The U.S. Court of Appeals for the Federal Circuit (Federal Circuit) provided important guidance on the printed matter doctrine, which dictates that in some instances claim language reciting the content of printed information carries no patentable weight, and vacated a Patent Trial and Appeal Board (PTAB or Board) decision that found a claim anticipated by improperly relying on this doctrine to ignore claim language.

What This Means to You

The judicially-created printed matter doctrine is sometimes used by the U.S. Patent and Trademark Office (USPTO) to avoid giving claim limitations any patentable weight—effectively reading such limitations out of the claims. As illustrated in In re: Thomas L. DiStefano, III, the USPTO sometimes misapplies the printed matter doctrine.

Case Background

DiStefano’s patent application claims a technique for allowing a user to design a webpage by incorporating “web assets” such as Java applets, scripts, images, and digital art. Each of the web assets may be created by the user or by a third party. The PTAB rejected a claim in DiStefano’s application as being anticipated by a reference. In making this determination, however, the Board did not give any patentable weight to the claim limitation “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,” finding that this claim limitation falls within the printed matter doctrine.

Decision Analysis

The Federal Circuit explained that the printed matter doctrine is to be applied using a two-step test. The first step involves determining whether a claim limitation is directed to printed matter. If not, the doctrine does not apply. If the claim is directed to printed matter, then the second step involves determining whether the printed matter should be given patentable weight, which will be the case when the printed matter has a functional or structural relation to the substrate on which it is printed.

With regard to the first step, the Federal Circuit clarified that a limitation is directed to printed matter “only if it claims the content of the information,” and explained that the Board erred in applying the printed matter doctrine to DiStefano’s claim because the claim limitation in question does not claim the content of any information. Rather, the claim limitation is directed to the origin of the web assets, which is not part of their informational content.

Takeaways

When faced with a printed matter doctrine rejection, patent applicants should consider whether the USPTO properly applied the doctrine to the claims at issue in view of the two-part test set forth in the DiStefano case and cases cited therein, and pay particular attention to whether content of information is claimed.