By Kevin M. Finson, J.D.
A patent for software delivery over a computer network failed to provide an explanation for a "user control module," rendering the claims too indefinite to be valid.
A computer system’s claimed "user identification module" was indefinite because it did not disclose its working algorithm, the Federal Circuit has held. The "user identification module" was a means-plus-function term. A district court’s judgment finding the challenged claims not indefinite was reversed (Rain Computing, Inc. v. Samsung Electronics Co., Ltd., March 2, 2021, Moore, K.).
Rain Computing, Inc., owned U.S. Patent No. 9,805,349 (the ’349 patent), which was directed to delivering software application packages to a client terminal in a network more efficiently than the prior art by using an operating system in a client terminal rather than a web browser. Rain filed suit against Samsung Electronics America, Inc., for infringement, and Samsung claimed the’349 patent was invalid as indefinite. The trial court held the patent was valid and that Samsung did not infringe. Both sides appealed.
Means-plus-function. Samsung argued that the use of a "user identification module" without any explanation of structure rendered the claims indefinite. The module was described as controlling access, but Rain failed to point to any claim language providing any structure for performing the claimed function of being configured to control access. It was undisputed that the term had no commonly understood meaning and was not generally viewed by one skilled in the art as connoting a particular structure. As a result, the appellate court held that "user identification module" was a means-plus-function term.
Construing the function. The Federal Circuit adopted the trial court’s identification of the claimed function as "to control access to one or more software application packages to which the user has a subscription" without dispute. However, the trial court erred in the next step, which was identifying the structure in the specification linked with this function. The trial court had identified merely general-purpose computer components such as CD-ROM drives, while the function of controlling access required some specialized programming. That specialized programming was not disclosed. Absent an algorithm that could actually carry out the specified function, the claims were indefinite and therefore invalid.
Infringement. Because resolution of Samsung’s appeal determined that the patent was invalid, the court did not reach Rain’s appeal on the issue of infringement.
This case is No. 20-1646.
Attorneys: Stephen Yee Chow (Hsuanyeh Law Group, PC) for Rain Computing, Inc. Michael J. McKeon (Fish & Richardson PC) for Samsung Electronics America, Inc., Samsung Electronics Co., Ltd., and Samsung Research America, Inc.
Companies: Rain Computing, Inc.; Samsung Electronics America, Inc.; Samsung Electronics Co., Ltd.; Samsung Research America, Inc.
MainStory: TopStory Patent FedCirNews GCNNews
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