“Strong Presumption” Not So Strong After all

Thomas Brown | June 25, 2015

Williamson v. Citrix

June 16, 2015

Opinion by Linn (joined by nine other Judges), Dissenting Opinion by Newman-Decided.

Summary:

En banc CAFC expressly overrules the “strong” presumption that a limitation lacking the word “means” is not subject to § 112, para. 6 and applies the presumptions prior to Lighting World, which do not require any heightened evidentiary showing. CAFC also overrules the strict requirement of “a showing that the limitation essentially is devoid of anything that can be construed as structure.”
When a claim term does not recite the word “means,” the presumption can be overcome and § 112, para. 6 will apply if one demonstrates that the claim term fails to “recite sufficiently definite structure” or recites “function without reciting sufficient structure for performing that function.” That is, the standard is “whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.”

Details

Williamson appeals a final judgment of the United States District Court for the Central District of California invalidating claims 8-16 as being indefinite. The district court concluded that the limitation of claim 8, “distributed learning control module,” was a means-plus-function term under 35 U.S.C. § 112, para. 6, and found that the specification of the ‘840 patent failed to disclose the necessary algorithms for performing all of the claimed functions. On appeal the CAFC affirmed the invalidity of claims 8-16 for the same reasons found by district court.

The ‘840 patent is directed to a system and method for distributed learning that includes a distributed learning server coupled to presenter and audience computer systems via a network (internet). Independent claim 8 of the ‘840 patent recites:

8. A system for conducting distributed learning among a plurality of computer systems coupled to a network, the system comprising:

a presenter computer system of the plurality of computer systems coupled to the network and comprising:

a content selection control for defining at least one remote streaming data source and for selecting one of the remote streaming data sources for viewing;

a presenter streaming data viewer for displaying data produced by the selected remote streaming data source;

an audience member computer system of the plurality of computer systems and coupled to the presenter computer system via the network, the audience member computer system comprising:

an audience member streaming data viewer for displaying the data produced by the selected remote streaming data source; and

a distributed learning server remote from the presenter and audience member computer systems of the plurality of computer systems and coupled to the presenter computer system and the audience member computer system via the network and comprising:

a streaming data module for providing the streaming data from the remote streaming data source selected with the content selection control to the presenter and audience member computer systems; and
a distributed learning control module for receiving communications transmitted between the presenter and the audience member computer systems and for relaying the communications to an intended receiving computer system and for coordinating the operation of the streaming data module.

Means-plus-function claiming occurs when a claim term invokes 35 U.S.C. § 112, para. 6, which states:

An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding
structure, material, or acts described in the specification and equivalents thereof.

Williamson argues that the term “distributed learning control module” (DLCM) should not governed by 35 U.S.C. § 112, para. 6, since the district court failed to apply the “strong” presumption against means-plus-function claiming that attaches to claim terms that do not recite the word “means.”

Appellees argue that the presumption was rebutted because DLCM does not have a well understood structural meaning in the computer technology field. Appellees note that the “DLCM” limitation is drafted in the same format as a traditional means-plus-function limitation, and merely replaces the term “means” with “nonce” word “module.”

The CAFC looked to the entire passage of the DLCM limitation and determined it to be a format consistent with traditional means-plus-function claim limitations with the term, “means” replaced with the term “module” and three functions performed by the DLCM.

The CAFC found that the word “module” does not recite any structure “because it sets forth the same black box recitation of structure for providing the same specified function as if the term ‘means’ had been used.”

The CAFC also found that the prefix or modifier “distributed learning control” does not “describe a sufficiently definite structure.”

Williamson pointed to its expert’s declaration and testimony that one of ordinary skill in the art would understand the term “DLCM” to connote structure and would know how to program a computer to perform the functions of the DLCM. However, the CAFC found that the declaration failed to describe how the distributed learning control module, by its interaction with the other components in the distributed learning control server, is understood as the name for structure, and that the testimony regarding programing “cannot create structure where none is otherwise disclosed.”

The CAFC concludes that that DLCM limitation does not recite sufficiently definite structure and that the presumption against means-plus-function claiming is rebutted.

Structure disclosed in the specification qualifies as “corresponding structure” if the intrinsic evidence clearly links or associates that structure to the function recited in the claim.

The CAFC found that DLCM cannot be implemented in a general purpose computer, but instead must be implemented in a special purpose computer-which requires the specification to disclose an algorithm (corresponding structure) for performing the claimed function.

CAFC found no algorithm was disclosed in Figs. 4 and 5 of the ‘840 patent for performing the claimed function of coordinating the operation of the streaming data module in claim 8.

Newman:

In her dissent, Newman criticizes the decision for overruling dozens of cases and for creating uncertainty regarding when 112 6th paragraph should be invoked.

Takeaway:

Use processor and memory style apparatus claims instead of using nonce words plus function style apparatus claims.

Full Opinion

U.S. 6,155,840

 

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