application before an actual examiner? But actually, quite harmful?
Not “quite harmful” at all.
Do you understand that logic works?
We understand “logic,” Snowflake. However, a US patent attorney would not confuse citation to authority with citing to a snowflake making stuff up as an Internet tough guy in his mother’s basement.
You are not showing that you understand either logic or ‘logic.’
You are showing your 0bsess10n.
Leave him alone, Morse. You don’t kick a snowflake when he’s down.
Ok I understand. Kick a snowflake when he’s down you get a wet shoe.
It is always amusing to see you attempting a conversation amongst yourselves.
Snowflake is hearing the voices in his head again. Don’t be mean.
We can hope. Maybe a voice will tell him to get out his mother’s basement and get a real job.
More payout from your €hoi€e$.
Snowflake seems to be adding to his “sci fi” debacle.
A pity.
Judge Rich really, really loved the idea of granting patents on all kinds of j-u-n-k, we can say that much. But he was anything but a thoughtful, forward-looking thinker. The future, where people had to live with the consequences of his lazy bal0ney was for other people to suffer through.
Funny guy. There is no “we.” You are alone — yet again.
Judge Rich was a positive giant of the patent realm.
*slurp*
Cultists got to be culty! And patent maximalists sure do love their cults and their cult leader daddies.
..and who do you love?
That’s really an unfair comment. You ought to specify which year you’re talking about Judge Rich, since up until at least 1960 he recognized a diaper service wasn’t eligible.
When it came to patent eligibility, Judge Rich recognized whatever suited his fancy at that moment. One need only look at the ridiculous statute he wrote to see how his mind “worked”.
The company you keep…
That you think it to be a ridiculous statute admits more than you can imagine.
But, by all means, continue to (try to) gaslight as to how you are not anti-patent.
Why is a useful process for delivering diapers ineligible? It’s a process. The statute says useful processes are eligible.
Somehow Judge Rich felt otherwise. Then his precious fee-fees changed (see State Street). But he never stopped claiming to have special insight into the incredibly lazy, shortsighted and c-r-a-p-p-y statute he helped draft. Dude was a hack. That’s his legacy: a hack.
I very well know your feelings, thank you.
But the fact that those are your feelings betrays how you would prefer the actual law to be something other than what it is.
(you never have understood how your rants of feelings simply undermine your desired narratives)
“ the fact that those are your feelings betrays how you would prefer the actual law to be something other than what it is.”
The fact is that the so-called PMD is an eligibility screen and it’s “amorphous” (per Dennis’ generous description).
You still haven’t picked up that the Printed Matter Doctrine does not help you, haven’t you?
Wow, that’s pretty thick – even for you.
Interesting case. Out of curiosity, I pulled the underlying IPR briefing and you can see that Patent Owner started out by not squarely addressing head-on the threshold question of printed matter or not. Instead, PO just sort of defaulted to conceding printed matter upfront and then arguing that it was still entitled to weight. Not until the Sur-Reply did PO really move to a posture of disputing that the elements were printed matter in the first place. So, I have a little bit of sympathy for the Board reaching the decision it did, given the nature of the briefing it received.
“ Rather, “encrypted communications” relates to the form of the communication”
Except it also indicates that the data in question is a “communication” which is a particular kind of data.
“while “program code” just refers to code being downloaded without regard to its contents.”
Its data that is being downloaded and the content of the data is “program code.” Good grief what a farce.
The “content” is “program code”
Apologies for the last unfinished line that was supposed to have been deleted.
Awwwww – is Malcolm needing another lesson in regards to the Printed Matter Doctrine?
The prevalence of printed matter rejections I’ve seen has dropped over the years. It is not like they were common to begin with. As such, while they were rare to begin with, they have been rarer recently.
The printed matter doctrine has always had very limited applicability. However, the USPTO likes to stretch its legs from time to time and see how expansively they can apply older doctrines to invalidate claims — before they ultimately getting slapped down (yet again) by the CAFC. We’ll probably see another one of these cases 6 or 7 years from now when the USPTO tries to stretch its legs again.
Well, this is an IPR so it’s not exactly the same context as ex parte prosecution. Printed matter was raised by the Petitioner in the first instance, not the Board.
The Board still swallowed what the Petitioner was pushing.
There is no reason why the Board should be relying upon lousy legal arguments.
See my later comment 3 above. The PO didn’t do a great job responding, at least at first, which may have contributed to the initial outcome at the Board level.