At the Federal Circuit
Determining Whether Printed Matter Is Given Patentable Weight
The term “printed matter” refers to information that is associated with an article of manufacture, or “substrate.” Examples might be text stamped into a metal housing or a JPEG image on a memory device. The “printed matter doctrine” is a long-standing, judge-made rule that prevents the content of information printed on a substrate from being given patentable weight unless there is a functional relationship between the printed information and the substrate. The printed-matter doctrine was recently the subject of a Federal Circuit remand to the Patent Trial and Appeal Board (PTAB). The rejected patent application on appeal in In re DiStefano, No. 2015-1453 (Fed Cir. Dec. 17, 2015), U.S. Patent Application No. 10/868,312 (“the ’312 application”) claimed a method of designing web pages. The PTAB deemed that one of the limitations of Mr. DiStefano’s independent claim 24 fell within the ambit of the printed-matter doctrine and was not entitled to patentable weight. On appeal, the Federal Circuit took the opportunity to fully explain this nonstatutory rule, recounting its history and contours, from stamps in the mid-nineteenth century through applications in the digital age. Ultimately, the court found that the U.S. Patent and Trademark Office (USPTO) had misapplied the doctrine in rejecting the website design claims and remanded for further consideration.
Mr. DiStefano’s invention enables an individual to design a web page without having to “learn HTML or to interact extensively with a web page designer.” DiStefano, slip op. at 2 (quoting ’312 application at 3, ll. 12-15). The primary embodiment includes a graphical user interface composed of a primary display screen and an overlaid design plate. The ’312 application describes “web assets,” including Java applets, scripts, stock art, digital art, background images, textures, etc. These web assets can (i) come from a web asset database, (ii) be uploaded directly by users, or (iii) be obtained from independent third-party websites. According to the ’312 application, the user drags the web asset from the design plate onto the website. The only independent claim in the case, claim 24, reads as follows:
A method of designing, by a user in a user interface having first and second display regions each capable of displaying a plurality of element [sic], an electronic document, comprising:
selecting a first element from a database including web assets authored by third party authors and web assets provided to the user interface or outside the user interface by the user;
displaying the first element in the second display region;
interactively displaying the electronic document in the first display region;
modifying the first element displayed in the second display region upon receiving a first command to modify the first element in the second display region; and
displaying the modified first element in the first display region, wherein the modified first element forms at least part of the electronic document.
Id. at 3 (alteration in original) (quoting ’312 application at 19.)
Before the PTAB, it was agreed that the D’Arlach reference, U.S. Patent No. 6,026,433, anticipated all elements but one: claim 24’s limitation of “selecting a first element from a database including web assets authored by third party authors and web assets provided to the user interface from outside the user interface by the user.” But the PTAB held that this “selecting limitation” should not be afforded patentable weight under the printed-matter doctrine, concluding that “web assets’ origination from third party authors and the user cannot patentably distinguish (i.e., cannot breathe novelty into) the claimed method, particularly because the web assets’ origins have no functional relationship to the claimed method.” Id. at 4 (citation omitted). The PTAB accordingly viewed the “origins” as printed matter and rejected the claim under 35 U.S.C. § 102. On appeal, the Director defended the printed-matter rejection only on the ground that the PTAB treated the origins, not the web assets themselves, as printed matter.
The Federal Circuit reminded that determining patentability requires reading the claim as a whole and considering each limitation. Since a claim must be read as a whole, the USPTO may not simply disregard claim limitations comprised of printed matter. Rather, printed-matter limitations receive no patentable weight to distinguish prior art except under certain conditions: “[W]e have long held that if a limitation claims (a) printed matter that (b) is not functionally or structurally related to the physical substrate holding the printed matter, it does not lend any patentable weight to the patentability analysis.” Id. at 5 (citing In re Gulack, 703 F.2d 1381, 1384-85 (Fed. Cir. 1983)). Thus, “[w]here the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability. Although the printed matter must be considered, in that situation it may not be entitled to patentable weight.” Id. (quoting Gulack, 703 F.2d at 1385).
The Federal Circuit again in DiStefano set forth its two-step test for conducting a proper printed-matter inquiry.
First, courts must determine whether the limitation is actually directed toward printed matter. “Our past cases establish a necessary condition for falling into the category of printed matter: a limitation is printed matter only if it claims the content of information.” Id. Going back as far as Ex parte Abraham, 1869 Dec. Comm'r Pat. 59 (finding that coupons with various kinds of stamps and figures are not patentable), and In re Russell, 48 F.2d 668, 669 (C.C.P.A. 1931) (indexing names in directories), tribunals have deemed “[t]he mere arrangement of printed matter on a sheet or sheets of paper, in book form or otherwise, does not constitute any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvements thereof,” DiStefano, slip op. at 6-7 (alteration in original) (quoting Russell, 48 F.2d at 669). More recently, the Federal Circuit has concluded that a Food and Drug Administration label providing the dosage instructions for using a medical product was printed matter, AstraZeneca LP v. Apotex, Inc., 633 F.3d 1042, 1048 (Fed. Cir. 2010); that a label instructing a patient to take a drug with food was printed matter, King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010); that instructions on how to perform a DNA test were printed matter, In re Ngai, 367 F.3d 1336, 1337-38 (Fed. Cir. 2004); and that numbers printed on a wristband were printed matter, Gulack, 703 F.2d at 1383. See DiStefano, slip op. at 8-9 (gathering and explaining cases). In a digital context, therefore, the court found no printed matter in In re Lowry, 32 F.3d 1579 (Fed. Cir. 1994), because the data structures “contain[ed] both information used by application programs and information regarding their physical interrelationships within a memory.” DiStefano, slip op. at 9 (alteration in original) (quoting Lowry, 32 F.3d at 1583-84). Summarizing these numerous holdings across time, the court explained that “[t]he common thread amongst all of these cases is that printed matter must be matter claimed for what it communicates.” Id. at 10.
Second, if printed matter is properly found, courts must determine whether the printed matter can nevertheless be accorded patentable weight. Id.
Printed matter is given such weight if the claimed informational content has a functional or structural relation to the substrate. . . . [A]s we have consistently held, once it is determined that the limitation is directed to printed matter, one must then determine if the matter is functionally or structurally related to the associated physical substrate, and only if the answer is “no” is the printed matter owed no patentable weight.Id. For example, Miller determined that while the text written on a measuring receptacle was printed matter, it should be given patentable weight because there was a “functional relationship between a measuring receptacle, volumetric indicia thereon indicating volume in a certain ratio to actual volume, and a legend indicating the ratio.” Id. (quoting In re Miller, 418 F.2d 1392, 1396 (C.C.P.A. 1969)). And, in a computer-based application, the Gulack court determined “that while a sequence of digits printed on a wrist band constituted printed matter, the sequence deserved patentable weight because the informational content of the sequence (what numbers were represented) was functionally related to the endless-band physical structure of the substrate.” Id. (citing Gulack, 703 F.2d at 1385).
The court remanded in the DiStefano case because the PTAB had improperly “erred at the threshold step.” Id. According to the court, “[a]lthough the selected web assets can and likely do communicate some information, the content of the information is not claimed.” Id. at 10-11 (emphasis added). Moreover, continued the court, “where the information came from, its ‘origin,’ is not part of the informational content at all,” and “[n]othing in the claim calls for origin identification to be inserted into the content of the web asset.” Id. at 11. The Federal Circuit thus held that the PTAB erred in finding that the origin of the web assets constituted printed matter, and remanded to determine whether that limitation could have been ascribed patentable weight in distinguishing D’Arlach.
This decision gathers over a century of case law on the printed-matter doctrine and musters it to decide whether the PTAB properly assessed the patentability of a web-based application. With the ubiquity of computer and software-related inventions over the last several decades, practitioners should continue to consider this important judge-made restriction and the manner it has developed. See also MPEP § 2111.05. Concise and thorough treatments such as DiStefano are useful in helping drafters avoid such potential, albeit somewhat rare, claiming pitfalls.
