Cox Comm’ns, Inc. v. Sprint Comm’n Co.: Federal Circuit Reverses District Court Finding of Indefiniteness and Concurring Opinion Raises Concerns That the Majority Adopts a “New Mode of Analysis” for Indefiniteness
On September 23, 2016, in
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.