On Nov. 21, 2005, the Federal Circuit decided an issue of first impression in that Court – whether a patent claim that covers both an apparatus and method of use of that apparatus passes muster under 35 USC §112, para. 2 (indefiniteness). Defending its "1-click system," Amazon won a summary judgment ruling of invalidity, IPXL Holdings, LLC v. Amazon.com, Inc., 333 F. Supp. 2d 513 (E.D. Va. 2004), which the Federal Circuit affirmed in part, 2005 U.S. App. LEXIS 25120.

After upholding the district court's claim constructions and affirming the finding that all but one of the asserted claims were anticipated, the Federal Circuit next affirmed the summary judgment of invalidity (for indefiniteness) for the remaining asserted claim, which read:

25. The system of claim 2 [including an input means] wherein the predicted transaction information comprises both a transaction type and transaction parameters associated with that transaction type, and the user uses the input means to either change the predicted transaction information or accept the displayed transaction type and transaction parameters.

Claim 25 on its face is directed to a "system." However, it also recites use steps ("the user uses the input means to ...change the predicted transaction information ... ") This claim was found indefinite by the district court, notwithstanding that the patent statute at 35 USC §112, para. 2 confers considerable latitude in claiming, stating, "The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention." [emphasis added]. The statute itself does not expressly limit how an inventor can set forth his claim, so long as it particularly points out and distinctly claims.

The apparatus-method of use definiteness issue had previously been addressed by the PTO Board in Ex parte Lyell, 17 USPQ2d 1548 (BPAI 1990). In that case, the PTO Board, considering a claim that combined two separate statutory classes of invention, stated, "a manufacturer or seller of the claimed apparatus would not know from the claim whether it might also be liable for contributory infringement because a buyer or user of the apparatus later performs the claimed method of using the apparatus."

When the Federal Circuit considered the issue in IPXL, it voiced concern that the public would not know when it would be infringing claim 25. The metes and bounds of the claim were found to be too imprecise by the panel judges:

Thus, it is unclear whether infringement of claim 25 occurs when one creates a system that allows the user to change the predicted transaction information or accept the displayed transaction, or whether infringement occurs when the user actually uses the input means to change transaction information or uses the input means to accept a displayed transaction. Because claim 25 recites both a system and the method for using that system, it does not apprise a person of ordinary skill in the art of its scope, and it is invalid under section 112, paragraph 2. [2005 U.S. App. LEXIS 25120 at *20-21.]

Query whether the exact language of the Court imposes a per se prohibition on hybrid claims ("because claim 25 recites both ...) which commingle statutory classes. Note that when §101 of the patent statute enumerates the classes of patentable subject matter ("any ... process, machine, manufacture, or composition of matter, or any new and useful improvement thereof ...") and states that the inventor "may obtain a patent therefor ...," it does not say anything about combinations of classes. However, would that be enough of a basis to invalidate as indefinite a patent claim that mixes apparatus and method of use features if it clearly delineates when infringement would occur? If the Court intends a broad prohibition against mixing statutory classes of inventions in claims, would that rule also invalidate a method claim directed to using a particular apparatus?

To discuss this topic further or for information on any patent claim issue, contact the author, Edward D. Manzo (emanzo@cammcm.com), at Cook, Alex, McFarron, Manzo, Cummings & Mehler, Ltd. (in Chicago).

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