Rethinking Patent Doctrine in Tech: Peter Gao, George Chen, and Cory Smith Published in The Patent Lawyer 2025

BCLP Associate Peter Gao and Partners George Chen and Cory Smith have authored an article featured in The Patent Lawyer 2025, examining the Federal Circuit’s recent precedential decision in IOENGINE v. Ingenico, which clarifies the application of the printed matter doctrine. The court addressed whether certain patent claim limitations—specifically those involving “encrypted communications” and “program code”—should be treated as informational content or as functional parts of a claimed invention. This ruling marks an important development for patents in the software and technology space.

Peter, George, and Cory explain how the court overturned an earlier ruling invalidating certain patent claims. They focus on the distinction between informational content (which is not evaluated when considering patent validity in view of the prior art) and functionality (which is evaluated when considering patent validity in view of the prior art). Their analysis sheds light on the implications of this decision for software and technology patents, offering insights into how the ruling may affect patent prosecution and enforcement strategies.

The authors conclude by sharing practical advice for patent professionals— with recommendations to avoid overly generic language when drafting patent claims, and instead to focus on unique features of the software code that improve the functionality of a device. For litigators, they provide strategies to demonstrate how the software connects to the broader invention, helping to avoid patent claims being invalidated due to the printed matter doctrine.