Authored by: Jeremy J. Gustrowsky
A recent decision from the Federal Circuit has clarified how the “printed matter doctrine” applies to modern technology patents, particularly those involving software and encrypted communications. The case centered on patents owned by IOENGINE, LLC—specifically U.S. Patent Nos. 8,539,047, 9,059,969, and 9,774,703—which describe a secure, portable device that connects to a computer terminal and facilitates encrypted communications and program code downloads.
The Patent Trial and Appeal Board (PTAB) had previously found many of IOENGINE’s patent claims unpatentable, in part by applying the printed matter doctrine. This doctrine traditionally excludes from patent protection any claim elements that are simply information being communicated, rather than a new and useful process or machine. The Board had ruled that claims involving “encrypted communications” and “program code” were unpatentable printed matter, arguing these were just information being sent or received.
However, the Federal Circuit disagreed with the PTAB’s broad application of the doctrine. The court explained that “printed matter” only applies when a patent claim is directed to the actual content of information being communicated, not the mere act of communication or the format (such as encryption). Since IOENGINE’s claims did not specify the content of the encrypted communications or the program code, but rather the process of transmitting or downloading them, these limitations were not considered printed matter and could not be dismissed so easily.
As a result, the court reversed the PTAB’s unpatentability findings for several claims, while affirming others. This decision narrows the reach of the printed matter doctrine, making it clear that claims involving the transmission or downloading of data—without specifying the content—are not automatically excluded from patent protection. This clarification is likely to have significant implications for software and communications patents going forward.