Williamson v Citrix: Functional Language Without Structural Meaning in System Patent Claims Trigger MPF Section 112(f)

The Patent Appeals court, in an en banc decision, reversed decades of precedent and held that section 112(f) of the Patent Statute, which concerns “means plus function” MPF language should apply to claim limitations which do not have structural meaning without regard to nonce words which replace “means” such as module, mechanism, element, device “and other nonce words that reflect nothing more than verbal constructs.”  Williamson v. Citrix Online, LLC, Case No. 2013-1130 (June 16, 2015) en banc (Williamson v Citrix). Once a court identifies means plus function or MPF in a patent claim, “such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.” 35 U.S.C. Section 112(f) (previously Section 112, para. 6).   Accordingly, the Federal Circuit Court of Appeals, which handles all patent appeals from the trial courts, has narrowed mechanical and system patent claims which use functional language, overruling a considerable line of cases dating back to 1991. Those cases indicated that the use of the word “means” in a claim element created a strong rebuttable presumption that section 112(f) applied to functional language following the word “means.”

Per the Court, “In making the assessment of whether the limitation in question is a means – plus – function term subject to the strictures of section 112, para. 6, our cases have emphasized that the essential inquiry is not merely the presence or absence of the word ‘means’ but whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.” “When a claim term lacks the word ‘means,’ the presumption can be overcome and section 112, para. 6 will apply if the challenger demonstrates that the claim term fails to ‘recite sufficiently definite structure’ or else recites ‘function without reciting sufficient structure for performing that function.’”

In the Williamson case, defendant Citrix presented evidence that the subject claim limitation “distributed learning control module” does not have a well understood structural meaning in the computer technology field. Further Citrix pointed out to the district court that the “distributed learning control module” limitation was drafted in the same format as a traditional means – plus – function limitation, and merely replaced the term “means” with another “nonce” word, “module,” thereby connoting a generic “black box” for performing the recited computer – implemented functions.

The Federal Circuit listed several words that act as a substitute for “means” in the context of Section 112, MPF including the words module, mechanism, element, device and “other nonce words that reflect nothing more than verbal constructs [which] may be used in a claim in a manner that is tantamount to using the word ‘means’ because they ‘typically do not connote sufficiently definite structure’ and therefore may invoke section 112 para. 6. The Federal Circuit then turned its attention to the specification and found that while the portions of the claim do describe a certain inputs and outputs at a very high level, for example communications between the presenter member computer and the audience member computer, the claim does not describe how the “distributed learning control module” interacts with other components in the “distributed learning control server” in a way that might inform the structural character of the limitation – in – question or otherwise impart structure to the “distributed learning control module” as recited in the claim. The Federal Circuit remanded the case vacating judgment of non-infringement regarding some claims and affirming the District Court’s construction of the claim limitation “distributed learning control module.”

Computer-Aided Clearinghouse Is Not Patent Eligible Subject Matter

The Court of Appeals for the Federal Circuit (“Federal Circuit”) has held that a computer aided method of managing a credit application, by receiving data, sending credit data and forwarding funding decision (with certain alternative steps of selectively sending portions data) is not patent eligible subject matter under 35 U.S.C. § 101. Dealertrack, Inc. v. Huber, Case No. 2009-1566 (Fed. Cir. Jan. 20, 2012) (available here).

One view of this case involves the problem associated with the use of alternative “OR” claim language to define inventive claim elements D1, D2, D3 or D4. See the claim set forth below. The truncated “nominal” claim defining the invention with bracketed elements A, B, C. D and D1 is reproduced below.

 “A computer aided method of managing a credit application, the method comprising the steps of: [A] receiving credit application data from a remote application entry and display device; [B] selectively forwarding the credit application data to remote funding source terminal devices; [C] forwarding funding decision data from at least one of the remote funding source terminal devices to the remote application entry and display device; [D] wherein the selectively forwarding the credit application data step further comprises: [D1] sending at least a portion of a credit application to more than one of said remote funding sources substantially at the same time.”

Dealertrack’s claimed inventive process in its simplest form includes three steps: receiving data from one source (step A), selectively forwarding the data (step B, performed more specifically in step D1), and forwarding reply data to the first source (step C). “The claim ‘explain[s] the basic concept’ of processing information through a clearinghouse, just as claim 1 in Bilski II ‘explain[ed] the basic concept of hedging.’ The steps that constitute the method here do not ‘impose meaningful limits on the claim’s scope.’ Neither Dealertrack nor any other entity is entitled to wholly preempt the clearinghouse concept.” Slip Opn. p. 35 (quoting In re Bilski, 545 F.3d 943, 961-62 (Fed. Cir. 2008) (en banc) (“Bilski I”); Bilski v. Kappos, 130 S. Ct. 3218, 3231 (2010) (Bilski II”); Gottschalk v. Benson, 409 U.S. 63, 71-72 (1972)). “The claims were silent as to how a computer aids the method, the extent to which a computer aids the method, or the significance of a computer to the performance of the method.” p. 35.

“The notion of using a clearinghouse generally and using a clearinghouse specifically to apply for car loans, like the relationship between hedging and hedging in the energy market in Bilski II, is of no consequence without more. See Diehr, 450 U.S. at 191 (noting that the principle that a mathematical formula ‘is not accorded the protection of our patent laws . . . cannot be circumvented by attempting to limit the use of the formula to a particular technological environment’ (emphasis added)).” p. 37 (citing Diamond v. Diehr, 450 U.S. 175, 191 (1981).

In conclusion, receiving data, sending credit application data and forwarding funding decision data and simultaneously sending the credit data to several funding sources is too abstract and not a “machine” under the “machine or transformation” (MOT) test. Also, no transformation of data was present. Compare this case to Ultramercial LLC v. Hulu LLC, Case No. 2010-1544 (Fed. Cir. Sept. 15, 2011) wherein the selective access, and sometimes free access, ad display, tracking transactions and making payment was found to be patent eligible subject matter.