Single Claim Covering Both Apparatus And Method Found Invalid For Indefiniteness

Case: IPXL Holdings, LLC v. Amazon.com, Inc., 05-1009, -1487 (Fed. Cir. 11/21/2005)

The One Sentence Summary: In an issue of first impression, the Federal Circuit upheld a ruling on summary judgment that a single claim covering both an apparatus and method was invalid as indefinite; it also reversed an attorneys' fees award where the motion for fees was not filed within the 14-day rule set by FRCP 54.


What They Were Fighting About: The plaintiff, IPXL, claimed Amazon's 1-step shopping system infringed its patent. The district court found both that the pertinent claims in that patent were invalid and that there was no infringement, and then awarded Amazon its fees under 35 U.S.C. section 285, finding that the case was exceptional, notwithstanding that the motion for fees was filed out of time. The Federal Circuit upheld the finding of invalidity on the basis of anticipation and indefiniteness, and so did not reach the question of infringement, and then reversed the attorneys' fee award as untimely.

Federal Circuit Holdings:

• In an issue of first impression for the court, it held that a single claim covering both an apparantus and a method of use of that apparatus is invalid. Previously the Board of Patent Appeals had taken that position, reasoning that the statutory class of invention was important to determining patentability and infringement. For example, a buyer or seller of the apparatus could not know whether it could later be held liable for contributory infringement because the subsequent user of the apparatus later performed the claimed method. The Federal Circuit agreed with that reasoning.
  
• For example, here the claim first described a system, and then included the language "and the user uses the input means . . . ." The court found the claim, by reciting both a system and method, was invalid under section 112, paragraph 2.
  
• The court found the remainder of the claims at issue invalid because anticipated by a prior patent. IPXL argued the prior patent did not disclose the limitation "displaying transaction information on a single screen." The court disagreed.
  
• For example, IPXL had argued that the prior patent's use of the term "lead through display" indicated a series of screens; the court found that it referred to a physical component, not the image presented, recognizing that in fact the prior patent had used four different names for the same component, one of which was "lead through display."
  
• The court also looked to the prior patent's description, which made clear that upon commencement of the "interaction process" the user could simply indicate the desired transaction and it would be completed -- so, the court reasoned, no transaction information needed to be entered before the single screen displayed multiple possible transactions, and from that single screen the transaction could be completed. The selection of which transactions were displayed was based on prior transactions with the user.
  
• Finally, the court held that the "correct was to perfect a claim to attorney fees under 35 U.S.C. section 285 is through compliance with Fed. R. Civ. P. 54." Amazon filed its motions for fees 17 days after entry of judgment, whereas Rule 54 required such a motion within 14 days of judgment. Amazon did not attempt to excuse the untimely motion by claiming, for example, "excusable neglect," the standard the district court was required to apply before exercising its discretion to enlarge time under Rule 6. Therefore, the court found no basis for exempting Amazon's fee request from compliance with the time limits set by Rule 54.