Amazon.com was recently in the news again. This time, it is defending its “1-click system” from accusations of patent infringement. The issue before the Federal Circuit Court of Appeals was one of first impression: whether a single patent claim could cover both a system and a method. The answer, according to the court, is no.
In IPXL Holdings, LLC v. Amazon.com, Inc. (Fed. Cir. November 21, 2005), IPXL sued Amazon.com for infringement of U.S. patent no. 6,149,055. IPXL alleged that Amazon.com’s 1-click system infringed claims 1, 2, 9, 15, and 25. Those claims were directed to a system for executing electronic financial transactions. Examples of these transactions are automatic teller machines and point-of-sale terminals. The central element of the claims is that the system will store previously-defined information and display the information on one screen, minimizing the steps required to execute the transaction. Amazon.com’s 1-click system allows customers to purchase products on the Internet by storing previously-entered information, eliminating the need to re-enter previously-entered information.
The district court for the Eastern District of Virginia granted Amazon.com’s motion for summary judgment on the grounds of non-infringement and invalidity of the patent. The court held that four claims were invalid based on anticipation under 35 U.S.C. section 102 and one claim was invalid based on indefiniteness under 35 U.S.C. section 112, second paragraph. IPXL appealed.
The Court of Appeals for the Federal Circuit affirmed the district court’s decision on the issue of invalidity, and held that it was unnecessary to reach the issue of non-infringement.
There are four classes of subject statutory matter, as set forth in 35 U.S.C. section 101: articles of manufacture, machines, processes (methods), and compositions of matter. The key issue in this case was whether a single claim could be directed to both an apparatus and a method of using the apparatus or whether that claim was invalid as indefinite under section 112, second paragraph. According to the Court of Appeal, “a claim is considered indefinite if it does not reasonably apprise those skilled in the art of the scope.” The court stated that although the issue was one of first impression for the court, the PTO Board of Patent Appeals and Interferences had clearly ruled on the matter.
In Ex Parte Lyell, 17 U.S.P.Q.2d 1548 (BPAI 1990), the Board held that a claim that covered two statutory classes (an apparatus and a method of using the apparatus) was indefinite because a manufacturer or seller of the apparatus would not know whether, in addition to being liable for direct infringement by making or selling the apparatus, it would also be liable for contributory infringement if the buyer used the apparatus to perform the claimed method. Competitors would not be able to accurately determine the scope of the patent.
The Court pointed out that the Board’s conclusion has been incorporated into the Manual of Patent Examining Procedure, at section 2173.05(p)(II). That section provides that a single claim covering both an apparatus and a method of using the apparatus is indefinite under section 112, second paragraph. The section also provides that such a claim should also be rejected under section 101, which sets forth the statutory classes in the alternative only.
Claim 25 of IPXL’s patent states:
“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.”
The court concluded that claim 25 was ambiguous. It was unclear from the language of claim 25 whether infringement would occur if a manufacturer made a system that would provide a user with the ability to change the predicted transaction information or accept the displayed transaction type, or whether infringement would occur if the user used the input means to change the predicted transaction information or accept the displayed transaction type. Because the manufacturer or seller would not be able to clearly answer that question, claim 25 was indefinite.
Based on this case, patent drafters should be especially careful to be very clear about which class of statutory subject matter each claim fits. It appears that IPXL did not intend to write a claim to cover two classes, but rather, that it was an issue of sloppy drafting.
Audrey Millemann is a shareholder in Weintraub Genshlea Chediak Tobin & Tobin’s Intellectual Property and Disputes, Trials and Appeals sections. A business litigator and registered patent attorney, her practice focuses on intellectual property, unfair competition and antitrust matters. For more articles on IP law, please visit www.theiplawblog.com