In a precedential decision, the US Court of Appeals for the Federal Circuit partially reversed and partially affirmed the Final Written Decisions made by the Patent Trial and Appeals Board ("Board") during a series of inter partes review (IPR) proceedings.
The challenged patents, which share a common ancestor, written description, and title, "Apparatus, Method and System for a Tunneling Client Access Point," relate to a portable device. When plugged into a desktop or laptop computer, this portable device can utilize the computer's user interface and input/output peripherals while using the portable device's own storage, execution, and processing resources. The key issues in this decision involved the printed matter doctrine and forfeiture of a claim construction argument.
Printed Matter Doctrine
The Federal Circuit and its predecessor, the Court of Customs and Patent Appeals, have long recognized that certain "printed matter" falls outside of the scope of patentable subject matter. For example, an FDA label providing dosage instructions for using a medical product, a label instructing a patient to take a drug with food, instructions on how to perform a DNA test, and numbers printed on a wristband have been deemed unpatentable printed matter.
Typically, the court applies a two-step test to determine whether a limitation should be excluded under the printed matter doctrine. First, the court assesses whether the limitation in question is directed toward printed matter. A limitation is considered printed matter only if it claims the content of information, meaning that it claims "for what it communicates." If the limitation in question is determined to be printed matter, the court proceeds to the second step, which examines whether the printed matter nevertheless should be given patentable weight. If "the claimed informational content has a functional or structural relationship to the substrate," the printed matter is given patentable weight.
In this case, the Federal Circuit concluded that the "encrypted communications" and "program code" limitations in the challenged patents were not printed matter because they did not claim their communicative contents. Instead, "encrypted communications" refers to a form of a communication, while "program code" does not specify the contents of the code. The court clarified that the printed matter doctrine only excludes "what is communicated — the content or information being communicated — rather than the act of a communication itself." Since no specific content was being claimed, the court determined that the Board erred in applying the printed matter doctrine to exclude those limitations from the claims.
Forfeiture of Claim Construction
Claim construction arguments may be forfeited if they are not proffered first to the Board in IPR proceedings. The rationale is that failing to present such arguments to the Board deprives the court of the benefit of the Board's informed judgment.
In its responses, the patent owner consistently requested that the Board construe "interactive user interface" as "a display containing interface elements with which a user may interact to result in the terminal taking action responsively by responding to the user." However, on appeal, the patent owner introduced a new claim interpretation, "a presentation containing interface elements with which a user may interact to result in the device executing code to present/affect the presentation taking action responsively by modifying what is presented," which would encompass either the computer or the portable device taking responsive action.
The Federal Circuit ruled that the patent owner forfeited or waived its proposed claim construction by proposing a new construction on appeal that it had never proffered to the Board during the IPRs. Although the patent owner contended that its constructions before the Board and the Federal Circuit "embody the same concepts," the court disagreed, finding that the constructions differed meaningfully.
This decision underscores the importance of raising a claim construction argument at the first opportunity during an IPR. Failing to do so may result in forfeiture or waiver of the argument on appeal, as occurred in this case.
IOEngine, LLC v. Ingenico Inc., Case No. 2021-1227, -1331, -1332 (Fed. Cir. May 3, 2024)
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