989 F.3d 1002
Fed. Cir.2021Background
- Rain Computing sued Samsung alleging infringement of U.S. Patent No. 9,805,349, which claims delivering software application packages to client terminals (using an OS-level execution rather than a browser).
- Representative claim recites a “user identification module configured to control access” coupled to a client terminal and a server authenticating the user via that module; claims also recite “executing the … software application package … in a memory of the client terminal device.”
- The district court construed disputed terms, concluded "user identification module" was not indefinite (treated as not invoking §112 ¶6) and entered judgment—by joint stipulation—that asserted claims were neither infringed nor invalid for indefiniteness.
- On appeal Rain challenged the district court’s construction of the “executing” term; Samsung cross-appealed the determination that the asserted claims were not indefinite.
- The Federal Circuit held that “user identification module” is a means-plus-function term under 35 U.S.C. §112 ¶6, that the specification discloses only general-purpose storage/computer structures (no algorithm), and therefore the claims are indefinite for lack of corresponding structure/algorithm. The court reversed the district court’s judgment on indefiniteness and dismissed Rain’s infringement appeal as moot.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether “user identification module” invokes §112 ¶6 and is definite | "Configured to" wording and prosecution history remove a means-plus-function reading; not mere "means" | "Module" is a nonce term lacking structural meaning; spec discloses only storage/media (no algorithm) | Term is means-plus-function; corresponding structure is only general-purpose storage/computer and no algorithm is disclosed → claims indefinite |
| Whether to resolve Rain’s challenge to the "executing" term | Rain urged reversal of district court construction of "executing" | Samsung contended indefiniteness issue merits decision | Court did not reach merits of "executing" construction; appeal dismissed as moot after indefiniteness holding |
Key Cases Cited
- Williamson v. Citrix Online, 792 F.3d 1339 (Fed. Cir. 2015) (framework for determining when claim terms invoke §112 ¶6 and the rebuttable presumption against means-plus-function when "means" is not used)
- Media Rights Techs. v. Capital One, 800 F.3d 1366 (Fed. Cir. 2015) (a functional "mechanism" without structural linkage can be indefinite)
- MTD Prods. Inc. v. Iancu, 933 F.3d 1336 (Fed. Cir. 2019) ("configured to" language can still be means-plus-function)
- Aristocrat Techs. v. Int'l Game Tech., 521 F.3d 1328 (Fed. Cir. 2008) (algorithm disclosure required when function is performed by a general-purpose computer)
- Ergo Licensing, LLC v. CareFusion 303, 673 F.3d 1361 (Fed. Cir. 2012) (rarely no algorithm needed if any general-purpose computer can perform the function)
- WMS Gaming, Inc. v. Int'l Game Tech., 184 F.3d 1339 (Fed. Cir. 1999) (disclosed structure is a special-purpose computer programmed with an algorithm, not the general-purpose computer alone)
- HTC Corp. v. IPCom GmbH & Co., 667 F.3d 1270 (Fed. Cir. 2012) (disclosure of generic processor/transceiver insufficient structure)
- On Demand Machine Corp. v. Ingram Indus., 442 F.3d 1331 (Fed. Cir. 2006) (means-plus-function can apply to limitations nested in method claims)
- Sony Corp. v. Iancu, 924 F.3d 1235 (Fed. Cir. 2019) (requirement that specification clearly link structure to claimed function)