United States: En Banc Federal Circuit Abandons "Strong" Presumption That A Limitation Is Not Subject To 35 U.S.C. § 112, Paragraph 6

Last Updated: June 22 2015
Article by Richard S.J. Hung and Ryan Gatzemeyer

On June 16, 2015, the Federal Circuit revisited its prior precedent regarding when a claim limitation is subject to 35 U.S.C. § 112, paragraph 6. In Williamson v. Citrix Online, LLC, No. 13-1130 ("Citrix"),1 the en banc court held that the absence of the word "means" gives rise only to a rebuttable presumption—not a "strong" presumption—that Section 112, paragraph 6 does not apply to the limitation.

BACKGROUND OF SECTION 112, PARAGRAPH 6

Section 112, paragraph 62 allows a patentee to recite a claim limitation as a "means or step for performing a specified function," but "without the recital of structure, material, or acts in support thereof." Claim limitations drafted in this format, known as "means-plus-function" limitations, are "construed to cover the corresponding structure, materials, or acts described in the specification and equivalents thereof."3 If the specification fails to disclose sufficient structure for performing the corresponding function of a means-plus-function limitation, the claim is invalid as indefinite under 35 U.S.C. § 112, paragraph 2.4

Under prior Federal Circuit precedent, the absence of the term "means" gave rise to a "strong" presumption that Section 112, paragraph 6 does not apply.5 Overcoming this presumption required a "showing that the limitation essentially [was] devoid of anything that [could] be construed as structure."6

THE ORIGINAL PANEL DECISION

Citrix involved U.S. Patent No. 6,155,840, which concerns a method and system for conducting distributed learning over a computer network. Asserted claim 8 of the '840 patent recites the following "distributed learning control module" limitation:

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.

In a November 5, 2014 decision, a three-judge Federal Circuit panel held that this limitation was not subject to Section 112, paragraph 6.7 Relying on its prior precedent and reversing the district court, the panel reasoned that appellees had failed to rebut the "strong" presumption that the "module" limitation was not a means-plus-function limitation, due to its absence of the word "means."8

THE EN BANC CITRIX DECISION

On June 16, 2015, the Federal Circuit withdrew its prior opinion and issued a new decision in the case. In the en banc portion of its new opinion, the appellate court "abandon[ed] [its precedent] characterizing as 'strong' the presumption that a limitation lacking the word 'means' is not subject to § 112, para. 6."9 The court explained that the strong presumption is "unwarranted, is uncertain in meaning and application," and "has resulted in a proliferation of functional claiming untethered to § 112, para. 6 and free of the strictures set forth in the statute."10

The en banc court "expressly overruled" both its prior characterization of the presumption as "strong" and "the strict requirement of 'a showing that the limitation essentially is devoid of anything that can be construed as structure.'"11

Returning to much older precedent, the Federal Circuit held that 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."12 The court explained that, if the word "means" is absent from the claim limitation, "the presumption can be overcome and § 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.'"13 The court did not disturb the converse presumption that inclusion of the word "means" creates a presumption that Section 112, paragraph 6 applies.14

Applying this new standard, the panel held that the "distributed learning control module" limitation failed to recite sufficiently definite structure, such that the presumption against means-plus-function language claiming was rebutted.15 In arriving at this conclusion, the panel described "module" as a "well-known nonce word that can operate as a substitute for 'means' in the context of § 112, para. 6."16 The panel further found nothing in the specification or prosecution history suggesting that "distributed learning control module" identified a sufficiently definite structure, and it also determined that the patentee's expert testimony was unpersuasive.17

Because the "module" limitation was subject to Section 112, paragraph 6, but the specification failed to disclosure structure corresponding to the recited function, the panel held that claim 8 was invalid as indefinite18 and affirmed the district court's related grant of summary judgment. Concluding that the district court had incorrectly construed the "graphical display" limitations of other claims, however, the panel vacated the district court's judgment of non-infringement of other claims and remanded the case for further proceedings.

CONCURRENCE AND DISSENT

Judge Reyna concurred-in-part and dissented-in-part. He agreed that the "distributed learning control module" limitation was a means-plus-function limitation and indefinite, but disagreed that the majority had correctly construed the "graphical display" limitations of the other claims.19 Judge Reyna also suggested that the court "revisit [its] judicially-created § 112, para. 6 presumptions."20

Judge Newman dissented, viewing the signal "means for" as "clear" and "clearly understood."21 In her view, "it is the applicant's choice during prosecution whether or not to invoke paragraph 6, and the court's job is to hold the patentee to his or her choice."22 Judge Newman predicted that the majority's decision would result in "additional uncertainty of the patent grant, confusion in its interpretation, invitation to litigation, and disincentive to patent-based innovation."23 She also remarked that, under the majority's opinion, "no one will know whether a patentee intended means-plus-function claiming until this court tells us."24

PRACTICAL IMPLICATIONS

By abandoning the "heightened burden" arising under the former "strong presumption" standard, the Federal Circuit has made it easier for defendants to demonstrate that limitations with "nonce" words like "module" should be construed under Section 112, paragraph 6. And because means-plus-functions are construed to cover the corresponding structure disclosed in the specification for performing the recited function and equivalents, the court's opinion makes it easier for defendants to argue non-infringement or invalidity. Specifically, if a limitation is deemed a means-plus-function limitation, the defendant can argue that its accused product differs from the corresponding structure disclosed in the specification. Alternatively, if insufficient structure is disclosed, the defendant can argue that the claim is indefinite.

For patent applicants, by contrast, Citrix will require careful thinking in the coming months as to how to best craft claims, draft specifications, and prosecute applications to avoid unintended means-plus-function treatment. For example, applicants will need to consider whether a limitation may be characterized as "nonce" terms subject to Section 112, paragraph 6.

Footnotes

Williamson v. Citrix Online, LLC, No. 13-1130, Slip Op. at 16 (Fed. Cir. June 16, 2015).

2  With the passage of the America Invents Act, paragraph 6 has been relabeled paragraph (f).

3  Section 112, para. 6.

See Aristocrat Techs. Austl. Pty Ltd. v. Int'l Game Tech., 521 F.3d 1328, 1338 (Fed. Cir. 2008).

See, e.g., Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1358 (Fed. Cir. 2004); Inventio AG v. ThyssenKrupp Elevator Americas Corp., 649 F.3d 1350, 1358 (Fed. Cir. 2011); Apple Inc. v. Motorola, Inc., 757 F.3d 1286, 1297 (Fed. Cir. 2014).

Flo Healthcare Solutions, LLC v. Kappos, 697 F.3d 1367, 1374 (Fed. Cir. 2012).

7  See Williamson v. Citrix Online, LLC, 770 F.3d 1371 (Fed. Cir. 2014).

8  Id. at 1380.

9  Citrix, No. 13-1130, Slip Op. at 15.

10  Id.

11 Id. at 15-16 (quoting Flo Healthcare Solutions, 697 F.3d at 1374).

12  Id. at 16 (citing Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996)).

13  Id. (quoting Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000)).

14  See id.

15  See id. at 20.

16  Id. at 17.

17  Id. at 18-19.

18  Id. at 25.

19  See Citrix, concurrence at 2, 5.

20  Id. at 8.

21  Citrix, dissent at 4.

22  Id.

23  Id. at 2.

24  Id.

*Co-author Ryan Gatzemeyer is a summer associate in our San Francisco office.

Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Morrison & Foerster LLP. All rights reserved

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Richard S.J. Hung
Similar Articles
Relevancy Powered by MondaqAI
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions