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

989 F.3d 1002

• Court: Court of Appeals for the Federal Circuit
• Decided: March 2, 2021
• Docket: 20-1646
• Status: Published

Opinion

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. Case: 20-1646 Document: 45 Page: 2 Filed: 03/02/2021

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; Case: 20-1646 Document: 45 Page: 3 Filed: 03/02/2021

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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). Case: 20-1646 Document: 45 Page: 4 Filed: 03/02/2021

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). Case: 20-1646 Document: 45 Page: 5 Filed: 03/02/2021

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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. Case: 20-1646 Document: 45 Page: 6 Filed: 03/02/2021

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). Case: 20-1646 Document: 45 Page: 7 Filed: 03/02/2021

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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 Case: 20-1646 Document: 45 Page: 8 Filed: 03/02/2021

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. Case: 20-1646 Document: 45 Page: 9 Filed: 03/02/2021

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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).