For our weekly SoCal IP Institute meeting on Monday, May 8, 2017, we will discuss the following cases:

Williamson v. Citrix Online, LLC (Fed. Cir., June 16, 2015) (available here).  In the original panel opinion for this case, the majority held that use of the word “module” does not invoke means-plus-function language in patent claims, such that the relevant claims were not indefinite.  Because the claim did not use the word “means,” the majority reasoned that there was a strong presumption that § 112, para. 6 does not apply.  Citrix requested en band review, and the Federal Circuit withdrew the original opinion to issue a new one addressing the means-plus-function issue.  Rather than a “strong presumption”, the en banc court held that the standard is “whether the words of the claim are understood by person of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.”

Morton & Bassett, LLC v. Organic Spices, Inc. (N.D. Cal., April 21, 2017)  (available here).  Plaintiff sued defendant for infringement of its trade dress, along with other related claims, regarding its package design for spices sold in grocery stores.  Defendant requested summary judgment, arguing that plaintiff does not have protectable trade dress because the package design is functional, generic, and has not acquired secondary meaning.  Regarding functionality, the court found that a reasonable jury could conclude that the asserted trade dress is merely aesthetic, and there is a dispute of material facts as to whether the trade dress functioned to identify plaintiff’s products.  As such, the court denied defendant’s summary judgment motion, finding that summary judgment was not appropriate on the basis of functionality.