Cox Communications, Inc. v. Sprint Communication Co., Case No. 16-1013 (Fed. Cir., Sept. 23, 2016) (Prost, CJ) (Newman, J, dissenting).Sprint sued Cox for patent infringement, asserting several patents directed to developments in voice-over-IP technology. Among the claims that Sprint asserted were method claims where certain steps of the method were performed using a “processing system.” Cox moved for partial summary judgment on the ground that the claim term “processing system” was indefinite. The district court granted Cox’s motion, finding the claims indefinite because they functionally described the structural “processing system” limitation. Sprint appealed.
The Federal Circuit reversed. The parties had previously agreed that the term “processing system” was not a means-plus-function term, so the Court analyzed whether “processing system” rendered the claims indefinite under the Nautilus v. Biosig Instruments framework (IP Update, Vol. 17, No. 6). The Court noted that all of the asserted claims were method claims and that the point of novelty resided with the functional steps of the claimed methods, not with the processing system that performed those steps. Because the “processing system” played “no discernable role in defining the scope of the claims,” the Court found that term did not prevent the claims from informing skilled artisans about the scope of the invention with reasonable certainty as Nautilus requires.
Judge Newman concurred in the Court’s judgment but disagreed with its analysis. Newman found that the
. . . court creates an interesting, but flawed, new mode of analysis, whereby the adjudicator (1) first removes the challenged term from the claim, then (2) decides whether the claim has the same meaning without the challenged term, and (3) if the answer is “yes,” rules that the claim is not indefinite as a matter of law.
Rejecting that analysis, Newman urged the Court “to return to the traditional method of claim analysis.”