Patent Claims Held Indefinite for Mixed Apparatus and Method

In a Claim Construction Memorandum and Order, a court recently held a claim term indefinite for mixing an apparatus and a method. Wireless IP Holdings, L.P., v. Samsung Electronics Co., Ltd., et al. No. 2:18-CV-28-JRG, (E.D. Texas, Jan. 29, 2019).

Plaintiff Wireless IP Holdings alleged infringement of United States Patents No. 8,014,284 (“the ‘284 Patent”), 8,559,312 (“the ‘312 Patent”), and 9,392,638 (“the ‘638 Patent”) by Defendant Samsung Electronics Co.Following a Markman Hearing, the Court construed a plurality of claim terms. This blog post discusses a claim term held to be indefinite for mixing apparatus and method subject matter classes.

The claim term in question recites “the add-on base station . . . is [owned and] installed by an individual or entity, separate and distinct from the telephone service provider, with access to the public Internet.”

The parties disputed the interpretation of “is owned and installed by an individual or entity separate and distinct from the telephone service provider.”

DefendantSamsung argues that the recitation is indefinite for impermissibly mixing an apparatus and a method. The term does not include language such as “capable of” (installation by an individual), or anything similar. Rather, the term affirmatively requires that the add-on base station is “owned and installed” by an individual. In support of its position, Samsungcites IPXL Holdings, LLC v. Amazon.com, Inc, 430 F.3d 1377, 1384, (Fed. Cir. 2005) IPXL Holdings, LLC v. Amazon.com, Inc, 430 F.3d 1377, 1384, (Fed. Cir. 2005) holding a claim term indefinite for covering both an apparatus and a method of using the apparatus.

Plaintiff Wireless IP argued that jurors would know exactly what this phrase means – that the add-on base stations can be installed by consumers on their own. The limitation recites the capability of the base station to be installed by a consumer. Wireless IP relied on UltimatePointer, L.L.C. v. Nintendo Co., Ltd., 816 F.3d 816, 827 (Fed. Cir. 2016), for the proposition that IPXL does not apply where the limitation at issue “reflects the capability of the structure rather than the activities of the user.”

The Court found here that UltimatePointeris distinguishable because the present claims do not recite a mere capability. The claims recite that the add-on base station “is owned and installed by an individual or entity” (rather than a telephone service provider). Per the Court, “[i]t is unclear whether infringement of [the claim] occurs when one creates a system that allows the user to [own and install the add-on base station], or whether infringement occurs when the user actually [owns and installs the add-on base station]. IPXL, 430, F.3d at 1384. The Court further noted that language contrasted with recitals of “adapted to” which appear in claim 1 of the ‘638 patent. Accordingly, the Court held the claims including the recitation indefinite.

Lessons for Practice

In an apparatus claim, recite attributes of the apparatus, not actions by other entities. It appears, based on the court’s comments, that reciting “adapted to be installed by an individual or entity” instead of “is installed by an individual or entity” would have resulted in a different result, i.e., a single class, allowable claim. Thus, juxtaposition of a few words transformed patentable subject matter into an indefinite claim.

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