Williamson v. Citrix Online:
The Demise, Return, and Second Demise(?)
of Functional Claiming
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Functional claims describe an element in terms of
the desired result rather than how that result is
achieved:
•  a fastening means for connec.ng said thermostat to a wall •  so3ware means for acknowledging shipment of an order from a remote sta.on •  a heuris.c for determining that the one or more finger contacts correspond to a command •  atoms configured in a way that reduces human cholesterol Halliburton Oil Well Cemen1ng Co. v. Walker 329 U.S. 1 (1946) •  Claim element: “means connected with the well for indica.ng the elapsed .me for the wave to traverse the space to the well boIom and return to the surface” •  Held invalid because it “describes this most
crucial element . . . in terms of what it will do
rather than in terms of its own physical
characteristics or its arrangement.”
•  Court’s concern was policing claim scope.
General Electric Co. v. Wabash Appliance Corp., 304 U.S. 364 (1938) •  Claim element: “compara.vely large grains of such size and contour as to prevent substan.al sagging and offseNng”
•  Held invalid because it did not properly
describe the invention but used
"conveniently functional language at the
exact point of novelty”
•  Cited in Halliburton –claim did not include
the word ‘means’
1952 Patent Act An element in a claim . . . may be expressed as
a means or step for performing a specified
function without the recital of structure,
material, or acts in support thereof, and such
claim shall be construed to cover the
corresponding structure, material, or acts
described in the specification and equivalents
thereof.
35 U.S.C. § 112(f) Intent or Scope Theory •  Is 112(f) something applicants can chose to invoke by using the word ‘means’?
•  Or is 112(f) a limit on claim scope? Intent Theory Won We have repeatedly characterized this
presumption as “strong” and “not readily
overcome” and, as such, have “seldom” held
that a limitation without recitation of “means” is
a means-plus-function limitation.
Apple Inc. v. Motorola, Inc., 757 F.3d 1286 (2014) (ci.ng Ligh1ng World, Inc. v. Birchwood Ligh1ng, Inc., 382 F.3d 1354 (Fed. Cir. 2004)) http://patentlyo.com/patent/2014/01/what-does-it-mean-for-a-device-to-be-configured-to-perform-a-particular-function.html
http://xkcd.com/1425/
Williamson v. Citrix Online, 792 F.3d 1339 (Fed. Cir. 2015) Claim: a distributed learning control module for receiving communica1ons transmiGed between the presenter and the audience member computer systems and for relaying the communica1ons to an intended receiving computer system and for coordina1ng the opera1on of the streaming data module. Williamson v. Citrix Online, 792 F.3d 1339 (Fed. Cir. 2015) Majority: [W]e will apply the presump.on as we have done prior to Ligh1ng World, without requiring any heightened eviden.ary showing and expressly overrule the characteriza.on of that presump.on as “strong.” We also overrule the strict requirement of “a showing that the limita.on essen.ally is devoid of anything that can be construed as structure.”