Federal Circuit Holds Patent Claims to Software Functionality Indefinite: Rain Computing, Inc. v . Samsung Electronics Co., LTD

The Federal Circuit affirmed the invalidity based on indefiniteness under 35 USC § 112(b) of patent claims “directed to delivering software application packages to a client terminal in a network based on user demands.” Rain Computing, Inc. v . Samsung Electronics Co., LTD, 2020-1646, 2020-1656 (Fed. Cir. March 2, 2021) (precedential, opinion by Judge Moore, joined by Judges Lourie and Dyk). Claim 1 of US Patent No. 9,805,349 recites in part “a user identification module configured to control access of said one or more software application packages.” The court held that the recitation of the “user identification module” was properly construed under § 112 ¶ 6, and rendered the claim indefinite.

The court first turned to a de novo review of whether the language of the ’349 patent invoked the means-plus-function rubric of § 112, ¶ 6. Williamson v. Citrix Online, LLC (Fed. Cir. 2015) set forth the rebuttable presumption that, absent the word “means,” § 112 ¶ 6 does not apply. Here, the presumption was rebutted because the  present claim, as in Williamson, recited a “module,” which “is a well-known nonce word that can operate as a substitute for ‘means.’” The patent owner here could not point to any structure for performing the module’s function of controlling access, and in fact the parties agreed that the “‘user identification module,” which was nowhere mentioned in the specification, “has no commonly understood meaning” for structure.

Notably, the court rejected the patent owner’s urgings to give weight to a statement by the patent examiner during prosecution that the user identification module did not invoke § 112 ¶ 6. The patent examiner had reasoned that the claim recited “a method rather than an apparatus,” and therefore could not be a means-plus-function recitation. The court explained that this reasoning was simply incorrect; § 112 ¶ 6 could be freely invoked “for a claim term nested in a method claim.”

The court then turned to the construction of the “user identification module,” and found the term indefinite because the claimed function was not supported by any structure or algorithm. The parties and the Federal Circuit agreed with the district court’s finding “that the function of ‘user identification module’ is ‘to control access to one or more software application packages to which the user has a sub-scription.” But the Federal Circuit found error with the district court’s determination that structure for the “user identification module” was sufficiently shown by the ’349 patent’s disclosure of generic computer storage. Even the patent owner agreed that software, i.e., an algorithm to control the general purpose computer apparatus, was required to achieve the claimed function. Yet at oral argument the patent owner could not identify any algorithm in the patent’s written description – and there was none.

Accordingly, the Federal Circuit reversed “the district court’s judgment that the asserted claims of the ’349 patent are not invalid as indefinite,” and dismissed the patent owner’s appeal of a judgment of noninfringement as moot.

Lessons for Practice

As we have said before, take care with claim language that could be interpreted as using “nonce” words amenable to means-plus-function construction under 35 USC § 112(f). Even if you do not intend or want such construction, it is important to have as detailed a description as possible about software or program steps, i.e., an algorithm, used to achieve functional claim recitations.