Tuesday, June 16, 2015

Williamson v. Citrix

The result in Williamson v. Citrix:

Because the district court erroneously
construed the limitations “graphical display
representative of a classroom” and “first graphical display
comprising . . . a classroom region,” we vacate the judgment
of non-infringement of claims 1–7 and 17–24 of
the ’840 patent. Because the district court correctly
construed the limitation “distributed learning control
module,” we affirm the judgment of invalidity of claims 8–
12 of the ’840 patent under 35 U.S.C. § 1122, para. 2.
Accordingly, we remand.

We agree with Williamson. The district court erred in
construing these terms as requiring a “pictorial map.”
First, the claim language itself contains no such “pictorial
map” limitation. “[I]t is the claims, not the written description,
which define the scope of the patent right.”
Laitram Corp. v. NEC Corp., 163 F.3d 1342, 1347 (Fed.
Cir. 1998); see also id. (“[A] court may not import limitations
from the written description into the claims.”).
While the specification discloses examples and embodiments
where the virtual classroom is depicted as a “map”
or “seating chart,” nowhere does the specification limit the
graphical display to those examples and embodiments.
This court has repeatedly “cautioned against limiting the
claimed invention to preferred embodiments or specific
examples in the specification.” Teleflex, Inc. v. Ficosa N.
Am. Corp., 299 F.3d 1313, 1328 (Fed. Cir. 2002) (quoting
cases) (citations omitted).

The ’840 patent defines a classroom as “an at least
partially virtual space in which participants can interact.”
Id. at col.6 ll.5–6. Nothing further is required, and no
greater definition is mandated by the language of the
claims, the specification, or the prosecution history. As is
well settled, the claims must “not be read restrictively
unless the patentee has demonstrated a clear intention to
limit the claim scope using words or expressions of manifest
exclusion or restriction.” Innova/Pure Water, Inc., v.
Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1117
(Fed. Cir. 2004) (internal quotations omitted).

Judge Reyna writes separately

This is the second time around for this case. In the
first, Williamson I, I dissented from the majority conclusion
that the “distributed learning control module” term
of claim 8 of the ’840 patent recites sufficient structure to
keep the claim limitation “distributed learning control
module” outside of the purview of 35 U.S.C. § 112, paragraph
In this second time around, Williamson II, the majority
reverses itself to conclude that the “distributed learning
control module” term does not recite sufficient
structure, is governed by 35 U.S.C. § 112, paragraph 6,
and is indefinite under paragraph 2. Because this conclusion
is the correct result, I concur. To explain my
concurrence, I rely on the reasons I laid out in my dissent
in Williamson I.
The majority, however, continues to ignore critical evidence
showing that an image of a visually depicted
virtual classroom is required by claim 8 of the ‘840 patent.
I dissent from that portion of this opinion.

Of functional claiming

Arguably, this rationale applies to functional claiming
generally, not just to claims that recite “means.” Indeed,
the Halliburton Court relied on precedent invalidating
functional claims that did not recite the term “means.”
Id. at 9 (citing Holland Furniture Co. v. Perkins Glue Co.,
277 U.S. 245, 256–57 (1928).) The continued viability of
this rationale, and its impact on how this Court applies
§ 112, para. 6 merits attention.
In sum, my view is that perhaps we need to revisit our
judicially-created § 112, para. 6 presumptions.

Note footnote 1:

The earlier opinion in this case, reported at 770
F.3d 1371 (Fed. Cir. 2014), is withdrawn, and this opinion
substituted therefore. Part II.C.1. of this opinion has
been considered and decided by the court en banc. See
Order in this case issued this date.

Judge Newman's dissent begins

I respectfully dissent from the en banc ruling that is
inserted into this panel opinion at Section II.C.1. The
court en banc changes the law and practice of 35 U.S.C.
§ 112 paragraph 6, by eliminating the statutory signal of
the word “means.” The purpose of this change, the benefit,
is obscure. The result, however, is clear: additional
uncertainty of the patent grant, confusion in its interpretation,
invitation to litigation, and disincentive to patentbased

link: http://www.cafc.uscourts.gov/images/stories/opinions-orders/13-1130.Opinion.6-11-2015.1.PDF

Our consideration of this case has led us to conclude
that such a heightened burden is unjustified
and that we should abandon characterizing as “strong” the
tion that a limitation lacking the word “means” is not
subject to §112, para. 6. That characterization
is unwar-
ranted, is uncertain in meaning and application,
and has the inappropriate practical effect of placing a
thumb on what should otherwise be a balanced
analytical scale. It has
shifted the balance struck by Congress in passing §
112, para. 6 and has resulted in a proliferation of func-
tional claiming untethered to §
112, para. 6 and free of
the strictures set forth in the statute.
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
hat presumption as “strong.”

We also overrule the
strict requirement of “a showing that the limitation
essentially is devoid of anything that can be construed as structure.”

The standard is
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. Greenberg, 91 F.3d at
1583. When a claim term lacks the word “means,”
the presumption can be overcome and §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 suffi-
cient structure for performing that function.”


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