Fish & Richardson's District Court Victory in Samsung Patent Lawsuit Sustained on Appeal With Precedential Federal Circuit Opinion

Fish & Richardson secured a Federal Circuit reversal on behalf of Samsung in a patent infringement dispute with Rain Computing Inc. over technology for delivering software applications. In a March 2 order, the Federal Circuit reversed a Massachusetts federal court's decision that found the asserted claims of Rain Computing's patent were not invalid as indefinite. The Federal Circuit also dismissed Rain Computing's appeal of a final judgment of noninfringement as moot.

Rain Computing sued Samsung in 2018 in the United States District Court for the District of Massachusetts, alleging that Samsung's Galaxy smartphones infringed claims of U.S. Patent No. 9,805,349, which delivers software application packages to electronic devices through web-based app stores. In a February 12, 2020 order, the Massachusetts district court determined that the phrase "user identification module configured to control access of . . .software application packages" as referenced in Rain Computing's '349 patent did not render the asserted claims in the patent invalid for being indefinite. The district court found that the asserted claims were neither infringed nor invalid for indefiniteness, prompting Rain to appeal and Samsung to cross-appeal the decision to the Federal Circuit.

The Fish team representing Samsung in the district court and on appeal included Michael McKeon and Christopher Dryer.

In a precedential opinion, the Federal Circuit stated that means-plus-function terms can be nested in method claims and that "user identification module" was a means-plus-function term subject to 35 U.S.C. Section 112(6), which required the patent specification to provide a disclosure of corresponding structure for the "control access" function. The court agreed with Samsung that, without anything in the claim language or written description of the patent providing such structure or an algorithm to achieve the function of the "user identification module," the term lacked sufficient structure and rendered the claims indefinite. With this decision, the court dismissed Rain Computing's appeal.

"We're thrilled with the Federal Circuit's definitive ruling in Samsung's favor," said Michael McKeon, litigation principal in Fish's Washington, DC office. "The ruling clarifies that when patentees use means-plus-function claiming even within the context of method claims, the requirements of using such a claiming technique must be satisfied, and that the Patent Office's contrary view is unsustainable."