In IPXL Holdings v. Amazon.com, IPXL sued Amazon.com alleging that Amazon’s “1-click” system infringed U.S. Patent No. 6,149,055 (the ‘055 patent). The District Court for the Eastern District of Virginia found that Amazon’s system did not infringe and that the asserted claims of the ‘055 patent were invalid. The District Court had found most of the asserted claims anticipated under 35 U.S.C. §102. For the remaining asserted claim not found anticipated (claim 25), the District Court found the claim indefinite under 35 U.S.C. §112.
On appeal, IPXL asserted that the claims were not anticipated since the anticipating patent, U.S. Patent No. 5,389,773, did not disclose the recited “single screen” and instead disclosed multiple sequential screens. The Federal Circuit held that, while multiple inputs were required, U.S. Patent No. 5,389,773 did not disclose that the inputs were on multiple screens and instead were provided through a single physical object on which information is displayed. The Federal Circuit also noted that U.S. Patent No. 5,389,773 contemplates a single screen which displays all information to complete a transaction, which therefore discloses the claimed invention.
On the issue of definiteness, The Federal Circuit agreed with the District Court that claim 25 was indefinite since claim 25 mixed system and method limitations in a single claim. Specifically, claim 25 recites as follows:
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.
Relying on secondary sources such as MPEP 2173.05(p)(II) and Robert C. Faber, Landis on Mechanics of Patent Claim Drafting § 60A (2001), the Federal Circuit held that one skilled in the art would not be able to ascertain when infringement occurred since it was unclear as to whether the role of the user was required for infringement. While acknowledging that whether “a single claim covering both an apparatus and a method of use of that apparatus is invalid is an issue of first impression,” the Federal Circuit relied upon prior Board of Patent Appeals and Interference decisions holding that such mixing of statutory classes rendered claims indefinite under 35 U.S.C. §112, paragraph 2, since a manufacturer would be unable to determine if the sale of the system was direct or contributory infringement based upon the claim language.
A copy of this case can be found at IPXL Holdings, L.L.C. v. Amazon.com, Inc., 2005 U.S. App. LEXIS 25120, Civ. Case No. 05-1009 (Fed. Cir. November 21, 2005).
Significance For Claims Drafting
This case has come under criticism from those in the patent field since the Federal Circuit issued an apparent de facto rule without pointing out evidence normally required for indefiniteness to be found. Moreover, present claiming practice normally encompasses multiple categories of claims, and does not account for other category mixtures accepted by the United States Patent and Trademark Office, such as product by process claims. See, Dennis Crouch, System Claim that Includes a Method Step is Invalid as Indefinite, Patently-O: Patent Law Blog (Nov. 21, 2005). Further, it appears that the United States Patent and Trademark Office is taking this theory of mixing one step further by saying such mixtures can also render a claim in violation of 35 U.S.C. §101. See, Dennis Crouch, BPAI: Mixing Subject Matter => Rejection, Patently-O: Patent Law Blog (November 28, 2005) discussing Ex parte Moore, Appeal No. 2005-0970 (BPAI 2005) (NOT PRECEDENTIAL). As such, while prior patent claiming practice had allowed such mixing on a limited basis, applicants need to take greater care when including method of operation features in system claims to ensure that the method relates to the interaction of parts in the system.