Federal Circuit Finds Application of Printed Matter Doctrine Too Expansive | Jones Day
During an inter partes review (IPR) initiated by Ingenico, the PTAB found certain claims from three patents held by IOEngine to be unpatentable. The patents at issue are directed to secure communications for portable devices used with a terminal (e.g., desktop computer) for user input. On appeal (IOENGINE LLC v. Ingenico Inc), IOEngine argued that the PTAB incorrectly construed “interactive user interface” and incorrectly applied the printed matter doctrine. While rejecting the claim construction arguments, the Federal Circuit held the PTAB misapplied the printed matter doctrine.
The Federal Circuit first addressed the proper claim construction of the term “interactive user interface.” On appeal, IOEngine offered a new construction of the term that was never presented to the Board during IPR and “differed meaningfully” from IOEngine’s original construction. As such, the Federal Circuit held that IOEngine had forfeited the new claim construction.
The Federal Circuit also evaluated the PTAB’s findings related to the printed matter doctrine. The printed matter doctrine precludes the patenting of “conveyance of information” including, for example, a printed label of instructions for patient. While originally limited to actual “printed” material, it has since been expanded to include any information claimed for its communicative content, regardless of medium. The PTAB originally held that IOEngine’s claim limitations directed to “encrypted communications” and “program code” were printed matter that were not entitled to patentable weight. The Federal Circuit reversed, holding that the claims were not being claimed for the content they communicated. Instead, the claimed “encrypted communications” related to the form of the communication, while “program code” refered to code being downloaded without regard to its contents. The Federal Circuit concluded that the PTAB’s application of the printed matter doctrine to ignore those claim limitations impermissibly expanded the printed matter doctrine far beyond its appropriate scope.
Takeaway: The Federal Circuit clarified that the printed matter doctrine bars patentable weight only for claim limitations directed to the communicative content of information.
