On June 16, 2015, the Federal Circuit issued its decision in Williamson v. Citrix Online, overruling en banc a long line of precedent regarding functional claiming and affirming a District Court decision finding asserted claims 8-16 of U.S. Patent Number 6,155,840 (“the ‘840 Patent”) are subject to the requirements of 35 U.S.C. § 112, para. 6, despite a lack of “means” or “step for” language. In so doing, the Court affirmed the District Court’s determination that those claims are indefinite for lack of definite structure. In the same decision, a panel of the Court also reversed the District Court’s construction of the term “graphical display,” vacated the underlying non-infringement judgment, and remanded the case, holding that the District Court improperly read a limitation of a disclosed embodiment into the claims. Judge Linn authored the Court’s opinion.
The ’840 Patent describes methods and systems for creating a virtual classroom for geographically remote audience participants via a computer network that includes conventional industry-standard computer hardware and software. On appeal, the Federal Circuit reviewed the District Court’s constructions of two claim terms: “graphical display” and “distributed learning control module.”
First, a Federal Circuit panel consisting of Judges Moore, Linn and Reyna reversed the District Court’s construction of “graphical display,” which had required a “pictorial map.” The Court held that the claims of the ’840 Patent do not require a pictorial map and that the specification discloses a pictorial map as merely an example, not as a limitation.
The Court next turned to Claim 8’s “distributed learning control module” limitation. The District Court had construed “distributed learning control module” as a “means-plus-function” element subject to the requirements of 35 U.S.C. § 112, para. 6. Having done so, the District Court had determined that the specification of the ’840 Patent fails to disclose the necessary algorithms for performing all of the claimed functions. The District Court found claims 8-16 indefinite.
On appeal, the Federal Circuit was faced with the threshold question of whether the claims in question, which did not recite the word “means,” are nonetheless governed by § 112, para. 6. On this question, the Court recognized that its decision would require revisiting and possibly overruling prior precedent. Accordingly, this issue was considered by the Court en banc, with a majority of judges joining Judge Linn’s opinion.
At the outset, the Court reiterated that “the use of the word ‘means’ in a claim element creates a rebuttable presumption that § 112, para. 6 applies.” Slip op. at 13. But this does not end the analysis: “the failure to use the word ‘means’ also creates a rebuttable presumption—this time that § 112, para. 6 does not apply.” Id. (emphasis added). Thus, in evaluating claim language, “the essential inquiry is not merely the presence or absence of the word ‘means’ but whether the words of...
