Combined Apparatus/Method Claim Indefinite

In IPXL Holdings, L.L.C. v. Amazon.com, Inc. (Fed. Cir.; November 21, 2005), the court held that "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."Claim 25 recited:
The system of claim 2 [including an input means] wherein the predictedtransaction information comprises both a transaction type and transactionparameters associated with that transaction type, and the user uses the inputmeans to either change the predicted transaction information or accept thedisplayed transaction type and transaction parameters.

According to the court, it was 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. According to the court:
Whether a single claim covering both an apparatus and a method of use ofthat apparatus is invalid is an issue of first impression in this court. TheBoard of Patent Appeals and Interferences ("Board") of the PTO, however, hasmade it clear that reciting both an apparatus and a method of using thatapparatus renders a claim indefinite under section 112, paragraph 2. Ex parteLyell, 17 USPQ2d 1548 (BPAI 1990). As the Board noted in Lyell, "the statutoryclass of invention is important in determining patentability and infringement."Id. at 1550 (citing In re Kuehl, 475 F.2d 658, 665 (CCPA 1973); Rubber Co. v.Goodyear, 76 U.S. 788, 796 (1870)). The Board correctly surmised that, as aresult of the combination of two separate statutory classes of invention, amanufacturer or seller of the claimed apparatus would not know from the claimwhether it might also be liable for contributory infringement because a buyer oruser of the apparatus later performs the claimed method of using the apparatus.Id. Thus, such a claim "is not sufficiently precise to provide competitors withan accurate determination of the 'metes and bounds' of protection involved" andis "ambiguous and properly rejected" under section 112, paragraph 2. Id. at1550-51. This rule is well recognized and has been incorporated into the PTO'sManual of Patent Examination Procedure. § 2173.05(p)(II) (1999) ("A single claimwhich claims both an apparatus and the method steps of using the apparatus isindefinite under 35 U.S.C. 112, second paragraph."); see also Robert C. Faber,Landis on Mechanics of Patent Claim Drafting § 60A (2001) ("Never mix claimtypes to different classes of invention in a single claim.").

Rodney D. Ryder