Cox Communications, Inc. v. Sprint Communication Company
838 F.3d 1224
Fed. Cir.2016Background
- Patents at issue: six voice-over-IP patents divided into two groups (four “control” patents sharing one specification; two “ATM interworking” patents sharing another). Each claims methods for selecting call routing in packet networks using a "processing system."
- Representative claims recite method steps performed "in" or "by" a "processing system" (e.g., receive signaling into the processing system; process signaling to select a connection; generate/transmit a control message).
- District court granted summary judgment that asserted claims were indefinite under 35 U.S.C. § 112, ¶ 2 because "processing system" was allegedly a functional/structural term that failed to provide definite bounds.
- The parties agreed "processing system" was not means-plus-function language; dispute centered on whether the term left claim scope unclear under Nautilus.
- The Federal Circuit reversed, holding that "processing system" did not render the claims indefinite because the claims (read with the specifications and prosecution history) informed skilled artisans of the invention's scope with reasonable certainty.
Issues
| Issue | Sprint's Argument | Cox's Argument | Held |
|---|---|---|---|
| Whether the claim term "processing system" renders the asserted method claims indefinite under 35 U.S.C. § 112, ¶ 2 | Term is not indefinite; "processing system" is merely the locus performing claimed steps and does not change claim scope (could be omitted or read as "computer") | Term is functionally claimed and lacks sufficient structural definition in the spec and intrinsic evidence, so claims fail Nautilus' reasonable-certainty requirement | Reversed: "processing system" does not render claims indefinite; claims read in light of the specification provide reasonable certainty to a skilled artisan |
Key Cases Cited
- Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014) (claims must inform those skilled in the art of the scope of the invention with reasonable certainty)
- Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015) (factual findings in claim construction reviewed for clear error)
- Atmel Corp. v. Info. Storage Devices, Inc., 198 F.3d 1374 (Fed. Cir. 1999) (indefiniteness is intertwined with claim construction)
- Microprocessor Enhancement Corp. v. Texas Instruments Inc., 520 F.3d 1367 (Fed. Cir. 2008) (functional language in claims is not per se indefinite)
- Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp., 149 F.3d 1309 (Fed. Cir. 1998) (standard of review for summary judgment of indefiniteness)