Issue 05/66 |=20 November 29, 2005

Claim = Indefinite For=20 Combining Apparatus and Method of Use Limitations

On Nov. 21, 2005, the Federal Circuit decided an issue of = first=20 impression in that Court =96 whether a patent claim that = covers both=20 an apparatus and method of use of that apparatus passes = muster under=20 35 USC =A7112, para. 2 (indefiniteness). Defending its = "1-click=20 system," Amazon won a summary judgment ruling of invalidity, = IPXL Holdings, LLC v. Amazon.com, Inc., 333 F. = Supp. 2d 513=20 (E.D. Va. 2004), which the Federal Circuit affirmed in part, = 2005=20 U.S. App. LEXIS 25120.

After upholding the district court's claim constructions = and=20 affirming the finding that all but one of the asserted = claims were=20 anticipated, the Federal Circuit next affirmed the summary = judgment=20 of invalidity (for indefiniteness) for the remaining = asserted claim,=20 which read:

25. The system of claim 2 [including an input = means]=20 wherein the predicted transaction information comprises = both a=20 transaction type and transaction parameters associated = with that=20 transaction type, and the user uses the input means to = either=20 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=20 recites use steps ("the user uses the input means to = ...change the=20 predicted transaction information ... ") This claim was = found=20 indefinite by the district court, notwithstanding that the = patent=20 statute at 35 USC =A7112, para. 2 confers considerable = latitude in=20 claiming, stating, "The specification shall conclude with = one or=20 more claims particularly pointing out and distinctly = claiming the=20 subject matter which the applicant regards as his=20 invention." [emphasis added]. The statute itself does = not=20 expressly limit how an inventor can set forth his claim, so = long as=20 it particularly points out and distinctly claims.

The apparatus-method of use definiteness issue had = previously=20 been addressed by the PTO Board in Ex parte Lyell, = 17=20 USPQ2d 1548 (BPAI 1990). In that case, the PTO Board, = considering a=20 claim that combined two separate statutory classes of = invention,=20 stated, "a manufacturer or seller of the claimed apparatus = would not=20 know from the claim whether it might also be liable for = contributory=20 infringement because a buyer or user of the apparatus later = performs=20 the claimed method of using the apparatus."

When the Federal Circuit considered the issue in = IPXL,=20 it voiced concern that the public would not know when it = would be=20 infringing claim 25. The metes and bounds of the claim were = found to=20 be too imprecise by the panel judges:

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

Query whether the exact language of the Court imposes a = per=20 se prohibition on hybrid claims ("because claim 25 = recites=20 both ...) which commingle statutory classes. Note that = when=20 =A7101 of the patent statute enumerates the classes of = patentable=20 subject matter ("any ... process, machine, manufacture, or=20 composition of matter, or any new and useful improvement = thereof=20 ...") and states that the inventor "may obtain a patent=20 therefor ...," it does not say anything about=20 combinations of classes. However, would that be = enough of a=20 basis to invalidate as indefinite a patent claim that mixes=20 apparatus and method of use features if it clearly = delineates when=20 infringement would occur? If the Court intends a broad = prohibition=20 against mixing statutory classes of inventions in claims, = would that=20 rule also invalidate a method claim directed to using a = particular=20 apparatus?

To discuss this topic further or for information on any = patent=20 claim issue, contact the author, Edward D. Manzo (emanzo@cammcm.com), at = Cook, Alex, McFarron, Manzo, = Cummings=20 & Mehler, Ltd. (in Chicago).

The information contained in this = email is=20 provided for informational purposes only and does not = represent=20 legal advice. Neither the APLF nor the author intends to = create an=20 attorney client relationship by providing this information = to you=20 through this message.

APLF - PO Box 7418 - = Washington,=20 DC - 20044-7418