*1 third-рarty-beneficiary for the claim because the jury verdict upheld court The in- farmers, farmers were ruling warranty explicitly that the manufacturer’s was beneficiaries. third-party original equipment purchas- deed “limited to the er”). enough It be time will address in most like Harris Moran Our case is agreement effect of the when its terms are product was In each case respects. known. through the same number distributed Wood, seeds, may appear like
layers. complaint adequately states an ex- wood, in A defect sound but be defective. press-warranty claim on which relief can seeds, may in become evident like a defect granted. be work is done and only after substantial incurred, whether expense is substantial VI growing crop. Man- installing a fence or reasons, judgment For these is re- seeds, wood, like those of ufacturers of versed, and the case is remanded to the warranty to extend a might well choose district court. increase the market for the end users to
product. [may] that a “court
Harris Moran said surrounding circumstances”
look at the whether an end user is
determining beneficiary. at
third-party Id. 920-21. may circumstances a court con-
One of the foreseeability of harm to end sider is WILLIAMSON, Richard A. Trustee for its at 923. Lumber One knew users. Liquidating at Home Bondholders and that wood was bound for end users Trust, Plaintiff-Appellant they substantial harm if the would suffer warranty. did not conform to the wood v. Moran, Here, the circum- Harris ONLINE, LLC, Systems, Citrix CITRIX support substantial provide stances Sys Corporation, Adobe Microsoft claim. third-party-beneficiary tems, Inc., Defendants-Appellees sure, may To be there also be differ- ences in our case and Harris Moran. Communications, Inc., Cisco Webex support court found in the man- There the Webex, LLC, Systems, Inc., Cisco agreement, which did not ufacturer’s sales Defendants-Appellees designate end users as third- explicitly Business Machines International but did include refer-
party beneficiaries Corporation, Defendant- them to required to end users and ences Appellee. warranty notified of limitations. Here be not make similar alle- complaint does No. 2013-1130. gations agreement about between distributor, perhaps Appeals, Lumber One and its United States Court of yet is not available agreement because Federal Circuit. agreement If the disclaims
to Mr. Lisk. 16, 2015. June users, sup- that will any warranty to end may Lumber One and even entitle port Lines, Bay prevail.
Lumber One to See Trailers, Inc., Stoughton 838 So.2d
Inc. v. (Ala.2002) (rejecting a 1018-19 *4 Williamson,
Brett Johnston O’Melveny Myers LLP, Beach, & Newport CA, ar- gued for plaintiff-appellant.' Also repre- by sented Tim Byron; D. William C. Norvell, Jr., Marrs, Scott Dion Brian T. Bagley, Maynard Beirne Parsons, LLP, & Houston, TX. Glitzenstein,
Kurt Louis Fish & Rich- P.C., Boston, MA, ardson argued for all defendants-appellees. Online, LLC, Citrix Inc., Systems, Citrix Corpora- Microsoft tion, Inc., Systems, Adobe represent- also by ed Scherkenbach; Frank Indranil Mukerji, DC; Washington, Jonathan J. Lamberson, City, Redwood CA. Defen- dant-appellee Microsoft Corporation also representеd by Fu, Isabella Microsoft Corporation, Redmond, WA.
Douglas Kubehl, LLP, M. Baker Botts Dallas, TX, for defendants-appellees We- Communications, bex Webex, Cisco LLC, Systems, Cisco Inc. represent- Also by Kline, ed Samara Brian Douglas John- ston. Abate,
Mark J. LLP, Goodwin Procter York, N.Y., New for defendant-appellee International Business Corpora- Machines tion. represented by Also Calvin E. Wing- Sheehan, invalidity of claims 8-12 of the Jr.; Washing- '840 field, F. William ton, DC. under 35 U.S.C. patent Accordingly, we remand. LINN, REYNA, MOORE, Before Judges.1 Circuit I. BACKGROUND by for the court filed Circuit Opinion A. The '840 Patent Judge LINN. patent The '840 describes methods and part, dissenting
Opinion concurring
systems
learning”
for “distributed
that uti-
by
filed
with additional views
part, and
industry
computer
standard
lize
hardware
Judge REYNA.
Circuit
by
pro-
and software linked
a network to
LINN,
LOURIE,
PROST,
Judge,
Chief
vide a classroom or auditorium-like meta-'
MOORE, O’MALLEY, REYNA,
DYK,
phor
i.e., a “virtual classroom” environ-
—
TARANTO, CHEN,
WALLACH,
objective
ment. The
is to connect one or
HUGHES,
joined
Judges, have
Circuit
geographically
more
with
re-
presenters
opinion.
of this
Part II.C.l.
mote
col.2
audience members.
'840
dissenting from Part II.C.l.
Opinion
purport
11.10-14.The disclosed inventions
Judge NEWMAN.
filed Circuit
provide
“the benefits of classroom inter-
LINN,
Judge.
Circuit
action without the detrimental effects of
*5
software,
complicated hardware or
or the
(‘Williamson”),
A. Williamson
Richard
convening
of
in a
costs and inconvenience
Corporation
for the At Home
as trustee
at col.2 11.4-7.
Trust,
separate place.” Id.
Liquidating
owns U.S.
Bondholders’
(the
6,155,840
patent”)
No.
“'840
Patent
main
components
There are three
stipulated
judg-
the
final
appeals
and
from
learning” system set forth in
“distributed
Online,
ment in favor of defendants Citrix
(1)
computer,
patent:
presenter
the '840
a
Inc.;
LLC;
Microsoft Cor-
Systems,
Citrix
(3)
(2)
a
computers,
member
and
audience
Inc.;
Systems,
Adobe
Webex
poration;
learning server. The distribut-
distributed
Webex,
Communications, Inc.;
LLC;
Cisco
learning
implements a “virtual
ed
server
Inc.;
Systems,
and International
Cisco
network,
computer
such
classroom” over
(collective-
Corporation
Business Machines
Internet,
facilitate communication
as the
ly, “Appellees”). Because the district
presenter and
among
and interaction
the
erroneously construed the limitations
court
presenter
com-
audience members.
of a
display representative
“graphical
to commu-
by
presenter
is used
the
puter
display
graphical
and “first
classroom”
and
the audience members
nicate with
region,” we
comprising ...
a classroom
the
appears
on
control information
judgment
non-infringement
the
of
vacate
computer
member’s
screen.
audience
patent.
1-7 and 17-24 of the '840
of claims
An
mem-
at col.4 1.66-col.5 1.2.
audience
correctly
court
con-
Becausе the district
pres-
the
computer
display
is used to
ber’s
strued the limitation “distributed
to communicate
module,”
entation and can be used
judgment
we affirm
control
the
case,
reported
112 was amended and subsec-
opinion in this
at
2. 35 U.S.C.
1. The earlier
withdrawn,
by
(Fed.Cir.2014),
the America Invents
tions were renamed
Act,
The '840 the following includes for displaying produced by data claims, independent three disputed with nn selected remote data streaming highlighted: terms source; A1. method of conducting distributed an computer audience member system learning among plurality of computer plurality computer systems and systems network, coupled to a the meth- coupled to the presenter computer sys- od comprising steps of: network, tem via the audience mem- providing instructions to a first com- computer ber system comprising: puter system coupled to the nеtwork for: an audience member streaming data creating graphical display repre- for displaying viewer pro- data classroom; sentative aof duced the selected remote stream- creating a graphical display illus- ing source; data trating controls for selecting first and a distributed learning server remote streams; second data from presenter and audience mem- creating a first display- window for computer systems ber plurality ing stream; the first selected data computer systems coupled to the creating a second window for dis- presenter computer system and the au- playing the second selected data dience member computer system via the stream, wherein network and comprising: the first and second windows are a streaming data module provid- displayed simultaneously; and ing the streaming data from the re- providing instructions to a second streaming mote data source selected computer system coupled to the network with the content selection control to for: presenter and audience member *6 creating graphical a display repre- systems; computer and classroom; sentative the of a learning distributed control mo- creating a third window for display- dule for receiving communications a ing stream; the first selected data and distributеd learning control module creating a fourth window for dis- for receiving communications trans- playing the second selected data mitted presenter between the and the stream, wherein audience computer systems member the third and fourth windows are and for relaying the communications displayed simultaneously. to an intended receiving computer system 8. A for conducting distributed system and for coordinating oper- the learning among plurality a of computer of ation the streaming data module. systems coupled network, to a sys- the 17. A distributed learning server for tem comprising: controlling presenter a computer system presenter
a computer system and an audience computer member sys- plurality of computer systems coupled coupled tem to the distributed learning the network and comprising: network, server via a the distributed
a server comprising: content selection control for defin- ing at least one remote streaming a for providing module a first graphi- data source and for selecting one of cal display presenter on the computer History B. Procedural com- display graphical the system, first prising: infring- of Appellees accused Williamson content selection presenter a first alleged based on their ing the '840 selecting first source for control manufacture, salе, sale, use, offer for and representative streaming content systems of various meth- importation information; graphical online collaboration. On March ods of display content re- presenter a first filed suit in the United Williamson infor- graphical the displaying for gion for the Dis- District Court Central States by streaming represented mation asserting in- specifically trict of California source; first selected from the content of all 24 claims of the '840 fringement content selection presenter a second the district patent. September On selecting a second source for control order, a claim construction court issued streaming representative content alia, following limita- construing, inter information; and graphical claims 1 and 17: independent tions of display content presenter a second of a display representative “graphical in- graphical displaying for region graphical display and “first classroom” by the stream- represented formation (collec- region” ... a classroom comprising selected from the second ing content limitations). tively, “graphical display” source, and second wherein the first terms court held these district display regions are content presenter illustrating an at require pictorial map “a simultaneously; adapted display par- in whiсh partially space least virtual interact, and that identifies ticipants can representing for region a classroom the audience mem- presenter(s) computer sys- audience member bers) map.” their locations on learn- to the distributed coupled tem server; and ing order, the dis- In its claim construction a second providing a module for concluded that the limita- trict court also display on the audience mem- graphical learning con- tion of claim “distributed system, graphi- the second computer ber module,” means-plus-function trol was comprising: display cal 6. The term under 35 U.S.C. content audience member first specifica- then evaluated the district court displaying for display region that it failed to disclose tion and concluded represented by graphical information necessary algorithms performing streaming from the first content functions. The district all of the claimed *7 by the content selec- source selected dependent claim and its court thus held control; and tion as indefinite under claims 9-16 invalid member content a second audience § para. displaying for the display region Williamson that under the dis- conceded by represented graphical information constructions, none claim trict court’s streaming content from the sec- the in- infringed products by Appellees’ thе content accused ond source selected control, their re- the first 1 and 17 and dependent selection wherein claims 18-24, dis- audience member content second claims 2-7 spective dependent adapted display are to play regions invalid. The claims 8-16 were and that simultaneously. judgment. final Wil- stipulated to parties entry of stipulated the appeals liamson ll.26-62, ll.28-52, col.12 at col.10 col.11 Id. claim con- challenging these judgment, 11.29-65. rulings. struction jurisdiction We have participants. alleges Williamson that a 1295(a)(1). pursuant to 28 U.S.C. proper require definition must the audi- ence members to able to be interact with II. Disoussion both presenter the and other audience members. He therefore asserts that the A. Standard of Review proper construction of the graphical dis- Regarding questions of claim play terms is “a viewable illustration of an construction, including whether claim lan at partially least space virtual that allows guage invokes 35 U.S.C. audience members to interact with both district court’s determinations based on ev the presenter and other audience mem- idence patent intrinsic to the as well as its bers.” ultimate interpretations legal claims are Appellees questions respond that we review the district USA, de novo. Teva Pharm. Inc. v. San court’s correctly construction limited the — doz, Inc., -, U.S. 135 S.Ct. claims to a “pictorial map” consistent with — 840-41, L.Ed.2d-(2015). To the teachings description. written court, extent the district in construing the According Appellees, this construction claims, makes underlying findings of fact does not import a limitation from the pre- based evidence, on extrinsic we review ferred embodiment, simply but reflects the such findings of fact clear error. functional aspects of a “classroom” in a Because the district court’s claim construc manner that is consistent with what the tions in this case solely were based on the patentee invented and disclosed. More- record, intrinsic the Supreme Court’s re over, according Appellees, it is consis- cent decision in Teva require does not us tent with only depiction of a classroom to review the court’s district claim con shown in the patent, '840 which shows any struction differently than under the de pictorial map seating as a chart that identi- novo standard long we have applied. Fen presenters fies the and audience members Invs., ner Ltd. P’ship, v. Cellco 778 F.3d by their locations map. on the (Fed.Cir.2015) (“When the dis agree We with Williamson. The trict court only reviews evidence intrinsic district court erred construing these to the patent ..., the judge’s determina terms as requiring “pictorial map.” tion will solely amount to a determination First, the claim itself language contains no law, and [we] review that construction such “pictorial map” limitation. “[I]t is de Teva, 841)) novo.” (quoting 135 S.Ct. at claims, (internal not the description, written removed). citations which define scope patent right.” B. “graphical display” Limitations Corp. Laitram Corp., v. NEC (Fed.Cir.1998); see also id.
Williamson asserts that the district (“[A] may court import not court limitations erred in its construction of the from the description written graphical into display terms improperly im claims.”). specification While porting an “pictorial discloses map” extraneous limi examples tation into the claim. embodiments where argues Williamson the vir tual requiring classroom “map” depicted unduly as a “map” narrows *8 chart,” claims to preferred “seating the embodiment nowhere does specifi dis the closed in the written cation description limit the display and graphical that to those there is no support in examples the intrinsic and record embodiments. This court for confining the claims to a “pictorial has repeatedly against “cautioned limiting map” that identifies the location of the the claimed to preferred invention embodi- reasons, foregoing For the we conclude specifica- in the examples specific or ments Ficosa N. Am. Teleflex, incorrectly Inc. v. the district court con- tion.” (Fed.Cir.2002) 1313, 1328 299 F.3d Corp., graphical display strued the terms to have omitted). cases) (citations (quoting limitation. therefore “pictorial map” a We of stipulated judgment vacate the non-in- Here, in the in- suggestion no there is fringement of claims 1-7 and 17-24. The applicant intended trinsic record that display” limitations in claims 1 “graphical scope deter- to have the limited the claims graph- as “a properly court. To the con- and 17 are construed by mined the district examples in and an at trary, representation the embodiments ical of least partially metaphors of classroom specification in can in- space participants virtual which consistently de- “maps” to are relating teract.” For exam- preference. in
scribed terms states that specification “[t]he ple, The “distributed control C. a preferably provides metaphor classroom module” Limitation showing the relative map of the classroom 1. of 35 Applicability U.S.C. among presenters relationships para. 63 patent col.2 members.” '840 audience added). In another ex- (emphasis 11.37-39 Means-plus-function claiming oc Figure 6 is graphical display ample, a claim term is in a curs when drafted display” on the “exemplary as an described manner that invokes 35 U.S.C. Id. at col.7 11.35-36. presenter’s computer. 6, which states: includes a window exemplary display Thаt An in a claim for a combination element seating chart provides a “preferably may expressed step as a or be means pre- the audience members and showing performing specified function without in the classroom or auditorium.” senters structure, material, or acts the recital of added). (emphasis Id. at col.9 11.5-7 thereof, and such claim shall support patent defines class The '840 corresponding be construed to cover the space virtual partially room as “an at least structure, material, or acts described at can interact.” Id. participants in which thereof. equivalents specification required, further Nothing 11.5-6. col.6 struck enacting provision, Congress In this by is mandated greater and no definition express allowing patentees a balance claims, specifica language reciting a function to by claim limitation tion, history. As is well prosecution or the by reciting than rather performed be settled, re claims must “not be read function, performing that structure for has demon strictively patentee unless the specific constraints on how placing while claim intention to limit the strated a clear construed, name- such a limitation is to be expressions of mani scope using words coverage ly, by restricting scope Inno exclusion or restriction.” fest structure, materials, or acts de- only the Water, Inc., v. Water Fil va/Pure Safari correspond- specification in the scribed 1111, 1117 381 F.3d Sys., tration equivalents function and (internal ing to the claimed (Fed.Cir.2004) quotations omit Corp. v. ted). Northrop Grumman thereof. See Judge, prior precedent en court formed of overruling banc Because the Prost, Chief banc, see only the court en can be done Moore, O’Malley, Newman, Linn, Dyk, Lourie, States, Corp. v. United South Hughes, Taranto, Chen, Reyna, Wallach, banc), (Fed.Cir.1982) (en Part n. 2 Judges. II.. Circuit by an opinion considered this has been C.l. of *9 1348 (Fed.Cir. 1346, Corp.,
Intel 325 F.3d 1350 subject function term to the strictures of 2003). 112, 6, § para. our cases have emphasized that the inquiry essential is merely not 112, § To determine whether presence or absence of the word “means” para. 6 applies limitation, to a claim our but whether the words of the claim are precedent long recognized has impor by persons understood of ordinary skill in tance presence or absence of the the art to have a sufficiently definite mean- word “means.” In Personalized Media ing as the name for structure. Greenberg, Communications, LLC v. International (“What 91 F.3d at important 1583 is is ... Commission, Trade building upon a line of term, that the structure, as the name for 112, interpreting 6,4 § cases para. we stat reasonably has a well meaning understood ed that the use of the word “means” in a art.”). in the When the claim uses the claim element creates a pre rebuttable “means,” word our cases have been consis- 112, sumption § that para. applies. 6 161 tent in looking to meaning lan- 696, (Fed.Cir.1998) F.3d 703-04 (citing guage of the cases). limitation in assessing wheth- Applying converse, we stated er the presumption is overcome. We have the failure to use the word “means” also traditionally held that when a also claim creates a presumption— rebuttable “means,” term lacks the word 112, pre- § this time 6 does not sumption can' be apply. not, however, 112, § overcome We have blindly para. 6 apply elevated form if challenger over substance will when evalu demon- ating whether a claim limitation strates that the claim invokes term fails to “re- para. 6: sufficiently ] definite structure” or cite! else recites “function
Merely without reciting because a named suffi- element of a cient structure claim is performing followed that func- the word “means,” however, Inc., tion.” Watts v. XL Sys., does not automatical- 232 F.3d ly (Fed.Cir.2000). make that 880 element a “means-plus- function” element under 35 U.S.C. World, In Lighting Inc. v. Birchwood ¶6.... true; The converse is also Inc., (Fed. Lighting, 382 F.3d merely because an element in- does not Cir.2004), we applied for the first time a clude the word “means” does not auto- different standard to the presumption matically prevent that element from be- flowing from the absence of the word ing construed as a means-plus-function “means” and held that “the presumption element. flowing from the absence of the term Cole v. Kimberly-Clark Corp., 102 F.3d ‘means’ strong is a one that is readily not ” (Fed.Cir.1996); see also Green overcome (emphasis added), citing as ex berg Inc., v. Ethicon Endo-Surgery, 91 amples, Corp. Al-Site v. VSI Internation 1580, 1584(Fed.Cir.1996) (‘We F.3d do not al, Inc., (Fed.Cir. 1318-19 112(6) mean to suggest that section trig 1999) and Personalized Communi Media gered only if the claim uses the word . cations, 161 F.3d at years 703-05. A few ”). ‘means.’ later, we reiterated Lighting World’s
In making the assessment of whether
characterization of
presumption
as a
the limitation in question
means-plus-
is a
“strong one that
readily
is not
overcome”
See,
Rexnord, Inc.,
e.g.,
Corp.
LaGard, Inc.,
Laitram
v.
Group
(Fed.
v.
1349
in a
proliferation
has resulted
Elevator
and
ThyssenKrupp
v.
Inventio AG
in
(Fed.
1350,
112,
§
claiming
649 F.3d
1358
untethered to
Corp.,
functional
Americas
Solutions,
Cir.2011).
Healthcare
In Flo
of the strictures
set
para. 6 and free
(Fed.
1367,
F.3d
1374
697
Kappos,
LLC v.
Henceforth, we will
forth in the statute.
Cir.2012),
year after Inven-
just a
decided
presumption as we have done
apply the
further,
tio,
declar
the bar even
we raised
World,
requir-
without
prior
Lighting
to
has not
the claim drafter
that
ing
“[w]hen
evidentiary showing
ing any heightened
¶
112,
by
§
6
intent to invoke
his
signaled
expressly
overrule the characteriza-
‘means,’
unwilling to
we are
using the term
presumption
“strong.”
tion of that
as
showing
provision without
apply that
requirement
also overrule the strict
We
essentially is devoid
the limitation
that
showing
of “a
that
the limitation essen-
as struc
can be construed
anything that
tially
anything
is devoid of
that can be
”
added), citing Masco
(emphasis
ture
construed as structure.”
States,
1316, 1327
303 F.3d
Corp. v. United
(Fed.Cir.2002),
the differ
The standard is whether
involving
a case
cir
and the unusual
“step
by per
for”
the claim are understood
ent term
words of
112, para.
§
6 relates
in which
cumstances
ordinary skill in the art to have a
sons of
language of a method
functional
to the
the name
sufficiently
meaning
definite
as
Inc. v. Motoro
Recently, Apple
in
claim.
Greenberg,
for structure.
para. While
reasons,
foregoing
For the
we conclude
change
can
the
of modifiers
presence
the
learning
that the
control mo-
“distributed
“module,”
presence
the
meaning of
sufficiently
fails to recite
dule” limitation
provide
not
terms does
particular
these
presump-
that the
definite structure and
significance to the term
any structural
claiming
against means-plus-function
tion
in this case.
“module”
agree
therefore
with
is rebutted. We
claim describe
portions of the
do
While
subject
court that this limitation is
district
very high
at a
inputs
outputs
certain
§
para.
provisions
to the
of 35 U.S.C.
communications between
(e.g.,
level
6.
computer
audience member
presenter and
not describe how
systems), the claim does
Corresponding
3. Disclosure of
module”
learning control
the “distributed
Structure
in the dis-
components
with other
interacts
Having found that the “distribut
way
in a
learning control server
tributed
subject
module” is
to
learning control
ed
character
might
inform the structural
we next de
application of
or otherwise
limitation-in-question
of the
specification
discloses
termine whether
learn-
to the “distributed
impart structure
to the
corresponds
structure that
sufficient
in the claim.
as recited
ing control module”
it
function.
conclude that
claimed
We
points to the dec
Williamson also
not.
does
to show that
laration of Dr.
Souri
Shukri
means-plus-func
Construing a
ordinary
in the art would un
one of
skill
The
two-step process.
tion claim term is a
learning
“distributed
derstand the term
identify
func
court must first
the claimed
connote structure. The
control module” to
Sys., Inc. v. Intuit
tion. Noah
Dr. Souri’s
district court did not discuss
(Fed.Cir.2012). Then,
F.3d
ruling.
claim construction
testimony
its
structure,
if
must determine what
court
not find it
it but do
We have considered
corre
specification
in the
any, disclosed
declaration,
like
Dr. Souri’s
persuasive.
function. Where
to the claimed
sponds
portions
the claim language
functions, we
claimed
multiple
there are
identifies,
desсription
written
Williamson
here,
must disclose ade
patentee
have
learn
fails to describe how the distributed
perform
corresponding structure to
module,
quate
by its interaction with
ing control
all of the claimed functions.
Id. at 1318- disclose corresponding structure.
patentee
If the
fails to disclose ade- written description
patent
of the '840
quate
structure,
claim
corresponding
is makes clear
learning
that the distributed
indefinite. Id. at 1311-12.
control module
implemented
cannot be
in a
general purpose computer, but
instead
district
court
identified three
The.
implemented
must be
special
purpose
claimed functions associated with the “dis-
computer
general purpose computer
tributed
control module” term:
—a
programmed
perform
to
(1)
particular
func
receiving communications transmitted
pursuant
tions
pro
instructions from
presenter
between the
and the audience
gram
(2)
special
software. A
purpose com
systems;
computer
relaying
member
puter
required
because the
distributed
communications to an intended receiv-
(3)
learning control
ing computer system;
specialized
module has
coordinating
operation
functions as
streaming
data mo-
outlined in the written de
See,
dule. The district
scription.
e.g.,
court then found that
col.5 11.48-
specification
this,
fails to disclose
64. In
structure
cases such as
involving a claim
corresponding to the “coordinating” func-
subject
limitation that is
para. 6
tion.
appeal,
On
it is undisputed that the
that must be implemented in a special
claimed “coordinating” function is associat- purpose computer, this court has consis
*13
ed with the
learning
“distributed
control
tently required that the structure disclosed
Thus,
module.”
we must ascertain wheth-
in
specification
be
simply
more than
adequate
er
corresponding
structure
to general purpose computer microproces
or
this function is
in
specifica-
disclosed
sor. E.g., Aristocrat Techs.
Pty
Austl.
tion. Id. at 1311.
Tech.,
Ltd. v. Int’l
1328,
Game
521 F.3d
(Fed.Cir.2008)
1333
(citing
Gaming,
WMS
Structure
disclosed in the
Tech.,
Inc. v. Int’l Game
The district merely court was are correct that functions of the “distributed specification patent of the '840 fails to learning control specifica- module.” The Figure representative 4 is a not the case. algorithm forth an not set tion does display presenter computer sys- from the the claimed functions. performing tem under the direction of the “distributed 4 and 5 figures argues Williamson control module.” '840 algorithm. This is required disclose col.711.1-3. *14 similarly fails to disclose an Figure includes an ad- figure display 4. This locator or URL or uniform resource as,
dress representative, it is another algorithm, field, field, an “add this node” a channel computer system. display presenter on the n 11.5-7, button, link. Id. col.7 and a “back” display 20-24. This allows the Id. col.7 11. 13-15, not a 18-19. This is disclosure presenter preview present- data before claimed corresponding to the algorithm an it the audience. Id. col.7 11.32-34. ing function; description it “coordinating” is interface. presenter display of a
Id. figure 1240). 5. figure This contains a Thus, box the testimony of Dr. Souri listing the sources of data and a media cannot create structure where none other- displays window that the current feed re- wise exists. ceived from the source of data selected in Because the '840 fails to disclose
the list box. Again; Id. eol.7 11.24-28. this any structure corresponding to the “coor- figure a description presenter dis- dinating” function of the “distributed interface; play it is not a disclosure of an module,” control we affirm the algorithm corresponding to the claimed judgment that claims 8-16 are invalid for functions. point Williamson has failed to indefiniteness under 35 U.S.C. to an adequate disclosure of corresponding structure in specification. *15 points Williamson to the declara ConclusioN tion of Dr. Souri to show that the '840 The district court in erred construing patent discloses structure. testimony The “graphical the display representative of a of ordinary one of skill in the art cannot classroom” terms in claims 1-7 and 17-24. supplant the total absence of structure The district court did not in err construing Noah, from specification. the 675 F.3d at the term “distributed learning control mo- 1312 (quoting Credit Card Default Proof dule” in claims 8-16 of patent the '840 as a
Sys., U.S.A., Inc., Inc. v. Depot Home means-plus-function claim term lacking (Fed.Cir.2005)). F.3d pro The corresponding structure. We therefore hibition against using expert testimony to vacate the final judgment non-infringe- of create structure where none otherwise ex ment with respect to ists claims 1-7 and 17-24 is a direct consequence of the re quirement and affirm judgment the final specification invalidity the adequate ly disclose corresponding claims 8-16. structure. We remand for further (quoting Computing, AllVoice 504 F.3d at proceedings consistent opinion. with this AFFIRMED-IN-PART, question but I whether those statements VACATED- in- IN-PART, underlying fundamental issues sidestep AND REMANDED development functional volving the Costs claiming since 1952 when 35 U.S.C. law its own costs party passed. § shall bear 6 was paragraph Each appeal. this these and the reasons set forth be- For low, concur-in-part, I dissent respectfully REYNA, Judge, concurring-in- Circuit part, provide certain comments and additional dissenting-in-part, part, concerning means-plus-function claiming. views. around for this second time This is the “Graphical Display” I. The Limitations. I, first, I dissent- case. In the Williamson majority the district The reverses that the majority conclusion ed from the that the dis- “graphical court’s conclusion module” term learning control “distributed a terms play representative of classroom” patent recites suffi- claim 8 of the '840 require pictorial map a and construes limitation keep the claim cient structure representation of an graphical terms as “a module” out- learning control “distributed space in which partially at least virtual § purview of 35 U.S.C. side of the ma- participants can interact.” While 6.1 paragraph of the '840 jority is correct that the claims around, In this second time Williamson pictorial map, patent require do not II, majority itself to conclude reverses ignores a critical majority’s construction mo- learning control that the “distributed below, specifi- limitation. As reviewed struc- not recite sufficient dule” term does history make clear prosecution cation and ture, para- 35 U.S.C. governed is display representative “graphical that the paragraph under graph and is indefinite properly are con- of a classroom” terms correct this conclusion is the 2. Because requiring visually depicted vir- strued as result, explain my I To concur- concur. tual classroom. rence, rely I on the reasons I laid out in my During prosecution, applicant I. ex- dissent Williamson from that the invention is distinct plained however, ig- majority, The continues requires art prior because that an im- showing evidence nore critical displayed on “visual virtual classroom” visually depicted virtual classroom age of a system: computer and second both a first patent. of the '840 required by claim 8 Additionally, prior does not dis-' opinion. [the art] of this portion I dissent from “creating a claimed feature of close the addition, majority embraces this In display representative graphical as an vehicle to overrule opportune case computer system classroom” on a second adjectives prior used in certain improper present coupled to the network. describing para- opinions computer allows both a first invention e.g., Inventio presumption. See graph *16 (for com- example, presenter system Elevator Americas ThyssenKrupp v.AG computer system) and a second puter (Fed.Cir.2011) 649 F.3d 1360 Corp., (for example, an audience mem- system in “strong” presumption a fa- (describing ber) display of the graphical to view a application § paragraph vor of 6 “means”). This claimed feature classroom. I cannot where a claim recites statements, the audience invention allows present say disagree that I with those Online, LLC, (Fed.Cir.2014) 770 1380 1. Williamson v. Citrix F.3d 1356
members to interact history in a visual virtual “graphical indicate that the display classroom, environment with both the representative of a classroom” terms re presenter and other audience members. quire visually depicted a virtual classroom. contrast, By prior merely [the art] dis- The by majority construction derived n in, log closes the students “[as] their important reads out this limitation that seating locations in the classroom are distinguishes the prior invention from the by highlighted shown a icon the class- art. See Callicrate v. Mfg., Wadsworth map room on the teacher’s screen.” ... (Fed.Cir.2006) prior suggest [The art] does not teach or (holding that it was error for the district displaying graphical a display repre- court to read out a clearly limitation re sentative a classroom on a student’s quired by language the claim specifica screen. tion). It is error to read a claim too (original J.A. 1267-68 emphasis removed broadly, as it is to read a claim too narrow added). and emphases These statements See, ly. e.g., Phillips v. Corp., AWH conjunction, with the patent’s claim (Fed.Cir.2005). F.3d In read terms confirm significance of display- ing important out this limitation on the ing visually depicted virtual classroom. “graphical display representative of a The metaphor” “classroom is used ex- terms, classroom” majority sidesteps tensively in characterizing operation, our well established rules of claim con benefits, touting of the inventions struction, causing them to an reach errone patent. embodied the '840 The Ab- ous result. stract teaches that “[t]he classroom envi- ronment provides module a classroom met- II. Claiming Functional aphor having podium and rows of seats majority switches course from its presenter to the computer audience prior decision, I, Williamson and now af- systems.” patent '840 Abstract. The firms the district court’s conclusion that Summary of the Invention states that the the term “distributed control mo- prior drawbacks of the art are overcome governed by § dule” is 112 para. 6 and is “by a learning system distributed that uses indefinite under because the industry-standard computer hardware and specification of patent the '840 fails to software linked a network like the In- corresponding disclose structure. The ma- ternet to provide classroom- or auditori- jority goes explicitly on to “overrule the metaphor um-like at presenter least one characterization presumption of th[e] [that and at least one audience member.” Id. § 112 para. 6 apply does not when the col. 2 11.10-14. The further teaches . ” term “means” is not ‘strong.’ used] as
that a region” “feedback presenter’s on the Maj. Op. at agree 1349-50. While I with computer “preferably displays graphical conclusion, we stop short of address- representation of the classroom” and the ing other equally fundamental concerns “classroom environment module” is used to about functional claiming. provide “a classroom- or auditorium-like metaphor to presenter and audience Our use of .para. 6 presumptions 11-13, members.” Id. col. 3 11. col. 5 1.67- rigid framework, relies on a where a flexi- col. 6 1.1. arguably ble one is A apt. “pre- more sumption”
The repeated procedural mention is a tool of the classroom that shifts metaphor proof within the the burden of context of the inven on a substantive issue: tion and importance established, of a if a visually de basic fact is a court ac- picted virtual classroom in prosecution cepts a conclusion on the issue unless the
1357
governed by
that
term is
this statute when the
with evidence
is rebutted
presumption
associated stan-
presumption’s
Appellees argue
term “means” is used.
meets
Federal
1-301 Weinstein’s
a
proof.
straightfor-
dard of
that
started out as
“[w]hat
(2015).2
§ 112
§
Our
Evidence
301.02
...
morphed
ward issue of substance
has
notion
come from the
para. presumptions
6
Appellee’s
into an issue of form.”
Petition
that,
likely
it is more
being equal,
all else
Appellees
for
En Banc at 6.
Rehearing
it
covered
a statute when
party
that a
is
6],
112
argue
para.
that “the text
[§
statute. The use of
uses the words of the
it,
Supreme
authority leading
Court
argument goes,
presumptions,
formal
legislative history universally
its
confirm
extreme,
concept
supply-
to the
takes this
applies
that
to all
that
[the statute]
claims
for a claim that
ing one substantive test
per-
do not recite sufficient structure for
a claim
“means” and another for
recites
forming
regardless
the recited function —
non-structural terms like
that recites other
of whether the word ‘means’ is used.” Id.
admits no such
“module.” The statute
Moreover,
at 11.
the fact that the statute
variation,
only one test:
is the
supplying
“step”—
uses both terms —“means” and
step
a
or
for
“expressed as means
element
suggest
any presumption
would
that
function without the
specified
performing
apply
should
to the use of either word.
material,
structure,
acts in
recital
Yet,
arguably
it is
not clear to what extent
arguably changes
thereof.”
support
What
presumption
this court attaches a
to the
weight we attach to different recita-
is the
“step.”
word
meeting
weighs
in
this test: “means”
tions
Finally,
generally accepted
it
is
that
terms like “module”
heavily, non-structural
passed
response
§
6 was
para.
less, and, at the other end of
weigh a little
decision Hallibur
Supreme
Court’s
purely structural
terms
spectrum,
Walker,
v.
Cementing
ton Oil Well
Co.
329
heavily
opposite
in the
direction.
weigh
(1946).
6,
that recite “means.”
the Halli
I dissent from the majority’s reasoning
burton
precedent
Court relied on
invalidat
majority’s
and the
holding that “distribut-
ing functional claims that did not recite the
ed
control module” falls under
9,
term “means.” Id. at
(citing
For example, suppose an invention re- ing so-called functional claims is new. lates to a new television set. The televi- It provides that an element of a claim sion set includes a new (and transistor-based a for combination a combination tube, picture as well as other new fea- may only be not a combination of me- tures. The picture tube can recited be elements, chanical but also a combina- ways .two claim the for the television: tion of in a composition substances claim, claim) steps or process may Standard claim element a format: expressed - be as a step means or television, A comprising: performing function, a specified without picture tube; A ... structure, recital the material or aсts Means-plus-function format: in support thereof. A television comprising: Federico, P.J. Commentary on the New Picture tube displaying means for Act, (West Patent in 35 25 U.S.C.A. picture; television ... 1954), reprinted in 75 J. Pat. & Trademark Irah H. Soo’y (1993).1 Donner, Patent Prosecution: Off. PRACTICEANDPROCEDUREBEFORE THE U.S. Commentary The made clear that the (2d Patent and Trademark Office at 46^47 statute was intended to overrule some ed.1999). Court decisions:
My colleagues protest statutory
the
unquestionable
It is
that some measure
presumption of “means” “has resulted in a
of greater
in the
liberality
use of func
proliferation of
claiming
functional
unteth-
expressions
tional
in combination claims
ered to
para. 6 and
free
the
is authorized than
permitted
had been
strictures set
in the
Maj.
forth
statute.”
by some court decisions and that deci
Op. at 1349.
an
This is
indictment of the
sions such as that
in Halliburton Oil
fidelity
statute,
court’s
to the
not a flaw in
Walker,
Cementing
Well
Co. v.
329 U.S.
the statute itself.
The court’s reasoning
(1946),
S.Ct.
1. See
Congressional
Giles S.
all
revision bill’ at his earliest conven-
Intent —
1952?,
Who
ience....");
wrote the
Zarfas,
Patent Act
in Patent
see also Louis S.
*21
(June
¶ 6,
38510,
21,
38514
Fed.Reg.
112
65
art,
is,
that
the Patent
prior
оver
2000).
2 cites In re Donaldson
Endnote
a claim
authorized to allow
Office is not
¶
112 6 sets a
“stating
for
that 35 U.S.C.
prior
art.
which “reads on”
may
broadly
limit
how
the PTO
con
on
Id. at 26.
language under
means-plus-function
strue
the 1952 Act
paragraph
this
Thus
interpretation’.”
of ‘reasonable
the rubric
case,
had
Halliburton
which
overruled the
further ex
The Guidelines
Id. at 38515.
precedent, as
by earlier
supported
been
plained:
Halliburton, 329
discussed.
Court
prong
first
of this
respect
to the
With
10,
(citing
Elec.
at
59 (Fed.Cir.2011) The Exami 649 (“Thus, Revised F.3d 1356 nation Guidelines in 2011 to in attempted the presumption flowing from the absence corporate this court’s intervening deci of the term “means” is a strong one that is sions, for the Federal Circuit begun had overcome”); not readily Corp. Al-Site v. its clarity. retreat from See Supplementa International, VSI 174 F.3d ry Examination Guidelines for Determin (Fed.Cir.1999) (“[W]hen 1318 an element ing Compliance With 35 U.S.C. and for 112 “means,” claim does not the term use Treatment of Related Issues in Ap Patent treatment as a means-plus-function claim (Feb. 2011). plications, Fed.Reg. 76 element is generally not appropriate.”);
Examiners are now instructed to scruti Communications, Persоnalized Media nize claims for “a nonce word or verbal Commission, LLC v. International Trade construct recognized is not as the (Fed.Cir.1998) (“failure 161 F.3d name of a structure.” Id. at (citing use word pre- “means” creates a World, Lighting 1360). 382 F.3d at The ¶ sumption apply.”). does not examiner is instructed to “determine On this weighty precedent, the court’s en whether the claim limitation uses a non rejection banc of this simple signal is not (a structural term term that simply readily understood. for”).” substitute for term “means The en banc permits court still use of (citing PHD, Inc., Welker Bearing Co. v. signal, “means” although without a (Fed.Cir.2008)). The “strong presumption” significance. examiner guess must whether the term is result is fresh uncertainty, for judge intended as a means-plus-function term, *22 can invoke paragraph although 6 pat- the now that the court signal holds that the entee chose otherwise speci- and wrote the “means for” not need be used. Paragraph fication and claims aon different legal 6 has morphed from a legal clear instruc standard. tion litigator’s into a delight. precedent, Federal Circuit on off All claims requirements and must meet the patentability of This court recognized has that the ab sence of for” signals “means the patentee’s The court states its concern with overly intent not to invoke section interpretation broad of software claims. and that this intent should nоt rejected be The powerless court is require to not soft- lightly. E.g., Motorola, Inc., Apple Inc. v. ware claims to comply with statutory the (Fed.Cir.2014) (“We 1297 requirements of description, enablement, have repeatedly pre characterized this definiteness, unobviousness, etc. If there sumption ‘strong’ as readily and ‘not over abuses, have been majority states, as the and, such, come’ have ‘seldom’held that remedy statute, is hot to eliminate the a limitation without recitation of “means” apply but to the statute. is a means-plus-function limitation.”); Flo Today’s ruling example. is an The court Solutions, Healthcare v. LLC Kappos, 697 holds that the clause (Fed.Cir.2012) “distributed (“Our F.3d 1374 cases control module” is subject paragraph make clear ... presumption flow ing because “module” from the is a “nonce word.” absence the term The ‘means’is court strong one that then finds no “algorithm” is not readily over for “mo- come.”) World, (quoting dule” in Lighting specification, Inc. v. and invalidates Lighting, Birchwood F.3d claim for failing comply para- with (Fed.Cir.2004)); graph However, Inventio v. AG contrary to the appar- ThyssenKrupp Elevator Corp., Americas ent of majority, belief presence signal does not paragraph absence patentability. requirements
affect requirements meet the claims must
All Paragraph 6 is a statute patentability. limitation; it does not
of authorization of the statute. provisions other
annul the today’s ruling is that with problem
The simplicity rejected rigor
court has intent, patentee’s 6 and the paragraph judicial subjec- arbitrary
replacing it with
tivity.
Conolusion designed to authorize 6 was
Paragraph claiming a func- the rules provide purpose No step. element or
tional statutory signal. by discarding
served stability inroad into result is further respectfully I dis-
of claim construction.
sent. LLC, I
INTELLECTUAL VENTURES LLC, II
Intellectual Ventures
Plaintiffs-Appellants
v. *23 (USA), National BANK
CAPITAL ONE
Association, Capital Financial One One, Capital National
Corporation,
Association, Defendants-Appellees.
No. 2014-1506. Appeals,
United States Court
Federal Circuit.
July Notes Editor, J. Pat. & Trademark Off. Exploitation (BNA Procurement Soc'y 61, 66 from Inc., 1963) ("Mr. (1993) ("Examiner-in-Chief Federico a letter received Federico saying ... primary requested the [House] committee was of the author Patent ofAct 1952.”). him preparation to undertake of 'an over- to invoke 35 U.S.C. paragraph interpreted will be explained Federico ¶ following 3-prong to claim a func- opportunity 112 6 if it meets enlarges the sup- function is tion, how that but limits analysis: construed: ported (1) claim limitations must use The that such by stating paragraph ends for;” “step “means for” or phrase construed to cover shall be claim (2) “step the “means for” or for” material, structure, corresponding lan- by must modified functional be specification in the described acts guage; and pri- This relates thereof. equivalents (3) “step for” or phrase “means of such claims marily to the construction modified struc- for” must not be when the determining purpose for the ture, achieving or acts for material (note infringed the use claim is function. specified “cover”), appear and would not word Examination Guidelines for Supplemental much, in deter- any, applicability if have Determining Applicability of 35 U.S.C. of such claims mining patentability