In re DiStefano

The U.S. Court of Appeals to the Federal Circuit addressed the obscure “printed matter doctrine,” concluding that a claim limitation should be considered as printed matter only if the claim pertains exclusively to the content of information. In re DiStefano, Case No. 15-1453 (Fed. Cir., Dec. 17, 2015) (Prost, C.J.).

Up on appeal for the second time, following a remand of the original anticipation rejection of the U.S. Patent and Trademark Office Board of Appeals (Board), the Federal Circuit this time addressed the Board’s application of the printed matter doctrine. At issue in this case is inventor DiStefano’s patent on a method for designing web pages. The Board’s analysis focused on a limitation reciting “selecting a first element from a database including web assets provided to the user interface from outside the user interface by the user” (the “selecting limitation”). The Board found that the recitation of selecting elements from a database constituted “printed matter” and, as such, should not be afforded patentable weight. Relying in part on this analysis, the Board found the claim invalid as anticipated.

The printed matter doctrine requires the Federal Circuit to apply a two-step test: determine whether a claim limitation recites printed matter and evaluate whether the matter is functionally or structurally related to the physical substrate holding the printed matter. The Federal Circuit previously held that a limitation is only printed matter if it claims the content of information; consistently limiting the printed matter rule to matter claimed for its communicative content. This doctrine has been applied to U.S. Food and Drug Administration (FDA) labels providing dosage instructions for using a medical product, labels instructing a patient to take a drug with food, instructions on how to perform a DNA test and numbers printed on a wrist band.

In this case, the Federal Circuit found that “although the selected web assets can and likely do communicate some information, the content of the information is not claimed.” The limitation does not call for origin identification to be inserted into the content of the web asset. Thus, the Court explained that the Board erred in finding that the origin of the web assets constituted printed matter in the claims at issue and vacated the finding of anticipation. The case was remanded yet again for further consideration.