Rain Computing, Inc. v. Samsung Electronics Co., Ltd.

Case: 20-1646    Document: 45     Page: 1   Filed: 03/02/2021




   United States Court of Appeals
       for the Federal Circuit
                  ______________________

                RAIN COMPUTING, INC.,
                   Plaintiff-Appellant

                             v.

    SAMSUNG ELECTRONICS AMERICA, INC.,
  SAMSUNG ELECTRONICS CO., LTD., SAMSUNG
         RESEARCH AMERICA, INC.,
          Defendants-Cross-Appellants
            ______________________

                   2020-1646, 2020-1656
                  ______________________

     Appeals from the United States District Court for the
 District of Massachusetts in No. 1:18-cv-12639-RGS, Judge
 Richard G. Stearns.
                  ______________________

                  Decided: March 2, 2021
                  ______________________

     STEPHEN YEE CHOW, Hsuanyeh Law Group, PC, Bos-
 ton, MA, argued for plaintiff-appellant. Also represented
 by HSUANYEH CHANG.

     MICHAEL J. MCKEON, Fish & Richardson PC, Washing-
 ton, DC, argued for defendants-cross-appellants. Also rep-
 resented by CHRISTOPHER DRYER.
                  ______________________

     Before LOURIE, DYK, and MOORE, Circuit Judges.
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 2    RAIN COMPUTING, INC.   v. SAMSUNG ELECTRONICS CO., LTD.



 MOORE, Circuit Judge.
     Rain Computing, Inc. appeals a final judgment of
 noninfringement of the asserted claims of 

U.S. Patent No. 9,805,349

 and Samsung Electronics America, Inc.;
 Samsung Electronics Co., Ltd.; and Samsung Research
 America, Inc. (collectively Samsung) cross-appeal the final
 judgment that the asserted claims of the ’349 patent are
 not invalid as indefinite. For the reasons below, we reverse
 the district court’s judgment on indefiniteness and dismiss
 Rain’s appeal.
                        BACKGROUND
     Rain sued Samsung for infringement of claims of the
 ’349 patent. The ’349 patent is directed to delivering soft-
 ware application packages to a client terminal in a network
 based on user demands. See ’349 patent at Abstract, 1:59–
 2:14. The claimed invention purports to deliver these pack-
 ages more efficiently by using an operating system in a cli-
 ent terminal rather than a web browser. ’349 patent at
 1:49–55, 1:59–2:14. Claim 1 is representative:
     1. A method for providing software applications
     through a computer network based on user de-
     mands, the method comprising:
        accepting, through a web store, a subscrip-
        tion of one or more software application
        packages from a user;
        sending, to the user, a user identification
        module configured to control access of said
        one or more software application packages,
        and coupling the user identification module
        to a client terminal device of the user;
        a server device authenticating the user by
        requesting subscription information of the
        user from the user identification module
        through the computer network;
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 RAIN COMPUTING, INC.   v. SAMSUNG ELECTRONICS CO., LTD.     3



        upon authentication of the user, the server
        device providing, to the client terminal de-
        vice of the user, a listing of one or more soft-
        ware application packages subscribed
        through the web store in accordance with
        the subscription information;
        the server device receiving, from the client
        terminal device and through the computer
        network, a selection of a first software ap-
        plication package from said listing of one or
        more software application packages;
        the server device transmitting the first
        software application package to the client
        terminal device through the computer net-
        work; and
        executing the first software application
        package by a processor of the client termi-
        nal device using resources of an operating
        system resident in a memory of the client
        terminal device.
       In a February 12, 2020 order, the district court con-
 strued various claim terms. Relevant here, it construed
 “executing the [first/second] software application package
 . . . in a memory of the client terminal device” and “user
 identification module configured to control access of . . .
 software application packages.” Rain Computing, Inc. v.
 Samsung Elecs. Co., No. 18-12639-RGS, 

2020 WL 708125

,
 at *3–7 (D. Mass. Feb. 12, 2020). The district court deter-
 mined “user identification module” was a means-plus-func-
 tion term subject to 

35 U.S.C. § 112

 ¶ 6 and was not
 indefinite. 

Id.

 at *3–5. Following that order, the district
 court entered judgment, based on the parties’ joint stipula-
 tion, that the asserted claims were neither infringed nor
 invalid for indefiniteness. Rain appeals and Samsung
 cross-appeals. We have jurisdiction under 

28 U.S.C. § 1295

(a)(1).
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 4     RAIN COMPUTING, INC.   v. SAMSUNG ELECTRONICS CO., LTD.



                          DISCUSSION
     Rain challenges the district court’s construction of the
 “executing” term. Samsung challenges the court’s determi-
 nation that “user identification module” does not render
 the claims indefinite. Because we agree with Samsung
 that “user identification module” renders the claims indef-
 inite, we do not reach the merits of Rain’s appeal.
                                  I
      Whether claim language invokes 

35 U.S.C. § 112

 ¶ 6 is
 a question of law we review de novo. Williamson v. Citrix
 Online, LLC, 

792 F.3d 1339, 1346

 (Fed. Cir. 2015). We re-
 view any underlying findings of fact for clear error. 

Id.

 Un-
 der § 112 ¶ 6, a patentee may draft claims “as a means or
 step for performing a specified function without the recital
 of structure, material, or acts in support thereof.” But such
 claims are construed to cover only “the structure, materi-
 als, or acts described in the specification as corresponding
 to the claimed function and equivalents thereof.” William-
 son, 

792 F.3d at 1347

.
      To determine whether § 112 ¶ 6 applies to a claim lim-
 itation, we must inquire “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 struc-
 ture.” Id. at 1349. If those words lack a sufficiently defi-
 nite meaning, § 112 ¶ 6 applies. If the limitation uses the
 word “means,” there is a rebuttable presumption that § 112
 ¶ 6 applies. Id. at 1348–49. If not, there is a rebuttable
 presumption that the provision does not apply. Id. But
 that “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 perform-
 ing that function.” Id. at 1348 (quotations and brackets
 omitted).
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 RAIN COMPUTING, INC.   v. SAMSUNG ELECTRONICS CO., LTD.     5



      We first determine whether “user identification mod-
 ule” is a means-plus-function term. Because the term does
 not include the word “means,” there is a rebuttable pre-
 sumption that § 112 ¶ 6 does not apply. “‘Module’ is a well-
 known nonce word that can operate as a substitute for
 ‘means.’” Id. at 1350. In Williamson, we held that the word
 “module” in the claim term “distributed learning control
 module” “does not provide any indication of structure be-
 cause it sets forth the same black box recitation of struc-
 ture . . . as if the term ‘means’ had been used.” Id.
 Likewise, “module” here does not provide any indication of
 structure, and Rain fails to point to any claim language
 providing any structure for performing the claimed func-
 tion of being configured to control access. Nor does the pre-
 fix “user identification” impart structure because it merely
 describes the function of the module: to identify a user. See
 id. at 1351 (“The prefix ‘distributed learning control’ does
 not impart structure into the term ‘module.’”). Thus, the
 claim language fails to provide any structure for perform-
 ing the claimed functions.
      The parties do not dispute that “user identification
 module” has no commonly understood meaning and is not
 generally viewed by one skilled in the art to connote a par-
 ticular structure. In Media Rights Technologies, Inc. v.
 Capital One Financial Corp., we held that the written de-
 scription of a “copyright compliance mechanism,” including
 how it was connected to various parts of the system, how it
 functioned, and its potential functional components, was
 not enough to provide sufficient structure to the claimed
 “compliance mechanism.” 

800 F.3d 1366

, 1372–73 (Fed.
 Cir. 2015). Here, the specification does not impart any
 structural significance to the term; in fact, it does not even
 mention a “user identification module.” “Without more, we
 cannot find that the claims, when read in light of the spec-
 ification, provide sufficient structure for the [] term.” 

Id. at 1373

. Accordingly, we hold “user identification module”
 is a means-plus-function term subject to § 112 ¶ 6.
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 6     RAIN COMPUTING, INC.   v. SAMSUNG ELECTRONICS CO., LTD.



       Rain argues an amendment made during prosecution
 of “a user identification module for accessing . . .” to “a user
 identification module configured to control access of
 . . .” prevents “user identification module” from being a
 means-plus-function term. Appellant Resp. & Reply Br. at
 12–13, 56–57 (emphases added). According to Rain, replac-
 ing “for” with “configured to” removed the means-plus-
 function language. Id. But the purely functional claim lan-
 guage reciting what the “user identification module” is con-
 figured to do provides no structure. See MTD Prods. Inc. v.
 Iancu, 

933 F.3d 1336, 1343

 (Fed. Cir. 2019) (construing “a
 mechanical control assembly . . . configured to actuate . . .”
 as a means-plus-function limitation).
     Rain also argues that an appellate brief filed by Patent
 Office examiners defending a final rejection of the appli-
 cant’s claims supports its position that the term is not a
 means-plus-function term. The examiners’ brief states, in
 relevant part:
     Additionally, as claim 20 is directed to a method
     rather than an apparatus, the limitation “user
     identification module configured to control access
     of said one or more software application packages,”
     does not invoke 112, 6th paragraph, or 112(f).
 J.A. 531. To the extent the examiners or the Patent and
 Trademark Office understood that a means-plus-function
 term cannot be nested in a method claim, they were incor-
 rect. Applicants are free to invoke § 112 ¶ 6 for a claim
 term nested in a method claim. We have never held other-
 wise. See, e.g., Media Rights, 

800 F.3d at 1374

 (holding
 “compliance mechanism” nested in a method claim was a
 means-plus function term); On Demand Machine Corp. v.
 Ingram Indus., Inc., 

442 F.3d 1331, 1340

 (Fed. Cir. 2006)
 (holding “providing means for a customer to visually re-
 view” nested in a method claim was a means-plus-function
 term).
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 RAIN COMPUTING, INC.   v. SAMSUNG ELECTRONICS CO., LTD.      7



                                 II
     Having concluded “user identification module” is a
 means-plus-function term, we must consider the term’s
 construction, which occurs in two steps. The first step in
 construing a means-plus function claim is to “identify the
 claimed function.” Williamson, 

792 F.3d at 1351

. After
 identifying the function, we then “determine what struc-
 ture, if any, disclosed in the specification corresponds to the
 claimed function.” 

Id.

 “Under this second step, structure
 disclosed in the specification is corresponding structure
 only if the specification or prosecution history clearly links
 or associates that structure to the function recited in the
 claim.” Sony Corp. v. Iancu, 

924 F.3d 1235, 1239

 (Fed. Cir.
 2019) (citation omitted).
       If the function is performed by a general-purpose com-
 puter or microprocessor, then the second step generally fur-
 ther requires that the specification disclose the algorithm
 that the computer performs to accomplish that function.
 Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech., 

521 F.3d 1328, 1333

 (Fed. Cir. 2008). However, “in the rare
 circumstances where any general-purpose computer with-
 out any special programming can perform the function
 . . . an algorithm need not be disclosed.” Ergo Licensing,
 LLC v. CareFusion 303, Inc., 

673 F.3d 1361, 1365

 (Fed. Cir.
 2012). For means-plus-function claims “in which the dis-
 closed structure is a computer, or microprocessor, pro-
 grammed to carry out an algorithm,” we have held that “the
 disclosed structure is not the general purpose computer,
 but rather the special purpose computer programmed to
 perform the disclosed algorithm.” WMS Gaming, Inc. v.
 Int’l Game Tech., 

184 F.3d 1339, 1349

 (Fed. Cir. 1999).
     And finally, if the patentee fails to disclose adequate
 corresponding structure, the claim is indefinite. William-
 son, 

792 F.3d at 1352

. We review the district court’s indef-
 initeness determination de novo and any underlying
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 8     RAIN COMPUTING, INC.   v. SAMSUNG ELECTRONICS CO., LTD.



 factual questions for clear error. Media Rights, 

800 F.3d at 1371

.
     The parties do not dispute that the function of “user
 identification module” is “to control access to one or more
 software application packages to which the user has a sub-
 scription,” as determined by the district court. We agree.
      Next, we must identify the structure in the specifica-
 tion that is clearly linked with this function, controlling ac-
 cess. The district court found that the structural examples
 linked to the function of the “user identification module”
 are all “computer-readable media or storage device[s].”
 Rain Computing, 

2020 WL 708125

, at *5; see e.g., ’349 pa-
 tent at 4:28–31 (“a SIM card, an IC card, a flash memory
 drive, a memory card, a CD-ROM, and the like”). The dis-
 trict court erred, however, in concluding that the disclosure
 of computer-readable media or storage devices provided
 sufficient structure for the “control access” function. 

Id.

 These computer-readable media or storage devices amount
 to nothing more than a general-purpose computer. See,
 e.g., HTC Corp. v. IPCom GmbH & Co., KG, 

667 F.3d 1270, 1280

 (Fed. Cir. 2012) (the disclosed “processor and trans-
 ceiver amount[ed] to nothing more than a general-purpose
 computer”). And “control[ling] access to one or more soft-
 ware application packages to which the user has a sub-
 scription” requires more “than merely plugging in a general
 purpose computer.” Ergo Licensing, 

673 F.3d at 1365

. Ra-
 ther, some special programming, i.e., an algorithm, would
 be required to control access to the software application
 packages. Rain even agrees that the “user identification
 module” should include software algorithms. See, e.g., Ap-
 pellant’s Resp. & Reply Br. at 22, (“the module would . . .
 be configured to . . . respond to requests for information
 (using common software algorithms)”), 

id.

 at 27 n.17 (“the
 user identification module should include software imple-
 mentations”). And the inventor agreed that “there are cer-
 tain algorithms out there” such as “open source software
 that can implement” the user identification module. J.A.
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 RAIN COMPUTING, INC.   v. SAMSUNG ELECTRONICS CO., LTD.     9



 297–99. Under these circumstances, where a general pur-
 poses computer is the corresponding structure and it is not
 capable of performing the controlling access function ab-
 sent specialized software, an algorithm is required.
     Nothing in the claim language or the written descrip-
 tion provides an algorithm to achieve the “control access”
 function of the “user identification module.” When asked
 at oral argument to identify an algorithm in the written
 description, Rain could not do so. Oral argument at 32:54–
 34:40,       available         at            http://oralargu-
 ments.cafc.uscourts.gov/default.aspx?fl=20-
 1646_02022021.mp3. Without an algorithm to achieve the
 “control access” function, we hold the term “user identifica-
 tion module” lacks sufficient structure and renders the
 claims indefinite. 1 As this term appears in all of the claims
 relating to Rain’s appeal, our decision moots the nonin-
 fringement appeal.
                            CONCLUSION
     Because we hold “user identification module” renders
 the asserted claims indefinite, we reverse the district
 court’s judgment that the asserted claims of the ’349 patent
 are not invalid as indefinite and dismiss Rain’s appeal as
 moot.
     REVERSED-IN-PART, DISMISSED-IN-PART
                             COSTS
     No costs.



     1   We recently held, in a separate proceeding involv-
 ing a different patent, that the failure to provide an algo-
 rithm for the recited function of a “user identification
 module” rendered the challenged claims indefinite. See
 Synchronoss Techs., Inc. v. Dropbox, Inc., Nos. 2019-2196,
 2019-2199, slip op. at 15 (Fed. Cir. Feb. 12, 2021).