Addressing for the first time the validity of a single claim covering both an apparatus and a method of using that apparatus, the U.S. Court of Appeals for the Federal Circuit followed Ex parte Lyell, a Board of Patent Appeals and Interferences (Board) case, which held such claims invalid. IPXL Holdings, L.L.C. v. Amazon.com, Inc., Case Nos. 05-0119, -1487 (Fed. Cir. Nov. 21, 2005) (Clevenger, J.).
IPXL alleged that Amazon’s "1-click system" infringed certain claims of its patent. The district court held that one of the asserted claims, which claimed both an apparatus and its method of use, was invalid due to indefiniteness. IPXL appealed, and the Federal Circuit affirmed.
The claim in issue was directed to an ATM system and to a method for using it. The Federal Circuit held the claim invalid under § 112 ¶2 because it did not "apprise a person of ordinary skill in the art of its scope." The Court focused on the fact that the combination of the two statutory classes of invention rendered a manufacturer or seller of the claimed apparatus unable to determine, based on the claim, whether it could be found liable for contributory infringement if a buyer or user of the apparatus were to carry out the claimed method of using the apparatus.
The Court cited MPEP § 2173.05(p)(II)(1999), a section that follows the Board’s Ex parte Lyell decision.The cited MPEP section states that where a single claim claims both an apparatus and the method of using that apparatus, it is indefinite under § 112:
Such claims should also be rejected under 35 U.S.C. 101 based on the theory that the claim is directed to neither a "process" nor a "machine," but rather embraces or overlaps two different statutory classes of invention set forth in 35 U.S.C. 101 which is drafted so as to set forth the statutory classes of invention in the alternative only.
Practice Note
In Ex parte Lyell the Board held a claim directed to a "transmission repair tool in the form of a workstand and…the method of using same in repairing automatic transmissions" to be invalid. The Board's concern was whether a manufacturer or seller would be able to determine if it was infringing such a claim. Given the Court's now-demonstrated aversion toward claims that combine both apparatus and method language, practitioners are cautioned not to offer any claim that could be so construed. The relevant query appears to be whether a manufacturer or seller would be able to determine, based on the claim language alone, whether it would be liable for contributory infringement if a buyer or user of the apparatus were to carry out the claimed method of using the apparatus.
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