United States: Federal Circuit Reiterates Strong Presumption Against Means-Plus-Function Claiming For Claim Limitations That Fail To Use The Word "Means"

In Williamson v. Citrix Online, LLC, No. 13-1130 (Fed. Cir. Nov. 5, 2014), the Federal Circuit vacated a stipulated judgment of noninfringement and invalidity, finding that the district court erroneously construed "graphical display" limitations to require a pictorial map and the term "distributed learning control module" as a means-plus-function expression.

Richard A. Williamson, as trustee for the At Home Corporation Bondholders' Liquidating Trust, owns U.S. Patent No. 6,155,840 ("the '840 patent"). The '840 patent describes methods and systems for distributed learning that create a virtual classroom to connect presenters with geographically remote audiences. Williamson accused Citrix Online, LLC and others (collectively "Citrix") of infringing the '840 patent based on various systems and methods of online collaboration. The district court construed "graphical display" limitations in claims 1 and 17 of the '840 patent as requiring a pictorial map and the "distributed learning control module" in claim 8 as a means-plus-function term. Williamson conceded that the district court's construction rendered claims 1-7 and 17-24 not infringed and claims 8-16 invalid as indefinite. The parties stipulated to final judgment. Williamson appealed.

"This court has repeatedly 'cautioned against limiting the claimed invention to preferred embodiments or specific examples in the specification.'" Slip op. at 10 (quoting Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1327-28 (Fed. Cir. 2002)).

"[W]e have seldom held that a limitation not using the term 'means' must be considered to be in means-plus-function form, and the circumstances must be [unusual] to overcome the presumption." Id. at 14 (alterations in original) (quoting Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1362 (Fed. Cir. 2004)) (internal quotation marks omitted).

On appeal, the Federal Circuit held that the district court erred in both claim constructions. Regarding the construction of the "graphical display" limitations, the Court explained that it "has repeatedly 'cautioned against limiting the claimed invention to preferred embodiments or specific examples in the specification.'" Slip op. at 10 (quoting Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1327-28 (Fed. Cir. 2002)). While the '840 patent specification discloses examples and embodiments depicting the visual classroom as a "map" or "seating chart," the Court explained that the specification does not limit the graphical display to those examples and embodiments. Contrarily, the specification describes these examples and embodiments in terms of preference, using words such as "preferably" and "exemplary." Thus, the Court held that the district court should not have imported the pictorial map from the specification into the claims.

Regarding the construction of "distributed learning control module," the Court noted that a claim term's failure to use the word "means" creates a strong rebuttable presumption that 35 U.S.C. § 112, ¶ 6, does not apply and that it has seldom found this presumption overcome. To rebut the presumption, "it must be demonstrated that 'skilled artisans, after reading the patent, would conclude that [the] claim limitation is so devoid of structure that the drafter constructively engaged in means-plus-function claiming.'" Id. at 13 (alteration in original) (quoting Inventio AG v. ThyssenKrupp Elevator Ams. Corp., 649 F.3d 1350, 1357 (Fed. Cir. 2011)). For evidence of the understanding of skilled artisans, a court can look to technical dictionaries. A court must also consider whether the claimed expression as a whole conveys sufficient structural meaning.

According to the Court, in equating the word "module" to "means," the district court failed to appreciate that "module" has several dictionary meanings with structural connotations. Moreover, the Court held that the district court placed undue emphasis on "module" separate and apart from the surrounding expression "distributed learning control module" and failed to give proper weight to the rest of the claim language and the text of the specification. Accordingly, the Federal Circuit vacated the district court's entry of final judgment against Williamson and remanded the case to the district court.

Judge Reyna dissented. Regarding the "graphical display" limitations, Judge Reyna agreed that those limitations do not require a pictorial map, but would have held that the majority's construction ignored the critical limitation of a visually depicted virtual classroom. Judge Reyna noted that the applicant distinguished the invention from the prior art during prosecution on the basis that the '840 patent requires display of a visual virtual classroom. Moreover, in Judge Reyna's view, the applicant used the classroom metaphor extensively throughout the specification in characterizing the operation and touting the benefits of the invention.

Judge Reyna also disagreed with the majority regarding whether the term "distributed learning control module" is a means-plus-function term. Judge Reyna explained that "module" is a nonce word that operates in the limitation as a substitute for "means." Further, Judge Reyna would have held that the specification fails to disclose sufficient structure that corresponds to the claimed function.

Judges: Moore, Linn (author), Reyna (dissenting)

[Appealed from C.D. Cal., Judge Matz]

This article previously appeared in Last Month at the Federal Circuit, December 2014

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