author: STOLL, Circuit Judge.

text:
    CLASSCO, INC., Appellant v. APPLE, INC., Appellee
    2015-1853
    United States Court of Appeals, Federal Circuit.
    Decided: September 22, 2016

      David M. Quinlan, David M. Quinlan, P.C., Princeton, NJ, argued for appellant.
    BRIAN Robebt Matsui, Morrison- & Foer-ster LLP, Washington, DC, argued for appellee. Also represented by David Lee Fehrman, Mehran Arjomand, Los Angeles, CA.
    Before TARANTO, BRYSON, and STOLL, Circuit Judges.
   STOLL, Circuit Judge.

ClassCo, Inc. appeals from a decision of the Patent Trial and Appeal Board in inter partes reexamination No. 95/002,109 of ClassCo’s U.S. Patent No. 6,970,695. The Board affirmed an examiner’s rejection of claims 2-5, 7, 9, 10, 14, 17, 18, 23, 26-30, and 34 as unpatentable under 35 U.S.C. § 103. We affirm.

Background

I.

The U.S. Patent and Trademark Office issued the ’695 patent on November 29, 2005. The patent discusses technology that identifies incoming telephone calls and alerts the called party to the caller’s identity. The specification explains that telephone companies had made identifying incoming calls possible through a subscriber service known as Caller ID. It describes previous Caller ID systems that visually displayed a caller’s name or number. The patent purportedly improves on these and other pre-existing systems by introducing a call-screening system that verbally announces a caller’s identity before the call is connected.

In one embodiment, for example, the patented system works alongside a user’s preexisting “Call Waiting” service. ’695 patent, col. 4 11. 53-63. When a user is .on the phone and another person calls,.the system will play a tone and then verbally announce through the handset the caller’s identity, or as the claims refer to it, “identity information.” Because' the system may be installed between the incoming telephone line and the user’s telephone, the purported invention does not require a special telephone, auxiliary display terminal, or speaker to let users screen calls. Bather, it works with ordinary phones, an attribute the specification describes as “[o]ne of the most important features of the invention.” ’695 patent, Abstract.

II.

In an inter partes reexamination of ClassCo’s ’695 patent, the Board affirmed the examiner’s rejection of claims 2-5, 7, 9, 10, 14, 17, 18, 23, 26-30, and 34 as being obvious under 35 U.S.C. § 103(a). The Board affirmed the examiner’s rejection of the claims as obvious over U.S. Patent No. 4,894,861 to Fujioka et al. in view of. U.S. Patent No. 5,199,064 to Gulick et al.

ClassCo identified claim 2 as representative of all claims except claim 14, which it argued separately. Claims 2 and 14 depend from claim 1, and all three claims are reproduced below:

1. A caller announcement apparatus for a telephone system that provisions a telephone call between a caller telephone at a caller station and a called telephone at a called station, where the caller station is associated with an identity, where the telephone system provides signals to the called station that include caller identification signals representative of the identity associated with the caller station and voice signals representative of audio detected by an audio transducer of the caller telephone, and where the voice signals are processed by the called telephone to produce audio using an audio transducer at the called station, the caller announcement apparatus comprising:
a signal receiver at the called station operatively connected to the telephone system to receive ■ signals therefrom, the signal receiver being operative to extract caller identification signals from' the signals received from the telephone system and to provide caller identification data corresponding to the extracted caller identification signals;
a processing unit operatively connected to the signal receiver to receive caller identification data therefrom, the processing unit being operative to provide identity information associated with the caller identification data;
an audio announcing circuit opera-tively connected to the processing unit to receive identity information therefrom, the audio announcing circuit being operative to use the identity information to produce audio using the audio transducer at the called station.
2. The caller announcement apparatus of claim 1 wherein the processing unit comprises memory storage for storing identity information associated with the caller identification data.
14. The caller announcement apparatus of claim 1 wherein the identity information is associated with plural items of caller identification data.

’695 patent col. 9 11. 9-42, col. 10 11. 25-28 (emphases added).

The Board found that Fujioka disclosed all but one of the elements of claim 2, including announcing a caller’s identity. The Board recognized that . Fujioka did not, however, disclose using the same “audio transducer” (i.e., speaker) for announcing both a caller’s identity and telephone voice signals, as claim 2 requires. J.A. 5-6. The Board looked to Gulick for that teaching. Gulick generally discloses a hands-free telephone that integrates various phone features into a single device. ’064 patent col. 1 11. 5-7. The Board explained that “Gulick discloses a speaker that produces audio derived from tonal ringing call-alerting and also from caller voice signals.” J.A. 6 (internal quotation marks omitted). It found that, in light of Gulick, “one of ordinary skill in the art would have understood that a speaker in a telephone system may (and does) produce audio derived from multiple types of data in a telephone system, including tonal ringing call-alerting and caller voice signals.” J.A. 6 (internal quotation marks omitted). Accordingly, the Board held that the combination of Fujio-ka and Gulick rendered representative claim 2 and the claims that depend from it obvious. The Board explained that one of ordinary skill in the art would have been motivated to develop Fujioka’s single-speaker embodiment based on Gulick using one speaker to convey different data in a telephone system. J.A. 6.

The Board also held claim 14 obvious over Fujioka in view of Gulick. Claim 14 depends from claim 1 and further requires “the caller announcement apparatus of claim 1 wherein the identity information is associated with plural items of. caller identification data.” ’695 patent col. 10 11. 25-27. The Board adopted the examiner’s construction of “identity information” as “something that identifies, such as a name that identifies a phone number as a particular person.” J.A. 1107; see J.A. 9 (agreeing with the examiner). The Board found that the combination of Fujioka and Gulick disclosed this element, as Fujioka stored identity information in the form of the calling party’s name. J.A. 9. ■ ■

The Board also considered ClassCo’s evidence of objective indicia of nonobvi-ousness, but concluded that the evidencé merited no weight whatsoever in the obviousness inquiry. ClassCo had presented evidence of praise, long-felt need, and commercial success relating to its commercial products and licensing efforts. The Board found that each piece of evidence had no nexus to the merits of the claimed invention. J.A. 9-15. The Board explained that no nexus existed because much of the evidence related to features disclosed in the prior art, such as Fujioka’s announcement of a caller’s identity. And to the extent that the evidence focused on features not in the prior art, the Board added, those features were unclaimed. Having found that none of ClassCo’s evidence of objective indicia merited weight, the Board affirmed the examiner’s rejections of claims 2-5, 7, 9, 10, 14, 17, 18, 23, 26-30, and 34 as unpatentable under 35 U.S.C. § 103. ClassCo timely appealed. We have jurisdiction under, 28 U.S.C. § 1295(a)(4)(A).

DISCUSSION

“We review the Board’s ultimate obviousness determination de novo and underlying factual findings for substantial evidence.” In re Varma, 816 F.3d 1352, 1359 (Fed. Cir. 2016). Substantial evidence “means such relevant evidence as a reasonable mind might accept as adequate to support a conclusion.” Consol. Edison Co. v. NLRB, 305 U.S. 197, 217, 59 S.Ct. 206, 83 L.Ed. 126 (1938).

I.

ClassCo agrees with the Board’s finding that Fujioka discloses all but one of the elements of claim 2. Appellant Br. 31. ClassCo nonetheless argues that the Board could not simply “combine” Fujioka and Gulick, because neither Fujioka nor Gulick discloses the claimed function of “us[ing] the identity information to produce audio using the audio transducer at the called station.” In particular, ClassCo argues that the Board’s affirmance of the examiner’s rejection runs contrary to the Supreme Court’s use of the term “combination” in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 127 S.Ct. 1727, 167 L.Ed.2d 705 (2007). According to ClassCo, “[a] basic characteristic of a KSR combination is that it ‘only unites old elements with no change in their respective functions.’” Appellant Br. 28 (quoting id. at 416, 127 S.Ct. 1727).

We find that those contentions do not show that the Board’s approach is inconsistent with KSR. While neither Fujioka nor Gulick taught a single speaker for announcing both voice signals and identity information, substantial evidence supports the Board’s finding that one of ordinary skill in the art would have been motivated to modify Fujioka to use a single speaker given Gulick’s disclosure that a speaker in a telephone system can desirably produce audio derived from multiple types of data within a telephone system (e.g., voice signals or tonal ringing call-alerting). The examiner found the motivation when she stated that the modification would “advantageously provide a non-handset, external speaker output for the voice signal from the caller and thereby enable the called person to communicate with the caller in a hands-free (speakerphone) manner.” J.A. 1082. Fujioka itself notes the benefit of allowing the recipient to “judge the original party from an audible indication immediately upon receiving the incoming call,” ’861 patent col. 111. 39-41, and. Gulick notes the hands-free benefit, ’064 patent col. 1 11. 49-50. Against that background, and focusing on ClassCo’s appeal- arguments, the Board explained that modifying Fujioka in a way taught by Gulick “would have resulted in no more than the predictable result of the use of a speaker in the telephone system that produces audio derived from data in a telephone system, the data being any of voice signals, identity information, or tonal ringing call-alerting, for example.” J.A.. 6 (internal quotation marks omitted).

Contrary to ClassCo’s argument, KSR does not require that a combination only imite old elements without changing their respective functions. KSR, 550 U.S. at 416, 127 S.Ct. 1727. Instead, KSR teaches that “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” Id. at 421, 127 S.Ct. 1727. And it explains that the ordinary artisan recognizes “that familiar items may have obvious uses beyond their primary purposes, and in many, cases a person of ordinary skill will be able to fit. the teachings of multiple patents together like pieces of a puzzle.” Id. at 420, 127 S.Ct. 1727. The rationale of KSR does not support Clas-sCo’s theory that a person of ordinary skill can only perform combinations of a puzzle element A with a perfectly fitting puzzle element B. To the contrary, KSR instructs that the obviousness inquiry requires a flexible approach. Id. at 415, 127 S.Ct. 1727. Here, the Board faithfully applied this flexible approach to find that the combination of Fujioka and Gulick “would have resulted in no more than [a] predictable result.” J.A. 6.

II.

ClassCo also argues ■ that the Board wrongly “dismissed the patent owner’s objective evidence of nonobviousness on the grounds that there is insufficient nexus between the claimed invention and the objective evidence of nonobviousness.” Appellant Br. 16-17.

We agree with ClassCo that the Board erred in dismissing some of its evidence of nonobviousness. Even though it was not dispositive evidence of nonobviousness, the Board should have given some weight and consideration to ClassCo’s evidence of praise and commercial success. As we have explained, “when secondary considerations are present, though they are not always dispositive, it is error not to consider them.” In re Huai-Hung Kao, 639 F.3d 1057, 1067 (Fed. Cir. 2011). Moreover, “[a] determination of whether a patent claim is invalid as obvious under § 103 requires consideration of all four Graham factors, and it is error to reach a conclusion of obviousness until all those factors are considered.” WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1328, No. 2015-1038, 2016 WL 3902668, at *5 (Fed. Cir. July 19, 2016).

The Board correctly determined that much of ClassCo’s evidence of praise deserved no weight because it did not have a nexus to the merits of the claimed invention. “For objective evidence of secondary considerations to be accorded substantial weight, its proponent must establish a nexus between the evidence and the merits of the claimed invention.” Kao, 639 F.3d at 1068 (emphasis and internal quotation marks omitted) (quoting Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010)). A nexus may not exist where, for example, the merits of the claimed invention were “readily available in the prior art.” Richdel, Inc. v. Sunspool Corp., 714 F.2d 1573, 1580 (Fed. Cir. 1983); see also Tokai Corp. v. Easton Enters., Inc., 632 F.3d 1358, 1369 (Fed. Cir. 2011). Additionally, there is no nexus unless the evidence presented is “reasonably commensurate with the scope of the claims.” Rambus Inc. v. Rea, 731 F.3d 1248, 1257 (Fed. Cir. 2013) (quoting Kao, 639 F.3d at 1068).

As The Board correctly explained, much of ClassCo’s evidence of praise focused on conventional features in the prior art. J.A. 11, 14. For example, ClassCo submitted news releases that praised its device’s “voice-capable caller ID unit,” J.A. 12, but, as the Board correctly explained, the prior art, including Fujioka, disclosed “storing identification data and producing a voice announcement (i.e. audio corresponding to identification data of a caller).” J.A. 11. The Board properly discounted this and other evidence relating to features that were in the prior art. But while the Board properly discounted some of ClassCo’s evidence, it improperly dismissed some evidence of praise related to features that were not available in the prior art.

For example, ClassCo presented an article from Teleconnect Magazine that praised ClassCo’s product for enabling a user to pick up a ringing telephone and hear a caller’s identification on the handset speaker before the line connects. By using a single speaker for both announcing a caller’s identity and the telephone call, ClassCo’s product enabled users to use an ordinary handset to both screen calls and take them:

On the left side of the device is a switch marked “handset.” When the switch is off, the device announces calls through its speaker, and lets you answer them directly—calls can be answered by lifting the handset of any attached phone. When the switch is on, the VACID [Voice Announce Caller ID] switches the phone out of the loop, so you can lift the handset without “answering the call.” It then announces over the inside line— you can answer by pressing Flash (or briefly bouncing the hook-switch), or just hang up. This feature really adds utility—it frees you from being tied to the immediate proximity of the box, and lets the device serve multiple extensions (dispersed through an apartment, for example) and wireless phones.

J.A. 1653 (Teleconnect Magazine, Who’s There!?? Speak Up!! October 1995, p. 40). ClassCo submitted several other articles describing benefits derived from the single-speaker feature. E.g,, J.A. 1825 (Computer Telephony, July 1996, page 114) (“If [ClassCo’s product] is connected right as the phone line comes into your home, and all the phones are behind it, as soon as you pick up the phone it can play the name of the caller (assuming that it is one of the 20 in the list) before connecting the caller.”); J.A. 1829-30 (The Dallas Morning News (the Archive), Oct. 20, 1998) (“On a cordless phone, the call will be announced through the handset.”); see also Appellant Br. 20-23 (collecting articles). Neither party asserts that this single-speaker feature was readily available in the art, and the Board was wrong to dismiss it as such.

The Board also dismissed this evidence for a different reason: it found that the claims were not commensurate in scope with the praised features. We disagree. Both parties agree that the single-speaker embodiment falls within the scope of repr resentative claims 2 and 14. Moreover, Apple admits that dependent claim 5 expressly recites the embodiment touted in the articles: picking up a telephone handset without answering a call so that the user can first hear a caller’s identification. Ap-pellee Br. 55-56; see also ’695 patent col. 9 11. 52-56. (“The caller announcement apparatus of claim 1 further comprising: an isolation circuit operative to prevent the telephone system from completing the telephone call from the caller telephone to the called telephone while the audio announcement circuit is producing audio using the audio transducer at the called station.”). Because claim 5 depends from claim 1, it is reasonable to infer that claim 1 includes the scope of claim 5. See Intamin Ltd. v. Magnetar Techs., Corp., 483 F.3d 1328, 1335 (Fed. Cir. 2007) (“An independent claim impliedly embraces more subject matter than its narrower dependent claim.”).

While claims 2 and 14, which depend from claim 1, also encompass the praised embodiment, the Board found the evidence not commensurate in scope with these claims on the ground that they are too broad, encompassing other embodiments. But “we do not require a patentee to produce objective evidence of nonobvi-ousness for every potential embodiment of the claim.” Rambus, 731 F.3d at 1257. Rather, “we have consistently held that a patent applicant ‘need not sell every conceivable embodiment of the claims in order to rely upon evidence of [objective indicia of nonobviousness].’ ” In re Glatt Air Techniques, Inc., 630 F.3d 1026, 1030 (Fed. Cir. 2011) (quoting In re DBC, 545 F.3d 1373, 1384 (Fed. Cir. 2008)). As such, the Board should have afforded ClassCo’s evidence some weight, taking into account the degree of the connection between the features presented in evidence and the elements recited in the claims. There is no hard-and-fast rule for this calculus, as “[questions of nexus are highly fact-dependent' and, as such are not resolvable by appellate-created categorical rules and hierarchies as to the relative weight or significance of proffered evidence.” WBIP, 829 F.3d at 1331, 2016 WL 3902668, at *8. Here, because claims 2 and 14 are considerably broader than the particular features praised in the articles, it would be reasonable for the Board to assign this evidence little weight. But, contrary to the finding of the Board, the evidence is due at least some weight.

We also view the Board’s analysis of ClassCo’s evidence of commercial success as flawed. ClassCo presented testimony that its “sales volumes and growth of market share ... [were] strong evidence of the commercial success of ClassCo products.” J.A. 1821. According to testimony presented by ClassCo, the market for ClassCo’s products consisted of “all Caller ID devices,” including those that simply displayed Caller ID. J.A. 1820-21. “Clas-sCo’s share of that [$82,000,000] market was 0.8%.” J.A. 1821. The Board dismissed this testimony on the ground that “the market included ‘total number of units capable of audible announcement based on Caller ID’ but [ClassCo] does not demonstrate that the claims recite the system as ‘capable of audible announcement based on Caller ID.’ ” J.A. 14. The Board’s analysis improperly focuses on the market instead of ClassCo’s product. Our cases require consideration of whether “the marketed product embodies the claimed features.” Brown & Williamson Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1130 (Fed. Cir. 2000). If a patent owner makes this showing, “then a nexus is ¡presumed and the burden shifts to the party asserting obviousness to present evidence to rebut the -presumed nexus.” Id. ClassCo made that showing here. It presented un-rebutted evidence that its products experienced some, albeit limited, commercial success, and that those products embodied the claimed features. This evidence deserved some weight in the obviousness analysis, and the Board’s blanket dismissal of it was in error.

ClassCo also argues that the Board improperly dismissed evidence of a successful licensing program of the ’695 patent. ClassCo had presented testimony that it had licensed the patent to Philips in 1995. But the Board dismissed this evidence because it “d[id] not find specific evidence demonstrating why ‘Philips took a license from ClassCo’ and what specific claim features caused Philips to take the alleged licenses, if any.” J.A. 14. We find the Board’s conclusion on this issue to be supported by substantial evidence. The parties had disputed before the Board whether, as a factual matter, Philips had taken out a license for the features in claim 1, or for other business reasons. In several declarations submitted by ClassCo, a witness testified that Philips was motivated to take the licenses because of the features of claim 1. J.A. 1646 (“All of the products licensed under the ’695 patent have included the features of claim 1_”). But ClassCo cancelled claim 1 in an earlier reexamination proceeding. After ClassCo cancelled claim 1, it submitted another declaration that credited the features of claims 2 and 14 as Philips’s motivation. J.A. 1822. Thus, ClassCo’s own inconsistent evidence belies its position and supports the Board’s conclusion. Accordingly, the Board’s conclusion that ClassCo had submitted insufficient evidence to prove that Philips was motivated to take the license because of merits of the claimed invention is supported by substantial evidence. See In re Cree, Inc., 818 F.3d 694, 703 (Fed. Cir. 2016).

After weighing ClassCo’s evidence of nonobviousness in light of the other three Graham factors, we find no error in the Board’s ultimate conclusion of obviousness. The examiner and the Board correctly found that the combination of Fujioka and Gulick’ presents a strong showing that the claims at issue would have been obvious. While the Board erred in giving Clas-sCo’s evidence - of nonobviousness no weight, we nonetheless agree that the value this evidence possesses in establishing nonobviousness is not strong in comparison to the findings and evidence regarding the prior art under the first three Graham factors. See Kao, 639 F.3d at 1071-72 (finding that the Board erred in ascribing no weight to secondary considerations evidence but nonetheless affirming the Board’s ultimate holding of obviousness); see also Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 36, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966) (holding that alleged secondary considerations of commercial success and long-felt need did not “tip the scales of patentability” where the invention “rest[ed] upon exceedingly small and quite non-technical mechanical differences in a device which was old in the art”).

III.

ClassCo also challenges the Board’s construction of “identity information” in claim 14. Because the patent has expired, the Board construed the claims applying the principles explained in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). “[W]e review the Board’s ultimate claim constructions de novo- and its underlying factual determinations involving extrinsic evidence for substantial evidence.” Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1297 (Fed. Cir. 2015). Because the parties and the Board relied solely on the intrinsic record to determine the proper construction, we review the Board’s construction de novo. See id.

The Board adopted an ordinary-meaning construction of identity information as “something that identifies, such as a name that identifies a phone number as a particular person.” J.A. 1107; see J.A. 9 (agreeing with the examiner). ClassCo proposes alternatively that “identity information” is not an abstract concept, and that the ’695 patent “uses the term ‘identity information’ to mean a physical item that can only exist in one place at one time (e.g., a particular section -of a particular memory element containing a stored name ...).” Appellant Br. 50.

We agree with the Board’s construction. Contrary to ClassCo’s contentions otherwise, the plain claim language and specification. support giving “identity information” its ordinary meaning. The language of claim 1 does not require that identity information be stored in memory. The claim merely requires that identity information be produced by the processing unit and used by the audio announcing circuit. The claim does not, however, require identity information to be stored in “a particular section of a particular memory element.” Nor does the ’695 specification limit the term this way. Indeed, the specification never uses the term “identity information.” ClassCo points to embodiments in the specification that discuss related terms like “caller ID records” and “stored audio” that are stored in memory, but these embodiments do not. limit the term “identity information.”

. ClassCo further argues that claim 2 explicitly defines identity information as always being stored in memory. We disagree. Claim 2 does not define the term “identity information,” -but instead requires that claim l’s processing unit “comprises memory storage for storing identity information.” ’695 patent col. 9 11. 40-41. Although claim 2 requires the processing unit to have memory to store identity information, this limitation in claim 2 does not define identity information as information always stored in memory. To the contrary, dependent claim 2 adds the memory-storage limitation, and importing a memory requirement into the term “identity information” would improperly render claim 2 .functionally meaningless. See Cat Tech LLC v. TubeMaster, Inc., 528 F.3d 871, 885 (Fed. Cir. 2008). We thus decline ClassGo’s invitation to import additional limitations into the term “identity information” and agree with the Board’s construction.

. Conclusion

Because we find that substantial evidence supports the Board’s conclusion that claims 2-5, 7, 9, 10, 14, 17, 18/ 23, 26-30, and 34 of the ’695 patent are unpatentable, we-affirm.

AFFIRMED

      . ClassCo canceled claims 1, 11-13, 15, 16, 19-22, 25, 31-33, 35, and 36 of the ’695 patent in an earlier ex parte reexamination, No. 90/011,679.

      . Given the effective filing date of the claims of the '047 application, the version of 35 U.S.C. § 103 that applies here is that in force preceding the changes made by the America Invents Act. See Léahy-Smith America Invents Act, Pub. L. No. 112-29, § 3(n), 125 Stat. 284, 293 (2011).

      . ClassCo did not argue claim 5 separately from claims 2 and 14. Thus, like the Board, we focus our nexus analysis on claims'2 and 14.


source: Caselaw Access Project

author: PROST, Chief Judge. NEWMAN, Circuit Judge,

license: Public Domain

text:
    COX COMMUNICATIONS, INC., Cox-Com, 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
    2016-1013
    United States Court of Appeals, Federal Circuit.
    Decided: September 23, 2016

      Michael Louis Brody, Winston & Strawn LLP, Chicago, IL, argued for plaintiffs-appellees. Also represented -by Steffen Nathanael Johnson, EimeRio Reig-Plessis, Washington, DC; David Spencer Bloch, San Francisco, CA; Krish-nan 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.
   Opinion concurring in the judgment filed by Circuit Judge NEWMAN.

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.

BACKGROUND

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 “ATM 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 11. 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 11. 47-54, col. 6 11. 54-59, col. 7 11. 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 11. 1-27, col. 191. 33-col. 20 1. 6; ’064 patent col. 711. 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:

1. A method of operating a processing system to control a packet communication system for a user communication, the method comprising:
receiving a signaling message for the user communication from a narrowband communication system into the processing system;
processing the signaling message to select a network code that identifies a network element to provide egress from the packet communication system for the user communication;
generating a control message indicating the network code;
transferring the control message from the processing system to the packet communication system;
receiving the user communication in the packet communication system and using the network code to route the user communication through the packet communication system to the network element; and
transferring the user communication from the network element to provide egress from the packet communication system.

’3, 561 patent col. 22 11. 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:

1. A communication method for a call comprising:
receiving set-up signaling associated with the call into a processing system;
processing the set-up signaling in the processing system to select a DSO connection;
generating a message identifying the DSO connection;
transmitting the message from the processing system;
receiving the message and an asynchronous communication associated with the call into an interworking unit;
in the intefworking unit, converting the asynchronous communication into a user communication; and
transferring the user communication from the interworking unit to the DSO connection in response to the message.

’064 patent col. 23 11. 28-41 (emphases added).

PROCEDURAL HISTORY

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).

Discussion

We -review a district court’s grant of summary judgment that a claim is indefinite de novo, applying the saihe 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, ¶ 2 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 Teva Pharm. USA, Inc. v. Sandoz, Inc., — U.S. -, 135 S.Ct. 831, 840, — L.Ed.2d - (2015). “Any fact critical to a holding on indefiniteness ... must be proven by the challenger by clear and convincing evidence.” Intel Corp. v. VIA Techs., Inc., 319 F.3d 1357, 1366 (Fed. Cir. 2003). If indefiniteness can be determined based solely on intrinsic evidence, our review is de novo. See Teva Pharm. USA, Inc., 135 S.Ct. at 840.

At the outset, we note that the parties have agreed that “processing system” is not a means-plus-function term. J.A. 20, n.9. Accordingly, we confine our review to the same question presented to the district court: whether “processing system” renders the asserted patents indefinite under 35 U.S.C. § 112, ¶ 2.

Section 112 requires that “[t]he specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.” 35 U.S.C. § 112, ¶ 2. This provision strikes á “delicate balance” which recognizes that, although' the definiteness requirement must tolerate “[s]ome modicum of uncertainty” as “the price of ensuring the appropriate incentives for innovation,” Nautilus, Inc, v. Biosig Instruments, Inc.-, — U.S. -, 134 S.Ct. 2120, 2128-29, 189 L.Ed.2d 37 (2014) (quoting Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 731, 122 S.Ct. 1831, 152 L.Ed.2d 944 (2002)) (internal quotation marks omitted), a patent must nevertheless “be precise enough to afford clear notice of what is claimed, thereby apprising the public of what is still open to them.” Id. (quoting Markman v. Westview Instruments, Inc., 517 U.S. 370, 373, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996)) (internal quotation marks omitted). Accordingly, “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.” Id. at 2129.

This ease presents a peculiar scenario: the sole source of indefiniteness that Cox complains of, “processing system,” plays no diseernable role in defining the scope of the claims:" All of the asserted claims are method claims, and the point of novelty resides with the steps of these methods, •not with the machine that performs them. “Processing system” is merely the locus at which the steps are being performed. The plain language of the claims proves this point: if claim 1 of the ’3,561 patent (which the parties agree is exemplary for the control patents) were revised to remove the word “processing system,” the meaning would not discernably change:

’3.561 patent, claim 1. with “processing system”
1. A method of operating a processing system to control a packet communication system for a user communication, the method comprising:
receiving a signaling message for the user communication from a narrowband communication system into the processing system;
processing the signaling message to select a network code that identifies a network element to provide egress from the packet communication system for the user communication;
transferring the control message from the processing system to the packet communication system
’3.561 patent, claim 1. without_“processing system”
1. A method to control a packet communication system for a user communication, the method comprising:
receiving a signaling message for the user communication from a narrowband communication system;
processing the signaling message to select a network code that identifies a network element to provide egress from the packet communication system for the user communication;
transferring the control message to the packet communication system

This modification removes the clarification that the “processing system” is what performs the “processing” and receives and sends certain signals, but even without this clarification, the same steps would have to be performed. (And, from the nature of the invention, they would have to be performed on some kind of computing device.) The same is true of claim 1 of the ’064 patent (which the parties agree is exemplary for the ATM interworking patents):

’064 patent, claim 1, with “processing system”
1. A communication method for a call comprising:
receiving set-up signaling associated with the call into a processing system;
processing the set-up signaling in the processing system to select a DSO connection;
transmitting the message from the processing system;
*064 patent, claim 1. without processing system”
1. A communication method for a call comprising:
receiving set-up signaling associated with the call;
processing the set-up signaling to select a DSO connection;
transmitting the message;

If “processing system” were not omitted but replaced with “computer,” a similar conclusion results. Indeed, at oral argument, both parties agreed that substituting “computer” for “processing system” would not change the scope of the claims. Oral Argument at 10:19-32, 14:57-15:05, available at http://oralarguments.cafc.uscourts. gov/default.aspx?fl=2016~1013.mp3 [hereinafter Oral Argument]; see also Oral Argument at 11:55-12:18, 14:42-14:57 (acknowledging that “processing system” is a general purpose computer).

If “processing system” does not diseern-ably alter the scope of the claims, it is difficult to see how this term would prevent the claims (the remainder of which Cox does not challenge on indefimteness grounds) from serving their notice function under § 112, ¶ 2. 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.” 134 S.Ct. at 2129. To be sure, we have generally acknowledged that an indefiniteness analysis under 35 U.S.C. § 112, ¶ 2 is “inextricably intertwined with claim construction.” Atmel Corp, v. Info. Storage Devices, Inc., 198 F.3d 1374, 1379 (Fed. Cir. 1999). Accordingly, the common practice of training questions of indefiniteness on individual claim terms is a helpful tool. Indeed, if a person of ordinary skill in the art cannot discern the scope of a claim with reasonable certainty, it may be because one or several claim terms cannot be reliably construed. See, e.g., Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1374 (Fed. Cir. 2014) (finding the phrase “unobtrusive manner” rendered claims indefinite because, even after consulting the claims, specification, and prosecution history, a skilled artisan would be left “to consult the unpredictable vagaries of any one person’s opinion”) (citations and internal quotation marks omitted). Nevertheless, indefiniteness under § 112, ¶ 2 must ultimately turn on the question set forth by Nautilus: whether the “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.” Id. at 2129 (emphasis added). Applied here, “processing system” does not prevent the claims from doing just that.

Cox nevertheless contends that “processing system” is indefinite because the asserted' claims only describe it in functional terms. We disagree. Claims are not per se indefinite merely because they contain functional language. See also Microprocessor Enhancement Corp. v. Tex. Instruments Inc., 520 F.3d 1367, 1375 (Fed. Cir. 2008) (citing Halliburton Energy Servs., Inc, v. M-I LLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008)) (“[A]pparatus claims are not necessarily indefinite for using functional language”). Indeed, here, functional language promotes definiteness because it helps bound the scope of the claims by specifying the operations that the “processing system” must undertake. All of the asserted claims are method claims, so it makes sense to define the inventive method as a series of functions.

Further, Cox cannot complain that the specific functional limitations that describe the operation of the “processing system” in the asserted patents fail to provide sufficient clarity under Nautilus. For example, in the control patents, claim 1 of the ’3,561 patent requires that the “method of operating a processing system ... processes] the signaling message to select a network code that identifies a network element to provide egress from the packet communication system for the user communication.” The specification discloses, as an embodiment of a “processing system,” the CCP and provides details about how it functions to “select[ ] the network elements and the connections that comprise the communications path.” ’3,561 patent col. 6 11. 23-25. Notably, the specification provides certain algorithmic details, including that “selections are made through table look-ups and SCP queries,” id. at col. 14 11. 45-48, and provides detail about how these queries are constructed, see, e.g., id. at col. 14 11. 49-51, and the types of information that are used to determine these mappings, see, e.g., id. at col. 19 11. 36-40. These disclosures are sufficiently detailed such that, reading claim 1 in light of the specification, a person of ordinary skill in the art would understand claim l’s requirement that the “method of operating a processing system ... processes] the signaling message to select a network code ...” with reasonable certainty.

As another example, in the ATM inter-working patents, claim 1 of the ’064 patent requires the step of “processing the set-up signaling in the processing system to select a DSO connection.” In the specification, the ’064 patent discloses the COM as an embodiment of a “processing system” and provides details about how it “re-ceivefs] and processes] ... signaling to select connections, and to generate and transmit signaling identifying the selections.” ’064 patent col. 6 11. 57-59. Similar to the specification of the control patents, the specification of the ’064 patent describes that “[t]he selection process can be accomplished through table look-ups,” id., col. 7 11. 20-21, and provides detail about how the look-up process happens, see id. at col. 7 11. 21-30. Accordingly, a person of ordinary skill in the art would understand claim l’s step of “processing the set-up signaling in the processing system to select a DSO connection ...” with reasonable certainty. , ■

In sum, “processing system” 'does not render the claims indefinite because it 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. Although the asserted patents describe the operation of the “processing system” in largely functional terms, the recited steps, read in light of the specification, provide sufficient detail such that a person of ordinary skill in the art would understand them with reasonable certainty.

Conclusion

For the foregoing reasons, we reverse the district court’s conclusion that the term “processing System” renders the asserted claims indefinite under § 112, ¶ 2.

REVERSED

NEWMAN, Circuit Judge,

concurring in the judgment.

I agree with the court’s holding that the claims are not invalid on the ground of indefiniteness. However, the court creates an interesting, but flawed, new mode of analysis, whereby the adjudicator (1) first removes the challenged term from the claim, then (2)'decides-whether the claim has the same meaning without the challenged term, and (3) if the answer is “yes,” rules that the claim is not indefinite as a matter of law. Maj. Op. at 1230-32. This new style of claim construction will confound the already confused determination of patent rights. I write to protest this further inroad on a reasoned and reliable law of patents.

No precedent supports the court’s new protocol of claim construction, whereby definiteness of the claim is deemed proved because “if claim 1 of the ’3,561 patent ... were revised to remove the term “processing system,’, the meaning would not dis-cernably change.” Maj. Op. at 1229. The court criticizes the parties for arguing about the indefiniteness of “processing system” as resulting in a “peculiar scenario,” since, in the majority’s view, the term “processing system,” despite its presence in three clauses of claim 1 and other claims, “plays no discernable role in defining the scope of the .claims.” Id. However, claim 1 is for a “method of operating a processing system” by performing the six specified steps in the claim. This is not a peculiar scenario.

Cox argues that the term “processing system,” by its asserted indefiniteness, “would prevent the claims ... from serving their notice function,” Maj. Op. at 1231, based on the position that the term is not adequately supported by structure. The district court so found. The court today does not discuss this finding, instead simply holding that definiteness is determined by removing the challenged term from the claim in order to discover whether the claim has the same construction without the challenged term. I cannot discern how a claim can have the same meaning and scope with and without a critical term that limits three clauses of the claim. I show claim 1 of the ’3,561 .patent, with boldface added to the usages of “processing system”:

1. A method of operating a processing system to control a packet communication system for a user communication, the method comprising:
receiving a signaling message for the user communication from a narrowband communication system into the processing system;
processing the signaling message to select a network code that identifies a network element to provide egress from the packet communication system for the user communication;
generating a control message indicating the network code;
transferring the. control message from the processing system to the packet communication system;
receiving the user communication in the packet communication system and using the network code to route the user communication through the packet communication system to the network element; and
transferring the user communication from the network element to provide egress from the packet communication system.

’3,561 patent, claim 1 (emphases added).

I agree with the panel majority that'the use of functional terms is not an automatic badge of invalidity, and that the context, specification, and knowledge in the art must be considered. My concern is with the court’s method of analysis. Functional terms in patents are not prohibited, but they must meet the statutory requirements, including:

35 U.S.C. § 112(a) In general.—The specification shall contain a written description of the invention, and of the manner and practice of making and using it, in such full clear, concise, and exact terms as to enable an person skilled in the art to which it pertains ... to make and use the same, and shall set forth the best mode contemplated by the inventor ... of carrying out the invention.
(b) Conclusion.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor ... regards as the invention.

Here the patentee claimed a method of operating a processing system, comprising six steps. The court’s new analytical method, whereby the challenged term is removed from the claim and the court then decides whether the claim is of the same meaning and scope, Maj. Op. at 1230-31, is neither legally correct nor plausible. I urge the court to return to the traditional method of claim analysis.

Under traditional claim analysis, I agree that the claims presented for review are not invalid on the ground of indefiniteness. The evidentiary record supports the conclusion that “processing system” had an understood meaning within the telecommunications industry, and the expert testimony and publications support the meaning as a “system that processes signaling to assist in call control,” Declaration of Stephen B. Wicker, Ph.D, at 32 (J.A. 989), and that it would be so understood by persons having ordinary skill in this field, Supplemental Wicker Declaration at 4 (J.A. 997).

The district court ruled that “processing system” is indefinite because of insufficient disclosure of the structure that performs each claim step. The district court stated that the physical structures were only “functionally described by the claims and in the specifications,” that they did not provide “a person of ordinary skill in the art ... with the bounds of the claimed invention,” and thus did “not pass muster under Nautilus.” Dist. Ct. Op. at 9-10.

The Nautilus question is whether “a patent’s claims, viewed in light of the specification and prosecution. history, inform those skilled in the art about the scope of the invention with reasonable certainty.” Nautilus, Inc. v. Biosig Instruments, Inc., — U.S. -, 134 S.Ct. 2120, 2129, 189 L.Ed.2d 37 (2014). The district court stopped short, for this court has elaborated that even for apparatus claims the “recitation of .,. function” is “highly relevant to ascertaining the boundaries” of a claim. Biosig Instruments, Inc. v. Nautilus, Inc., 783 F.3d 1374, 1383 (Fed. Cir. 2015). We explained that the “claim language, specification, and figures” should “provide sufficient clarity to skilled artisans as to the bounds of the disputed term.” Id. at 1382-83. The district court here focused inappropriately on structural limits, whereas these limitations are all steps in a method, not an apparatus. The operative criterion is whether the claim, read .in light of the specification and prosecution history, informs skilled artisans of the scope of the invention with reasonable certainty. Nautilus, 134 S.Ct. at 2129. Judicial determination of compliance with this requiremeiit is not achieved by deleting the challenged term from the claims.

When method claims include functional limitations, the claims must meet the stát-utory requirements, including specificity and enablement. There is extensive precedent, in a variety of factual situations, guiding the analysis of whether the claim, viewed as a whole, “particularly point[s] out and distinctly claim[s] the subject matter which the invehtor or a joint inventor regards as the invention.” 35 U.S.C. § 112(b). The inquiry “focuses on whether those skilled in the art would understand the scope of the claim when the claim is read in light of the rest of the specification.” Energizer Holdings, Inc. v. Int'l Trade Comm’n, 435 F.3d 1366, 1370 (Fed. Cir. 2006).

Sprint points to the description in the specification, as support for the definiteness of the claimed processing system, The specification states that the processing system “comprises an interface that is external to the Switches,” ’3,561 Patent at 3:53-56, with a signaling translator, a processor, and associated memory for processing information to select network characteristics. ’3,561 Patent at 14:16-20 and FIG. 4. The patents describe Various known call processing systems in the prior art and explain how the claimed system physically connects to various telecommunications systems such as Signal Transfer Points, switches, and Service Control Points. Flow charts in the specification show interfaces and connections, links to other devices and switches and operational control systems, and transfers of signals. It is noteworthy that Cox does not challenge the individual claim steps but concentrates on the overall reference to “processing system.”

The evidentiary record and the law lead to the conclusion that the claims were not proved invalid on the ground of indefiniteness. Although my colleagues today reach the correct result, their analytical path is not in accordance with law and should be rejected.

      . “ATM” stands for “Asynchronous Transfer Mode,” which is a certain type of broadband network that can be used in voice-over-IP systems.

      . The America Invents Act (AIA), Pub. L. No. 112-29, effective September 16, 2012, has newly designated § 112, ¶ 2 as § 112(b) and § 112, ¶ 6 as § 112(f). Because the asserted patents stem from applications that were filed before the effective date of the AIA, we will refer to the pre-AIA versions of these provisions.

      . The concurrence adopts this same point at base, agreeing that Nautilus provides "[t]he operative criterion” for questions under § 112, ¶ 2. Concurring Op. at 1235. Nevertheless, it appears to take great issue with our method of analysis, which it interprets as creating a "new protocol” that hinges on "deleting the challenged term from the claims.” Id. at 1234, 1235. Our opinion today does no such thing. Rather, we compare versions of the claims that contain and then exclude "processing system” simply as a way of illustrating how Nautilus applies to the claims at issue: Nautilus focuses on whether the "claims ... fail to inform,” 134 S.Ct. at 2129, and the comparison reveals that this conclusion depends largely on the remainder of the claim language, not the "processing system" term. It follows then that, because it has little impact on this ultimate question, it would be difficult for "processing system” to be a source of indefiniteness. This conclusion derives only from an application of Nautilus to ■ the claims at issue and invites no change .to the law of § 112, ¶ 2.

      . We note, however, that in the context of 35 U.S.C. § 112, ¶ 6, we require that, if a paten-tee writes his claims in “means-plus-function” form,, he must "disclose the particular structure that is used to perform the recited function." Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1385 (Fed. Cir. 2009). This is intended to avoid "pure functional .claiming,” where a patentee "claim[s] all possible means of achieving a function.” Id. However, by agreeing that "processing sys-tern” is not a means-plus-function term, Cox has already conceded that "processing system” itself recites sufficiently definite structure and there is no problem of "pure functional claiming” here. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc) ("[W]hen a claim term lacles the word ‘means,’ ... § 112, para. 6‘will apply if the challenger demonstrates that the claim term fails to ’recite[] sufficiently definite structure’ or else recites 'function without reciting sufficient structure for performing that function.’ ” (quoting Watts v. XL Sys., Inc., 232 F,3d 877, 880 (Fed. Cir. 2000))). Indeed, the claims specify that the claimed functions are achieved through the use of the . "processing system,” which the parties agree is, as used in tire context of .the patents here, a general purpose computer, Oral Argument at 11:55-12:18, 14:42-14:57.

      . I take note that the court, while agreeing with the parties that the claims before us are not in means-plus-function form, nonetheless misapplies that law in stating that "by agreeing that ‘processing system’ 'is not a means-plus-function term, Cox has already conceded that 'processing system’ itself recites sufficiently definite structure and there is no problem of 'pure functional claiming’ here." Maj. Op. at 1232 n.4. However, agreeing that "processing system” is not in means-plus-function form is not a concession of structural support. Support is subject to analysis on the facts of the particular case, as for every invention.

      . The Majority states that it "does no such thing,” Maj. Op. at 1231 n. 3, although the deletions from the claims are highlighted on two pages of diagrams "omitpng]” the term, id. at 1231, without guidance as to limits, standards, and reasoning.

      . This appeal was taken under Rule 54(b), thus, no other issues are before the court, as to either validity or infringement.