B2 Intellectual Property Report

Mixing a System and Method Steps in a Single Patent Claim

A recent Eastern District of Texas opinion holds that a patent claim can recite a system that performs method steps without being indefinite under 35 U.S.C.  § 112, ¶ 2.  Oasis Research v. AT&T Corp, 2012 U.S. No. 4:10-CV-00435 (E.D. Tex. Feb. 23, 2012).  Magistrate Judge Mazzant acknowledged “various cases holding that mixed apparatus and method claims are indefinite because it is unclear when infringement occurs.”  However, although the claim at issue referred to an “online computer system” and then recited method steps, the court held that the claim “does not contain both apparatus and method claims.”  Instead, the claim “preamble recites the structure of a system in which the method is practiced.”  Therefore, the claim was not “insolubly ambiguous,” unlike claims to a particular device that then recite steps possibly performed by different computers.

Despite the result that this particular court reached with this particular claim, this opinion is nonetheless a good reminder that, these days especially, a claim drafter should heed a number of strictures.  These include taking a very conservative, i.e., minimalist, approach to claim preambles, generally exercising care to ensure that a claim is consistently a device claim or a method claim, and, if possible, is practiced entirely from the perspective of a single device.

The claim at issue in Oasis Research was the following:

   1. An online computer system providing commercial backup services to remote customer computers over the Internet by performing the following steps:
   (a) providing at least one remote storage area for use in storing customer backup information;
   (b) establishing a first online Internet session with a customer's computer;
   (c) allowing the customer to sign up for backup services over the first online Internet session, including the step of establishing a customer identifier and associated password for the customer;
   (d) establishing a second online Internet session with the customer's computer;
   (e) requesting the customer to input the customer identifier and associated password established by step (c);
   (f) validating the customer identifier and password requested by step (e);
   (g) conditioned at least in part on validating step (f), allowing the customer to access the remote storage area over the second Internet session substantially as if the remote storage area was a backup storage device physically and/or locally attached to the customer's computer, including the steps of:
   (1) encrypting backup data provided by the customer's computer,
   (2) transmitting the encrypted backup data to the online backup service provider over the second online Internet session, and
   (3) storing the backup data in the remote storage area provided by the online backup service provider.