Cox Commc'ns, Inc. v. Sprint Commc'n Co.
| Decision Date | 23 September 2016 |
| Docket Number | 2016–1013 |
| Citation | 120 U.S.P.Q.2d 1283,838 F.3d 1224 |
| Parties | Cox Communications, Inc., CoxCom, LLC, Cox Arkansas Telcom LLC, Cox Communications Arizona LLC, Cox Arizona Telcom LLC, Cox California Telcom LLC, Cox Communications California LLC, Cox Colorado Telcom LLC, Cox Connecticut Telcom LLC, Cox District of Columbia Telcom LLC, Cox Florida Telcom LP, Cox Communications Georgia LLC, Cox Georgia Telcom LLC, Cox Iowa Telcom LLC, Cox Idaho Telcom LLC, Cox Communications Kansas LLC, Cox Kansas Telcom LLC, Cox Communications Gulf Coast LLC, Cox Communications Louisiana LLC, Cox Louisiana Telcom LLC, Cox Maryland Telcom LLC, Cox Missouri Telcom LLC, Cox Nebraska Telcom LLC, Cox Communications Omaha LLC, Cox Communications Las Vegas Inc., Cox Nevada Telcom LLC, Cox North Carolina Telcom LLC, Cox Ohio Telcom LLC, Cox Oklahoma Telcom LLC, Cox Rhode Island Telcom LLC, Cox Communications Hampton Roads, LLC, Cox Virginia Telcom LLC, Plaintiffs–Appellees v. Sprint Communication Company LP, Sprint Spectrum, L.P., Sprint Solutions, Inc., Defendants–Appellants Cisco Systems, Inc., Defendant |
| Court | U.S. Court of Appeals — Federal Circuit |
Michael Louis Brody , Winston & Strawn LLP, Chicago, IL, argued for plaintiffs-appellees. Also represented by Steffen Nathanael Johnson, Eimeric Reig–Plessis , Washington, DC; David Spencer Bloch , San Francisco, CA; Krishnan Padmanabhan , New York, NY.
J. Michael Jakes , Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, DC, argued for defendants-appellants. Also represented by Basil Trent Webb, Peter Emanuel Strand, Aaron E. Hankel, John D. Garretson, Ryan Dykal , Shook, Hardy & Bacon, LLP, Kansas City, MO; Rob Reckers , Houston, TX.
Before Prost, Chief Judge, Newman and Bryson, Circuit Judges.
.
Prost
, Chief Judge.
Sprint Communication Company LP and its affiliates (collectively, “Sprint”) appeal from a final decision of the United States District Court for the District of Delaware finding that the asserted claims of U.S. Patent Nos. 6,452,932
; 6,463,052 ; 6,633,561 ; 7,286,561 ; 6,298,064 ; and 6,473,429 (collectively, “the asserted patents”) are invalid as indefinite under 35 U.S.C. § 112, ¶ 2. Because “processing system” does not prevent the claims, read in light of the specification and the prosecution history, from informing those skilled in the art about the scope of the invention with reasonable certainty, we reverse.
The asserted patents relate to developments in voice-over-IP technology. Voice-over-IP allows telephone calls to be transmitted over the internet, instead of through traditional telephone lines. Voice-over-IP has the ability to work with traditional telephone lines, however, such that calls initiated on a traditional telephone can be converted to packets of information and transmitted over the internet. At the receiving end, they are converted back to a traditional voice signal.
The asserted patents discuss the hand-off between traditional telephone lines (a “narrow-band network” or “circuit-switched network”) and a data network (a “broadband network” or “packet-switched network”), such as the internet. They can be divided into two groups: U.S. Patent Nos. 6,452,932 (“'932 patent”)
; 6,463,052 (“'052 patent”) ; 6,633,561 (“'3,561 patent”) ; and 7,286,561 (“'6,561 patent”) (collectively, the “control patents”) share a specification, and U.S. Patent Nos. 6,298,064 (“'064 patent”) and 6,473,429 (“'429 patent”) (collectively, the “ATM1 interworking patents”) share a different specification.
Both sets of patents describe the use of a “processing system,” which receives a signal from a traditional telephone network and processes information related to that voice call to select the path that the voice call should take through the data network. In the control patents, a “communications control processor” (“CCP”) “selects the network elements and the connections that comprise the communications path.” '3, 561 patent
col. 6 ll. 18–20. In the ATM interworking patents, a “signaling processor” (or, in preferred embodiments, a “call/connection manager” (“CCM”)) selects the virtual connections by which the call will pass through the ATM network and performs other call processing functions, such as validation, echo control, and billing. '064 patent col. 4 ll. 47–54, col. 6 ll. 54–59, col. 7 ll. 13–16. Both specifications disclose that logic for selecting a communication path resides in look-up-tables, which the CCP or CCM relies on in making selection(s). '3, 561 patent col. 19 ll. 1–27, col. 19 l. 33–col. 20 l. 6; '064 patent col. 7 ll. 21–30.
At issue in this appeal is the definiteness of “processing system” as it is used in the context of the patents. Among the control patents, the independent claims at issue are: claim 1 of the '932 patent
, claim 1 of the '052 patent, claims 1 and 24 of the '3,561 patent, and claim 11 of the '6,561 patent. Claim 1 of the '3, 561 patent is exemplary:
'3, 561 patent
col. 22 ll. 12–32 (emphases added).
Among the ATM interworking patents, claim 1 of the '064 patent
and claim 1 of the '429 patent are the independent claims at issue. Claim 1 of the '064 patent is exemplary:
'064 patent
col. 23 ll. 28–41 (emphases added).
This case rests against the backdrop of multi-district litigation between these parties and others. On December 19, 2011, Sprint sued Cox Communications, Inc. and Cox Communications Kansas, LLC in the District of Kansas, asserting infringement of twelve patents, which included the six patents at issue here. That same day, Sprint also filed suit against Comcast Cable Communications, Inc. (“Comcast”), Cable One, Inc. (“Cable One”), and Time Warner Cable Inc. (“Time Warner Cable”) in the District of Kansas asserting the same twelve patents.
On April 16, 2012, Cox Communications, Inc., Cox Communications Kansas, LLC, and thirty of their affiliates (collectively, “Cox”) initiated the instant case, filing a complaint in the District of Delaware seeking declaratory judgment that Sprint's twelve patents were invalid and not infringed. Cox filed a motion to transfer the Kansas action to Delaware, which was granted on September 14, 2012. Sprint consequently counterclaimed for infringement of the twelve patents and several others.
Sprint's actions against Comcast, Cable One, and Time Warner Cable remained in the District of Kansas and were consolidated for discovery purposes. These cases proceeded to claim construction, where on October 9, 2014, the district court decided, among other things, that the term “processing system” was not indefinite, but did not warrant a construction. J.A. 838–41.
Approximately four months later, on February 27, 2015, Cox moved for partial summary judgment in the instant case on the grounds that the claim term “processing system” rendered the asserted patents indefinite under 35 U.S.C. 112
, ¶ 2. On May 15, 2015, the district court granted Cox's motion, finding that the claims were indefinite because they “contain[ ] a structural limitation, ‘processing system,’ ” which is “functionally described by the claims and in the specifications” and these descriptions “do not pass muster under Nautilus as a person of ordinary skill in the art is not provided with the bounds of the claimed invention.” J.A. 17–19. The district court also found that extrinsic evidence did not save the claims, because “there is no ‘established meaning in the art’ ” for “processing system,” because other patents use this term in different ways and because the parties did not provide (nor could the district court discern, looking at computer dictionaries) a definition for “processing system.” J.A. 19.
Sprint appeals the grant of summary judgment of invalidity for indefiniteness. We have jurisdiction under 28 U.S.C. § 1295(a)(1)
.
We review a district court's grant of summary judgment that a claim is indefinite de novo, applying the same standards as the district court. Ethicon Endo – Surgery, Inc. v. U.S. Surgical Corp. , 149 F.3d 1309, 1315 (Fed. Cir. 1998)
. The ultimate conclusion that a claim is indefinite under 35 U.S.C. § 112, ¶ 22 is a legal conclusion, which we review de novo. Eidos Display, LLC v. AU Optronics Corp. , 779 F.3d 1360, 1364 (Fed. Cir. 2015). As in claim construction, we review a district court's underlying factual determinations for clear error. Id. ; see
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