Federal Circuit Review - Issue 32 - Patent

Each week, Troutman Sanders' Federal Circuit review summarizes the Federal Circuit precedential patent opinions from the prior week.

This week:

Use of the Term "Module" Did Not Specify A Means-Plus-Function Claim.

Use of the Term "Module" Did Not Specify A Means-Plus-Function Claim.

Williamson v. Citrix Online, LLC, No. 2013-1130, 2014 U.S. App. LEXIS 21114 (Fed. Cir. Nov. 5, 2014) (Linn, J.) (Reyna, J., dissenting). Click Here for a copy of the opinion.

Williamson sued several defendants for infringing a patent for a "virtual classroom environment." The district court construed two phrases in the claims that resolved the case against Williamson. One was the phrase "distributed learning control module," which the district court interpreted as a means-plus-function claim. The specification failed to provide any structure for the "module," and the district court therefore held that several claims are invalid as indefinite. The other phrase was "graphical display representative of a classroom." The court's construction of this phrase supported a finding of no infringement of the remaining claims.

The Federal Circuit reversed the district court's interpretation of "distributed learning control module," which it held was not a means-plus-function limitation. Under Federal Circuit law, failure to use the term "means" creates a rebuttable, but "strong" presumption that the claim is not a means-plus-function claim. To overcome this presumption, the patentee must demonstrate that the claim limitation is devoid of structural meaning that limits the claim. The majority held that the patentee had not overcome this presumption because: (1) the term "module" appears in technical dictionaries in a form that connotes structure, (2) the modifiers "distributed learning control" provided structure to the term "module," and (3) the context of the phrase, both in the claim and the specification, show that the phrase has structure.

The dissent argued that (a) the claims described three functions that the "distributed learning control module" was to provide, (b) dictionary definitions of "module" define it only as a component for providing a function, (c) the MPEP lists "module for" as a phrase that may indicate means-plus-function claiming, and (d) the specification only discussed the module's functionality in general terms, and provided no particular structure. These factors demonstrated that "module" was a "means-plus-function" limitation and that the claim was indefinite.

In sum, the Federal Circuit held that "distributed learning control module" recited a structure, not a function. As a result, it vacated the district court's construction of the phrase as a means-plus-function claim and the district court's ruling that the claims containing the phrase were invalid as indefinite.

The Federal Circuit also reversed the construction of the "graphical display" term, which the district court had construed as requiring a pictorial map of a classroom, rather than a simple illustration of the virtual classroom participants. The court held that the district court had improperly imported embodiments that into the claim from the specification that only "preferably" included a pictorial map of a classroom. In light of this reversal, the court also vacated the district court's findings of no infringement on the remaining claims. The case was remanded for further consideration.

The following opinion is not reported in this newsletter:

Azure Networks, LLC & Tri-County Excelsior Foundation v. CSR PLC & Cambridge Silicon Radio Int'l, LLC & Atheros Comms., Inc., & Qualcomm Inc., & Broadcom Corp. & Marvell Semiconductor, Inc., Ralink Tech. Corp. (Taiwan & USA), No. 2013-1459, 2014 U.S. App. LEXIS 21188 (Fed. Cir. Nov. 6, 2014) (Exclusive license transferring all substantial rights in a patent affectively constitutes an assignment and therefore patentee has no standing to bring infringement suit). Click Here for a copy of the opinion.

Each week, we succinctly summarize the preceding week of Federal Circuit precedential patent opinions. We provide the pertinent facts, issues, and holdings. Our Review allows you to keep abreast of the Federal Circuit's activities – important for everyone concerned with intellectual property. We welcome any feedback you may provide.

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