Point of Novelty Returns to Indefiniteness Analysis

Cox Communications v. Sprint (Fed. Cir. 2016)

The district court found all of Sprint’s asserted claims invalid as indefinite under 35 U.S.C. § 112, ¶ 2.  The term “processing system” was common to the claims of all six asserted patents, and the lower court found it “functionally” described and claimed in a manner that did not provide the reasonable certainty of claim scope required under Nautilus.  U.S. Patent Nos. 6,452,932; 6,463,052; 6,633,561; 7,286,561; 6,298,064; and 6,473,429.  On appeal, the Federal Circuit has reversed.

Section 112, ¶ 2 requires claims “particularly pointing out and distinctly claiming” the invention and is seen as the textual source of the definiteness requirement.  In Nautilus, the Supreme Court held that “a patent is invalid for indefiniteness if its 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.”

More Definiteness Leeway For Terms Outside the Point of Novelty: In thinking through its analysis, the Federal Circuit started with an interesting issue: Point of Novelty.  The appellate panel noted that the claimed “processing system” was did not provide newness to the claim but was “merely the locus at which the steps are being performed.”  To drive this point home, the court walks through a representative set of claims to show how “processing system” does almost no work in the claims.

Of course, “point of novelty” analysis has a history in indefiniteness cases – most famously in the pre-1952 Supreme Court cases of Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1 (1946) and Gen. Elec. Co. v. Wabash Appliance Corp., 304 U.S. 364 (1938) that heightened the definiteness burden at the point of novelty.  Those cases particularly on functional claim language:

The vice of a functional claim exists not only when a claim is ‘wholly’ functional, if that is ever true, but also when the inventor is painstaking when he recites what has already been seen, and then uses conveniently functional language at the exact point of novelty.

Gen Elec. I’ll note here that the Federal Circuit’s Sprint opinion does not cite to either of these older cases. The court does, however, refer to the Post Nautilus decision in Eidos Display, LLC v. AU Optronics Corp., 779 F.3d 1360 (Fed. Cir. 2015). In that case, the court found the term “contact hole” sufficiently definite since the specification referred to well-established practice in the industry and the limitation was not itself offering a point of novelty.

Coming back to Sprint’s claims, the court writes

If “processing system” does not discernably 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.

Here, the court notes that the indefiniteness test focuses on each “claim” not “claim terms” themselves.  And, although we have a common practice of focusing on individual terms — that approach is merely a helpful tool.

Particularly focusing on the functional nature of the “processing system” claim term – the court first held that functional claim language is permissible and at times quite helpful in providing definite scope limits.

As Nautilus instructs, the dispositive question in an indefiniteness inquiry is whether the “claims,” not particular claim terms, “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 Sprint majority opinion here was authored by Judge Prost and joined by Judge Bryson. Judge Newman wrote a concurring opinion, protesting the majority’s approach to determining the term’s importance by removing the challenged term from the claim and then determining whether the removal changes the claim meaning.