Jeremiah Helm and Sean Murray Analyze Federal Circuit Decision Related to Printed Matter Doctrine in Law360

In the latest installment of Knobbe Martens’ monthly Law360 column focused on recent noteworthy Federal Circuit decisions, partners Jeremiah Helm and Sean Murray discuss the precedential opinion recently issued in Ioengine LLC v. Ingenico Inc.

The focus of the authors’ analysis is the case’s application of the printed matter doctrine. The doctrine, Helm and Murray explain, maintains that “words, like mental steps or laws of nature, fall outside the scope of patentable subject matter unless there is a functional relationship between the printed matter and the substrate on which that printed matter is placed.”

After noting previous cases that dealt with printed matter doctrine, the authors delve into Ioengine, in which the court “addresses the scope of the printed matter doctrine as applied to transmitted data or program code.” Ultimately, they explain, the court overturned the Patent Trial and Appeal Board’s determination that two sets of claim limitations were at odds with the printed matter doctrine. 

“The takeaway from Ioengine,” Helm and Murray maintain, “is that the printed matter doctrine must be applied judiciously and specifically where claims are directed to the content of a communication and not to a communication generally.” They further explain, “[T]he board's analysis […] would have transformed the doctrine into a broad tool undermining patentability for many claims to transmitting data or communications. In reality, however, the printed matter doctrine is much narrower than the board's application, and can only be relied on when the content of the printed matter is claimed.”

Read the full article here.