Kumiko Ide | October 14, 2016
Cox Communications, Inc., et al. v. Sprint Communication Company LP, et. al.
September 23, 2016
Before Prost, Newman, and Bryson. Opinion by Prost. Concurring opinion by Newman
The District Court for the District of Delaware granted a summary judgment of invalidity, finding that the claim term “processing system” renders the asserted patents indefinite under 35 U.S.C. 112, ¶ 2. On appeal, the United States Court of Appeals for the Federal Circuit (“the CAFC”) reversed, finding that the term “processing system” does not render the claims indefinite, because the scope of the claims can be understood, and the meaning would not discernably change, even if the word “processing system” were removed from the claims. The CAFC held that reading the claims in light of the specification and the prosecution history, the term “processing system” does not prevent a person of ordinary skill in the art from understanding the scope of the invention with reasonable certainty.
デラウェア州地裁は、クレーム中の「processing system」という用語は不明瞭であるとして、特許法第112条第2段落に基づき、主張特許は無効であるというサマリージャッジメントを下した。控訴審において、連邦巡回控訴裁判所（CAFC）は、クレームより「processing system」という語を削除したとしても、クレーム範囲を理解することができるため、「processing system」という用語はクレームを不明瞭していないとして、地裁の判断を覆した。また、CAFCは、明細書と中間手続の内容をクレームと照らし合わせると、「processing system」という用語が、当業者の発明範囲についての理解を妨げることはないと結論付けた。
Sprint appealed from the United States District Court for the District of Delaware’s final decision that the asserted patents of U.S. Patent Nos. 6,452,932 (“’932 patent”); 6,463,052 (“’052 patent”); 6,633,561 (“’3,561 patent”); 6,298,064 (“’064 patent”) and 6,473,429 (“’429 patent”) are invalid as indefinite under 35 U.S.C. 112, ¶ 2. The asserted patents relate to developments in voiceover-IP technology, which allows telephone calls to be transmitted over the internet, instead of through traditional telephone lines. All of the asserted patents describe the use of a “processing system,” which receives a signal from a traditional telephone network and processes information to select the path that the voice call should take through the data network. The district court found that the claims were indefinite because the term “processing system” used in the context of the patents does not provide a person of ordinary skill in the art with the bounds of the claimed invention. The district court also found that extrinsic evidence did not save the claims because there was no established meaning in the art for the term “processing system”.
On appeal, the CAFC notes at the outset that the parties have agreed that “processing system” is not a means-plus-function term. The issue on appeal, therefore, is whether “processing system” as used in the context of the patents at issue renders the asserted patents indefinite under 35 U.S.C. 112, ¶ 2. In its analysis, the CAFC remarks that the term “processing system” “plays no discernable role in defining the scope of the claims”…and “[a]ll of the asserted claims are method claims, and the point of novelty resides with the steps of these methods, not with the machine that performs them.” Further, the CAFC states that “processing system” is “merely the locus” at which these novel method is performed, and notes that revising the claims of the asserted patents by removing the word “processing system” would not discernably change the meaning of the claims.
Moreover, the CAFC noted that at the oral argument, both parties agreed that substituting “computer” for “processing system” would not change the scope of the claims, which further supported the CAFC’s conclusion that the term would not render the claims of asserted patents indefinite.
While the CAFC discusses removing or substituting the term “processing system” in its indefiniteness analysis, the CAFC ultimately applies the question set forth by the Supreme Court’s decision in Nautilus of whether “the claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2129 (2014). Cox contended that because the asserted claims describe “processing system” in functional terms, the claims are indefinite. However, the CAFC disagreed, stating that “claims are not per se indefinite merely because they contain functional language,” and contrary to Appellee’s assertions, here, “functional language promotes definiteness because it helps bound the scope of the claims by specifying the operations that the ‘processing system’ must undertake.” In addition, the CAFC found the specifications disclosed embodiments of “processing system” such that a person of ordinary skill in the art would understand the claims with reasonable certainty.
Therefore, the CAFC reversed the decision of the district court that the term “processing system” renders the asserted claims indefinite under 35 U.S.C. 112, ¶ 2.
Concurring opinion by Judge Newman states that while she agrees with the court’s holding that the claims are not invalid on the ground of indefiniteness, she disagrees with the way in which this determination was reached – by deleting the challenged term from the claims. Judge Newman states “[t]he operative criterion is whether the claim, read in light of the specification and prosecution history, informs skilled artisans of the scope of the invention with reasonable certainty” as applied in Nautilus. In this case, Judge Newman found that evidentiary record supports the conclusion that “processing system” had an understood meaning within the industry as supported by expert testimony and publications, and would be so understood by persons having ordinary skill in the art.
- Functional language does not necessarily render a claim indefinite.
- The CAFC discusses indefiniteness by questioning whether removing a challenged term would change the meaning of the claims. However, Nautilus is still being applied in determination of indefiniteness.