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Saturday, 24 September 2016 21:31

Federal Circuit Clarifies 35 U.S.C. 112 Indefiniteness in Method Claims

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The Federal Circuit, this Friday, reversed a distrcit court's summary judgment that several patents related to VoIP technology were invalid as being indefinite under 35 U.S.C. 112. In its holding, the court concluded that Section 112 cannot be used on the basis that a "processing system" is indefinite, wherein the asserted claims comprise entirely of method claims. In other words, because the "processing system" has no discernable role in defining the scope of a claim of process, and wherein the point of novelty resides in the steps of the process or method, the unfleshed "processing system" does not render the method claims indefinite per se.

This case arose when Sprint asserted various voice-over-IP patents against Cox, and subsequently a district court granted partial summary judgment to Cox on the basis that the "processing system" recited in the claims was an indefinite limitation. On appeal, the Federal Circuit held that the "processing system" played no role in defining the function or process of the method claims, and as the asserted claims were method claims, patentability and novelty resides in the performancing of those steps itself. In supporting this argument, the court redacted all mentions of "processing system" from the claims, and the resulting method claims did not change in scope. As such, the court ruled that there was no indefiniteness issue.

For practitioners, this reaffirms the understanding that a general purpose computer, such as a "processing system", need not necessarily be fleshed out in complete detail, wherein the novelty of an invention lies completely with the software process itself, i.e. a set of outputs based on the combination of a rules set applied to various inputs.

For the full opinion -- http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/16-1013.Opinion.9-21-2016.1.PDF

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Tony Guo

As a specialized technology counsel, Tony supports his clients in the high tech, creative, and online industries. His primary areas of practice include intellectual property protection, Internet law, and startups. Tony is a USPTO registered patent attorney, as well as a licensed lawyer in California and Florida. He comes from a background involving considerable hardware and software development experience, having worked in both development and IT roles in the tech and finance industries.