IOENGINE v. Ingenico: Are Electronic Communications Fair Game for the Printed Matter Doctrine? | BakerHostetler
In IOENGINE, LLC v. Ingenico Inc.,2021-1227 (Fed. Cir. May 3, 2024), the Federal Circuit reversed a Patent Trial and Appeal Board (PTAB) determination that certain claim features did not carry patentable weight under the printed matter doctrine. This decision is notable, as it concerns the application of the printed matter doctrine to a digital communication.
The claims at issue in the case related to a tunnel client access point capable of making use of the access terminal’s input/output to tunnel data. The particular claim at issue recited the following: “wherein the communication to be transmitted to the communication network node facilitates the transmission of encrypted communications from the communication network node to the terminal” (emphasis added).
The PTAB determined that the term “encrypted communications” was no more than printed matter and thus carried no patentable weight.
On appeal, the Federal Circuit reversed. In its decision, the Federal Circuit applied a two-step test to determine whether a feature falls under the printed matter doctrine: (1) whether the limitation in question is directed toward printed matter, and (2), if (1) is satisfied, whether the printed matter nevertheless should be afforded patentable weight because the printed matter’s informational content has a functional or structural relation to the substrate.
In the Federal Circuit’s view, “encrypted communications” did not satisfy the first step of the test. To meet the first step, a limitation must claim the content specifically being communicated (“content is what the communication actually says”). But the Federal Circuit determined that the “encrypted communications” at issue only claimed the form of the communication (“encrypted”), not what was communicated. Because the term did not satisfy the first step of the two-step test, “encrypted communications” were not subject to the printed matter doctrine and should have been afforded patentable weight.
Applying the printed matter doctrine in the context of digital communications appears to be a point of first impression for the Federal Circuit. Even though the court stated that the doctrine concerns any type of information claimed for its communicative content, the cases cited in the opinion refer to physically printed materials and information displayed on a user interface, not to electronic communications.
Although the court found that the printed matter doctrine did not apply to the “encrypted communications” term at issue, one can envision situations when other electronic communications might satisfy at least the first step of the test. For example, patent claims in telecommunications commonly recite “messages” or “requests” that contain information such as triggers, markers, identifiers and the like. A litigant or patent examiner could thus take the position that a term that states generally what is contained in a message (e.g., a trigger) specifies the content of what is communicated, thereby satisfying the first step of the printed matter doctrine test. The IOENGINE decision thus introduces a new uncertainty around the printed matter doctrine, and given the prominence of electronic communications in today’s technologies, the doctrine may be implicated with new frequency in prosecution and litigation alike.
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