System Claim that Includes a Method Step is Invalid as Indefinite.

IPXL Holdings v. Amazon.com (Fed. Cir. 2005).

IPXL sued Amazon, arguing that its one-click purchasing system infringed on IPXL’s patent. Amazon won at trial and on appeal.

A portion of the opinion focuses on indefiniteness.  Specifically, the district court found that claim 25 was indefinite under 35 USC 112 because it attempts to claim both a system and a method for using that system.  Claim 25 reads 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.

On appeal, the panel set out the rule — that a “claim is considered indefinite if it does not reasonably apprise those skilled in the art of its scope.”  Regarding claims directed to both systems and methods, the panel agreed with prior BPAI decisions that “made it clear that reciting both an apparatus and a method of using that apparatus renders a claim indefinite.”

Here, the CAFC found that the claim was unclear whether it required only a system that allows the user to use the input means or instead required that the user actually use the input means. “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.”

Notes:

• This is a very big decision and may lead to invalidation of many claims. A few potential examples:
• A system for performing the method of claim 1.
• A system comprising X and Y, wherein X operates at a high rate of speed.
• The case does not mention product-by-process claims.
• The analysis of indefiniteness here is quite different than the Court used in recently in Fisher-Price v. Graco.  There, indefiniteness required “severe” defects in the claims.
• The court also denied Amazon’s claims for attorney fees because they were not filed in compliance with FRCP Rule 54(d)(2)(B). “[W]e hold that any claim to attorney fees must be processed in compliance with Rule 54(d)(2)(B). No provision in section 285 exempts requests for attorney fees thereunder from compliance with Rule 54(d)(2)(B).”
• Rule 54(d)(2)(B): Unless otherwise provided by statute or order of the court, the motion [for costs and attorney fees] must be filed and served no later than 14 days after entry of judgment;  must specify the judgment and the statute, rule, or other grounds entitling the moving party to the award;  and must state the amount or provide a fair estimate of the amount sought.  If directed by the court, the motion shall also disclose the terms of any agreement with respect to fees to be paid for the services for which claim is made.
• Opinion.