Board’s Misapplication of Printed Matter Doctrine Leads to Partial Reversal

In IOENGINE, LLC v. Ingenico Inc., No. 21-1227, (Fed. Cir. May 3, 2024), the Federal Circuit partially reversed the Board’s unpatentability determinations because the Board erred in its application of the printed matter doctrine.

Under the printed matter doctrine, information claimed for its communicative content is accorded no patentable weight.

At the PTAB, the Board applied the printed matter doctrine and accorded no patentable weight to the terms “encrypted communications” and “program code” appearing in U.S. Patent Nos. 9,059,969 and 9,774,703, which relate to secure communication for portable devices. The Board found that the term “encrypted communications” claimed only communicative content. The Board determined that there was no functional relationship of the encrypted data to the communication carrying it because nothing in the claims required the data being used or manipulated or any processing beyond the transmission of the data. The Board also found that “program code” was not entitled to patentable weight because the downloaded code was merely generic and had no functional relationship with either the portable device or the terminal. IOENGINE disagreed and appealed.

On appeal, the Federal Circuit determined that both claim limitations were not printed matter. The Federal Circuit held that printed matter encompasses what is communicated—the content or information being communicated—rather than the act of a communication itself. Because “encrypted communications” and “program code” were not being claimed for the content they communicate, the Federal Circuit found that they were not printed matter and should be given patentable weight. To hold otherwise, the Federal Circuit said, “would impermissibly expand the printed matter doctrine far beyond its current scope.”