User Identification Module Held Means-Plus-Function Element, Lacked Structure/Algorithm and Invalid

Intellectual Property Law

In Rain Computing, Inc. v. Samsung Elecs. Am., Inc.,1 the Federal Circuit held that the claimed language “user identification module” was a means-plus-function element with no corresponding structure disclosed in the specification and was therefore invalid for being indefinite. In particular, the court reiterated that when specialized programming is required to perform the function of a software-related means-plus-function element, an algorithm is required to be described in the specification in order to provide the necessary corresponding structure.

Rain Computing, Inc., sued Samsung Electronics America, Inc., for infringement of claims of U.S. Patent No. 9,805,349 (the ’349 patent). The ’349 patent delivered software application packages to a client terminal responsive to user requests. The invention transmitted these packages more efficiently by employing an operating system in the client terminal instead of a web browser. Claim 1 recited the following:

1. A method for providing software applications through a computer network based on user demands, the method comprising:

accepting, through a web store, a subscription 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;

upon authentication of the user, the server device providing, to the client terminal device of the user, a listing of one or more software 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 application 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 network; and

executing the first software application package by a processor of the client terminal device using resources of an operating system resident in a memory of the client terminal device.2

 The district court ruled the claim language “user identification module” was a means-plus-function term interpreted under 35 U.S.C. § 112 ¶ 6 and was not indefinite. On appeal, Samsung contested the district court’s holding that “user identification module” was not indefinite.3

The Federal Circuit explained that Section 112 ¶ 6 permits claims to be drafted “as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof.”4 Means-plus-function claims are interpreted to encompass only the structure or acts designated in the specification as corresponding to the claimed function and equivalents for the same.5

To ascertain whether claim language is interpreted under Section 112 ¶ 6, the claim is analyzed to determine whether one of ordinary skill in the art would understand the claim language to have an adequately certain meaning as structure. If the claim language does not have a sufficiently definite meaning as structure, Section 112 ¶ 6 applies. In addition, if the claim language does not use the word “means,” there is a rebuttable presumption that Section 112 ¶ 6 does not apply. The presumption can be refuted and Section 112 ¶ 6 will apply if the claim language does not recite adequately definite structure or merely recites a function without any structure for performing that function.6

The court initially reasoned:

We first determine whether “user identification module” is a means-plus-function term. Because the term does not include the word “means,” there is a rebuttable presumption that § 112 ¶ 6 does not apply. “‘Module’ is a well-known nonce word that can operate as a substitute for ‘means.’”. … 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 function of being configured to control access. Nor does the prefix “user identification” impart structure because it merely describes the function of the module: to identify a user.7

The court explained that the parties acknowledged that “user identification module” did not have a commonly understood interpretation and was not generally regarded by one of ordinary skill to mean a specific structure. The court observed that the patent specification did not even describe a “user identification module.” Therefore, it determined that “user identification module” was a means-plus-function term interpreted under 35 U.S.C. § 112 ¶ 6.8

Rain contended that an appellate brief filed by the examiners rejecting the claims supported its position that “user identification module” was not a means-plus-function element. The examiners’ brief stated:

 

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).9

The Federal Circuit disagreed:

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 incorrect. Applicants are free to invoke § 112 ¶ 6 for a claim term nested in a method claim. We have never held otherwise.10

Thus, the court held that “user identification module” was a means-plus-function term.

Having determined “user identification module” was a means-plus-function element, the court then proceeded to interpret the claim language.

The first step in construing a means-plus-function claim is to identify the claimed function. … After identifying the function, we then “determine what structure, if any, disclosed in the specification corresponds to the claimed function.” … 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.11

The court continued:

If the function is performed by a general-purpose computer or microprocessor, then the second step generally further requires that the specification disclose the algorithm that the computer performs to accomplish that function. … However, in the rare circumstances where any general-purpose computer without any special programming can perform the function … an algorithm need not be disclosed.12

The court explained that if the specification fails to describe structure for performing the function, the claim is indefinite.13

The parties agreed that the function of the “user identification module” was “to control access to one or more software application packages to which the user has a subscription.”14 The court then proceeded to ascertain the structure described in the specification that was clearly linked with the controlling access function. The district court determined that the structure disclosed in the specification linked to the function of the “user identification module” was a computer-readable media or storage device. The court held that the district court was wrong when it determined that the description of computer-readable media or storage devices provided adequate structure for the “control access” function. The court reasoned:

These computer-readable media or storage devices amount to nothing more than a general-purpose computer. … And “control[ling] access to one or more software application packages to which the user has a subscription” requires more “than merely plugging in a general purpose computer.” … Rather, 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. … And the inventor agreed that there are certain algorithms out there such as open source software that can implement the user identification module. … Under these circumstances, where a general purpose computer is the corresponding structure and it is not capable of performing the controlling access function absent specialized software, an algorithm is required.15

The court observed that there was no description in the specification of any algorithm to perform the “control access” function of the “user identification module.” The Federal Circuit therefore held that since there was no algorithm to achieve the “control access” function, the means-plus-function claim language “user identification module” did not have adequate structure disclosed in the specification and was indefinite.16

Takeaways for Computer/Software-Related Inventions

The Rain Computing, Inc. v. Samsung Electronics America, Inc. decision is another warning to patent applicants/owners and their attorneys/agents to be careful and deliberate when disclosing and drafting patent specifications and claims. In this decision, the patent owner did not believe the claim element was drafted in means-plus-function format, and in addition, even if it was, the patent owner believed the specification disclosed adequate structure. The patent owner got it wrong on both counts.

Patent applicants/owners have to be more diligent in providing the necessary technical information, including algorithms for software-related inventions, if they want to ensure they receive the appropriate interpretation and scope of patent protection. Information that would be useful for providing the content of the patent specification includes technical requirements, software design specifications and use cases. Even portions of the source code can make the difference between patent validity and invalidity.


Irah Donner is a partner in Manatt’s intellectual property practice and is the author of Patent Prosecution: Law, Practice, and Procedure, Eleventh Edition, and Constructing and Deconstructing Patents, Second Edition, both published by Bloomberg Law.


1 Rain Computing, Inc. v. Samsung Elecs. Am., Inc., Civ. App. No. 2020-1646, 989 F.3d 1002, 2021 USPQ2d 284, 2021 WL 786361 (Fed. Cir. 2021).

2 Id., 989 F.3d at 1004–05 (quoting U.S. Patent No. 9,805,349).

3 Id., 989 F.3d at 1005.

4 Id., 989 F.3d at 1005 (quoting 35 U.S.C. § 112 ¶ 6).

5 Id., 989 F.3d at 1005 (citing Williamson v. Citrix Online LLC, 792 F.3d 1339, 1347, 115 USPQ2d 1105, 1110 (Fed. Cir. 2015)).

6 Id., 989 F.3d at 1005.

7 Id., 989 F.3d at 1006 (quoting Williamson v. Citrix Online LLC, 792 F.3d 1339, 1350, 115 USPQ2d 1105, 1112 (Fed. Cir. 2015)).

8 Id., 989 F.3d at 1006.

9 Id., 989 F.3d at 1006 (quoting Joint Appendix at 531).

10 Id., 989 F.3d at 1006.

11 Id., 989 F.3d at 1007 (quoting Williamson v. Citrix Online LLC, 792 F.3d 1339, 1351, 115 USPQ2d 1105, 1113 (Fed. Cir. 2015)).

12 Id., 989 F.3d at 1007 (quotation marks and citations omitted).

13 Id., 989 F.3d at 1007 (citing Williamson v. Citrix Online LLC, 792 F.3d 1339, 1352, 115 USPQ2d 1105, 1113 (Fed. Cir. 2015)).

14 Id., 989 F.3d at 1007.

15 Id., 989 F.3d at 1007–08 (quoting Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1365, 102 USPQ2d 1122, 1125 (Fed. Cir. 2012)).

16 Id., 989 F.3d at 1008.

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