The Federal Circuit relied on Nautilus to preserve functional language of a method claim in a decision published last Friday. In Cox Comm, Inc. v. Sprint, No. 2016-1013, the Federal Circuit held that the term “processing system” did not render the asserted claims indefinite. The Federal Circuit relied on novel considerations to reach this conclusion. The Federal Circuit stated that because the term “processing system” “play[ed] no discernable role in defining the scope of the claims,” it was difficult to find the claims indefinite.
The asserted patents relate to voice-over-IP technology that allows telephone calls to be transmitted over the packet-switched data network (e.g., the Internet), instead of through traditional telephone lines. The dispute at the Federal Circuit centered on the indefiniteness of the claims containing the term “processing system.” The indefiniteness analysis focused on the Federal Circuit’s interpretation of 35 U.S.C. § 112, ¶ 2.
The Federal Circuit observed that the term “processing system” “plays no discernable role in defining the scope of the claims,” and, therefore, makes it difficult to form the basis of an indefiniteness challenge. The Federal Circuit also pointed out that the asserted claims are all method claims and held that the point of novelty resides with the steps of these methods, not with the machine (here the “processing system”) that performs them.
The Federal Circuit further noted that the claims were not per se indefinite merely because they contain functional language. The Court explained that the functional language in this case actually promotes definiteness because it helps bound the scope of the claims by specifying the operations that the “processing system” must undertake.
The Federal Circuit cited the indefiniteness test set by the Supreme Court in Nautilus and emphasized that the indefiniteness inquiry is whether the claims, not particular claim terms, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention. In the end, the Federal Circuit concluded that the recited steps provided sufficient detail such that a person of ordinary skill in the art would understand them with reasonable certainty.
This decision may have limited applicability, as the asserted claims in this case were all method claims. The same reasoning or holding may not apply if an apparatus claim is asserted. It is hard to conceive of an apparatus claim term that would have no impact on the scope of the claim itself.