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‘Means’ Or Not ‘Means’, That Is The Question

■ John D. Leighton

The presence or absence of the word “means” in a claim has long been accompanied by one of two comp-lementary presumptions. Using the word “means” in a claim element creates a rebuttable presumption that §112, para. 6 applies and means-plus-function claiming occurs. Conversely, failure to use the word ‘means’ also creates a rebuttable presumption — this time that §112, para. 6 does not apply. Since 2004, however, these presumptions have been asymmetric ones. The Federal Circuit first established this asymmetry with the Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1358 (Fed. Cir. 2004) decision, which established that “the presumption flowing from the absence of the term ‘means’ is a strong one that is not readily overcome.” (Emphasis added).


The Federal Circuit has recently returned symmetry to these complementary presumptions. The Federal Circuit stated in Williamson v. Citrix Online, LLC., No. 13-1130, 15 (Fed. Cir. 2015) that “Henceforth, we will apply the presumption as we have done prior to Lighting World, without requiring any heightened evidentiary showing and expressly overrule the characterization of that presumption as ‘strong.’”


Background and Procedural History:

In 2011, Williamson filed suit in the United States District Court of California against Citrix Online, et al., for infringement of Williamson’s U.S. Patent No. 6,155,840. “The ‘840 patent describes methods and systems for ‘distributed learning’ that utilize industry standard computer hardware and software linked by a network to provide a classroom or auditorium-like metaphor – i.e., a ‘virtual classroom’ environment.” On September 4, 2012, the district court issued a claim construction order, concluding, inter alia, that the “distributed learning control module” limitation of claim 8 was a means-plus-function term under 35 U.S.C. §112, para. 6. Williamson appealed the district court’s construction of this term. Williamson argued “that the district court failed to give appropriate weight to the ‘strong’ presumption against means-plus-function claiming that attaches to claim terms that do not recite the words ‘means.’”


Williamson v. Citrix Online, LLC:

To overcome the presumption that a “means”-less limitation is not a means-plus-function element, either: i) the claim term must fail to recite sufficiently definite structure; or ii) the claim term must recite function without reciting sufficient structure for performing that function.


The Federal Circuit then turned its attention to the claim limitation in dispute, which recites:

A distributed learning control module

1)    for receiving communications transmitted between the presenter and the audience member computer systems and

2)    for relaying the communications to an intended receiving computer system and

3)    for coordinating the operation of the streaming data module

The court observed that the claim limitation in dispute is in a format consistent with traditional means-plus-function claim limitations. The term “module” replaces the tradition means-plus-function flag term – “means” – and then recites three functions performed by the “distributed learning control module.”


i) Does the claim term recite sufficient definite structure?

The court then observed that the term “module” is a well-known nonce word that can operate as a substitute for “means” in the context of §112, para. 6. Generic terms such as “module,” “mechanism,” “element,” “device,” etc., typically do not connote sufficiently definite structure, by themselves, to remove a claim limitation from the reach of §112, para. 6 claim construction. The court next held that the prefix “distributed learning control” does not impart structure into the term “module.” To determine this, the court construed the prefix in view of the specification. Although “distributed learning control module” is described in the written description, such descriptions failed to impart any structural significance to the term. Furthermore, the court found nothing in the prosecution history that could lead it to construe the expression as something with “sufficient definite structure as to take the overall claim limitation out of the ambit of §112, para. 6.”

ii) Does the claim term recite function without reciting sufficient structure for performing that function?

Although the court conceded that portions of the disputed limitation do describe certain inputs and outputs at a very high level (e.g., communications between the presenter and the audience member computer systems), the claim does not describe how such the recited functions operate “in a way that might inform the structural character of the limitation-in-question or otherwise impart structure.” Williamson attempted to rescue the sought-for structure by pointing to figures of the specification. But the only figures provided therein were exemplary display interfaces and were not considered disclosures of the algorithm corresponding to the claimed function.



First takeaway: There is now a heightened risk when claiming elements functionally, that a future court may construe the claims according to §112(f), formerly §112, para. 6. Simply omitting the word “means” may not be enough to avoid a §112(f) construction.


Second takeaway: The court gave a test for attorneys to use to evaluate if a claim term is a “nonce” word. The court articulated the test as follows: “Here, the word [insert test word] does not provide any indication of structure because it sets forth the same black box recitation of structure for providing the same specified function as if the term ‘means’ had been used.”


Third takeaway: The written description must disclose sufficient structure for every claim element recited. Disclosed structure is required: i) to rescue a limitation from the reach of §112(f), if so desired, and ii) in construing a §112(f) means-plus-function element, regardless of whether the limitation was intended to be construed so. The court summarized its §112(f) construction requirement “that the specification [must] disclose an algorithm for performing the claimed function.”


Ex parte Kenichi Miyazaki:

The Williamson decision is further illuminated by the Ex parte Miyazaki, 89 U.S.P.Q.2d 1207 (BPAI 2008), decision of the USPTO Board of Patent Appeals and Interferences (BPAI). In Miyazaki, the BPAI grappled with the proper construction of a claim limitation that “is a purely functional recitation with no limitation of structure.” The BPAI noted that “’purely functional claim language’ is … permissible but only under the conditions of 35 U.S.C. § 112, sixth paragraph.” (emphasis added). “[A]ny claim that includes purely functional claim language, and which is not subject to the limited construction under 35 U.S.C. § 112, sixth paragraph, fails to meet the requirements of 35 U.S.C. 112, first paragraph [].”


The BPAI then articulated some concerns addressed by these rules of construction. One concern related to the Williamson decision “is that such unlimited purely functional claiming may reasonably be construed to encompass any and all structures for performing the recited function, including those which are not what the applicant invented.” The USPTO’s main concern is simply “to guard the public against patents of ambiguous and vague scope. Such patents exact a cost on society due to their ambiguity that is not commensurate with the benefit that the public gains from disclosure of the invention.”


In addition to the two above articulated reasons that structure must be disclosed, disclosed structure is also required: iii) to rescue a non-§112(f) limitation from a §112(a) rejection which would automatically attach to non-§112(f) limitations that are purely functional.


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