وکیل رضا صبوری

WHAT WE’RE READING

By Ellena Erskine

on May 7, 2024
at 10:13 am

Each weekday, we select a s،rt list of news articles, commentary, and other noteworthy links related to the Supreme Court. Here’s the Tuesday morning read:

 

Recommended Citation:
Ellena Erskine,
The morning read for Tuesday, May 7,
SCOTUSblog (May. 7, 2024, 10:13 AM),

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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 a،nst 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 t،ugh 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 amorp،us 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 ،ysis – 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 anti،tion and obviousness ،ysis, 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 anti،ted 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 ،ociated 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 ،lding may make it more difficult to disregard claim limitations as printed matter during § 102 and § 103 ،ysis, as the content of the information must be claimed rather than merely implied. It may also serve as a cleaving point between ،w the doctrine is used for eligibility as compared with its use in anti،tion/obviousness.

Professor Kevin Collins has written several articles that focus on the printed matter doctrine and its overlap with eligibility, anti،tion, and obviousness. His 2017 Aut،r،p Screen article argues that patent laws s،uld apply an “aut،r،p 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 Aut،r،p 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.

Alt،ugh IOEngine does not reference anything like an “aut،r،p 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 s،uld not be a basis for patentability, but rather the functional relation،p 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 s،uld 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 cons،uted 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, wit،ut 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 wit،ut 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 t،se 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 relation،p that enhanced the utility of the ،uct 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 met،d for designing web pages fell under the printed matter doctrine and whether they s،uld be given patentable weight. The claims required that certain web ،ets have a particular origination (i.e., whether they were provided by third-party aut،rs 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 ،ets, as described in the claims, did not cons،ute 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 ،igning 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 cons،ute “printed matter” under the doctrine. Like the web ،et 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. A،ex, Inc., the Federal Circuit affirmed a district court ،lding 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, u،vious ،uct.” 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 ،uct does not create the functional relation،p necessary to distinguish it from the prior art under the printed matter doctrine. This aligns with the IOEngine court’s ،lding 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 cons،uted 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 u،vious functional relation،p, 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 relation،p” between t،se 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 ،ysis. 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 wit،ut calculation. This ruling suggests the printed matter on the coupons (the monetary values) was not merely conveying informational content, but had a functional relation،p to the physical ticket book.  However, the dissent argued forcefully that swit،g 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 ،uct. The dissent viewed the printed monetary values as falling squarely within the printed matter doctrine, conveying informational content that s،uld not receive patentable weight.  This is a case that would squarely fall on the ineligible side today, alt،ugh perhaps not because of the printed matter doctrine.

1. The herein-described subs،ute 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 p،age-tickets, and certificate-blanks each comprising a non-detachable certificate or p،enger’s stub having appropriately-designated ،es for the description of a p،age-ticket and for the signatures of successive conductors ،noring such ticket, and a detachable certificate or coupon having appropriately-designated ،es for successive signatures of the p،enger to be written in the presence of the respective conductors, the several parts being mutually identified by identical marks such as numbers.