The Software IP Report

Patent Invalidity for Indefiniteness When a Claim Recites Two Statutory Classes

By Charles Bieneman

Categories: 35 U.S.C. § 112, Software Patents, The Software IP Report

A patent claim directed to a “computer readable medium encoded with computer program for performing contextual searches on an Internet Phone (IP) phone” was held invalid under 35 U.S.C. § 112, ¶ 2, as indefinite because the claim recited user actions in the context of steps that otherwise functionally limited the claimed apparatus. H-W Tech., L.C. v. Overstock.com, Inc., No. 3:12-CV-636-G (N.D. Texas Aug. 30, 2013). The magistrate judge based her recommended holding of invalidity on her finding that the claim confusingly recited two statutory classes of invention, following IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377 (Fed. Cir. 2005), and In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303 (Fed. Cir. 2011).

Claim 17 of United States Patent No. 7,525,955 recites:

A tangible computer readable medium encoded with computer program for performing contextual searches on an Internet Phone (IP) phone comprising the steps of:

receiving a command to perform a contextual search;

receiving a search criteria from a user of said IP phone;

submitting said search criteria to a server couple to said IP phone; and

receiving from said server a list of merchants matching said search criteria and information regarding each of said merchants in said list;

wherein said user completes a transaction with at least one of said merchants listed without the need to generate a voice call;

wherein said information received by said user comprising a variety of offers, wherein said user selects one of said variety of offers associated with said one of said merchants listed, wherein said selected offer is transmitted to said one of said merchants listed electronically; and

wherein said user’s contact and payment information is not transmitted to said one of said merchants listed, wherein said user’s contact and payment information is available to said one of said merchants listed.

The defendant moved for summary judgment of invalidity, arguing that, because of the boldfaced language above, the claim “recites two classes of statutory subject matter, and it creates confusion as to when infringement occurs.”  The court agreed with the defendant, distinguishing cases in which apparatus claims were upheld because courts in those cases “found that [the apparatus claims] included functional limitations and not method steps.”

In this case, the claim language did “not merely describe functional limitations of the apparatus as Plaintiff argues, but is instead directed toward user action.” There was, therefore, “genuine confusion as to when infringement occurs, e.g., when one manufactures the IP phone described in Claim 17 or when the user uses the IP phone to complete a transaction using the no-call feature.” Consequently “[c]laim 17 is indefinite and invalid because it combines two statutory classes of invention in a single claim.”

Based on these findings, the magistrate judge recommended that summary judgment of invalidity be granted in favor of the defendant with respect to claim 17, and that the plaintiff’s infringement claim be dismissed.

This case had several other interesting issues. One of these involved an admittedly necessary limitation of independent claim 9 that was left out of the ’955 patent as published by the PTO. The plaintiff argued that the court could correct the claim. However, the court disagreed, noting that the courts are not obligated to rewrite claims to preserve their validity. The error here was “a material limitation of the patent claim that Plaintiff has failed to correct.” It was not evident from the face of the patent. Therefore, the magistrate judge recommended summary judgment of invalidity based on indefiniteness with respect to claim 9.