May 29, 2018

“Printed Matter Doctrine Case Could Offer New Patent Attack,” Law360, May 25, 2018

A recent Federal Circuit decision applying the rarely-invoked printed matter doctrine to invalidate a respiratory drug patent could give litigants another way to challenge patents and get in patent-eligibility arguments that otherwise can’t be made in inter partes reviews, attorneys say.

The doctrine holds that parts of a patent that are directed to printed material or the content of information are not given patentable weight unless they serve some function in the invention. It was originally designed to preserve the boundary between patents and copyrights by preventing patents on copyrightable written material like business forms, books and diagrams.

In a May 16 decision, the Federal Circuit took a broader view of the doctrine when it held the Patent Trial and Appeal Board correctly invalidated claims of a Mallinckrodt Hospital Products IP Ltd. patent covering a drug called INOmax as obvious in an inter partes review.

For companies challenging patents, the approach used in this case “is a great way of getting limitations essentially removed from the claim when you can’t make a [patent-eligibility] argument,” said Michael Nye of Harness Dickey & Pierce PLC.

“I wouldn’t be surprised to see more decisions like this coming from the PTAB. Certainly people will argue this now,” he said.

“Software patents are running into all sorts of problems, so if you can filter out limitations with an expanded printed matter doctrine and make obviousness rejections easier to make, that could be quite a big change,” said Michael Nye of Harness Dickey & Pierce PLC.

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