Updated: Apr 30, 2021
Rain Computing, Inc., Plaintiff-Appellant
Samsung Electronics America, Inc., Samsung Electronics Co., Ltd.,
Samsung Research America, Inc., Defendants-Cross-Appellants
March 2, 2021
35 U.S.C. §112, ¶6 (pre-AIA) allows a patent applicant to draft claims “as a means or step for performing a specified function” without reciting the structure, material, or acts that actually perform the claimed function. But the tradeoff is that these types of claims are generally limited by the structure, materials, or acts that the specification discloses for performing the claimed function; and if the specification fails to adequately disclose how to perform that function, the claim is indefinite under §112, ¶2 (pre-AIA). That was the key issue in this case.
Rain Computing sued Samsung for allegedly infringing U.S. Patent No. 9,805,349, which relates to delivering software application packages to a user over a network. One of the steps in asserted claim 1 involves delivering a “user identification module” that is “configured to control access” to one or more software application packages.
When the case was before Judge Stearns of the District of Massachusetts, defendant Samsung argued that: (a) the claimed user identification module is a means-plus-function element under §112, ¶6; and (b) the claim is indefinite, because the ‘349 patent’s specification does not explain how the module “control[s] access” to the claimed software application packages. Judge Stearns agreed that the “user identification module” is a means-plus-function element, but held the asserted claim was not indefinite.
On appeal, the Federal Circuit agreed with the district court that the claimed user identification module is a means-plus-function element. In reaching this conclusion, the panel recognized that—because the claim term at issue does not include the word “means”—there is a rebuttable presumption that §112, ¶6 does not apply. Here, that presumption was overcome because: (a) previous Federal Circuit decisions recognize that “module” is a well-known substitute for the word “means” in these types of claims; and (b) the term “module” does not provide any indication of structure, and no other claim language provides structure that performs the claimed function of “control[ling] access” to one or more software application packages.
The Court of Appeals next applied the standard two-step process for construing means-plus-function claim terms, which is to: (1) identify the claimed function; and (2) “determine what structure, if any, disclosed in the specification corresponds to the claimed function.” Under this second step, the structure disclosed in the specification corresponds to the claimed function only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim.
Here, the panel found (and the parties did not dispute) that the claimed function of the user identification module is “to control access to one or more software application packages to which the user has a subscription.” In its attempt to determine the structure in the specification that corresponds to this claimed function, the Federal Circuit noted that the term “user identification module” does not exist in the specification; rather, it only refers to a “user identification device,” which is described as being a SIM card, a flash memory, or other similar portable and computer-readable devices with memory capability—devices that, per the Federal Circuit, are “nothing more than a general-purpose computer.”
This gave rise to the §112, ¶2 definiteness issue: the panel explained that absent some sort of program or algorithm, a general-purpose computer (like the one disclosed in the specification) is not capable of performing the claimed function of “control[ling] access to one or more software application packages to which the user has a subscription.” And patent owner Rain Computing was unable to identify an algorithm disclosed in the ‘349 patent that could achieve the claimed access control function of the user identification module. Without such an algorithm, the Federal Circuit held the asserted claims to be invalid as indefinite.