Printed Matter Doctrine Implicates Matter That Is Claimed for What it Communicates

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Federal Circuit Review No. 80-1.
Printed Matter Doctrine Implicates Matter That Is Claimed for What it Communicates

In re Distefano, No. 2015-1453, 2015 U.S. App. LEXIS 21925 (Fed. Cir. Dec. 17, 2015) (Before Taranto, Hughes, and Prost, CJ.) (Opinion for the court, Prost, CJ.). Click Here for a copy of the opinion.

DiStefano claims a method for designing a web page using a graphical user interface composed of a display screen and overlaid design plate. A selecting limitation requires the user to select an element from a database including third-party web assets and assets from outside the graphical user interface. The PTAB held that the web assets are “printed matter.” Further, this “printed matter” was found to have no functional relationship to the claimed method, and not a meaningful limitation for determining patentability. The claims, construed in this way, were deemed anticipated by the D’Arlach patent.

Chief Judge Prost, Federal Circuit.

Chief Judge Prost, Federal Circuit.

On appeal, the Court explained that if a limitation claims printed matter that is not functionally or structurally related to the physical substrate holding it, the printed matter does not hold any patentable weight. The Court stated, “[i]n performing this analysis, we do not strike out the printed matter and analyze a “new” claim, but simply do not give the printed matter any patentable weight: it may not be a basis for distinguishing prior art.” The Court held that printed matter must be claimed for what it communicates, and it is only afforded patentable weight if the claimed informational content has a functional or structural relation to the substrate. For example, the Court previously determined that a sequence of digits on a wrist band deserved patentable weight because the information of the sequence was functionally related to the physical structure of the substrate. See In re Gulack, 703 F.2d 1381 (Fed. Cir. 1983). (printed matter not functionally related to the substrate will not distinguish the invention from the prior art ).

In this case, the Court held that the Board erred in finding that the origins of the web assets made them printed subject matter, because nothing in the claim called for the origin to be part of the web asset. Properly construed, the web assets are not exluded “printed matter” and should be considered. Accordingly, the Court vacated the Board’s finding that the DiStefano claims were anticipated by D’Arlach.

The Author

Joseph Robinson

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

Joseph Robinson

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

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Discuss this

There are currently 2 Comments comments.

  1. Night Writer January 22, 2016 2:45 pm

    The reality is that the printed matter doctrine is a based on a finding of fact that printed matter does not “promote” innovation. Extending the printed matter doctrine to another domain is outrageous. Just another ridiculous opinion from the Fed. Cir. that has nothing to do with applying the law. The holding should have been: the printed matter doctrine is inapplicable to this domain of innovation. This stuff really borders on criminal conduct.

  2. S. Dym - Israel January 24, 2016 1:41 am

    attn mr. joseph.robinson at,
    thank you for this interesting article. so, bottom line, what is the current status of the printed matter doctrine in the usa and does the above case upgrade same in any way? the doctrine seems to be a double edged sword ie useful in excluding certain would-be inventions from patent protection but just as useful in arguing that other would-be inventions ARE eligible for patent protection; please comment.