Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in Rain Computing, Inc. v. Samsung Electronics America, Inc., Nos. 2020-1646, -1656 (March 2, 2021). The Court held that the asserted claims were indefinite under 35 U.S.C. § 112 ¶ 6 because the claim term “user identification module” is a means-plus-function term without sufficient corresponding structure.
Rain sued Samsung for infringement of U.S. Patent No. 9,805,349, which claims a method of delivering software application packages to a client terminal in a network based on user demands. During claim construction, the district court determined the term “user identification module configured to control access of . . . software application packages” was a means-plus-function term subject to § 112 ¶ 6, and that it was not indefinite. Based on the parties’ stipulation, the district court entered judgment that the asserted claims were neither infringed nor invalid for indefiniteness. Samsung appealed the finding of no indefiniteness.
The Federal Circuit reversed. The Court agreed with the district court that the term “user identification module” was a means-plus-function term subject to § 112 ¶ 6. It found that “module” is “a well-known nonce word that can operate as a substitute for ‘means,’” and that the prefix “user identification” merely describes the function of the module: to identify a user. But the Court reversed the district court’s finding that this term was not indefinite. The parties did not dispute the function of “user identification module” is “to control access to one or more software application packages to which the user has a subscription.” Therefore, the only remaining issue was whether the specification disclosed a corresponding structure. The Court concluded the district court erred in holding that the disclosure of “computer-readable media” was sufficient structure because these media “amount to nothing more than a general-purpose computer.” The Court held that “some special programming, i.e., an algorithm, would be required to control access to the software application packages.” Nothing in the claim language or the written description, however, provided an algorithm to achieve the “control access” function of the “user identification module.” And Rain was unable to identify such an algorithm when asked to do so at oral argument. Without an algorithm to achieve the “control access” function, the Court held the term “user identification module” lacked sufficient corresponding structure, rendering the claims indefinite under § 112 ¶ 6.