`Case 1:19-cv-11586—FDS Document 160-1 Filed 03/04/21 Page 1 of 6
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`EXHIBIT A
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`EXHIBIT A
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`Case 1:19-cv-11586-FDS Document 160-1 Filed 03/04/21 Page 2 of 6
`Rain Computing, Inc. v. Samsung Electronics America, Inc., --- F.3d ---- (2021)
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`2021 WL 786361
`Only the Westlaw citation is currently available.
`United States Court of Appeals, Federal Circuit.
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`RAIN COMPUTING, INC., Plaintiff-Appellant
`v.
`SAMSUNG ELECTRONICS AMERICA, INC., Samsung Electronics Co.,
`Ltd., Samsung Research America, Inc., Defendants-Cross-Appellants
`
`2020-1646
`|
`2020-1656
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`Decided: March 2, 2021
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`Appeals from the United States District Court for the District of Massachusetts in No. 1:18-cv-12639-RGS, Judge Richard G.
`Stearns.
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`Attorneys and Law Firms
`
`Stephen Yee Chow, Hsuanyeh Law Group, PC, Boston, MA, argued for plaintiff-appellant. Also represented by Hsuanyeh
`Chang.
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`Michael J. Mckeon, Fish & Richardson PC, Washington, DC, argued for defendants-cross-appellants. Also represented by
`Christopher Dryer.
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`Before Lourie, Dyk, and Moore, Circuit Judges.
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`Opinion
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`Moore, Circuit Judge.
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`*1 Rain Computing, Inc. appeals a final judgment of noninfringement of the asserted claims of U.S. Patent No. 9,805,349
`and Samsung Electronics America, Inc.; Samsung Electronics Co., Ltd.; and Samsung Research America, Inc. (collectively
`Samsung) cross-appeal the final judgment that the asserted claims of the ’349 patent are not invalid as indefinite. For the reasons
`below, we reverse the district court's judgment on indefiniteness and dismiss Rain's appeal.
`
`Background
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`Rain sued Samsung for infringement of claims of the ’349 patent. The ’349 patent is directed to delivering software application
`packages to a client terminal in a network based on user demands. See ’349 patent at Abstract, 1:59–2:14. The claimed invention
`purports to deliver these packages more efficiently by using an operating system in a client terminal rather than a web browser.
`’349 patent at 1:49–55, 1:59–2:14. Claim 1 is representative:
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`1. A method for providing software applications through a computer network based on user demands, the method comprising:
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`accepting, through a web store, a subscription of one or more software application packages from a user;
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` © 2021 Thomson Reuters. No claim to original U.S. Government Works.
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`Case 1:19-cv-11586-FDS Document 160-1 Filed 03/04/21 Page 3 of 6
`Rain Computing, Inc. v. Samsung Electronics America, Inc., --- F.3d ---- (2021)
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`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;
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`a server device authenticating the user by requesting subscription information of the user from the user identification
`module through the computer network;
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`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;
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`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;
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`the server device transmitting the first software application package to the client terminal device through the computer
`network; and
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`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.
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`In a February 12, 2020 order, the district court construed various claim terms. Relevant here, it construed “executing the [first/
`second] software application package ... in a memory of the client terminal device” and “user identification module configured
`to control access of ... software application packages.” Rain Computing, Inc. v. Samsung Elecs. Co., No. 18-12639-RGS, 2020
`WL 708125, at *3–7 (D. Mass. Feb. 12, 2020). The district court determined “user identification module” was a means-plus-
`function term subject to 35 U.S.C. § 112 ¶ 6 and was not indefinite. Id. at *3–5. Following that order, the district court entered
`judgment, based on the parties’ joint stipulation, that the asserted claims were neither infringed nor invalid for indefiniteness.
`Rain appeals and Samsung cross-appeals. We have jurisdiction under 28 U.S.C. § 1295(a)(1).
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`Discussion
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`*2 Rain challenges the district court's construction of the “executing” term. Samsung challenges the court's determination that
`“user identification module” does not render the claims indefinite. Because we agree with Samsung that “user identification
`module” renders the claims indefinite, we do not reach the merits of Rain's appeal.
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`I W
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`hether claim language invokes 35 U.S.C. § 112 ¶ 6 is a question of law we review de novo. Williamson v. Citrix Online, LLC,
`792 F.3d 1339, 1346 (Fed. Cir. 2015). We review any underlying findings of fact for clear error. Id. Under § 112 ¶ 6, a patentee
`may draft claims “as a means or step for performing a specified function without the recital of structure, material, or acts in
`support thereof.” But such claims are construed to cover only “the structure, materials, or acts described in the specification as
`corresponding to the claimed function and equivalents thereof.” Williamson, 792 F.3d at 1347.
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`To determine whether § 112 ¶ 6 applies to a claim limitation, we must inquire “whether the words of the claim are understood by
`persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.” Id. at 1349. If those words
`lack a sufficiently definite meaning, § 112 ¶ 6 applies. If the limitation uses the word “means,” there is a rebuttable presumption
`that § 112 ¶ 6 applies. Id. at 1348–49. If not, there is a rebuttable presumption that the provision does not apply. Id. But that
`“presumption can be overcome and § 112 para. 6 will apply if the challenger demonstrates that the claim term fails to recite
`sufficiently definite structure or else recites function without reciting sufficient structure for performing that function.” Id. at
`1348 (quotations and brackets omitted).
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`Case 1:19-cv-11586-FDS Document 160-1 Filed 03/04/21 Page 4 of 6
`Rain Computing, Inc. v. Samsung Electronics America, Inc., --- F.3d ---- (2021)
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`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.’ ” Id. at 1350. In Williamson, we held that the word “module” in the claim term “distributed
`learning control module” “does not provide any indication of structure because it sets forth the same black box recitation of
`structure ... as if the term ‘means’ had been used.” Id. 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. See id. at 1351 (“The prefix ‘distributed learning control’ does not impart structure into the term ‘module.’
`”). Thus, the claim language fails to provide any structure for performing the claimed functions.
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`The parties do not dispute that “user identification module” has no commonly understood meaning and is not generally viewed
`by one skilled in the art to connote a particular structure. In Media Rights Technologies, Inc. v. Capital One Financial Corp.,
`we held that the written description of a “copyright compliance mechanism,” including how it was connected to various parts
`of the system, how it functioned, and its potential functional components, was not enough to provide sufficient structure to
`the claimed “compliance mechanism.” 800 F.3d 1366, 1372–73 (Fed. Cir. 2015). Here, the specification does not impart any
`structural significance to the term; in fact, it does not even mention a “user identification module.” “Without more, we cannot
`find that the claims, when read in light of the specification, provide sufficient structure for the [ ] term.” Id. at 1373. Accordingly,
`we hold “user identification module” is a means-plus-function term subject to § 112 ¶ 6.
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`*3 Rain argues an amendment made during prosecution of “a user identification module for accessing ...” to “a user
`identification module configured to control access of ...” prevents “user identification module” from being a means-plus-function
`term. Appellant Resp. & Reply Br. at 12–13, 56–57 (emphases added). According to Rain, replacing “for” with “configured to”
`removed the means-plus-function language. Id. But the purely functional claim language reciting what the “user identification
`module” is configured to do provides no structure. See MTD Prods. Inc. v. Iancu, 933 F.3d 1336, 1343 (Fed. Cir. 2019)
`(construing “a mechanical control assembly ... configured to actuate ...” as a means-plus-function limitation).
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`Rain also argues that an appellate brief filed by Patent Office examiners defending a final rejection of the applicant's claims
`supports its position that the term is not a means-plus-function term. The examiners’ brief states, in relevant part:
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`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).
`J.A. 531. 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. See, e.g., Media Rights, 800 F.3d at 1374 (holding “compliance mechanism” nested in a method
`claim was a means-plus function term); On Demand Machine Corp. v. Ingram Indus., Inc., 442 F.3d 1331, 1340 (Fed. Cir. 2006)
`(holding “providing means for a customer to visually review” nested in a method claim was a means-plus-function term).
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`II
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`Having concluded “user identification module” is a means-plus-function term, we must consider the term's construction, which
`occurs in two steps. The first step in construing a means-plus function claim is to “identify the claimed function.” Williamson,
`792 F.3d at 1351. After identifying the function, we then “determine what structure, if any, disclosed in the specification
`corresponds to the claimed function.” Id. “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.” Sony Corp. v. Iancu, 924 F.3d 1235, 1239 (Fed. Cir. 2019) (citation omitted).
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`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. Aristocrat Techs. Austl. Pty
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`Case 1:19-cv-11586-FDS Document 160-1 Filed 03/04/21 Page 5 of 6
`Rain Computing, Inc. v. Samsung Electronics America, Inc., --- F.3d ---- (2021)
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`Ltd. v. Int'l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008). However, “in the rare circumstances where any general-purpose
`computer without any special programming can perform the function ... an algorithm need not be disclosed.” Ergo Licensing,
`LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1365 (Fed. Cir. 2012). For means-plus-function claims “in which the disclosed
`structure is a computer, or microprocessor, programmed to carry out an algorithm,” we have held that “the disclosed structure
`is not the general purpose computer, but rather the special purpose computer programmed to perform the disclosed algorithm.”
`WMS Gaming, Inc. v. Int'l Game Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999).
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`And finally, if the patentee fails to disclose adequate corresponding structure, the claim is indefinite. Williamson, 792 F.3d at
`1352. We review the district court's indefiniteness determination de novo and any underlying factual questions for clear error.
`Media Rights, 800 F.3d at 1371.
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`*4 The parties do not dispute that the function of “user identification module” is “to control access to one or more software
`application packages to which the user has a subscription,” as determined by the district court. We agree.
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`Next, we must identify the structure in the specification that is clearly linked with this function, controlling access. The district
`court found that the structural examples linked to the function of the “user identification module” are all “computer-readable
`media or storage device[s].” Rain Computing, 2020 WL 708125, at *5; see e.g., ’349 patent at 4:28–31 (“a SIM card, an IC
`card, a flash memory drive, a memory card, a CD-ROM, and the like”). The district court erred, however, in concluding that
`the disclosure of computer-readable media or storage devices provided sufficient structure for the “control access” function. Id.
`These computer-readable media or storage devices amount to nothing more than a general-purpose computer. See, e.g., HTC
`Corp. v. IPCom GmbH & Co., KG, 667 F.3d 1270, 1280 (Fed. Cir. 2012) (the disclosed “processor and transceiver amount[ed]
`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.” Ergo Licensing,
`673 F.3d at 1365. 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. See, e.g.,
`Appellant's Resp. & Reply Br. at 22, (“the module would ... be configured to ... respond to requests for information (using
`common software algorithms)”), id. at 27 n.17 (“the user identification module should include software implementations”).
`And the inventor agreed that “there are certain algorithms out there” such as “open source software that can implement” the
`user identification module. J.A. 297–99. Under these circumstances, where a general purposes computer is the corresponding
`structure and it is not capable of performing the controlling access function absent specialized software, an algorithm is required.
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`Nothing in the claim language or the written description provides an algorithm to achieve the “control access” function
`of the “user identification module.” When asked at oral argument to identify an algorithm in the written description,
`Rain could not do so. Oral argument at 32:54–34:40, available at http://oralarguments.cafc.uscourts.gov/default.aspx?
`fl=20-1646_02022021.mp3. Without an algorithm to achieve the “control access” function, we hold the term “user identification
`module” lacks sufficient structure and renders the claims indefinite.1 As this term appears in all of the claims relating to Rain's
`appeal, our decision moots the noninfringement appeal.
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`1
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`We recently held, in a separate proceeding involving a different patent, that the failure to provide an algorithm for the recited function
`of a “user identification module” rendered the challenged claims indefinite. See Synchronoss Techs., Inc. v. Dropbox, Inc., Nos.
`2019-2196, 2019-2199, slip op. at 15, ––– F.3d ––––, –––– (Fed. Cir. Feb. 12, 2021).
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`Conclusion
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`*5 Because we hold “user identification module” renders the asserted claims indefinite, we reverse the district court's judgment
`that the asserted claims of the ’349 patent are not invalid as indefinite and dismiss Rain's appeal as moot.
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`REVERSED-IN-PART, DISMISSED-IN-PART
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` © 2021 Thomson Reuters. No claim to original U.S. Government Works.
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`Case 1:19-cv-11586-FDS Document 160-1 Filed 03/04/21 Page 6 of 6
`Rain Computing, Inc. v. Samsung Electronics America, Inc., --- F.3d ---- (2021)
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`Costs
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`No costs.
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`All Citations
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`--- F.3d ----, 2021 WL 786361
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`End of Document
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`© 2021 Thomson Reuters. No claim to original U.S. Government Works.
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` © 2021 Thomson Reuters. No claim to original U.S. Government Works.
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