In a recent case, Williamson v. Citrix Online, LLC et al., the U.S. Court of Appeals for the Federal Circuit, sitting en banc, reviewed the issue of whether claims invoke the means plus function language of 35 U.S.C. § 112, ¶ 6 (§ 112(6)) (now § 112(f)). The court overturned a previous decision and ruled that a claim will be deemed a Section 112(6) means-plus-function term based on whether the words of the claim recite a specific function requiring corresponding structure, regardless of the absence of the term “means.”
The case revolved around a claim limitation for “a distributed learning control module” for receiving and transmitting communications. Initially, a panel had concluded that section 112(6) did not apply due to the absence of the term “means.” However, the en banc court, in a plenary session, shifted the burden of proof and held that the essential inquiry is whether persons of ordinary skill in the art understand that the words of the claim have a sufficiently definite meaning as the name of the structure. If a claim term does not mention a defined structure or recites a function without an algorithm, the presumption against means plus function requirements is rebutted.
Applying the revised framework, the court found that section 112(6) applied in this case, rendering the claim period indefinite under section 112(2) due to the lack of disclosed structure corresponding to the function. The court reversed the previous decision, ruling that the term “distributed learning control module” should be treated as a means-plus-function limitation, as it was determined that the term “module” was a generic term functioning as a substitute for “means.”
A dissenting opinion from Judge Newman raised concerns about departing from existing precedent, warning that it would introduce additional uncertainty for patent applicants, complicate examination at the Patent and Trademark Office stage, and discourage innovation. Judge Newman argued that the en banc decision reduces stability during claim construction and referenced legislative history and examination guidelines to support her position.
In conclusion, the en banc panel’s adoption of a broader approach to interpreting means plus function terms is expected to have implications for patent claims involving broad and functional recitations, particularly in software-related claims. Claim drafters are advised to pay close attention to the structure and algorithms disclosed in the specification to avoid issues of indefiniteness in their patents.
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https://natlawreview.com/article/what-was-old-new-again-means-function-claim-elements-williamson-v-citrix-online?amp