An ambiguous but inconsequential claim term does not render the claim as a whole indefinite under § 112, ¶ 2. Here, for example, the claimed use of a “processing system” as part of a method where the point of novelty lies elsewhere was found to be incapable of preventing the claims from informing those skilled in the art about the scope of the invention with reasonable certainty. “[T]he dispositive question in an indefiniteness inquiry is whether the claims, not particular claim terms, … fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.“ This would be a good case to consult and cite in response to an indefiniteness rejection focusing on relatively trivial terminology.
Background / Facts: The patents being asserted here are directed to developments in voice-over-IP technology. The claims recite the use of a “processing system” as part of a method in which the point of novelty lies in receiving a signal from a traditional telephone network and processing information related to that voice call to select the path that the voice call should take through the data network.
Issue(s): Whether the claim term “processing system” renders the asserted patents indefinite under 35 U.S.C. 112, ¶ 2.
Holding(s): No. “This case presents a peculiar scenario: the sole source of indefiniteness that [the accused infringer] complains of, ‘processing system,’ plays no discernable role in defining the scope of the claims. … If ‘processing system’ does not discernably alter the scope of the claims, it is difficult to see how this term would prevent the claims (the remainder of which [the accused infringer] does not challenge on indefiniteness 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.“