Hybrid Theory-Mixed Apparatus and Method Claims in the Federal Jurisprudence

AuthorBrian Su
PositionBrian Su is of counsel in Mei & Mark LLP's Washington, D.C., office, specializing in patent litigation, prosecution, and counseling. He can be reached at bsu@meimark.com.
Published in Landslide® magazine, Volume 9, Number 4 , a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2017 by the American Bar Association. Reproduced with permission. All rights reserved. This
information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
Hybrids claims, which commingle apparatus elements
and method steps, have long been held invalid yet
continue to pose traps for unwary practitioners.1 In Ulti-
matePointer, L.L.C. v. Nintendo Co. and its antecedents, the
Federal Circuit highlighted nuances and pitfalls commonly
associated with these claims.
As discussed below, hybrid claims have been struck down
under 35 U.S.C. §101, for spanning statutory classes, and 35
U.S.C. §112, for failing to dene inventions and introducing
uncertainty into infringement analyses. However, identifying
a hybrid claim can be far from straightforward. In particular,
valid claims drafted in an unorthodox manner, or incorporat-
ing functional capability language, could be interpreted as
invalid hybrid claims.
The Paths to Invalidity
One of the earliest hybrid claims cases was Ex parte Lyell,
issued in 1990 by the former Board of Patent Appeals and
Interferences (BPAI).2 Lyells patent-at-issue was directed to
a transmission repair tool with an apparatus claim which “fur-
ther comprise[d]” several method steps.3 Thus, Lyell’s claim,
unlike in many subsequent cases, unambiguously recited both
apparatus elements and method steps.
In upholding the examiner’s indeniteness rejection, the
BPAI found the mixing of apparatus elements and method
steps “precluded by the express language of 35 U.S.C. §101
which is drafted so as to set forth the statutory classes of inven-
tion in the alternative only,” and ambiguous under 35 U.S.C.
§112 for “failing to particularly point out and distinctly claim
the invention.4 Further, the claim was “not sufciently precise
to provide competitors with an accurate determination of the
‘metes and bounds’ of protection involved so that an evalua-
tion of the possibility of infringement may be ascertained with
a reasonable degree of certainty.5
Mixed Apparatus and Method Claims
in the Federal Jurisprudence
By Brian Su
Brian Su 
prosecution, and counseling. He can be reached at bsu@meimark.com.
As such, Lyell established three bases for the invalidity of
hybrid claims: (1)for spanning multiple statutory classes in a
single claim, (2)for failing to specically claim the invention,
and (3)for injecting uncertainty into the infringement analysis
as competitors were not fully apprised of the claim’s scope.
Hybrid Claims at the Federal Circuit
Fifteen years after Lyell in 2005, the Federal Circuit
addressed the validity of hybrid claims for the rst time in
IPXL v. Amazon.6 IPXL’s patent-at-issue related to an elec-
tronic nancial transactions system and included an apparatus
claim that recited, “the user uses the input means to either
change the predicted transaction information or accept the
displayed transaction type and transaction parameters.”7
The Federal Circuit upheld the lower court’s ruling of
indeniteness because—echoing Lyell—the combination of
apparatus elements and method steps made the determination
of infringement ambiguous and the claim indenite under 35
U.S.C. §112. According to the court, it was
unclear whether infringement of [the claim] occurs when one
creates a system that allows the user to change the predicted
transaction information or accept the displayed transaction,
or whether infringement occurs when the user actually uses
the input means to change transaction information or uses the
input means to accept a displayed transaction.8
That is, ambiguity lay in whether the claim was to be treated
as an apparatus or a method for infringement purposes. Did
infringement arise upon the manufacture of an electronic sys-
tem that allowed users to make the claimed choices? Or did
infringement only occur when a user performed the step of
making the claimed choices? As with Lyell, the Federal Circuit
noted its concerns with infringement uncertainty in invalidating

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