Richard A. Williamson v. Citrix Online, LLC et al. (en banc re: means-plus-function)

Rehearing en banc re: means-plus-function (original Nov. 5, 2014 decision at 770 F.3d 1371 (FC 2014) withdrawn)

Docket Nos. 2013-1130

June 16, 2015

Brief Summary:

Summary: The FC heard the § 112, para. 6 means-plus-function issue of this appeal en banc. Williamson (trustee for At Home Corporation Bondholders’ Liquidating Trust) appealed stipulated final judgment of no infringement of US 6,155,840 relating to virtual classrooms by Citrix. In the original FC opinion, the panel agreed with Williamson that the requirement for a “pictorial map” in the “graphical display representative of a classroom” improperly limited the claim terms of US 6,155,840 to a preferred embodiment; this conclusion was maintained. The DC also held that the “distributed learning control module” was a mean-plus-function term (in claim 8) and that the “specification failed to disclose the necessary algorithms for performing all of the claimed functions.” The FC panel agreed with Williamson that the DC “failed to give appropriate weight to the ‘strong’ presumption against means-plus-function claiming that attaches to claim terms that do not recite the word ‘means’” (Personalized Media, FC 1998; DePuy Spine, FC 2006; Lighting World, FC 2004 (“This presumption is ‘a strong one that is not readily overcome.”)) This opinion explained that the presence of the word “means…does not automatically make that element a means-plus-function’ element” and the lack of the word “‘means’ does not automatically prevent that element from being” so construed (Cole, FC 1996; Greenberg, FC 1996), although Lighting World, FC 2004 held “the presumption flowing from the absence of the term ‘means’ is a strong one that is not readily overcome” (and Flo Healthcare, FC 2012, “raised the bar even further”, if claim does not include “means”, “we are unwilling to apply that provision without a showing that the limitation essentially is devoid of anything that can be construed as structure”). This en banc opinion explains that the appropriate standard is now “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” (the previous “heightended burden is unjustified and that we should abandon characterizing as ‘strong’ the presumption that a limitation lacking the word ‘means’ is not subject to § 112, para. 6…Henceforth, we will apply the presumption as we have done prior to Lighting World….”) This opinion found the “distributed learning control module” limitation, which does not include the word “means”, to be “in a format consistent with traditional means-plus-function claim limitations” (replaces “means” with “module” and recites three functions); it was therefore found to be subject to § 112, para. 6. The FC then concluded that the specification did not “disclose[] sufficient structure that corresponds to the claimed function” (i.e., a “special purpose computer” and algorithm are required) (“intrinsic evidence [must] clearly link[] or associate[] that structure to the function”, “the testimony of one of ordinary skill in the art cannot supplant the total absence of structure from the specification…expert testimony [cannot] create structure where none otherwise exists” (Noah, FC 2012)). Thus, it was concluded the DC erred in limiting the “graphical display” limitation but did not err in construing the “module” limitation as means-plus-function. Judge Reyna dissented from the orginal opinion but concurred here with respect to the means-plus-function issue. Judge Newman dissented, arguing the decision “changes the law and practice of 35 U.S.C. § 112 paragraph 6, by eliminating the statutory signal of the word ‘means’” (“The result…is clear: additional uncertainty of the patent grant, confusion in its interpretation, invitation to litigation, and disincentive to patent-based innovation…it is the applicant’s choice during prosecution whether or not to invoke paragraph, and the court’s job is to hold the patentee to his or her choice.”)

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