September 23, 2016

Structural Element Does Not Make Method Claims Indefinite

By Bryan K. Wheelock, Principal

In Cox Communications, Inc. v. Sprint Communication Company LP, [2016-1013] (September 23, 2016), the Federal Circuit reversed the district court’s determination that the asserted claims of U.S. Patent Nos. 6,452,932; 6,463,052; 6,633,561; 7,286,561; 6,298,064; and 6,473,429 were not invalid for indefiniteness.

The parties agreed that “processing system” is not a means-plus-function
term, and confined its review to whether “processing system” renders the asserted patents indefinite under 35 U.S.C. § 112, ¶ 2.  The Federal Circuit found that the claim term “processing system” does not prevent the claims, read in light of the specification and the prosecution history, from informing those skilled in the art about the scope of the invention with reasonable certainty.

The Federal Circuit noted that the case presented a peculiar scenario because the disputed term, “processing system,” plays no discernible role in defining the scope of the claims.  The Court noted that all 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.  The Federal Circuit pointed out that if the words “processing system” were removed from the claims, therein meaning would not discernibly change.  The Federal Circuit reasoned that if “processing system” does not discernibly alter the
scope of the claims, it is difficult to see how this term would prevent the claims from serving their notice function under § 112, ¶ 2.

The Federal Circuit said that the common practice of focusing on individual terms is a “helpful tool,” but indefiniteness under § 112, ¶ 2 must ultimately turn on 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.” The Federal Circuit found that “processing system” does not prevent the claims from doing just that.