Despite a decade of precedent to the contrary, the heightened bar to overcoming the presumption that a limitation expressed in functional language without using the word “means” is not subject to § 112, ¶ 6 has been overruled. Here, for example, the claimed “distributed learning control module” was found to invoke § 112, ¶ 6 despite the absence of the word “means” because the word “module” sets forth the same black box recitation of structure as if the term “means” had been used and the prefix “distributed learning control” does not impart structure into the term “module.” “When a claim term lacks the word ‘means,’ the presumption can be overcome and § 112, para. 6 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.’” It may therefore be best to avoid so-called nonce words including “module,” “mechanism,” “element,” and “device” in claims not intended to invoke § 112, ¶ 6 in favor of more concrete structural terms.
Background / Facts: The patent being asserted and reconsidered en banc here is directed to a “distributed learning” system that utilizes industry standard computer hardware and software linked by a network to provide a classroom or auditorium-like “virtual classroom” environment. In this regard, the claims recite a “distributed learning control module” that “receive[s] communications transmitted between the presenter and the audience member computer systems,” “relay[s] the communications to an intended receiving computing system,” and “coordinat[es] the operation of the streaming data module.” This “distributed learning control module” was previously found under the precedent in Lighting World, Inventio, Flo Healthcare, and Apple to connote sufficient structure so as to avoid a means-plus-function interpretation under § 112, para. 6.
Issue(s): Whether the heightened bar in Lighting World, Inventio, Flo Healthcare, and Apple remains appropriate for overcoming the presumption that a limitation expressed in functional language without using the word “means” is not subject to § 112, para. 6.
Holding(s): No. “Our consideration of this case has led us to conclude 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, para. 6. … Henceforth, we will apply the presumption as we have done prior to Lighting World, without requiring any heightened evidentiary showing and expressly overrule the characterization of that presumption as ‘strong.’ We also overrule the strict requirement of ‘a showing that the limitation essentially is devoid of anything that can be construed as structure.’ The 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. [] When a claim term lacks the word ‘means,’ the presumption can be overcome and § 112, para. 6 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.’ [] The converse presumption remains unaffected: ‘use of the word ‘means’ creates a presumption that § 112, ¶ 6 applies.’ … Here, the word ‘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] [t]he prefix ‘distributed learning control’ does not impart structure into the term ‘module.’