The patents at issue were U.S. Patent Nos. 8,539,047 (’047 patent), 9,059,969 (’969 patent), and 9,774,703 (’703 patent), all owned by IOENGINE. Ingenico fled three petitions for IPR against the patents at issue. The Patent Trial and Appeal Board determined that the claims in the patents at issue were unpatentable. The Court reversed the Board’s unpatentability determinations as to claims 4 and 7 of the ‘969 patent and claims 61-62 and 110-111 of the ‘703 patent because the Board erred in its application of the printed matter doctrine.

The challenged patents disclose a tunneling client access port ("TCAP") that is “a highly secure, portable, power efficient storage and data processing device” (e.g. a USB memory drive). The TCAP may be plugged into an access terminal (e.g. a desktop or laptop) and make use of the access terminal's traditional user interface 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 so the user to observe without the data actually residing on the access terminal.

The main issues presented in this decision were (1) whether IOENGINE forfeited claim constructions of the term “interactive user interface,” and (2) whether the Board erroneously applied the printed matter doctrine.

(1)       Forfeiture of Claim Construction

During the IPRs, IOENGINE requested that the Board construe "interactive user interface" to mean “a display containing interface elements in which a user may interact to result in the terminal taking action responsively by responding to the user.”  On Appeal, IOENGINE proposed the term “interactive user interface” to be construed as “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.”  IOENGINE contended that the claims encompass either the terminal or the portable device taking responsive action.

The Federal Circuit retains a case-by-case discretion over whether to apply waiver (forfeiture) of claim construction. The Federal Circuit has held that a party waives an argument when the party fails to present the argument to the Board because it deprives the court of the benefit of the Board’s informed judgment. In re Nuvasive, Inc., 842 F.3d 1376, 1380 (Fed. Cir. 2016) (citing Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1251 (Fed. Cir. 2005); In re Watts, 354 F.3d 1362, 1367–68 (Fed. Cir. 2004)); see also Monsanto Tech. LLC v. E.I. DuPont de Nemours & Co., 878 F.3d 1336, 1342 n.8 (Fed. Cir. 2018) (concluding patent owner waived new claim construction argument where the construction was not proffered to the Board in inter partes reexamination proceedings).

The Court held that IOENGINE forfeited the claim construction of the term “interactive user interface” to be construed as “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” because IOENGINE failed to raise the claim construction during the IPR.

IOENGINE argued that they did not forfeit the claim construction because the claim constructions before the Board and the Court embody the same concepts. The court disagreed and stated “Requiring a terminal to take responsive action differs meaningfully from requiring either the terminal or the portable device to take responsive action. Requiring the responsive action to respond to the user also differs meaningfully from requiring the responsive action to modify what is presented.”

(2)       Printed Matter Doctrine

During the IPRs the Board applied the printed matter doctrine to claims 4 and 7 of the ‘969 patent and claims 61-62 and 110-111 of the ‘703 patent to accord no patentable weight to certain claim limitations that recite “encrypted communications” and “program code.

The Court and its predecessors 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. Id

A two-step test is used  to determine whether a limitation should be accorded patentable weight under the printed matter doctrine. First, the Court determines whether the limitation in question is directed toward printed matter. In re Distefano, 808 F.3d 845, 848 (Fed. Cir. 2015). A “limitation is printed matter only if it claims the content of information.” Id. Put another way, printed matter is “matter claimed for what it communicates.” Id. at 850. “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.” Id. “Printed matter is given such weight if the claimed informational content has a functional or structural relation to the substrate.” Id.

(a)        “encrypted communications”

Claims 4 and 7 of the ‘969 both depend on claim 2 which recites “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.”  According to the Court, “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” is directed towards printed matter (i.e. communicative content) because “nothing in the claim that requires anything beyond sending and receiving data, even if the data is in an encrypted form.”  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.”

The Court disagreed that “encrypted communications” constitutes as printed matter because the encrypted communications themselves is not “content.” In other words, claim 4 fails to recite what the content of the encrypted communications and what encrypted communications are actually communicating.  The Court goes on to explain that printed matter is, for example, an FDA label providing dosage instructions for using a medical product is printed matter, a label instructing a patient to take a drug with food, and instructions on how to perform a DNA test. Distefano, 808 F.3d at 849–50 (collecting cases).

(b)       “program code”

Claim 7 of the ‘969 patent and claims 61-62 and 110-111 of the ‘703 patent pertain to “the communication caused to be transmitted to the communication network node facilitates the download of program code on the communication network node to the terminal.” According to the Court, “the communication to the communication network node facilitates the download of program code to the terminal, rather than the transmission of encrypted communications, as described above in claim 4.”  The Board did not afford the term “program code” patentable weight because “the recital of ‘downloading’ of program code in claim 7 is limited to downloading (sending or transmitting) the code, which is a communication, and no other function is recited in the claim.”

The Court disagreed because the term “program code” is not being claimed for its communicative content because no informational content is being communicated and the claim is silent as to the content of the program code.

Because the court did not find that “encrypted communications” and “program code” is not printed matter, the Court ended their analysis there and did not move onto the second step of the two-step analysis.