Share on LinkedInShare on LinkedIn

ARTICLE · 03 JANUARY 2006

Hybrid Claims Found Invalid

McDermott Will & Emery
Explore more from McDermott Will & Emery

Addressing for the first time the validity of a single claim covering both an apparatus and a method of using that apparatus, the U.S. Court of Appeals for the Federal Circuit followed Ex parte Lyell, a Board of Patent Appeals and Interferences (Board) case, which held such claims invalid.

United StatesIntellectual Property
Amanda Koenig
Amanda Koenig
Author LinkedIn connections

Addressing for the first time the validity of a single claim covering both an apparatus and a method of using that apparatus, the U.S. Court of Appeals for the Federal Circuit followed Ex parte Lyell, a Board of Patent Appeals and Interferences (Board) case, which held such claims invalid. IPXL Holdings, L.L.C. v. Amazon.com, Inc., Case Nos. 05-0119, -1487 (Fed. Cir. Nov. 21, 2005) (Clevenger, J.).

IPXL alleged that Amazon’s "1-click system" infringed certain claims of its patent. The district court held that one of the asserted claims, which claimed both an apparatus and its method of use, was invalid due to indefiniteness. IPXL appealed, and the Federal Circuit affirmed.

The claim in issue was directed to an ATM system and to a method for using it. The Federal Circuit held the claim invalid under § 112 ¶2 because it did not "apprise a person of ordinary skill in the art of its scope." The Court focused on the fact that the combination of the two statutory classes of invention

We operate a free-to-view policy, asking only that you register in order to read all of our content. Please login or register to view the rest of this article.

Register for freeORLog in

Related Articles

Legal Intelligence Newsletters: sign up for the latest legal and regulatory news on your chosen topics

Read more about

Related Comparative Guides

See more popular content from

Article

UMG v. DistroKid: When AI Becomes A Consumer Protection Issue

Universal Music Group's lawsuit against DistroKid raises a critical question about AI disclosure in consumer markets: when does the use of artificial intelligence become material information that must be disclosed to consumers? The case centers on allegations that DistroKid distributed mass-generated AI music while creating the impression it was created by legitimate human artists, potentially violating existing consumer protection laws even without specific AI disclosure requirements.
United StatesIntellectual Property
Frankfurt Kurnit Klein & Selz PC
Frankfurt Kurnit Klein & Selz PC
Article

U.S. Government Backs Fair Use For AI Training In OpenAI Copyright Litigation

The U.S. government has filed a Statement of Interest of the United States of America under 28 U.S.C. § 517 in the Southern District of New York multidistrict litigation over OpenAI’s use of copyrighted works to train large language models. The filing appears to be the federal government’s first direct intervention in the wave of artificial intelligence (AI) training copyright cases, and it advises the court to treat model training (separate from use of AI to generate outputs) on copyrighted text standing alone as a highly transformative fair use under current law.
United StatesIntellectual Property
Lowenstein Sandler LLP
Lowenstein Sandler LLP
Article

The Ninth Circuit Affirms Dismissal Of DMCA CMI Removal Claim Against AI Code Generator – Output Is A New Work Not A Copy Of Training Data

There was a significant ruling in the Doe v. Github case involving training of AI code generator models on open source. The United States Court of Appeals for The Ninth Circuit affirmed the district court ruling dismissing part of an action brought under the Digital Millennium Copyright Act (“DMCA”) by programmers against GitHub, Inc., and other defendants. The issues centered on whether defendants removed copyright management information (CMI) from content used to train the AI code generator models.
United StatesIntellectual Property
Sheppard
Sheppard
Article

The Trademark Scam Field Guide: Look-Alike Filing Sites, Fake USPTO Notices, And How To Get Out If You’ve Been Caught

A business decides to file a trademark. Someone on the team searches for a familiar online legal-services brand, clicks the first result, and lands on a site with a similar-sounding name, a polished design, five-star reviews, and a low flat fee. The application gets filed. Months later the business learns the “service” was not who they thought it was, the filing was signed by someone with no authority to sign it, and the USPTO has suspended the application along with hundreds or thousands of others from the same shop.
United StatesIntellectual Property
Harness IP
Harness IP
Article

Is This Real? Navigating AI Impersonation Under New And Existing Laws

Is this AI-generated, or is it real? As generative AI tools have become increasingly capable of creating realistic images, videos, and audio, they have also made it easier to impersonate real people without their consent. In response, states are increasingly adopting laws that impose civil and criminal liability for certain AI-generated content that replicates an individual’s identity, likeness, voice, or other personal attributes.
United StatesIntellectual Property
Wiley Rein
Wiley Rein
Article

PTAB/USPTO Update - September 2026

The USPTO has released its latest economic impact report on IP-intensive industries, announced a new community engagement office in North Carolina, and issued several administrative updates including relief for Japanese applicants affected by a severe earthquake. The Patent Trial and Appeal Board has also designated new precedential and informative decisions addressing obviousness-type double patenting and Markush groupings.
United StatesIntellectual Property
WilmerHale
WilmerHale