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

• Author: Brian Su
• Position: Brian 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.
• Pages: 56-59

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

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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 Lyell’s 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