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Does the End Justify the Means

Does the End Justify the Means

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On June 16 2015 the CAFC delivered a precedential opinion in Williamson v Citrix.The panel considering the case was expanded to en banc to consider the role of the word “means” in invoking §112; paragraph 6 (now §112(f) of the AIA).
Although issues of infringement were also considered, this post relates only to the new standards established by the Court for use of §112 paragraph 6. Only the highlighted termin claim 8 raised §112 paragraph 6 issues:
A system for conducting distributed learning among a plurality of computer systems coupled to a network, the system comprising:
a presenter computer system of the plurality of computer systems coupled to the network and comprising:
a content selection control for defining at least one remote streaming data source and for selecting one of the remote streaming data sources for viewing; and
a presenter streaming data viewer for displaying data produced by the selected remote streaming data source;
an audience member computer system of the plurality of computer systems and coupled to the presenter computer system via the network, the audience member computer system comprising:
an audience member streaming data viewer for displaying the data produced by the selected remote streaming data source; and
a distributed learning server remote from the presenter and audience member computer systems of the plurality of computer systems and coupled to the presenter computer system and the audience member computer system via the network and comprising:
a streaming data module for providing the streaming data from the remote streaming data source selected with the content selection control to the presenter and audience member computer systems; and
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 footnote to the decision we are reminded that overruling of prior precedent can only be done by the court en banc, so other members of the court join the panel for part II.C.1 of the decision.
The court begins by stating that precedent has long recognized the importance of the presence or absence of the word “means.” However the judges go on to state that historically “…our cases have emphasized that the essential inquiry is not merely the presence or absence of the word “means” but 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. Greenberg, 91 F.3d at 1583 (“What is important is . . . that the term, as the name for structure, has a reasonably well understood meaning in the art.”).”
We are reminded that it was only in 2004 that the idea that “the presumption flowing from the absence of the term ‘means’ is a strong one that is not readily overcome” (emphasis added)…” Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1358 (Fed. Cir. 2004) was put forth, although that decision cited a 1999 Federal Circuit decision.
In 2012, the court “…raised the bar even further, declaring that “[w]hen the claim drafter has not signaled his intent to invoke § 112, ¶ 6 by using the term ‘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”.
Subsequent decisions in Lighting World, Inventio, Flo Healthcare and Apple established a heightened bar to overcoming the presumption that a limitation expressed in functional language without using the word “means” is not subject to § 112, para. 6.
However that era has come to an end. The court explicitly states:
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. That characterization is unwarranted, is uncertain in meaning and application, and has the inappropriate practical effect of placing a thumb on what should otherwise be a balanced analytical scale. It has shifted the balance struck by Congress in passing § 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. Henceforth, we will apply the presumption as we have done prior toLighting World, without requiring any heightened evidentiary showing and expressly overrule the characterization of that presumption as “strong.” We also overrule the strict requirement of “a showing that the limitation essentially is devoid of anything that can be construed as structure.”
This “precedential” decision is actually much closer to the Supplementary Examination Guidelines for Determining Compliance with 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications from the Federal register of February 9, 2011 that the intervening CAFC decisions mentioned above.
Both the Williamson decision and the supplementary guidelines suggest that “nonce” words such as “mechanism” or “module” are not inherently structural.
Of course once a claim is deemed to be a means plus function claim (as happened in this case) the question immediately arises as to whether sufficient structure is disclosed to avoid an indefiniteness rejection (§112 second paragraph /(b) in the AIA). In this case the answer was no because there was no algorithmic structure for implementing the claimed functions in the written description. More specifically: “the claim does not describe 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 “distributed learning control module” as recited in the claim.”
Review of the specification revealed that it “fails to disclose structure corresponding to the “coordinating” function.” of the “distributed learning control module”.
Expert testimony that one of ordinary skill in the art could easily implement the claimed function was no help:
“…the fact that one of skill in the art could program a computer to perform the recited functions cannot create structure where none otherwise is disclosed.”
Disclosed structures must correspond to the claimed functions:
Structure disclosed in the specification qualifies as “corresponding structure” if the intrinsic evidence clearly links or associates that structure to the function recited in the claim. Id.(citing B. Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997)). Even if the specification discloses corresponding structure, the disclosure must be of “adequate” corresponding structure to achieve the claimed function. Id. at 1311–12 (citing In re Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994) (en banc)). Under 35 U.S.C. § 112, paras. 2 and 6, therefore, if a person of ordinary skill in the art would be unable to recognize the structure in the specification and associate it with the corresponding function in the claim, a means plus-function clause is indefinite. Id. at 1312 (citing AllVoice Computing PLC v. Nuance Commc’ns, Inc., 504 F.3d 1236, 1241 (Fed. Cir. 2007))
One of the most puzzling things in this decision is the reference to “special purpose” computers:
The written description of the ’840 patent makes clear that the distributed learning control module cannot be implemented in a general purpose computer, but instead must be implemented in a special purpose computer—a general purpose computer programmed to perform particular functions pursuant to instructions from program software. A special purpose computer is required because the distributed learning control module has specialized functions as outlined in the written description. See, e.g., ’840 patent col.5 ll.48–64. In cases such as this, involving a claim limitation that is subject to § 112, para. 6 that must be implemented in a special purpose computer, this court has consistently required that the structure disclosed in the specification be more than simply a general purpose computer or microprocessor.
E.g., Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008) (citing WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339 (Fed. Cir. 1999)). We require that the specification disclose an algorithm for performing the claimed function. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1367 (Fed. Cir. 2008). The algorithm may be expressed as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure. Noah, 675 F.3d at 1312 (citing Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008)).
This is puzzling because the abstract idea, expressed as an algorithm, is simply instructions to “implement it” on a general purpose computer. In cases like Alice that type of algorithm/computer combination raised §101 issues. In this case it is proposed as a solution to § 112 issues.
In this case the court made it abundantly clear that figures of user interfaces do not constitute an algorithm corresponding to the claimed functions.
Summary: For those of us working with computer implemented inventions the combination of §101; §112 paragraph 6 and §112 paragraph 2 is beginning to look like the Bermuda triangle. The only advice to offer is include lots of diagrams and text about how your algorithms work. That way if §112 paragraph six becomes an issue, you will hopefully have sufficient structure to avoid an indefiniteness rejection based upon §112 second paragraph. The interplay with §101 is not yet clear.
In a dissenting opinion, Judge Newman indicated:
The court en banc changes the law and practice of 35 U.S.C. § 112 paragraph 6, by eliminating the statutory signal of the word “means.” The purpose of this change, the benefit, is obscure. The result, however, is clear: additional uncertainty of the patent grant, confusion in its interpretation, invitation to litigation, and disincentive to patent-based innovation.
Many readers may agree with Judge Newman.

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