Tag Archives: Section 103
Goodbye Rosen references, hello Jennings references?
Patenting Informational Innovations: IOEngine Narrows the Printed Matter Doctrine
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.
De Forest Radio v. GE: A Landmark Supreme Court Decision on the Invention Requirement
By Dennis Crouch
In 1931, the United States Supreme Court decided a landmark case on the patentability of inventions, De Forest Radio Co. v. General Electric Co., 283 U.S. 664 (1931), amended, 284 U.S. 571 (1931). The case involved a patent infringement suit over an improved vacuum tube used in radio communications. While the case predated the codification of the nonobviousness requirement in 35 U.S.C. § 103 as part of the Patent Act of 1952, it nonetheless applied a similar requirement for "invention."
I wanted to review the case because it is one relied upon in the recent Vanda v. Teva petition, with the patentee arguing that the court's standard from 1931 has been relaxed by the Federal Circuit's "reasonable expectation of success" standard. The decision also provides an interesting case study in the way that the court seems to blend considerations of obviousness and