Proper §112 Indefiniteness Analysis is Directed to the Claims Themselves, Not the Terms

federal-circuit-cafc-right-angleCox Commc’n, Inc. v. Sprint Commc’n Co., No. 2016-1013, 2016 U.S. App. LEXIS 17372 (Fed. Cir. Sep. 23, 2016) (Before Prost, CJ., Newman and Bryson, J.) (Opinion for the Court, Prost, CJ.)

The Federal Circuit reversed the lower court’s ruling of summary judgment. The lower court had granted summary judgment based on its finding that the asserted patents were indefinite under 35 U.S.C. § 112, ¶ 2.

The asserted Sprint patents relate to voice-over-IP technologies that describe and claim the use of a “processing system.” The district court granted partial summary judgment to Cox, because it found that the “processing system” was an indefinite structural limitation because it was only functionally described, and no applicable extrinsic evidence sufficiently defined the term.

The Federal Circuit Court found that the source of the purported indefiniteness (“processing system”) played no role in defining the claims. Since the asserted claims are method claims, patentability resides with the method steps and not with the machines performing those steps. The Court drove this point home by providing a “deletion test” that removed “processing system” from the claims, noting that the meaning (scope) of the claim would not change. The Court found that because “processing system” does not change the scope of the claims, it does not change whether a person of ordinary skill understands what the claims protect. Thus, there was no indefiniteness issue.

The Court noted that while claim construction and indefiniteness are inextricably intertwined, the indefiniteness inquiry is ultimately determined by the claims as a whole, not by isolated claim terms.

The Court disagreed with Cox’s contention that “processing system” is per se indefinite because it was described with functional language. The parties stipulated that the term was not in “means-plus-function” form, and there was no per se requirement to disclose a structure. Further, the functional language helped circumscribe the claims by specifying operations that the “processing system” must perform in order to practice the claimed method. Finally, the Court noted that the specification discloses sufficient information (in the form of embodiments, algorithm detail, query construction, mapping guidance, and processing details) for a person of ordinary skill in the art to understand the claims with reasonable certainty.

The concurrence addressed the Court’s “new mode” of analysis, by clarifying that the “deletion test” was really not a per se test for indefiniteness, and instead was an example of a way to show that the claims were not rendered indefinite by the functional term at issue.

The Court emphasized two points. First, a proper indefiniteness analysis is directed to the claims as a whole and not to isolated terms therein. Second, functional language that is not in means-plus-function form does not per se make a claim indefinite for lack of structure, e.g. when the artisan would reasonably understand the scope and meaning of the claim.

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Robert Schaffer

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

Robert Schaffer

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

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Discuss this

There are currently 2 Comments comments.

  1. Prizzi's Glory September 30, 2016 1:16 pm

    The terminological usage is probably not relevant to this patent except historically, but before 1983, AT&T Bell Labs & Western Electric documentation tended to avoid terms like computer and computing system because AT&T was legally barred from the computer business. Processing system was generally the recommended term because typically program executing electronics used in AT&T switches could not do floating point computation and integer computation if available was highly limited.

    Of course, one could argue that string or symbolic computation does not require an arithmetic logic or floating-point unit.

  2. Benny October 1, 2016 5:50 am

    Prizzi,
    Yes, you could argue that symbolic computation does not require an arithmetic logic unit. You could also argue that the world is flat, and you would be eqally convincing on both counts.