Are 102, 6th Paragraph and 102, 2nd Paragraph the New 101 in Patent Eligibility?

Williamson v. Citrix Online Makes One Wonder:  Part 1 of a 2 Part Series

By Michael Stein, Stein IP LLC

July 6, 2015

This is part 1 of a 2 part series addressing the growing use of 112, 6th and 2nd paragraphs to invalidate claims in the USPTO and the courts, and what the standards are for implementation and application of these sections of 35 USC.  Part 2 of this article will explore possible strategies to minimize the impact of 112, 6th and 2nd paragraph, and likely assist in avoiding 101 rejections as well.

Up until about 2010 or 2011, very few patent applications, such as in the fields of computers,communications and business methods, were at risk of being deemed patent ineligible because of 35 USC 101.  The same held true of patent claims of issued patents, whether under re-examination or during litigation.  Further, patent eligibility under 35 USC 112, 2nd paragraph (112, 2nd paragraph pre-AIA is the same as 112(b) post-AIA, but for the sake of simplicity, only 112, 2nd paragraph will be used in this article since the present patent was a pre-AIA patent) was rarely raised, whether due to the specific language being deemed indefinite directly or because a claim term was deemed to be a means-plus-function term under 35 USC 112, 6th paragraph (112, 6th paragraph pre-AIA is the same as 112(f) post-AIA, but for the sake of simplicity, only 112, 6th paragraph will be used in this article), and then there was insufficient structure in the specification to render the claim term definite.  Times have really changed.

As set forth in the Mayo v. Prometheus, 132 S. Ct. 1289 (2012), AMP v. Myriad, 132 S. Ct. 2107 (2013) and most recently, the Alice v. CLS Bank,   134 S.Ct. 2347 (2014) US Supreme Court decisions,  it has been held that 101 is a threshold determination as to patent claim eligibility, and then 102, 103 and 112 are to be considered for patentability.  Numerous Federal. Circuit and Inter Partes Review decisions and office actions by examiners have deemed claims to be patent ineligible under 101 in fields like computers, communications, business methods and biotechnology in particular.  New examination guidelines under 101 were issued in 2014 and January 2015 to determine patent eligibility of claims under 101.   Claims that were never previously considered to be at risk of patent eligibility, especially in these fields, are now ripe for attack by examiners or third parties.  But even assuming that your patent claims get through the increased hurdles of 35 USC 101, which is no small feat these days, there is now becoming an increasingly potent alternative attack against the validity of claims using 35 USC 112, 6th paragraph and 2nd paragraph.

How does 112, 6th paragraph, which appears to explicitly provide a path to patent eligibility for means-plus-function claims, come into play with respect to 101 and 112, 2nd paragraph, and is 112, 6th paragraph becoming increasingly used as a hammer to smash the eligibility of patent claims?  To assist in arriving at an answer, one needs to look no further than the en banc Federal Circuit decision of Williamson v. Citrix Online, LLC, 13-1130 (Fed. Cir. 2015) involving US Patent No. 6,155,840 (hereinafter the ‘840 patent).

Analysis of Decision

How does one know if a claim limitation is to be interpreted as a means-plus-function limitation?

Initially, the Federal Circuit pointed out that “to determine whether 112, 6th paragraph applies to a claim limitation, our precedent has long recognized the importance of the presence or absence of the word ‘means’,” citing Personalized Media Comm. V. Int’l Trade Commission, 161 F.3d 696 (Fed. Cir. 1998).

The Federal Circuit continued by saying that “our cases have emphasized that the essential inquiry is not merely the presence or absence of the word ‘means’ but whether the words of the claim are understood by persons of ordinary skill in the art to have sufficiently definite meaning as the name of the structure.”  The court said that in their opinions in Lighting World 382 F.3d 1354 (Fed Cir. 2004), Inventio AG v. ThyssenKrupp Elevator Americas Corp. 649 F.3d 1350 (Fed. Cir. 2011), Flo Healthcare Solutions, LLC v. Kappos, 697 F.3d (Fed. Cir. 1367), and Apple Inc. v. Motorola, Inc. (757 F.3d 1286), it was established that there was a heightened bar to overcoming the presumption that a limitation expressed in functional language without using the word “means” is not subject to 112, 6th paragraph.

The court then overruled those previous decisions by stating that “such a heightened burden is unjustified and that we should abandon characterizing as ‘strong’ the presumption that a limitation lacking the word ‘means’ is not subject to 112, 6th paragraph.  The characterization that the presumption of not using the word ‘means’ to indicate that 112, 6th paragraph should not be invoked is strong is overruled, as well as the strict requirement of “a showing that the limitation essentially is devoid of anything that can be construed as structure.”

The new 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 of the structure.”  When a claim term lacks the word “means”, the presumption can be overcome and 112, 6th paragraph will apply if the challenger demonstrates that the claim term fails to ‘recite sufficiently definite structure’ or else recites ‘function without reciting sufficient structure for performing that function.’”

Claim 8, which was one of the claims in question, recites:

distributed learning control module for receiving communications transmitted between the presenter and the audience member computer systems and for relaying the communications to an intended receiving computer system and for coordinating the operation of the streaming data module.

In its analysis, the court felt that the language was consistent with traditional means-plus-function claim limitations asserting that such phrasing replaces the term “means” with the term “module” and recites three functions performed by the “distributed learning control module.”  Further, the court stated that “module” is a well-known nonce word that can operate as a substitute for “means” in the context of 112, 6th paragraph, as can other generic terms like “mechanism,” “element,””device,” and other nonce words that reflect nothing more than verbal constructs that typically do not connote sufficiently definite structure, citing Mass. Inst. of Tech. v. Abacus Software (Fed Cir. 2006).

Going into further explanation, the court said that the prefix “distributed learning control” does not impart structure into the term “module” and that these words do not describe sufficiently definite structure.  Interestingly, the court then goes to the specification, not initially to determine whether the claim comports with 112, 2nd paragraph, but to determine whether the claim limitation should be construed under 112, 6th paragraph in the first place, even before looking whether the specification provides sufficient structure for the claimed limitation.  The court said that “although the ‘distributed learning control module’ is described in a certain level of detail in the written description, the written description fails to impart any structural significance to the term.  While portions of the claim do describe certain inputs and outputs at a very high level, the claim does not describe how the distributed learning control module interacts with other components in the distributed learning control server in a way that might inform the structural character of the limitation in question or otherwise impart structure to the distributed learning control module as recited in the claim.”

The court ignored a declaration by a Dr. Shukri Souri that as one of ordinary skill in the art, he would know exactly how to program a computer to perform the recited function.  The court stated that was not enough, and held that “but the fact that one of ordinary skill in the art could program a computer to perform the recited functions cannot create a structure where none is otherwise disclosed.”  The court said that “we conclude that the ‘distributed learning control module’ limitation fails to recite sufficiently definite structure and that the presumption against the means-plus-function claiming is rebutted,” so this limitation is subject to 112, 6th paragraph. Later, the court indicates that the prohibition against using expert testimony to create structure where none otherwise exists is a direct consequence of the requirement that the specification adequately disclose corresponding structure.

It is very interesting to note that the court went to the specification to determine whether the limitation should be construed under 112, 6th paragraph, particularly in view of the fact that it overturned other claim language interpretations by warning not to read limitations from the specification into the claims and under this analysis, how does one then go on to determine whether the limitation meets 112, 2nd paragraph requirements.  In otherwords, how does the 112, 6th paragraph analysis differ from that of the 112, 2nd paragraph analysis?

To construe a means-plus-function claim term requires a two-step process according to the en banc Federal Circuit.

  1. The court must first identify the claimed function; and
  2. Then, the court must determine what structure, if any, disclosed in the specification corresponds to the claimed function.

The court agrees with the district court that the specification of the ‘840 patent fails to disclose corresponding structure.  The written description of the ‘840 patent makes clear that the distributed learning control module cannot be implemented in a general purpose computer, but instead must be implemented in a special purpose computer – a general purpose computer programmed to perform particular functions pursuant to instructions from program software, according to the court.

Two issues arise with this analysis.  First, the Federal Circuit, in numerous other cases, goes out of its way to say that many computers, even when performing specific functions, are general purpose computers to invalidate claims under 101.  Now, the court goes to the other end of the spectrum to hold that the claims meet 101, but do not meet 112, 2nd paragraph.  Second, would not every single computer be a special purpose computer under the court’s definition of general vs. special computer?

The court, towards the end of the end of decision asserts “we require that the specification disclose an algorithm for performing the claimed function.  The algorithm may be expressed as a mathematical formula, or as a flow chart, or in any other manner that provides sufficient structure.”

The court concludes with “because the ‘840 patent fails to disclose any structure corresponding to the “coordinating” function of the “distributed learning control module,” we affirm the judgment that claims 8-16 are invalid for indefiniteness under 112, 2nd paragraph.

What the Federal Circuit has done is create uncertainty whether any claim limitation invokes 112, 6th paragraph, since the presumption of not using the term “means” is not very strong.  The court has also used the specification to assess whether a claim limitation has sufficient structure in the specification in part 2 of its test for whether 112, 6th paragraph has been invoked, thus seemingly making any analysis whether the claim limitation complies with 112, 2nd paragraph a self-fulfilling prophecy, as the answer has seemingly already been determined in the 112, 6th paragraph analysis.

Still yet further, the court seemingly provides a definition of a special purpose computer so that every computer is a special purpose one, resulting in 101 never being invoked, but from multiple decisions, we know that 101 is very alive and kicking.  It would appear that the aspects that make a claim limitation not be considered 101 ineligible, push the claim limitation straight towards a 112, 6th paragraph interpretation and a 112, 2nd paragraph rejection.

Overcoming these rejections is extremely difficult since the court has used the specification in its analysis and a patent owner is very limited to the extent to which it can amend the specification after filing, unlike amendments that are possible with respect to the claims.

While we hold our breaths and hope that a claim, such as one involving computers, communications or business methods, does not invoke 101, we now must also be concerned that even if we overcome this increasingly higher 101 hurdle, 112, 6th paragraph and 112, 2nd paragraph are coming into play more and more frequently, thereby providing yet additional hurdles thrown in the path of patent applicant and holders to keep their claims valid, and this is even before 102 and 103 are applied. I see more and more office actions where 112, 6th paragraph and 112, 2nd paragraph are cited one after the other, as a basis to reject particular claims of a given application.

It is clear that it is becoming increasingly common for claims to be struck down on issues other than novelty and obviousness and steps should be considered to be taken when drafting patent applications to avoid getting sucked up in the vortices of 101, 112, 6th and 2nd paragraphs, even though the language of these sections of 35 USC has not changed in decades.

So, what is one to do?

Part 2 of this 2 part series of this article will explore possible strategies to minimize the impact of 112, 6th and 2nd paragraph, and likely assist in avoiding 101 rejections as well.

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