September/October 2015
IP Litigator
By Jason E. Stach; James D. Stein
Authored by Jason E. Stach and James D. Stein
The recent en banc Federal Circuit decision in Williamson v. Citrix Online, LLC could change how courts interpret an entire class of patent claim features. The Williamson court held that a claimed "distributed learning module" was a means-plus-function term having its construction governed by 35 U.S.C. § 112(f) (or pre-AIA § 112, ¶ 6), despite that term not using the traditional "means for" language that presumptively triggers means-plus-function treatment. In doing so, the en banc court provided a new standard for determining which types of claim features should be considered means-plus-function limitations. This new regime presents pitfalls and opportunities for those litigating and drafting patent claims. It also may renew practitioners' interest in computer-readable medium (CRM) claims, which may avoid some of the issues created by Williamson while providing additional infringement benefits.
In patent claims, means-plus-function limitations typically are written in the form "means for" followed by a function (e.g., "means for communicating"). Although their language is broad and, if interpreted literally, could encompass any means for performing the claimed function, a means-plus-function term is limited in scope by statute. It is construed narrowly "to cover the corresponding structure, material, or acts described in the specification and equivalents thereof." [35 U.S.C. § 112(f).] So instead of covering all means for performing the claimed function, means-plus-function claims cover only the specific structures disclosed in the patent specification and their equivalents.
For example, the term "radio" might be construed to cover any type of radio circuit (e.g., AM, FM, WiFi, Bluetooth, etc.). A "means for communicating," while seemingly broader on its face, might be construed to cover only FM radios and their equivalents if that is the only type of communication means disclosed in the patent specification. Whether a term is treated as a means-plus- function term, therefore, can have a significant effect on the scope of a claim, particularly when the patent specification is not exhaustive in its description of the means.
Before Williamson, there was a strong presumption against interpreting a claim term as a means-plus-function term unless it expressly used the word "means." The strong presumption could be overcome only if the proponent of the means-plus-function construction showed that "skilled artisans, after reading the patent, would conclude that a claim limitation is so devoid of structure that the drafter constructively engaged in means-plus-function claiming." [Inventio AG v. Thyssenkrupp Elevator Americas Corp., 649 F. 3d. 1350, 1357 (Fed. Cir. 2011).]
In Williamson, however, the en banc Federal Circuit lowered this standard. The court stated "that we should abandon characterizing as 'strong' the presumption that a limitation lacking the word 'means' is not subject to § 112, para. 6 [or post- AIA § 112(f)] . . . . We also overrule the strict requirement of 'a showing that the limitation essentially is devoid of anything that can be construed as structure.' " [Williamson v. Citrix Online, LLC, 2015 WL 3687459, at *7 (Fed. Cir. 2015) (en banc in relevant part).] Instead, "[t]he 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." [Id.] Under this relaxed standard, more apparatus terms qualify as means-plus- function limitations, thus narrowing formerly broad terms to encompass only corresponding structure described in the patent specification and its equivalents.
Applying this standard, a Federal Circuit panel affirmed a district court's treatment of a "distributed learning module" as means-plus-function language even though "means" was not recited in the term. According to the panel, " 'module' does not provide any indication of structure because it sets forth the same black box recitation of structure for providing the same specified function as if the term 'means' had been used," and the prefix "distributed learning" also did not impart any structure. [Id. at *8.]
With Williamson now casting a wider net for terms that qualify as means-plus-function limitations, patent prosecutors and those litigating on behalf of patent owners must adapt their strategies to ensure success. One option is to pursue computer-readable medium claims.
The three most common claim types patent practitioners use when working with computer-based technologies are (1) apparatus, (2) process/ method, and (3) CRM claims. A prosecutor selects from this toolset when drafting or prosecuting a patent application that seeks to cover the full scope of an invention. When litigating a patent, litigators also must often select from these types of claims when choosing which claims to assert against an accused infringer.
The apparatus claim is attractive because it is infringed by any device having the features recited in the claim. [Finjan v. Secure Computing Corp., 626 F.3d 1197, 1203-1205 (Fed. Cir. 2010).] By contrast, a process or method claim is only infringed if each step recited in the claim is performed. [Id. at 1206.] Thus, while apparatus claims may be infringed regardless of whether the apparatus was ever used, method claims are infringed only when the method actually is performed.
The CRM claim is a hybrid of the apparatus and the method claim, having properties of both. The CRM claim takes the form of a computer-readable medium storing instructions that, when executed by a computer, cause it to perform a specified method. So a CRM claim recites a product or apparatus—the computer-readable medium—but defines it in terms of the function it enables a computer to perform, like a method claim. While the preambles of CRM and method claims differ, the substance of the two claims is typically very similar.
CRM claims began to appear in the 1990s, when software sales on floppy disks, CD-ROMs, and DVD-ROMs became prevalent. Practitioners began to use CRM widely after the Federal Circuit affirmed that a CRM claim recites a patent-eligible product under 35 U.S.C. § 101. [In re Beauregard, 53 F.3d 1583 (Fed. Cir. 1995).] CRM claims remain viable options today—even after the Supreme Court's decision in Alice Corp. v. CLS Bank Int'l [134 S. Ct. 2347 (2014)], which imposed additional limitations on patentable subject matter under 35 U.S.C. § 101. After Alice, the US Patent & Trademark Office endorsed CRM claims as patent-eligible by listing CRM claims in its post-Alice Section 101 guidelines on patent-eligible subject matter. [77 Fed. Reg. 74618 (Dec. 16, 2014), 2014 Interim Guidance on Patent Subject Matter Eligibility, Examples: Abstract Ideas at 1-3, 8-10.] This is not to say that every CRM claim will survive Section 101 scrutiny—courts will declare some invalid based on their particular claim features—but a CRM claim does not automatically have invalidity issues under Section 101. So while the business model that CRMs initially targeted is less prevalent today, practitioners should still keep them in mind, particularly for devices that contain embedded memory storing instructions for execution by a processor.
The hybrid apparatus and method properties of the CRM claim give it an advantage over pure apparatus claims after Williamson. While Williamson might someday be extended to method-style step-plus-function features, today it is limited to apparatus-style means-plus-function features. CRM claims typically recite method steps, avoiding the narrowing constructions of Williamson entirely.
CRM claims also enjoy the benefit of being infringed even if the claimed code is not executed, just as an apparatus claim. For example, in Finjan v. Secure Computing Corp., the Federal Circuit affirmed that the defendant's security appliances infringed the plaintiff 's CRM claim even though the defendant sold its devices with the relevant software disabled and the customer had to purchase a key to activate it. [626 F.3d 1197, 1203-1204 (Fed. Cir. 2010).] The court reasoned that, "to infringe a claim that recites capability and not actual operation, an accused device need only be capable of operating in the described mode." [Id. at 1204.]
Products covered by CRM claims also are "articles" under the Tariff Act of 1930, so they can infringe by importation into the United States and support exclusion or cease and desist orders issued by the International Trade Commission. [See, e.g., In the Matter of Certain Electronic Digital Media Devices and Components, No. 337-TA-796, Notice of Commission's Final Determination (ITC Aug. 9, 2013) (excluding importation of mobile phones, media players, and tablet computers based on patents containing CRM claims).] Method claims may not enjoy the same benefit. While the en banc Federal Circuit recently held that the ITC can premise its exclusion orders on method claims infringed by inducement, the decision drew four dissents and may be subject to further judicial review. [Suprema, Inc. v. Int'l Trade Comm'n, No. 2012-1170 (Fed. Cir. Aug. 10, 2015) (en banc).] CRM claims do not pose the same uncertainty.
Because of their hybrid method and apparatus qualities, CRM claims provide a number of potential benefits to practitioners enforcing patents. Patent prosecutors should keep CRM claims in their toolbox, and litigators should keep the benefits of CRM claims in mind when selecting which claims to assert against accused infringers or when narrowing their claim assertions for trial.
Reprinted with permission from the IP Litigator, published by Wolters Kluwer. This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. This article is only the opinion of the authors and is not attributable to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, or the firm's clients.
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