Client Alert
June 17, 2015
En Banc Federal Circuit Abandons “Strong”
Presumption That a Limitation Is Not Subject to
35 U.S.C. § 112, Paragraph 6
By Richard S.J. Hung and Ryan J. Gatzemeyer*
On June 16, 2015, the Federal Circuit revisited its prior precedent regarding when a claim limitation is subject to
35 U.S.C. § 112, paragraph 6. In Williamson v. Citrix Online, LLC, No. 13-1130 (“Citrix”),1 the en banc court held
that the absence of the word “means” gives rise only to a rebuttable presumption—not a “strong” presumption—
that Section 112, paragraph 6 does not apply to the limitation.
BACKGROUND OF SECTION 112, PARAGRAPH 6
Section 112, paragraph 62 allows a patentee to recite a claim limitation as a “means or step for performing a
specified function,” but “without the recital of structure, material, or acts in support thereof.” Claim limitations
drafted in this format, known as “means-plus-function” limitations, are “construed to cover the corresponding
structure, materials, or acts described in the specification and equivalents thereof.”3 If the specification fails to
disclose sufficient structure for performing the corresponding function of a means-plus-function limitation, the
claim is invalid as indefinite under 35 U.S.C. § 112, paragraph 2.4
Under prior Federal Circuit precedent, the absence of the term “means” gave rise to a “strong” presumption that
Section 112, paragraph 6 does not apply.5 Overcoming this presumption required a “showing that the limitation
essentially [was] devoid of anything that [could] be construed as structure.” 6
THE ORIGINAL PANEL DECISION
Citrix involved U.S. Patent No. 6,155,840, which concerns a method and system for conducting distributed
learning over a computer network. Asserted claim 8 of the ’840 patent recites the following “distributed learning
control module” limitation:
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.
1 Williamson v. Citrix Online, LLC, No. 13-1130, Slip Op. at 16 (Fed. Cir. June 16, 2015).
2 With the passage of the America Invents Act, paragraph 6 has been relabeled paragraph (f).
3 Section 112, para. 6.
4 See Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1338 (Fed. Cir. 2008).
5 See, e.g., Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1358 (Fed. Cir. 2004); Inv entio AG v. ThyssenKrupp Elevator
Americas Corp., 649 F.3d 1350, 1358 (Fed. Cir. 2011); Apple Inc. v. Motorola, Inc., 757 F.3d 1286, 1297 (Fed. Cir. 2014).
6 Flo Healthcare Solutions, LLC v. Kappos, 697 F.3d 1367, 1374 (Fed. Cir. 2012).
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