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IP Alert: Federal Circuit Clarifies Application of Printed Matter Doctrine

December 21, 2015

The “printed matter doctrine” holds that a claim limitation for printed matter that is not functionally or structurally related to the physical substrate that holds the printed matter does not lend any patentable weight and so can be effectively ignored by the examiner. This does not mean that the claim is improper for including such content, but rather that the patentee cannot rely upon such a limitation to distinguish that claim from the prior art.

The patentee in In re: Thomas L. Distefano, III sought claims directed to a method of designing web pages. The sole independent claim at issue presented the following limitation: “[S]electing 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” (emphasis added).

The examiner—and the Patent Trial and Appeal Board (PTAB)—argued that the above-quoted limitation could be ignored as printed matter. There seemed to be no dispute as to whether the “web assets” were printed matter, nor any real dispute that this claim was nevertheless not directed to those “web assets.” As noted by the court, “Although the selected web assets can and likely do communicate some information, the content of the information is not claimed.”

The issue instead was the language in the claim limiting the origin of those web assets (for example, to being “authored by third party authors”). The U.S. Patent and Trademark Office (USPTO) argued that the origin of the content should not offer patentable weight because those origins could also be excluded under the printed matter doctrine.

After providing a brief history of the printed matter doctrine and noting that “a limitation is printed matter only if it claims the content of information,” the Federal Circuit concluded that the PTAB had “erred at the threshold step. Although the selected web assets can and likely do communicate some information, the content of the information is not claimed. And where the information came from, its ‘origin,’ is not part of the informational content at all.” In this present case, according to the court, “Nothing in the claim calls for origin identification to be inserted into the content of the web asset,” and therefore the origin of the web assets is not printed matter and the PTAB erred in “assigning the origin no patentable weight under the printed matter doctrine.”

The court vacated the PTAB’s findings regarding anticipation that relied upon excluding consideration of the “origin” limitation and remanded the matter back to USPTO for further findings.

The PTAB had expressed the thought that the web assets themselves were “analogous” to printed matter. It is at least interesting that the USPTO chose to defend the PTAB’s decision by focusing only on whether the origin of the web assets constituted printed matter and ignored the question of whether the web assets themselves were printed matter as espoused by the PTAB.

It is possible that the USPTO adopted this strategy after itself concluding, as apparently did the court, that the syntax of the claim limitation did not give rise to a claim to the web assets themselves, thus obviating application of the printed matter doctrine. This strategy, however, left the USPTO with nothing to argue but that the origin of information was itself somehow also subject to the printed matter doctrine, a view the court refused to adopt.

For more information about this decision, please contact Steven G. Parmelee, author of this alert.

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