The Printed Matter Doctrine: Lost in Communication

| Brandon D. HupkaJeremy Anapol

IOENGINE, LLC v. Ingenico Inc.

Before Lourie, Chen, and Stoll. Appeal from the Patent Trial and Appeal Board.

Summary: Claim limitations requiring communications to be “encrypted” or to deliver “program code” were not subject to the printed matter doctrine.

Ingenico filed petitions for inter partes review challenging the validity of many claims in three of IOENGINE’s patents.  Ingenico argued that claim limitations requiring “encrypted communications” and “program code” were entitled to no patentable weight under the printed matter doctrine.  The Board agreed with Ingenico, finding that these limitations were subject to the printed matter doctrine because they claimed the content of information being communicated.  The Board relied on this finding to determine that claims reciting these limitations were anticipated by prior art.  IOENGINE appealed.

The Federal Circuit held that the “encrypted communications” and “program code” limitations were not subject to the printed matter doctrine because they were “not being claimed here for the content they communicate.”  According to the Federal Circuit, requiring a communication to be “encrypted” specifies the “form” of the communication rather than its “content.”  And requiring a communication to contain “program code” also did not specify the communication’s content.  Thus, the Federal Circuit reversed the Board’s anticipation holding as to the claims that recited these limitations.

Editor: Sean Murray