The recently decided case of Schindler Elevator Corp. v. Otis Elevator Co., 2009-1146 (Fed. Cir. January 15, 2010) concerned a claim that read as follows:
1. An elevator installation having a plurality of elevators comprising:
a recognition device for recognizing elevator calls entered at an entry location by an information transmitter carried by an elevator user, initializing the entry location as a starting floor of a journey;
a control device receiving the recognized elevator call and allocating an elevator to respond to the elevator call, through a predetermined allocating algorithm;
a call acknowledging device comprising one of a display device and an acoustic device to acknowledge recognition of the elevator call and to communicate a proposed destination floor to the elevator user;
the recognition device, mounted in the access area in the vicinity of the elevators and spatially located away from elevator doors, actuating the information transmitter and comprising a unit that independently reads data transmitted from the information transmitter carried by the elevator user and a storage device coupled between the unit and the control device;
the recognition device one of transmitting proposed destination floor data, based upon the data transmitted from the information transmitter, to the control device, and, transmitting elevator user specific data, based upon individual features of the elevator user stored in the storage device, to the control device.
The Federal Circuit panel construed two claim limitations. Namely, it construed “information transmitter” to mean “a device that communicates with a recognition device via electromagnetic waves, after being actuated by that recognition device
, without requiring any sort of personal action by the passenger.” And, the Federal Circuit construed the term “recognition device” to mean “a device that actuates and reads data transmitted by an information transmitter without requiring any sort of personal action by the passenger.” The strikeout shows the modification made to the District Court judge’s claim construction of the two terms.
Much of the oral argument concerned a discussion of what a user could or could not do. This was sometimes confusing because all the claims at issue were apparatus claims — not method claims. So, it seemed odd to be focusing on actions by the user. Nevertheless, the Federal Circuit states at one point in the opinion:
First, “the context in which a term is used in the asserted claim can be highly instructive.” Id. In claim 1, the term “information transmitter” itself suggests that the transmitter is a thing, separate and apart from an “elevator user” (a separate limitation), which transmits information. The claim also provides that “elevator calls [are] entered at an entry location by an information transmitter.” Thus, at least with regard to the transmission of information and the entry of calls, it is the information transmitter—not the elevator user—that performs these tasks. Similarly, the claim provides that a “recognition device . . . actuat[es] the information transmitter” and that “a unit . . . independently reads data transmitted from the information transmitter.” Accordingly, the tasks of actuating the transmitter and reading data are performed by the recognition device and the unit, respectively, not by the elevator user. The claim also explicitly provides that the transmitter is “carried by an elevator user.” Carrying a transmitter is thus a type of “personal action” that is expressly required in the claims. Nowhere does claim 1 limit the act of carrying to any specific manner of carrying.
Thus, the Federal Circuit noted that an elevator user is a separate claim limitation and that “carrying a transmitter” by a user is required by the claims. Moreover, the attorney for the plaintiff-appellant emphasized this step during oral argument: [Listen].
This would seem to suggest that at least claim 1 of Schindler’s patent is a hybrid claim that includes both structural elements and a method step that is performed by a user. How should this claim be treated under the Federal Circuit’s precedential opinion IPXL Holdings v. Amazon.com, 433 F.3d 1377 (Fed. Cir. 2005)?
In IPXL Holdings, the Federal Circuit held that a hybrid claim that included both structural elements and elements performed by a user of the system was indefinite under 35 USC section 112. The basis for the holding was that when a claim is written in this format it is unclear whether infringement occurs when one creates a system that allows a user to use the structure, or whether infringement occurs when the user actually uses the structure. The IPXL panel stated:
The district court found that claim 25 is indefinite under 35 U.S.C. § 112, as it attempts to claim both a system and a method for using that system. Section 112, paragraph 2, requires that the claims of a patent “particularly point out and distinctly claim the subject matter which the applicant regards as his invention.” 35 U.S.C. § 112 (2000). A claim is considered indefinite if it does not reasonably apprise those skilled in the art of its scope. Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d 1200, 1217 (Fed. Cir. 1991).
Whether a single claim covering both an apparatus and a method of use of that apparatus is invalid is an issue of first impression in this court. The Board of Patent Appeals and Interferences (”Board”) of the PTO, however, has made it clear that reciting both an apparatus and a method of using that apparatus renders a claim indefinite under section 112, paragraph 2. Ex parte Lyell, 17 USPQ2d 1548 (BPAI 1990). As the Board noted in Lyell, “the statutory class 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 a result of the combination of two separate statutory classes of invention, a manufacturer or seller of the claimed apparatus would not know from the claim whether it might also be liable for contributory infringement because a buyer or user of the apparatus later performs the claimed method of using the apparatus. Id. Thus, such a claim “is not sufficiently precise to provide competitors with an accurate determination of the ‘metes and bounds’ of protection involved” and is “ambiguous and properly rejected” under section 112, paragraph 2. Id. at 1550-51. This rule is well recognized and has been incorporated into the PTO’s Manual of Patent Examination Procedure. § 2173.05(p)(II) (1999) (”A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112, second paragraph.”); see also Robert C. Faber, Landis on Mechanics of Patent Claim Drafting § 60A (2001) (”Never mix claim types to different classes of invention in a single claim.”).
Claim 25 recites both the system of claim 2 and a method for using that system. The claim reads:
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.
‘055 patent, col. 22, ll. 8-13 (emphasis added).
Thus, it is 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. 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.
It will be interesting to see on remand to the District Court whether Otis Elevator pursues an indefiniteness argument under section 112.
You can read the Federal Circuit’s opinion here: [Read].
You can listen to the entire oral argument here: [Listen].