When to Apply Printed Matter Doctrine to Communications and Program Code
| May 15, 2024
Case Name: IOENGINE v. INGENICO
Date of Decision: May 3, 2024
Panel: : Lourie, Chen, and Stoll
Summary:
The Federal Circuit reversed the Board’s preclusion of patentable weight to the limitations involving “encrypted communications” and “program code” under the printed matter doctrine. The court determined that neither “encrypted communications” nor “program code” constitute “printed matter” because these terms do not recite the communicative content or informational content of the “encrypted communications” and “program code.”
Procedural History:
This is a consolidated appeal of several Final Written Decisions in several inter partes reviews (IPRs) in which the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (the Board) found numerous claims in U.S. Patent Nos. 8,539,047, 9,059,969, and 9,774,703 unpatentable. Most of the Board’s unpatentability determinations were affirmed. However, the Federal Circuit reversed the Board’s unpatentability of a subset of the claims due to an error in the Board’s application of the printed matter doctrine.
Decision:
Representative claims 4 and 7 of the ‘969 patent (and claims 1 and 2 from which they depend) are as follows:
1. A portable device configured to communicate with a terminal comprising a processor, an input component, an output component, a network communication interface, and a memory configured to store executable program code, including first program code which, when executed by the terminal processor, is configured to present an interactive user interface on the terminal output component, and second program code which, when executed by the terminal processor, is configured to provide a communications node on the terminal to facilitate communications to the portable device and to a communications network node through the terminal network communication interface, the portable device comprising:
(a) an external communication interface configured to enable the transmission of communications between the portable device and the terminal;
(b) a processor; and
(c) a memory having executable program code stored thereon, including:
(1) third program code which, when executed by the portable device processor, is configured to provide a communications node on the portable device to coordinate with the communications node on the terminal and establish a communications link between the portable device and the terminal, and facilitate communications to the terminal and to a communications network node through the terminal network communication interface; and
(2) fourth program code which is configured to be executed by the portable device processor in response to a communication received by the portable device resulting from user interaction with the interactive user interface;
wherein the portable device is configured to facilitate communications through the communication node on the terminal and the terminal network interface to a communications network node.
2. The portable device according to claim 1, wherein the fourth program code which, when executed by the portable device processor, is configured to cause a communication to be transmitted to the communication network node.
4. The portable device according to claim 2, wherein the communication caused to be transmitted to the communication network node facilitates the transmission of encrypted communications from the communication network node to the terminal.
7. The portable device according to claim 2, wherein the communication network node comprises a database and the communication caused to be transmitted to the communication network node facilitates the download of program code on the communication network node to the terminal.
The Board held that certain claims were anticipated by one of the cited references because no patentable weight was given to limitations that recite “encrypted communication” and “program code” (illustrative claims 4 and 7 reproduced above) under the printed matter doctrine.
The Federal Circuit reversed the Board’s determination of unpatentability of such claims because the Board erred in applying the printed matter doctrine to “encrypted communication” and “program code.”
Refresher on The Printed Matter Doctrine:
- “printed matter” is not patentable subject matter, and limitations that recite “printed matter” are not given patentable weight
- while this doctrine started out with literally “printed” material (information printed on paper), it has evolved over time to encompass “conveyance of information using any medium,” and “any information claimed for its communicative content”
- the printed matter doctrine prohibits patenting printed matter unless it is “functionally related” to its “substrate” (“substate” includes the structural elements of the claim)
- To determine the existence of a functional relationship, the court considers whether the printed matter merely informs people of the claimed information, or whether it instead interacts with the other elements of the claim to create a new functionality in a claimed device or to cause a specific action in a claimed process.
The Federal Circuit applied a two-step test to determine whether a limitation should be accorded patentable weight under the printed matter doctrine.
Step 1: determine whether the limitation in question is directed toward printed matter. The focus is on whether the limitation is claiming certain informational content or “matter claimed for what it communicates.”
Examples of “printed matter” provided by the court include: an FDA label providing dosage instructions for using a medical product; a label instructing a patient to take a drug with food; instructions on how to perform a DNA test; and numbers printed on a wristband.
Only if the limitation in question is determined to be “printed matter,” then Step 2 asks “whether the printed matter nevertheless should be given patentable weight … if the claimed informational content has a functional or structural relation to the substrate.”
Here, claims 4 and 7 are illustrative of the issue regarding application of the printed matter doctrine. Claim 4 depends from claim 2 which causes a communication to be transmitted from the portable device to a communication network node. Claim 4 recites “wherein the communication caused to be transmitted to the communication network node facilitates the transmission of encrypted communications from the communication network node to the terminal.” The Board held that the “encrypted communications” in claim 4 claimed only the communicative content (i.e., “printed matter”) whose transmission is being facilitated and there is “no functional relationship of the encrypted data to the communication carrying it.”
However, the Federal Circuit disagreed. The court clarified that “printed matter is matter that is claimed for its communicative content – i.e., the content specifically being communicated.”
The fact that there is a communication itself is not content; content is what the communication actually says. Nor is the form of a communication, such as whether the communication is encrypted, considered to be content. Printed matter encompasses what is communicated – the content or information being communicated – rather than the act of a communication itself.
With regard to claim 7, the Board likewise applied the printed matter doctrine to decline giving patentable weight to the “program code” limitation. Claim 7 also depends from claim 2 and recites that “the communication caused to be transmitted to the communication network node facilitates the download of program code on the communication network node to the [portable device’s] terminal.” The Board held that the “program code” is printed matter “because it claims the content of the information that is downloaded” and that downloaded code has no functional relationship with the portable device or the portable device’s terminal.
Again, the Federal Circuit disagreed. The court found that the “program code” is not being claimed for its communicative content. No informational content contained within the “program code” is being claimed. Nothing is recited about the contents of the claimed “program code.”
Takeaways:
For application of the printed matter doctrine to preclude patentable weight for a limitation containing the printed matter, the focus is on whether the claim reciting, or relies on, the communicative content of that “printed matter” – “the content specifically being communicated.” This case draws a clear distinction between “communication” or “program code” versus the communicative content or information being communicated or conveyed in that “communication” or “program code.”
