Website Creation Invention Possibly Patentable

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By Tony Dutra

Dec. 17 — The Federal Circuit has ruled that the “printed matter doctrine” doesn't apply to a web application that allows a user to choose images and text to build a website without knowing the hypertext markup language.

The Dec. 17 ruling was the court's first meaningful review of the doctrine in a computer software context in more than 20 years.

The doctrine is intended to prevent the granting of a patent when the only difference from a prior invention is “the content of information” printed on it. It has been used most recently to invalidate patent claims featuring dosage instructions on an FDA label and instructions on how to perform a DNA test.

Difference in Grabbing ‘Web Assets.'

Thomas L. DiStefano III filed a patent application (U.S. Patent Application No. 10/868,312) claiming an invention that allows a non-technical web user to design a web page.

To get proposed claims 24-26 granted, DiStefano needed to distinguish his development from U.S. Patent No. 6,026,433, which claimed website design via “customizable templates.”

DiStefano's claims included the additional step of “selecting a first element from a database including web assets authored by third party authors and web assets provided to the user interface from outside the user interface by the user.” These web assets included “Java applets, scripts, stock art, digital art, background images, textures, etc.” The user grabs, and possibly edits, one of these web assets and then drags it to the website creation “design plate.”

The PTAB held that the user in this case was manipulating the Internet-object equivalent of printed matter.

Under the doctrine, the selection step would then have “no patentable weight” as far as distinguishing it from the '433 patent. The board thus ruled that DiStefano's claims were not patentable as being anticipated by the prior patent.

DiStefano Step Not Informational

The Federal Circuit ruled that the selection step did not fall under the printed matter doctrine.

The court gave a list of items rejected as printed matter since 1933 and said, “The common thread amongst all of these cases is that printed matter must be matter claimed for what it communicates.”

But it ruled that DiStefano's selection step was not content-specific.

“Although the selected web assets can and likely do communicate some information, the content of the information is not claimed,” the court said. “And where the information came from, its ‘origin,' is not part of the informational content at all.”

The court remanded for the PTAB to look at the claims again, with the additional step having patentable weight.

The last time the court addressed the printed matter doctrine in the computer software realm was in 1994, when it held that a structural database was not printed matter. In re Lowry, 32 F.3d 1579, 32 U.S.P.Q.2d 1031 (Fed. Cir. 1994).

The FDA labeling decision noted above was AstraZeneca LP v. Apotex, Inc., 633 F.3d 1042, 1048, 97 U.S.P.Q.2d 1029 (Fed. Cir. 2010). The DNA test instruction opinion was King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279, 95 U.S.P.Q.2d 1833 (Fed. Cir. 2010).

Chief Judge Sharon Prost wrote the court's opinion, which was joined by Judges Richard G. Taranto and Todd M. Hughes.

Scott D. Paul of Cuenot, Forsythe & Kim, LLC, Boca Raton, Fla., represented DiStefano. The PTO was represented by Michael S. Forman of its Office of the Solicitor in Alexandria, Va.

To contact the reporter on this story: Tony Dutra in Washington at

To contact the editor responsible for this story: Mike Wilczek in Washington at

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