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By Tony Dutra
June 16 — The “strong” presumption that a court should not invoke means-plus-function analysis when a claim lacks the word “means” is not so strong any more, after the full Federal Circuit bench on June 16 overturned its precedent on the issue.
In a revision of a Nov. 5 opinion, the court said that its prior standard had “shifted the balance struck by Congress in passing [35 U.S.C. §112, para. 6,] and has resulted in a proliferation of functional claiming untethered to §112, para. 6 and free of the strictures set forth in the statute.”
When a claim term lacks the word ‘means,' 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.”
Two dissenting opinions were filed.
Judge Jimmie V. Reyna questioned why the court didn't go further and clarify that its presumption when “means” is present “applies to functional claiming generally.”
Judge Pauline Newman said that the result of losing the clear signal that the presence or absence of “means” in a claim is “that no one will know whether a patentee intended means-plus-function claiming until this court tells us.”
The en banc opinion ultimately favored online collaboration tools makers Citrix, WebEx, Microsoft, Adobe and IBM, but they must still go back to district court to fight infringement charges related to other claims asserted.
The result is another blow for software patent claims, already subject to new patent eligibility challenges under Section 101 since the Supreme Court's Alice v. CLS Bank decision.
Under functional claiming, the patent specification or prosecution history must provide sufficient structure to support the function, including algorithms for software functions.
With the court's decision here, Scott A. Hogan of Reising Ethington PC, Troy, Mich., told Bloomberg BNA, “More claims will be given 112(f) treatment under the new rule and scrutinized for definiteness.”
The opinion effectively states that claims reciting terms like “module,” “mechanism,” “element” or “device” now are likely to face the same indefiniteness scrutiny under Section 112.
At Home Corp. was granted a patent—System and method for distributed learning—in December 2000 (U.S. Patent No. 6,155,840). The company filed for bankruptcy in 2001. Richard A. Williamson is trustee for the At Home Bondholders Liquidating Trust.
Williamson sued multiple firms in the U.S. District Court for the Central District of California, claiming infringement by the following products: Citrix's GoToMeeting, GoToWebinar and GoToTraining; Cisco's WebEx Training Center, WebEx Meeting and WebEx Event Center; Microsoft's Office Live Meeting and Lync Online; IBM's LotusLive Meetings; and Adobe Connect.
Williamson stipulated to invalidity of claims 8-16 and noninfringement of the other 15 claims of the patent after Judge A. Howard Matz construed certain terms in the defendants' favor. Williamson appealed the claim construction judgments.
In Federal Circuit precedent, use of the word “means” in a claim creates the rebuttable presumption of a means-plus-function limitation.
The June 16 decision did not affect that presumption. It dealt only with whether the absence of the word creates the opposite presumption.
The panel majority adhered to precedent, beginning with Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1358, 72 U.S.P.Q.2d 1344 (Fed. Cir. 2004), that the presumption that means-plus-function claiming does not apply is “a strong one that is not readily overcome.”
However, the court has also previously identified certain “nonce words” as replacements for the word “means.”
It specifically dealt with “module” only in a 1998 affirmance without opinion, but “module” is also listed as one of those nonce words in the Patent and Trademark Office's Manual of Patent Examining Procedure §2181.
Reyna's panel dissent looked at definitions of “module” and saw only that it be “either hardware, software, or both.”
“Without more, the concept of generic software or hardware only reflects function,” he said. “It refers only to a ‘general category of whatever may perform specified functions,' ” a quote from Robert Bosch, LLC v. Snap-On Inc., 769 F.3d 1094, 112 U.S.P.Q.2d 1617 (Fed. Cir. 2014)(199 PTD, 10/15/14).
The defendants petitioned for en banc rehearing on Dec. 5. The court issued an order June 16 granting the petition “for the limited purpose of overruling certain prior precedent regarding the application of 35 U.S.C. §112, para. 6.”
The claim term at issue—in claims 8-16—in the en banc rehearing is “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.”
The other claims at issue on appeal did not turn on that term. Accordingly, the posture of the case as to those claims is still a reversal of a claim construction judgment, with the noninfringement judgment vacated.
Judge Richard Linn wrote the panel opinion and—shifting his position now, along with colleague Judge Kimberly A. Moore, and in light of the Lighting World opinion he joined in 2004—wrote Section II.C.1 of the new opinion—the section that the en banc court joined.
The court acknowledged that it has confirmed the “strong presumption” against means-plus-function analysis when “means” is lacking as recently as Apple Inc. v. Motorola, Inc., 757 F.3d 1286, 1297, 110 U.S.P.Q.2d 1695 (Fed. Cir. 2014).
The court said, “Our consideration of this case has led us to conclude that such a heightened 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.”
“We also overrule the strict requirement of ‘a showing that the limitation essentially is devoid of anything that can be construed as structure,' ” the court said.
The en banc court's vote was confined to this section.
Linn's subsequent analysis of claims 8-16 of the '840 patent was thus part of the panel decision, with Reyna's panel opinion as to that analysis now described as a concurrence.
Under the new standard, the “distributed learning control module” in those claims, the court said, “is drafted in the same format as a traditional means-plus-function limitation, and merely replaces the term ‘means' with ‘nonce' word ‘module,' thereby connoting a generic ‘black box' for performing the recited computer-implemented functions.”
The court found nothing in either the specification or the prosecution history that would “provide any structural significance” to the term based on these particular modifiers of the word “module.”
The court hinted that its conclusion may have been different had the claim described “how the ‘distributed learning control module' interacts with other components in the distributed learning control server in a way that might inform the structural character of the limitation-in-question or otherwise impart structure” to the module.
Thus, the four-word term was in means-plus-function format, with a requirement to find corresponding structure in the specification for the three functions listed in the rest of that limitation.
The court agreed with the district court that the third function—“coordinating the operation of the streaming data module”—lacked such structure.
In this case, the court used a distinction between a “general purpose computer” and a “special purpose computer” usually reserved for patent eligibility analysis—the former is unlikely to save a software patent claim under Section 101.
The court said that the distributed learning control module is described in the specification as implemented in a special purpose computer, but that requires disclosure of an algorithm corresponding to the function, not evident in the '840 specification.
“Because the ’840 patent fails to disclose any structure corresponding to the ‘coordinating' function of the ‘distributed learning control module,' we affirm the judgment that claims 8–16 are invalid for indefiniteness under 35 U.S.C. §112, para. 2,” the court said in conclusion.
Reyna said in a footnote that the court's presumption of patent validity has clear implications for the burden a challenger must overcome, but “the majority opinion does not provide an associated standard of proof for the §112 para. 6 presumptions. Indeed, I remain unconvinced that this court has applied a different standard of proof dependent on how the presumption is labeled or characterized.”
He read the opinion to set a different presumption if the patentee used the word “means” compared to when the patentee uses a nonce word. And he faulted the court for not assuring that the same presumption would apply to a “means” as would apply to a “step” in a process patent—Section 112, para. 6 (now 112(f)), uses both terms.
“In sum, my view is that perhaps we need to revisit our judicially-created § 112, para. 6 presumptions,” he said in closing.
“Paragraph 6 has morphed from a clear legal instruction into a litigator’s delight,” Newman said in her dissent, repeatedly criticizing the new standard for eliminating the notice function served by the presence or absence of “means.”
She also faulted the en banc court for making this decision “without notice to and participation of the interested public.”
But ultimately her primary objection was that the court was using paragraph 6 of Section 112 to do what other paragraphs—addressing written description, enablement and definiteness—were intended to do.
“The court states its concern with overly broad interpretation of software claims,” she said. “If there have been abuses, as the majority states, the remedy is not to eliminate the statute [in paragraph 6], but to apply the statute [in paragraphs 1 and 2].”
“This case elevates the importance of function-performing structure in the specification as a safeguard against invalidity any time functional claim language is used—with or without ‘means—due to the uncertainty inherent in the ‘sufficiently definite structure' threshold applied to the claim language,” Hogan said in an e-mail.
He offered two pieces of advice for patent prosecutors.
“Practitioners might consider erring on the side of caution: Assume that functional claim language is presumed to trigger 112(f), and write the specification accordingly to disclose multiple structures capable of performing the function,” he said. “The new standard does not include this presumption, but the court’s analysis seems to.”
Also, Hogan said, “Claim diversity remains an important tool, whether in the form of dependent claims that impart additional structure to functional limitations of the base claim, or in the form of multiple independent claims that cover closely related subject matter in different forms. Note that Williamson’s patent still includes valid method and apparatus claims on remand to the district court.”
Brett J. Williamson of O'Melveny & Myers LLP, Newport Beach, Calif., represented Richard Williamson. Kurt L. Glitzenstein of Fish & Richardson P.C., Boston, represented the defendants at oral argument and Citrix specifically. Baker Botts LLP, Dallas, represented WebEx. Goodwin Procter LLP, New York, represented IBM.
To contact the reporter on this story: Tony Dutra in Washington at email@example.com
To contact the editor responsible for this story: Anandashankar Mazumdar at firstname.lastname@example.org
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