One of the issues percolating at the Federal Circuit is to what extent a hybrid claim, i.e., a claim that includes claim elements for more than one class of patentable subject matter in 35 U.S.C. § 101, satisfies the definiteness requirement of 35 U.S.C. §112. Judge Clevenger recently wrote in his dissent in Vizio, Inc. v. ITC, 2009-1386 (Fed. Cir. May 26, 2010):
The majority is incorrect that the phrase “for identifying” imposes an additional requirement that an allegedly infringing DTV actually use the channel map for identifying. Imposing a method limitation on an apparatus claim is improper. See Microprocessor Enhancement Corp. v. Tex. Instruments Inc., 520 F.3d 1367, 1374 (Fed. Cir. 2008) (“A single patent may include claims directed to one or more of the classes of patentable subject matter, but no single claim may cover more than one subject matter class.”). This is so because it would be “unclear whether infringement [] occurs when one creates a system that allows the user to practice the claimed method step, or whether infringement occurs when the user actually practices the method step.” Id. at 1374-75 (quoting IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005)). Here, the majority’s additional use limitation unnecessarily creates doubt about the timing of infringement and the definiteness of claim 1 when no such quandary exists in the plain language of the claim. Claim 1 does not require use of the channel map to occur; instead only a means for forming the channel map is required.
The claim Judge Clevenger is concerned about reads:
1. Apparatus for decoding a datastream of MPEG compatible packetized program information containing program map information to provide decoded program data, comprising:
means for identifying channel map information conveyed within said packetized program information; and
means for assembling said identified in-formation to form a channel map for identifying said individual packetized datastreams constituting said program,
wherein
said channel map information replicates information conveyed in said MPEG compatible program map information and said replicated information associates a broadcast channel with packet identifiers used to identify individual packetized datastreams that constitute a program transmitted on said broadcast channel.
I think Judge Clevenger has a logical point with respect to his analysis of hybrid claims that have method and apparatus aspects. What about the claim in Diamond v. Chakrabarty, though? In that case, the Supreme Court approved of Chakrabarty’s micro-organism claim as satisfying section 101. Indeed, the Court seemed to suggest that Chakrabarty’s claim satisfied two of the four classes of subject matter under section 101:
Judged in this light, respondent’s micro-organism plainly qualifies as patentable subject matter. His claim is not to a hitherto unknown natural phenomenon, but to a nonnaturally occurring manufacture or composition of matter — a product of human ingenuity “having a distinctive name, character [and] use.” Hartranft v. Wiegmann, 121 U. S. 609, 121 U. S. 615 (1887).
Diamond v. Chakrabarty, 447 U.S. 303, 310-11 (1980).