On September 23, 2016, in Cox Communications, Inc. v. Sprint Communication Co., No. 2016-1013 (Fed. Cir. Sept. 23, 2016), the Federal Circuit reversed a district court judgment holding certain patent claims invalid as indefinite. The majority opinion, authored by Chief Judge Prost and joined by Judge Bryson, held that the United States District Court for the District of Delaware improperly granted summary judgment of invalidity based on indefiniteness for six Sprint patents on voice-over IP technology. The majority held that the term “processing system” was not invalid as indefinite. In reaching this conclusion, the majority applied the test articulated by the Supreme Court in Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2128–29 (2014). In doing so, the Court evaluated, among other things, whether removal of the term “processing system” from the asserted claims discernibly altered the meaning of the claims. The Court found that the removal of this term from the claims resulted in no discernible alteration of the scope of the claims. In other words, the Court’s conclusion that the “processing system” term played no discernible role in defining the scope of the claims defeated the indefiniteness challenge, per se.
Judge Newman concurred in the judgment but disagreed with the analytical path undertaken by the majority. According to Judge Newman, the majority opinion “creates an interesting, but flawed, new mode of analysis,” a “new protocol,” and an “analytical path [that] is not in accordance with the law.” Concurring Op. at 1, 7. Judge Newman’s main criticism appears to be with the majority’s interpretation of Nautilus—she postulates that the question is controlled by “traditional claim analysis” and merely requires assessment of whether the intrinsic record informs one skilled in the art about the scope of the invention with reasonable certainty. Id. at 6. The majority opinion responds to Judge Newman’s criticism by contending that the majority opinion does not create a “new protocol” and that the comparison of the asserted claims with and without the disputed term merely illustrates how Nautilus applies to the asserted claims. Majority Op. at 12, n.3. The majority then reaffirms that its analysis provides no change in the law.
Practice Implications:Litigants should be mindful of the competing viewpoints provided in the Cox decision and consider performing an analysis that removes the disputed term from the claims as one way of illustrating how Nautilus applies to the claims at issue. A party should not rely on the claim comparison methodology from Cox as the sole way of proving or defending against a claim of indefiniteness, and should also preface any analysis with Judge Newman’s traditional claim analysis methodology.