Federal Circuit Overturns PTAB: Encrypted Data Not 'Printed Matter’

The Federal Circuit has reversed a series of decisions by the Patent Trial and Appeal Board (PTAB or Board) in inter partes reviews (IPRs) challenging storage and data processing patents.

The court found that the PTAB incorrectly interpreted encrypted communications to constitute printed matter under the “printed matter doctrine.”

IOENGINE, LLC appealed a series of Final Written Decisions of the PTAB, which found certain claims of several IOENGINE patents unpatentable.

Appellee Ingenico Inc. had filed three petitions for IPR of the Challenged Patents.

The Challenged Patents share an ancestor, written description, and title: “Apparatus, Method and System for a Tunneling Client Access Point.”

As the court describes it,

The written description discloses a tunneling client access point (TCAP) that is a “highly secure, portable, power efficient storage and data processing device” (i.e., a “portable device” as recited in the claims). … The TCAP, upon plugging in to an access terminal (e.g., any existing desktop or laptop computer) may make use of the terminal’s traditional user interface and input/output peripherals, while the TCAP itself provides storage, execution, and/or processing resources. …. The TCAP thereby “tunnels” data through the access terminal by allowing data to be provided through the access terminal’s input/output facilities for the user to observe without the data actually residing on the access terminal. … The TCAP may also tunnel data through an access terminal across a communications network to access remote servers without requiring its own more complicated set of peripherals and input/output facilities.

The Challenged Patents also claim a “portable device” (the TCAP) configured to communicate with a terminal.

IOENGINE contended that the Board erred in concluding that a patent application known as Iida anticipated certain challenged claims of two of IOENGINE’s patents:

According to IOENGINE, Iida fails to disclose an interactive user interface even under the Board’s construction, on the grounds that the “menus” of Iida are static images that provide no interactivity because they lack “clickable elements, checkboxes, or pointer events,” “positional feedback,” or any “other way to engage.”

IOENGINE also argued that the Board erred in applying the printed matter doctrine to determine that Iida anticipated the claims at issue.

In particular, IOENGINE argued that the PTAB incorrectly applied the printed matter doctrine to accord no patentable weight to certain claim limitations that recite “encrypted communications” and “program code.”

The term “printed matter” refers to information printed on or otherwise associated with a manufactured article that distinguishes it from other similar articles already in the prior art.

The court had

previously found that an FDA label providing dosage instructions for using a medical product is printed matter, that a label instructing a patient to take a drug with food is printed matter, that instructions on how to perform a DNA test are printed matter, and that numbers printed on a wristband are printed matter.

The court noted that

This court and its predecessor have long recognized that certain ‘printed matter’ falls outside the scope of patentable subject matter under U.S. patent law.” C R Bard Inc. v. AngioDynamics, Inc., 979 F.3d 1372, 1381 (Fed. Cir. 2020) (citing AstraZeneca LP v. Apotex, Inc., 633 F.3d 1042, 1064 (Fed. Cir. 2010); In re Chatfield, 545 F.2d 152, 157 (CCPA 1976)). Although “printed matter” historically referred to claim elements involving actual “printed” material, today the doctrine has expanded to include any information claimed for its communicative content, regardless of medium.

The court applied a two-part test to determine whether a limitation should be accorded patentable weight under the printed matter doctrine.

First, the court must determine whether the limitation in question is directed toward printed matter. A “limitation is printed matter only if it claims the content of information.”

Only if the limitation in question is determined to be printed matter does the court proceed to the second step, which asks “whether the printed matter nevertheless should be given patentable weight.”

The court noted that “Printed matter is given such weight if the claimed informational content has a functional or structural relation to the substrate.”

(The substrate is the surface on which the matter is printed – for example, paper can be a substrate.)

The court noted that

Claims 4 and 7 of the ’969 patent, to which the Board applied the printed matter doctrine, both depend on claim 2, which requires the “fourth program code [] when executed by the portable device processor, [to be] configured to cause a communication to be transmitted to the communication network node.” Claim 4 of the ’969 patent recites “wherein the communication caused to be transmitted to the communication network node facilitates the transmission of encrypted communications from the communication network node to the terminal.” In other words, claim 4 contemplates the portable device sending a communication to the communication network node, which in turn facilitates sending encrypted communications to the terminal. The Board determined that the term “‘encrypted communications’ claims only communicative content, i.e. printed matter” because it found “nothing in the claim that requires anything beyond sending and receiving data, even if the data is in an encrypted form.” J.A. 151. The Board further found that there was “no functional relationship of the encrypted data to the communication carrying it” because nothing in the claims required “the data being used or manipulated” or “any processing of encrypted data beyond the transmission of the same.” Id. The Board thus concluded that the limitation should be afforded no patentable weight.

However, the Federal Circuit disagreed with the PTAB that the claimed “encrypted communications” constituted printed matter:

printed matter is matter that is claimed for its communicative content—i.e., the content specifically being communicated. The fact that there is a communication itself is not content; content is what the communication actually says. Nor is the form of a communication, such as whether the communication is encrypted, considered to be content. Printed matter encompasses what is communicated—the content or information being communicated—rather than the act of a communication itself.

The court found that unlike the FDA label and the other examples listed above, “which claim communicative content such as medical instructions or numbers,” the encrypted communications in this case were not being claimed for any content that they were communicating. Thus, the court found that the claimed “encrypted communications” did not constitute printed matter.