ORDER DENYING DEFENDANTS' MOTION FOR RECONSIDERATION

Docket No. 93.

EDWARD M. CHEN, District Judge.

Plaintiff has filed suit against Defendants, asserting claims for patent infringement. Currently pending before the Court is Defendants' motion for reconsideration. In the motion, Defendants ask the Court to reconsider the construction of certain patent terms. Having considered the parties' briefs, the oral argument presented at the hearing on November 9, 2015, and all other evidence of record, the Court hereby DENIES Defendants' motion.

I. FACTUAL & PROCEDURAL BACKGROUND

Plaintiff initiated this lawsuit in the Western District of Texas, asserting that Defendants infringe at least one claim of the `393 patent. See Docket No. 1 (complaint). The Texas court issued its claim construction order for the `393 patent in May 2015. See Docket No. 84 (claim construction order). In construing certain patent terms, the court relied, inter alia, on the Federal Circuit panel decision in Williamson v. Citrix Online, LLC, 770 F.3d 1371 (Fed. Cir. 2014). Subsequently, the Federal Circuit vacated the Williamson panel decision and reconsidered the case en banc. See Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015) (en banc). In vacating the Williamson panel decision, the en banc court Federal Circuit's reversed a line of cases which had imposed a "strong" presumption against the application of 35 U.S.C. § 112 ¶ 6 whenever the term "means" is not used in the claim.

After the en banc decision issued, Defendants filed the currently pending motion in which they ask for certain patent terms to be reconstrued in light of the en banc decision. The district court in Texas, however, did not rule on the motion because it transferred the case to this Court. See Docket No. 101 (transfer order). That motion for reconsideration is now before this Court.

Defendants' motion asks for reconsideration of two terms in the `393 patent: (1) the "code segment" terms of claims 25 and 36, and (2) the "computer readable medium encoded with a computer program" terms in claims 49 and 60. Claims 25 and 49 are representative claims and are reproduced below.

Docket No. 1-1, at 24-26 (`393 patent) (emphasis added).

In its claim construction order, the Texas court rejected Defendants' contention that the "code segment" and "computer readable medium encoded with a computer program" terms are means-plus-function terms subject to 35 U.S.C. § 112 ¶ 6. Because of the Williamson en banc decision, Defendants contend that this conclusion was erroneous and that the terms should now be deemed means-plus-function terms.

II. DISCUSSION

As a preliminary matter, Defendants' motion for reconsideration is proper given the Williamson en banc decision, which changed the analysis of means-plus-function claims upon which the Texas court relied herein. Applying the then-applicable "strong" presumption that a limitation lacking the word "means" is not subject to § 112 ¶ 6, the Williamson panel found that the term "module" was not a means-plus-function term. The district court in Texas relied heavily on the Williamson panel decision by applying the Federal Circuit's analysis of "module" to the "code segment" term in this case, finding § 112 ¶ 6 not applicable. See Docket No. 84 (claim construction order). Reversing the panel decision, the en banc court in Williamson held that the presumption against applying § 112 ¶ 6 is not "strong" and that "module" was a means-plus-function term. See Williamson, 792 F.3d at 1349-51. Given the Texas court's reliance on the panel decision which was subsequently reversed, reconsideration is appropriate. On reconsideration, however, the Court finds Defendants' substantive arguments unpersuasive.

Means-plus-function claiming is authorized by 35 U.S.C. § 112 ¶ 6 (currently § 112(f)), which provides:

35 U.S.C. § 112 ¶ 6. As indicated by the language above, "[m]eans-plus-function claiming involves a quid pro quo." Noah Sys. Inc. v. Intuit Inc., 675 F.3d 1302, 1318 (Fed. Cir. 2012). That is, "[i]n exchange for being able to draft a claim limitation in purely functional language, `[t]he applicant must describe in the patent specification some structure which performs the specified function.'" Id. Moreover, the description of the structure must be definite. "`[A] means-plus-function clause is indefinite if a person of ordinary skill in the art would be unable to recognize the structure in the specification and associate it with the corresponding function in the claim.'" Id. at 1312.

In the instant case, the threshold question is whether the claim terms at issue are, in fact, means-plus-function limitations. To determine whether a term is a means-plus-function limitation, a court first looks to whether the claim term uses the word "means." See Williamson, 792 F.3d at 1349. If so, then the claim term is presumed to be a means-plus-function limitation. See id. If, however, the claim term does not use the word "means," then the term is presumed not to be a means-plus-function limitation. See Personalized Media Commc'ns, LLC v. Int'l Trade Comm'n, 161 F.3d 696, 703 (Fed. Cir. 1998) (noting that "`the use of the term "means" has come to be so closely associated with "means-plus-function" claiming that it is fair to say that the use of the term "means" . . . generally invokes [§ 112, ¶ 6] and that the use of a different formulation generally does not'"). The latter presumption applies here because the challenged claim terms do not include the word "means."

This presumption, however, is rebuttable. The party challenging the presumption against § 112 ¶ 6 has the burden of showing that the claim term fails to recite sufficiently definite structure. See Williamson, 792 F.3d at 1348. The Williamson en banc court held the presumption against § 112 ¶ 6 may be overcome where "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." See id. at 1349. Section 112 ¶ 6 applies if the claim term fails to "`recite[] sufficiently definite structure' or else recites `function without reciting sufficient structure for performing that structure.'" Id. (quoting Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000)).

The challenging party may provide intrinsic or extrinsic evidence as proof of what a person of ordinary skill in the art understands. See Personalized Media, 161 F.3d at 703-04 (listing as examples the patent itself and the prosecution history as well as dictionary definitions). Extrinsic evidence, such as dictionaries, provide useful and objective resources for determining the meaning of terms as understood by persons of ordinary skill in the relevant art. See Texas Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 1203 (Fed. Cir. 2002). However, the intrinsic record provides the "most reliable guide to help the court determine which of the possible meanings of the terms in question was intended by the inventor to particularly point out and distinctly claim the invention." Id.; see also C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 862-63 (Fed. Cir. 2004) (stating that Texas Digital did not hold extrinsic evidence trumps intrinsic evidence, but that consulting dictionaries as the initial step in determining the meaning of a term helps avoid improperly narrow constructions). Expert testimony cannot "create structure where none otherwise is disclosed." Williamson, 792 F.3d at 1351.

A. "code segment"

Claim 25 is a representative claim for the "code segment" term.

Docket No. 1-1, at 24 (`393 patent, claim 25).

Because the "code segment" term does not use the word "means," the Court presumes that the term is not a means-plus-function limitation, and it is Defendants' burden to prove otherwise — i.e., to show that a person of ordinary skill in the art would not understand the term to have a sufficiently definite meaning as the name for structure. See Williamson, 792 F.3d at 1348.

At the hearing, Defendants basically conceded that they were not making an argument that anytime software is implicated in a term, the term is a means-plus-function limitation. Defendants argued, nevertheless, that, without enough information about how the software operates, the use of the term "software," or something akin to that term, essentially becomes function claiming and fails to recite a "sufficiently definite structure." Id. at 1349.

The Court is not persuaded. First, the term "code segment" suggests some kind of structure as evidenced by the dictionary definition provided by Plaintiff. See Docket No. 77-2, at 6-8 (Plaintiff's Exhibits). The Microsoft Press Computing Dictionary 96 (3d. 1997), provided by Collaborative, defines "code segment" as:

Docket No. 77-2, at p. 6 (Plaintiff's Exhibit A).

Moreover, the claim language here provides a description as to how the code segment operates. The language in claim 25, does not simply describe broadly phrased high-level functions such as "receiving communications" or "coordinating the operation of the streaming data module," as in Williamson. See id. at 1344. Instead, claim 25 describes the objective and operation of the code segment as "receiving one or more electronic documents and an identity validation at a server computer," while also describing the structural interactions among the computer program's code segment components: "code segment for receiving one or more electronic documents . . . code segment for posting the received documents . . . code segment for providing the second party with access to the received documents . . . ." See Docket No. 1-1, at 24 (`393 patent).

In this regard, the Court finds Linear Tech. Corp. v. Impala Linear Corp., 379 F.3d 1311 (Fed. Cir. 2004), instructive.1 In Linear, the Federal Circuit rejected the contention that held that challenged term "circuit" was a means-plus-function limitation. The challenged claim in Linear was as follows:

Id. (emphasis added).

The Linear court began its analysis by consulting dictionary definitions:

Id. at 1320.

The Linear court then concluded that there was a sufficient description of the circuit's operation in the claim language itself:

Id. Thus, the court held § 112 ¶ 6 did not apply because the claim language recited the respective circuit's operation in sufficient detail to avoid means-plus-function treatment. Id. at 1320-21.

In the instant case, the level of specificity in describing the operations of "code segment" is similar to that described for "circuit" in Linear. And, it is more specific than the description of the operation of "distributed learning module" in Williamson. In Williamson, the claim term read:

Williamson, 792 F.3d at 1344. The en banc court concluded the challenged term did not connote sufficient structure and thus should be deemed a means-plus-function claim. See id. at 1349-51. The challenged term "module" was a "well-known nonce word" with no structural meaning, and the prefix language — "distributed learning control" — added no structural meaning. See id. Furthermore, the description of the module's outputs and inputs — e.g., "communications between the presenter and audience member computer systems" — did not impart any structural significance because the description failed to indicate how the module interacted "with other components . . . 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 characterized this description as being only "at a very high level." Id. at 1351. As such, there was no evidence that suggested the "module" was anything but a "generic `black-box'" for achieving the claimed functions. Id. at 1350.

In this case, "code segment" has some structural meaning, as supported by the dictionary definition tendered by Plaintiff; code segment is not a nonce word. In addition, the claim language describes the code segment's operation with a degree of specificity not present in Williamson. This case is more similar to Linear than Williamson.

At the hearing, Defendants argued that Linear is distinguishable because a "circuit" in Linear is clearly hardware, and software (as here) is different from hardware in that, with software, there is an element of creativity — i.e., there are infinite ways to build or at least many different ways of doing things. At the hearing, Defendants argued that more specificity about the operation of the software was needed in order for it to convey sufficiently definite structure to a person of ordinary skill in the art. For example, for the term "a code segment for receiving one or more electronic documents and an identity validation at a server computer," Defendants argued that specificity was needed as to how exactly the "receiving" was done — e.g., through a "get" request. As another example, for the term "a code segment for . . . attaching the identity validation from the first party and the second party to the accepted one or more electronic documents," Defendants contended that there are multiple ways to affirmatively identify — e.g., through sound, through a link, or through meta-data even.

But requiring the patent to describe precisely how the claimed functions are achieved or how a person of ordinary skill in the art could make and use the invention goes beyond the threshold trigger for the application of § 112 ¶ 6. As Plaintiff argued at the hearing, Defendants' argument here sounds more in the nature of enablement or disclosure of corresponding structure where it has already been determined that a term is a means-plus-function limitation, not the threshold question whether § 112 ¶ 6 applies in the first place. Cf. Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1338 (Fed. Cir. 2008) (stating that, "if a claim includes a means-plus-function limitation, failure to disclose adequate structure corresponding to the claimed function results in the claim being invalid for indefiniteness[;] [w]hether the written description adequately sets forth structure corresponding to the claimed function must be considered from the perspective of a person skilled in the art") (emphasis added); Aristocrat Techs. Australia Pty Ltd. v. Int'l Game Tech., 521 F.3d 1328, 1336 (Fed. Cir. 2008) (in evaluating a claim that was a means-plus-function limitation, stating that "[w]hether the disclosure would enable one of ordinary skill in the art to make and use the invention is not at issue here"; "[e]nablement of a device requires only the disclosure of sufficient information so that a person of ordinary skill in the art could make and use the device" while "[a] section 112 paragraph 6 disclosure . . . serves the very different purpose of limiting the scope of the claim to the particular structure disclosed, together with equivalents") (emphasis added).

Defendants also argued at the hearing that the more ways there are of accomplishing the claimed function, the less structure the claim term connotes to a person of ordinary skill. As above, this proposition is unsupported by case law. The challenged term may connote a type of structure; it need not specify a particular individual structure. See Personalized Media, 161 F.3d at 705 (holding that "detector" connotes sufficiently definite structure because even though "detector" did not specifically evoke a particular structure, it conveyed to person of ordinary skill in the art, a variety of structures known as "detectors."). Disclosure of corresponding structure applies only if a court holds that § 112 ¶ 6 applies. See Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1211 (Fed. Cir. 2003) ("The duty of a patentee to clearly link or associate structure with the claimed function is the quid pro quo for allowing the patentee to express the claim in terms of function under section 112, paragraph 6."). The two inquiries are distinct.

It is true that when a limitation is a means-plus-function limitation, and the corresponding structure is software, there needs to be an algorithm for the software or else the means-plus-function limitation will be considered indefinite unless the function can be performed by a general purpose computer. See Aristocrat, 521 F.3d at 1332-31 (holding that the corresponding disclosure for a computer-implemented means-plus-function claim is an algorithm). But that authority is not on point because that definiteness analysis is triggered only where the limitation is a means-plus-function limitation.

In essence, Defendants are asking that the level of specificity needed to avoid means-plus-function claiming is equivalent or at least close to the level of specificity needed to avoid an indefiniteness problem (35 U.S.C. § 112 ¶ 2). But courts have cautioned that the two should not be conflated. See E2E Processing, Inc. v. Cabela's Inc., No. 2:14-CV-36-JRG-RSP, 2015 WL 4051423, at *7 (E.D. Tex. July 2, 2015) (stating that defendant's argument "improperly conflates the issue of whether a term is a means-plus-function term with the issue of whether the specification discloses corresponding structure for a term that has been found to be a means-plus-function term"); Wi-Lan USA, Inc. v. Alcatel-Lucent USA, Inc., No. 12-23568-CIV, 2013 WL 4811233, at *40 (S.D. Fla. Sept. 9, 2013) (finding that Aristocrat was not applicable because the standard to prove sufficient structure is different from the standard used to identify corresponding structure); Markem-Imaje Corp. v. Zipher Ltd., No. 10-CV-112-PB, 2011 WL 5837087, at *4 n.7 (D.N.H. Nov. 21, 2011) (finding that "controller" was sufficiently structural to escape means-plus-function treatment and that the algorithm requirements of Aristocrat did not apply because Aristocrat involved a party who intended to invoke § 112 ¶ 6 by using the term "means" in the claim); see also WhitServe LLC v. GoDaddy.com, Inc., 65 F.Supp.3d 317, 320 (D. Conn. 2014) (mentioning that the Federal Circuit has not required non-means-plus-function software claims to describe an algorithm, but not discussing the issue further).

At bottom, although the presumption against § 112 ¶ 6 is no longer "strong," it is still a presumption that the Defendants must affirmatively overcome. See M2M Solutions LLC v. Sierra Wireless Am., Inc., No. CV 12-30-RGA, 2015 WL 5826816, at *2 (D. Del. Oct. 2, 2015) (on a motion for reconsideration based on Williamson, holding that Defendants failed to overcome the presumption against § 112 ¶ 6 because they did not provide evidence to show that "programmable interface" failed to connote sufficiently definite structure). Defendants have failed to do so here. Accordingly, the Court grants Defendants' motion to reconsider, but affirms the Texas district court's conclusion that the term "code segment" is not a means-plus-function limitation.

B. "computer readable medium encoded with a computer program"

The second challenged term, in full, is "a non-transitory computer readable medium encoded with a computer program communicably coupled to the processors to." Claim 49 is a representative claim containing the term:

Docket 1-1, at 25 (`393 patent) (emphasis added); see also Docket No. 84, at 28 (claim construction order). As indicated by the language above, claim 49 is quite similar to claim 25. Although claim 49 does not use the term "code segment," it uses the term "computer program" (as does claim 25), and therefore software is still implicated. Both parties, as well as the Texas court, have acknowledged this similarity.

As a starting point, the Court notes that, because the term "computer readable medium encoded with a computer program" lacks the word "means," the term is, presumptively, not a means-plus-function limitation, and Defendants bear the burden of proving otherwise. As above, the Court concludes that Defendants have failed to meet this burden. Given the similarity between claims 49 and 25, the analysis for the "code segment" term is largely applicable here — i.e., software has some structural meaning, and the surrounding claim language provides sufficient specificity as to how the software operates. Moreover, there is even a stronger case here that Linear is on point because a "computer readable medium encoded with a computer program" implicates not only software but also hardware; thus, there is a stronger analogy to the "circuit" at issue in Linear.

III. CONCLUSION

For the foregoing reasons, even after the en banc Williamson decision, the Court concludes that the claim terms at issue — i.e., "code segment" and "computer readable medium encoded with a computer program" — are not means-plus-function terms.

This order disposes of Docket No. 93.

IT IS SO ORDERED.