Optional Language in Patent Specification

Today’s Federal Circuit opinion in H-W Technology, L.C. v. Overstock.com, Inc., ___ F. 3d ___ (Fed. Cir. 2014) is of interest for at least two reasons.   For one, the case adds to the court’s growing body of case law that holds a claim invalid when the claim includes both method and apparatus claim elements.  In today’s opinion, Chief Judge Prost notes:

As noted by the district court, this case is very similar to two cases, IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430
F.3d 1377, 1384 (Fed. Cir. 2005), and In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318 (Fed. Cir. 2011). In each of those cases this court held claims indefinite for combining two classes of invention.

The claim at issue in IPXL is reproduced below:

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

IPXL, 430 F.3d at 1384 (citation omitted).

The IPXL court reasoned as follows:

[I]t is unclear whether infringement of [the claim]
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 [the claim] 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.


Similarly, the court in In re Katz stated:

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 re Katz, 639 F.3d at 1318.

The present case falls squarely within the IPXL and
In re Katz holdings. Here, the disputed language (“wherein
said user completes . . .” and “wherein said user selects
. . .”) is nearly identical to the disputed language in
those cases. And, as in those cases, it is unclear here
when infringement would occur. Claim 17 is thus indefinite.

H-W Technology, slip opinion at pp. 12-13.

Also of note is the attention paid by the court to the use of optional language in the patent specification.  Judge Prost wrote for the court:

Regardless of whether this excerpt clearly contains the missing limitation, “no-contact transactions” appear to be optional premium listing services. See id. col. 22 ll. 14–20 (“The services may be categorized according to baseline directory services 1901, premium listing services 1902, and advertising services 1903. A description of the services that can be offered under each category and how these are supported by converged communications content distribution platform owner 1204 (FIG. 12) are described below.” (emphasis added)). The optional nature of such services negates any argument that such a limitation in the claim is implied as necessary to the invention. See Phillips, 415 F.3d at 1323 (warning against “importing limitations from the specification into the claims”).

H-W Technology, slip opinion at pp. 7-8.

You can read the court’s opinion here: [link].

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