Case 1:19-cv-11586-FDS Document 166-1 Filed 03/11/21 Page 1 of 7
`Case 1:19-cv-11586—FDS Document 166-1 Filed 03/11/21 Page 1 of 7
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`EXHIBIT A
`
`EXHIBIT A
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`

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`Case 1:19-cv-11586-FDS Document 166-1 Filed 03/11/21 Page 2 of 7
`Rain Computing, Inc. v. Samsung Electronics America, Inc., --- F.3d ---- (2021)
`
`2021 WL 786361
`Only the Westlaw citation is currently available.
`United States Court of Appeals, Federal Circuit.
`
`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
`|
`Decided: March 2, 2021
`
`Synopsis
`Background: Patent owner sued competitor for infringement
`of patent for method of delivering on-demand software
`packages. United States District Court for the District of
`Massachusetts, Richard G. Stearns, J., 2020 WL 708125,
`entered stipulated judgment in competitor's favor, stating
`that asserted claims were neither infringed nor invalid
`for indefiniteness. Owner appealed, and competitor cross-
`appealed.
`
`Holdings: The Court of Appeals, Moore, Circuit Judge, held
`that:
`
`[1] term “user identification module” was a means-plus-
`function claim term, and
`
`[2] term “user identification module” lacked sufficient
`structure and rendered the claims indefinite.
`
`Reversed in part, and dismissed in part.
`
`West Headnotes (14)
`
`[1]
`
`[2]
`
`[3]
`
`[4]
`
`[5]
`
`Construction and Operation of
`
`Patents
`Patents
`invokes patent
`language
`Whether claim
`statute governing means-plus-function claim
`limitations, is a question of law that is reviewed
`de novo. 35 U.S.C.A. § 112.
`
`Patents
`Questions of fact, verdicts, and
`findings in general
`In patent cases, Court of Appeals reviews any
`of district court's underlying findings of fact for
`clear error.
`
`Functions, means, and results of
`
`Patents
`invention
`Means-plus-function patent claims are construed
`to cover only the structure, materials, or acts
`described in the specification as corresponding
`to the claimed function and equivalents thereof.
`35 U.S.C.A. § 112.
`
`Functions, means, and results of
`
`Patents
`invention
`To determine whether patent statute governing
`means-plus-function claim limitations applies to
`a claim limitation, court 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; if
`those lack a sufficiently definite meaning, the
`statute applies. 35 U.S.C.A. § 112.
`
`Functions, means, and results of
`
`Patents
`invention
`If patent claim limitation uses word “means,”
`there is rebuttable presumption that means-
`plus-function statute applies; if not, there is
`rebuttable presumption that provision does not
`apply, but that presumption can be overcome
`
` © 2021 Thomson Reuters. No claim to original U.S. Government Works.
`
`1
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`

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`Case 1:19-cv-11586-FDS Document 166-1 Filed 03/11/21 Page 3 of 7
`Rain Computing, Inc. v. Samsung Electronics America, Inc., --- F.3d ---- (2021)
`
`and statute will apply if challenger demonstrates
`that claim term fails to recite sufficiently definite
`structure or else recites function without reciting
`sufficient structure for performing that function.
`35 U.S.C.A. § 112.
`
`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.
`35 U.S.C.A. § 112.
`
`[6]
`
`[7]
`
`[8]
`
`[9]
`
`Functions, means, and results of
`
`Patents
`invention
`Term “user identification module,” in patent
`for method of delivering on-demand software
`packages, was a means-plus-function claim
`term; “module” was a substitute for “means,”
`and patent owner failed to point to any
`claim language providing any structure for
`performing the module's claimed function of
`being configured to control access, nor did
`prefix “user identification” impart structure,
`as it merely described the function of the
`module, to identify a user, and further, term
`“user identification module” had no commonly
`understood meaning and was not generally
`viewed by one skilled in the art to connote a
`particular structure. 35 U.S.C.A. § 112.
`
`Functions, means, and results of
`
`Patents
`invention
`The word “module” in patent claim is a well-
`known nonce word that can operate as a
`substitute for “means,” so as to invoke rebuttable
`presumption that means-plus-function statute
`applies. 35 U.S.C.A. § 112.
`
`Functions, means, and results of
`
`Patents
`invention
`First step in construing a means-plus function
`claim is to identify the claimed function. 35
`U.S.C.A. § 112.
`
`Functions, means, and results of
`
`Patents
`invention
`After identifying claimed function of means-
`plus-function claim, the court determines what
`structure, if any, disclosed in the specification
`corresponds to that function; under this second
`
`[10]
`
`[11]
`
`[12]
`
`[13]
`
`Functions, means, and results of
`
`Patents
`invention
`Under means-plus-function form of claiming,
`if the function is performed by a general
`purpose computer or microprocessor, then the
`specification must also disclose the algorithm
`that the computer performs to accomplish that
`function; however, in rare circumstances where
`any general-purpose computer without any
`special programming can perform the function,
`an algorithm need not be disclosed. 35 U.S.C.A.
`§ 112.
`
`Patents
`Ambiguity, Uncertainty, or
`Indefiniteness
`If the patentee fails to disclose adequate structure
`corresponding to the claimed function, in a
`means-plus-function claim, then the claim is
`indefinite. 35 U.S.C.A. § 112.
`
`Patents
`Patentability and Validity
`In patent cases, the Court of Appeals reviews
`the district court's indefiniteness determination
`de novo.
`
`Patents
`Particular products or processes
`Patent for method of delivering on-demand
`software packages lacked sufficient structure,
`and thus was indefinite, in absence of an
`algorithm to achieve the claimed function of a
`“user identification module,” which controlled
`access to one or more software application
`packages to which the user had a subscription;
`function required specialized programming, but
`nothing in the claim language or written
`description provided it. 35 U.S.C.A. § 112.
`
` © 2021 Thomson Reuters. No claim to original U.S. Government Works.
`
`2
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`Case 1:19-cv-11586-FDS Document 166-1 Filed 03/11/21 Page 4 of 7
`Rain Computing, Inc. v. Samsung Electronics America, Inc., --- F.3d ---- (2021)
`
`[14]
`
`Patents
`In general;  utility
`US Patent 9,805,349. Invalid.
`
`Appeals from the United States District Court for the District
`of Massachusetts in No. 1:18-cv-12639-RGS, Judge Richard
`G. Stearns.
`
`Attorneys and Law Firms
`
`Stephen Yee Chow, Hsuanyeh Law Group, PC, Boston, MA,
`argued for plaintiff-appellant. Also represented by Hsuanyeh
`Chang.
`
`Michael J. Mckeon, Fish & Richardson PC, Washington, DC,
`argued for defendants-cross-appellants. Also represented by
`Christopher Dryer.
`
`Before Lourie, Dyk, and Moore, Circuit Judges.
`
`Opinion
`
`Moore, Circuit Judge.
`
`*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
`
`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:
`
`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 first software
`transmitting
`the server device
`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.
`
`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).
`
` © 2021 Thomson Reuters. No claim to original U.S. Government Works.
`
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`Case 1:19-cv-11586-FDS Document 166-1 Filed 03/11/21 Page 5 of 7
`Rain Computing, Inc. v. Samsung Electronics America, Inc., --- F.3d ---- (2021)
`
`Discussion
`
`*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.
`
`I
`
` [3] Whether claim language invokes 35 U.S.C. §
` [2]
`[1]
`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.
`
` [5] To determine whether § 112 ¶ 6 applies to a claim
`[4]
`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).
`
` [7] We first determine whether “user identification
`[6]
`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.
`
`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.
`
`*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).
`
`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:
`
` © 2021 Thomson Reuters. No claim to original U.S. Government Works.
`
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`Case 1:19-cv-11586-FDS Document 166-1 Filed 03/11/21 Page 6 of 7
`Rain Computing, Inc. v. Samsung Electronics America, Inc., --- F.3d ---- (2021)
`
`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).
`
`II
`
` [9] Having concluded “user identification module” is
`[8]
`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).
`
`[10]
`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 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).
`
` [12] And finally, if the patentee fails to disclose
`[11]
`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.
`
`*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.
`
`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
`
` © 2021 Thomson Reuters. No claim to original U.S. Government Works.
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`5
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`Case 1:19-cv-11586-FDS Document 166-1 Filed 03/11/21 Page 7 of 7
`Rain Computing, Inc. v. Samsung Electronics America, Inc., --- F.3d ---- (2021)
`
`capable of performing the controlling access function absent
`specialized software, an algorithm is required.
`
`Conclusion
`
`[13] 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.
`
`*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.
`
`REVERSED-IN-PART, DISMISSED-IN-PART
`
`Costs
`
`No costs.
`
`All Citations
`
`--- F.3d ----, 2021 WL 786361
`
`Footnotes
`1
`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).
`
`End of Document
`
`© 2021 Thomson Reuters. No claim to original U.S.
`Government Works.
`
` © 2021 Thomson Reuters. No claim to original U.S. Government Works.
`
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