Warning: include(wp-includes/class-wp-query-update.php) [function.include]: failed to open stream: No such file or directory in /home/content/47/4534047/html/wp-settings.php on line 473

Warning: include() [function.include]: Failed opening 'wp-includes/class-wp-query-update.php' for inclusion (include_path='.:/usr/local/php5/lib/php') in /home/content/47/4534047/html/wp-settings.php on line 473

Warning: include(wp-includes/class-wp-term-connect.php) [function.include]: failed to open stream: No such file or directory in /home/content/47/4534047/html/wp-config.php on line 80

Warning: include() [function.include]: Failed opening 'wp-includes/class-wp-term-connect.php' for inclusion (include_path='.:/usr/local/php5/lib/php') in /home/content/47/4534047/html/wp-config.php on line 80
More Hybrid Claims Invalidated « 717 Madison Place

More Hybrid Claims Invalidated

The Federal Circuit expanded on its hybrid claim jurisprudence with its recent decision in In re Katz et al. v. American Airlines, et al., 2009-1450 et al., (Fed. Cir. February 18, 2011).  The court ruled that three of Katz’s claims — claims 1, 2, and 83 — were indefinite hybrid claims.  Those claims are shown below, but the relevant portion is in the independent claims 1 and 68:

1. An interface control system for use with, (1) a communication facility including remote terminals for individual callers to make calls, wherein said remote terminals comprise a telephone capability including voice communication means and some of said remote terminals comprise digital input means for providing data, (2) a multiple port, multiple format processor for concurrently processing data from a substantial number of callers in any one of a plurality of formats, said communication facility automatically providing call data signals, as to indicate called data (DNIS), to select a specific format from said plurality of formats, and (3) a plurality of live operator attended terminals, for a plurality of formats, said interface control system comprising:

call data means for receiving call data signals from said communication facility for a calling remote terminal indicative of calling number identification signals automatically provided by said communication facility and call data signals to indicate called data (DNIS) to select a specific format from said plurality of formats;

interface means for providing automated voice messages relating to said specific format to certain of said individual callers, wherein said certain of said individual callers digitally enter data, including at least caller information data, through said digital input means;

means for directly forwarding, under control of said specific format, a call coupled to said interface means from any one of said remote terminals to one of said plurality of live operator attended terminals for inputting of caller identification data and caller information data when said remote terminals do not have capability to digitally provide data; 

qualification means coupled to said live operator attended terminals for controlling access by at least certain of said callers to at least a portion of said system, said qualification being based at least in part on caller identification data entered through said digital input means by at least certain of said callers having digital input means and at said live operator attended terminal when said remote terminals do not have capability to digitally provide data,

means for processing coupled to said live operator attended terminals for processing caller information data entered by an operator at said live operator attended terminal; and

means for storing coupled to said interface means and said processing means for storing certain select data from said caller information data entered by said operator and data entered digitally by said individual callers to update records on said individual callers.

2. An interface control system according to claim 1, wherein said call data signals automatically provided from said communication facility for a calling remote terminal indicative of calling number identification signals are used to access a positive file of data with respect to said individual callers stored in said means for storing.

68. An interface control system for use with, (1) a communication facility including remote terminals for individual callers to make calls, wherein said remote terminals comprise a telephonic instrument including voice communication means and some of said remote terminals comprise digital input means for providing data, and (2) a multiple port, multiple format processor for concurrently processing data from a substantial number of callers in any of a plurality of formats, said communication facility automatically providing call data signals, as to indicate called data (DNIS), to select a particular format from said plurality of formats, and (3) a plurality of live operator attended terminals, for a plurality of formats, said interface control system comprising:

call data means for receiving signal-represented call data from said remote terminals indicative of called number identification signals (DNIS) automatically provided by said telephonic communication facility;

interface means for providing automated voice messages relating to a specific format to certain of said individual callers, wherein said certain of said individual callers digitally enter data through said digital input means;

means for directly forwarding certain of said calls coupled to said interface means from any one of said remote terminals to one of said plurality of live operator attended terminals under control of said call data signals when necessary;

qualification means for controlling access by at least certain of said callers to at least a portion of said system,

means for processing coupled to said live operator attended terminals for processing caller information data entered by an operator at said live operator attended terminal; and

means for transferring certain of said calls from said live operators to said interface means to receive processed data via a voice generator.

83. An interface control system according to claim 68, wherein said qualification means controls access at least in part based upon said call data signals.

The Federal Circuit had the following to say about these hybrid claims:

The district court held that Statistical Interface claims 1, 2, and 83 of the ’893 patent are indefinite under IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005), because they claim both an apparatus and a method of use. In IPXL, this court addressed a claim that covered a system with “an input means” and required a user to use the input means. This court held that the claim was indefinite because it was unclear “whether infringement . . . occurs when one creates a system that allows the user [to use the input means], or whether infringement occurs when the user actually uses the input means.” Id.

 

Claims 1, 2, and 83 of the ’893 patent cover a system with an “interface means for providing automated voice messages . . . to certain of said individual callers, wherein said certain of said individual callers digitally enter data.” The district court found “no meaningful distinction” between those claims and the claim at issue in IPXL.

 

Katz seeks to distinguish IPXL on the ground that the term “wherein” does not signify a method step but instead defines a functional capability. We disagree and uphold the district court’s ruling. Like the language used in the claim at issue in IPXL (“wherein . . . the user uses”), the language used in Katz’s claims (“wherein . . . callers digitally enter data” and “wherein . . . callers provide . . . data”) is directed to user actions, not system capabilities.

 

In the alternative, Katz contends that this court nar-rowed IPXL in the subsequent decision in Microprocessor Enhancement Corp. v. Texas Instruments Inc., 520 F.3d 1367, 1374-75 (Fed. Cir. 2008). That case dealt with a method claim that recited structural elements. The claim took the form of a “method of executing instructions in a pipelined processor comprising: [structural limitations of the pipelined processor]; the method further comprising: [method steps implemented in the pipelined processor].” Id. at 1374. The court in Microprocessor distinguished IPXL because the method claim in Microprocessor did not create any confusion as to when the claim was directly infringed; direct infringement occurred upon practicing the claimed method in a processor with the required structural limitations. Simply making or selling a proces-sor having that structure would not have infringed. Katz’s claims, however, create confusion as to when direct infringement occurs because they are directed both to systems and to actions performed by “individual callers.” Katz’s claims therefore fall squarely within the rationale of IPXL and are indefinite.

As a point of reference, the relevant portion of the IPXL v. Amazon decision discussing hybrid claims reads as follows:

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.

A total of four claims have now been invalidated by the Federal Circuit under the hybrid claim principle.

Comments are closed.