Federal Circuit Summaries

Before Prost, Newman, and Lourie. Appeal from the United States Patent and Trademark Office (PTAB)

Summary: A limitation that merely claims information by incorporating that information into a mental step or process is not entitled to patentable weight under the printed matter doctrine, unless the limitation is functionally related to the substrate.

The claims of the patent at issue generally relate to “supplying a medical provider with a cylinder of nitric oxide gas and providing the medical provider with certain prescribing information relating to the harmful side effects” of the gas for a certain class of patients. A dependent claim, Claim 9, further required discontinuing treatment based on the prescribing information. In an inter partes review, the Board found that a limitation that merely claims prescribing information has no patentable weight under the printed matter doctrine. The printed matter doctrine generally stands for the principle that no patentable weight should be given to the content of information recorded in a substrate. However, the Board held that a limitation directed towards discontinuing treatment based on that information does have patentable weight. Accordingly, the Board concluded that Claim 9 was patentable, but all other challenged claims were unpatentable.

The Federal Circuit confirmed that the Board correctly applied the printed matter doctrine to the claimed information. Additionally, the court stated that the claimed information in all claims, except Claim 9, was not “interrelated with the rest of the claim” and not functionally related to the substrate of the claim. Therefore, the claimed information lacked patentable weight. Regarding Claim 9, the Federal Circuit agreed that the additional discontinuing limitation was functionally related and had patentable weight. However, the Federal Circuit found that a prior art reference disclosing “careful observation and intensive monitoring” of the patients also teaches discontinuing treatment. Thus, the court held all the claims unpatentable.

Judge Newman concurred in the judgment of unpatentability since “patentability is readily analyzed under. . . section 103,” but she disagreed with the majority’s view of the printed matter doctrine. She argued that the majority improperly expanded the application of the doctrine because the doctrine is limited to “printed matter, not information and not mental steps.”