Williamson v. Citrixx Online, LLC
792 F.3d 1339 (2015)
Premium Feature
Subscribe to Lexplug to listen to the Case Podcast.
Rule of Law:
A patent claim limitation that does not use the word "means" is still subject to 35 U.S.C. § 112, ¶ 6 if it fails to recite sufficiently definite structure. For computer-implemented functions, the failure to disclose a corresponding algorithm in the specification for such a limitation renders the claim invalid for indefiniteness.
Facts:
- Richard A. Williamson, as a trustee, owns U.S. Patent No. 6,155,840 (the '840 patent).
- The '840 patent describes a 'distributed learning' system that creates a 'virtual classroom' to connect a presenter with geographically remote audience members over a computer network.
- The system consists of a presenter computer, audience computers, and a central 'distributed learning server'.
- Claim 8 of the patent recites a 'distributed learning control module' as part of the server.
- This 'module' is described functionally, in terms of what it does: receiving and relaying communications and coordinating the operation of a streaming data module.
- The patent specification does not disclose a specific algorithm or detailed set of steps for how the 'distributed learning control module' is to perform its claimed functions.
Procedural Posture:
- Williamson filed suit against Appellees in the U.S. District Court for the Central District of California, alleging infringement of all 24 claims of the '840 patent.
- The district court issued a claim construction order.
- In that order, the court construed the term 'distributed learning control module' (claim 8) as a means-plus-function limitation under 35 U.S.C. § 112, ¶ 6.
- The district court found that the patent's specification failed to disclose the necessary algorithm for the module to perform its claimed functions.
- Consequently, the district court held claim 8 and its dependent claims (9-16) invalid for indefiniteness under § 112, ¶ 2.
- Based on the district court's claim constructions for other terms, Williamson conceded non-infringement of the remaining claims (1-7 and 17-24).
- The parties stipulated to a final judgment in favor of Appellees.
- Williamson, as Appellant, appealed the district court's claim construction rulings to the U.S. Court of Appeals for the Federal Circuit.
Premium Content
Subscribe to Lexplug to view the complete brief
You're viewing a preview with Rule of Law, Facts, and Procedural Posture
Issue:
Does a patent claim limitation that uses the nonce word 'module' instead of 'means' to describe a component's function, without reciting a corresponding algorithm in the specification, render the claim invalid for indefiniteness under 35 U.S.C. § 112?
Opinions:
Majority - Linn, J.
Yes. A patent claim that uses a nonce word like 'module' for a functional limitation without a corresponding algorithm in the specification is invalid for indefiniteness. First, the court, sitting en banc for this portion, expressly overrules precedent that characterized the presumption against means-plus-function claiming (when 'means' is absent) as 'strong.' The standard is simply whether the challenger shows the term fails to recite sufficiently definite structure. Here, the term 'module' is a generic nonce word, a substitute for 'means' that connotes no specific structure. The prefix 'distributed learning control' also fails to impart structure. Therefore, the limitation is governed by § 112, ¶ 6. Second, for computer-implemented means-plus-function claims, the specification must disclose an algorithm for performing the claimed functions. The '840 patent's specification only describes the module's functions and provides user-interface mockups, not an algorithm. Because the patent fails to disclose the corresponding structure (an algorithm), claims 8-16 are invalid for indefiniteness under § 112, ¶ 2. The court separately vacated the district court's construction of 'graphical display' as being too narrow.
Dissenting - Newman, J.
No. The court's en banc holding, which eliminates the 'strong presumption' against treating terms without 'means' as means-plus-function limitations, improperly departs from the clear statutory signal provided by Congress. The word 'means' is the explicit trigger for § 112, ¶ 6, providing clarity and predictability for patent applicants, examiners, and courts. By allowing judges to retroactively decide that generic words like 'module' invoke the statute, the court creates ambiguity, invites litigation, and undermines the stability of the patent grant. This change is an unwarranted judicial rewriting of the statute, and the claim at issue should not be construed under § 112, ¶ 6.
Concurring-in-part-and-dissenting-in-part - Reyna, J.
Yes. The 'distributed learning control module' limitation is properly governed by § 112, ¶ 6 and is indefinite, so I concur with that part of the judgment. The term lacks sufficient structure and the specification fails to disclose a corresponding algorithm. However, I dissent from the majority's construction of the 'graphical display' terms, which I believe ignores evidence requiring a 'visually depicted virtual classroom.' Additionally, while I agree with overruling the 'strong' presumption, I question the entire judicially-created framework of presumptions surrounding § 112, ¶ 6 and suggest the underlying principles of functional claiming merit more fundamental reconsideration.
Analysis:
This en banc decision marks a significant shift in the law of means-plus-function claiming under 35 U.S.C. § 112, ¶ 6, particularly for software and computer-implemented patents. By lowering the bar to overcome the presumption that a claim lacking the word 'means' is not a means-plus-function claim, the court made it easier to challenge such claims for indefiniteness. Patent drafters can no longer reliably avoid § 112, ¶ 6 by simply substituting generic 'nonce' words like 'module,' 'unit,' or 'device' for 'means.' This ruling forces patentees to either use terms that connote a definite structure recognized by those skilled in the art or disclose a supporting algorithm in the specification, thereby limiting the scope of purely functional claiming in the software field.
