Claims Combing a System and a Method for Using the System are Invalid for Indefiniteness Under § 112

During a Markman patent claim construction proceeding, the Western District of Texas ruled multiple claims of U.S. Patent No. 7,284,203 invalid for indefiniteness under 35 U.S.C. § 112 because the claims “improperly combine system and method claims.” Visible Connections, LLC v. Zoho Corp., No. 18-CV-859-RP (W.D. Tex. Nov. 26, 2019). The court found the claims indefinite because “the presence of user steps [in the claims at issue] makes it unclear whether infringement occurs when one creates an interface program for real-time application sharing or when the user selects the documents to be shared.”

Claim 35 is representative of the claims ruled invalid for indefiniteness and is reproduced here:

the system of claim [34, 37], wherein the interface program automatically establishes at least a substantially real-time shared viewing of at least one document between at least one audience member and a host user, wherein the host user only selects the at least one document to be shared and the at least one audience member with whom to share the at least one document to initiate the substantially real-time shared viewing.

The court noted that “[a] single claim covering ‘both a system and a method for using that system’ is invalid for indefiniteness because ‘it does not apprise a person of ordinary skill in the art of its scope.’” IPXL Holdings, LLC v Amazon.com, Inc, 430 F.3d 1377, 1384 (Fed. Cir. 2005)). Specifically, the court explained that such a claim “may make it ‘unclear whether infringement . . . occurs when one creates an infringing system, or whether infringement occurs when the user actually uses the system in an infringing manner.’” MasterMine Software, Inc. v. Microsoft Corp., 874 F.3d 1307, 1313 (Fed. Cir. 2017). However, the court also noted that “system claims with ‘permissible functional language used to describe the capabilities of the system,’ rather than the activities of the user, are not invalid for indefiniteness.” Id.

Visible Connections argued “that like the claim in MasterMine, the reference to user action in the claims at issue merely describes the interface program’s capability.” (See 874 F.3d at 1315 (claiming “receives from the user a selection”)). Zoho countered that “the claims’ language denotes user action, not system capability.” (See In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1318 (Fed. Cir. 2011) (claiming “wherein…callers digitally enter data”)).

The court agreed with Zoho and found that “the claims at issue here do not merely contain ‘permissible functional language to describe the capabilities of the claimed system’; rather, they impermissibly claim the user’s act of selection alongside system claims.” Specifically, the court found that “the claim ‘wherein the host user selects’ represents a method step performed by the user.” Therefore, the court held that the claims at issue are invalid for indefiniteness under § 112 because “they include both system and method claims.”

Lessons for Practice

Functional language often is unavoidable when drafting software claims. However, it is important to carefully draft functional claim language to avoid potential pitfalls. As this case illustrates, functional language should describe the capabilities of the system and not actions of the user to avoid combining system and method claims, which could create grounds for invalidating the claim as indefinite.