Federal Circuit, November 5, 2015, 2013-1130

In Williamson v. Citrix Online, LLC, 770 F.3d 1371 (Fed. Cir. 2014), the Federal Circuit held that a claim limitation in a computer-implemented invention did not invoke means plus function (MPF) interpretation under 35 U.S.C. § 112(f), reversing the District Court’s findings.

With many Examiners at the USPTO invoking 112(f) in patent applications relating to computer-implemented inventions when claims use terms such as “unit” or “module”, Williamson may be a good tool to challenge the Examiners’ MPF interpretation.

In the case, Williamson’s U.S. Patent No. 6,155,840 relates to a virtual classroom that connects presenters with remote audience.  The limitation at issue is:

"a distributed learning control module for receiving communications transmitted between the presenter and the audience member computer systems and for relaying communications …."

The District Court held that the "distributed learning control module" was an MPF limitation because "module" is a generic "nonce" term.  Subsequently, the claim was found invalid as indefinite because no algorithm (i.e. corresponding structure) for performing the function was found in the patent disclosure.

In a 2-1 decision (with Judges Moore and Linn in the majority and Judge Reyna dissenting), the Federal Circuit reversed the District Court and found that the subject claim limitation should not be interpreted as an MPF limitation under 112(f).

The majority provided three reasons in determining that the strong presumption that 112(f) is not invoked when the term "means" is not used was not overcome – the majority found that the District Court erred:
(1)    in failing to appreciate that the word “module” has a number of dictionary meanings with structural connotations

a. Dictionary meaning of "module" - has understood structural-connoting meanings connoting either hardware or software

(2)    in placing undue emphasis on the word “module” separate and apart from the claimed expression “distributed learning control module”

a. Adjectival modifier "distributed learning control"  serves to further narrow the scope of the expression as a whole

(3)    in failing to give proper weight to the surrounding context of the rest of the claim language and the supporting text of the specification in reaching the conclusion that the drafter employed means-plus-function claiming

a. The specification further explains that the distributed learning control module operates as a functional unit of the distributed learning server and coordinates the operation of the streaming data module through input from the presenter computer system

As a result, the majority held that "distributed learning control module" does not invoke 112(f)  and thus vacated the stipulated judgment of non-infringement and invalidity and remanded case to the District Court.

In dissent, Judge Reyna argued that

(1)    Claim has traditional MPF format with "module" used as a substitute for "means"
(2)    Definitions only define "module" generally as hardware, software or both
(3)    USPTO guidelines refer to "module" as example of structural generic placeholder that may invoke 112(f)

In view of the holding in Williamson, Applicants prosecuting patent applications at the USPTO should keep in mind that there is a strong presumption that MPF interpretation does not apply when “means” is not used.  Adjectival modifiers and/or structural connections may be useful to keep limitation from being considered as MPF limitation.

Also, if a claim recites "unit" and the Examiner invokes 112(f), which was not intended by the Applicant, this case may be cited and it may be argued to the Examiner that unit has structural-connoting dictionary meaning - e.g., "a piece or complex of apparatus serving to perform one particular function" ("Unit." Merriam-Webster.com. Merriam-Webster, n.d. Web. 5 May 2015. http://www.merriam-webster.com/dictionary/unit).