'Nonfunctional Descriptive Material' vs. 'Printed Matter'—The PTAB's Defiance of Federal Circuit Precedent

Landslide (American Bar Ass'n) vol 12 nr 3, pp 46-51 (Jan-Feb 2020)

8 Pages Posted: 27 Jan 2020

See all articles by David Boundy

David Boundy

Cambridge Technology Law LLC

Date Written: January 5, 2020

Abstract

One of the truly remarkable phenomena in the history of both patent law and administrative law is the five-decade dispute between the Patent Trial and Appeal Board (PTAB) vs. the Federal Circuit on the definition of “printed matter.”

The Federal Circuit has been consistent in defining a “printed matter” rule: claim language that consists of “printed lines or characters, useful and intelligible only to the human mind,” recited for the information content it communicates, and not “functionally related to its substrate,” may be denied patentable weight for § 102 and § 103 purposes. The court has held several times that the “printed matter” rule has no relevance to computer data.

In contrast, the Board has settled into a long-term disagreement with the Federal Circuit. The PTAB’s view is that any “nonfunctional descriptive material” (a term that is nowhere defined) is to be denied patentable weight for § 102 and § 103 purposes, even if it is computer data entirely imperceptible to humans, and that the relationship between computer data and its containing memory is generally not “functional.”

The Board adheres to this view despite the Federal Circuit’s regular warnings, both under administrative law, that “[j]udicial precedent is as binding on administrative agencies as are statutes,” “the PTO lacks the substantive rulemaking authority to administratively set aside judicial precedent”; and under substantive law, that the Federal Circuit is “notably weary” in reminding the Board that the “printed matter” rule does not apply to computer data.

This article discusses the long-standing conflict between the Board and Federal Circuit. Is there a systemic problem in the USPTO’s legal apparatus? What corrective actions could be taken?

Keywords: administrative law, patent law, Patent and Trademark Office, Patent Trial and Appeal Board

Suggested Citation

Boundy, David, 'Nonfunctional Descriptive Material' vs. 'Printed Matter'—The PTAB's Defiance of Federal Circuit Precedent (January 5, 2020). Landslide (American Bar Ass'n) vol 12 nr 3, pp 46-51 (Jan-Feb 2020). Available at SSRN: https://ssrn.com/abstract=3516864

David Boundy (Contact Author)

Cambridge Technology Law LLC ( email )

PO Box 590638
Newton, MA 02459
United States
646 472 9737 (Phone)

HOME PAGE: http://www.CambridgeTechLaw.com

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