Rain Computing, Inc. v. Samsung Electronics Co., Ltd.

UNITED STATES DISTRICT COURT

DISTRICT OF MASSACHUSETTS

CIVIL ACTION NO. 18-12639-RGS

RAIN COMPUTING, INC.

v.

SAMSUNG ELECTRONICS CO., LTD.; SAMSUNG ELECTRONICS

AMERICA, INC.; and SAMSUNG RESEARCH AMERICA, INC.

MEMORANDUM AND ORDER ON

CLAIM CONSTRUCTION

February 12, 2020

STEARNS, D.J.

In this intellectual property dispute, plaintiff Rain Computing, Inc.

(Rain) accuses defendants Samsung Electronics Co., Ltd.; Samsung

Electronics America, Inc.; and Samsung Research America, Inc. (collectively

Samsung) of infringing U.S. Patent No. 9,805,349 (the ’349 patent). Before

the court are the parties’ briefs construing the disputed claim terms of the

asserted patent. The court heard argument, pursuant to Markman v.

Westview Instruments, Inc., 517 U.S. 370 (1996), on January 30, 2020.

BACKGROUND

The ’349 patent is titled “Method and System for Delivering

Application Packages Based on User Demands,” and lists Hsuan-Yeh

Chang as the sole inventor.1 The ’349 patent was issued on October 31,

2017, from an application dated April 18, 2013, itself a continuation of an

abandoned application filed on November 22, 2007.

The invention of the ’349 patent is directed to “delivering application

packages based on user demands.” ’349 patent, col. 1, ll. 15-16.

Normally, the purchase of an application package means the

purchase of a license which allows a user to use that application

package on a single machine with an unlimited time period.

However, the purchase of such a license may be very costly.

Accordingly, many other types of licenses have been developed

recently.

Among the recently developed licenses, an on-demand license

has attracted much attention. The on-demand license allows the

user to pay a fee only when the licensed application package is

subscribed and/or used. The user will not need to pay anything

if the application package is unsubscribed and/or not in use.

Currently, the on-demand license type is applicable mostly to

web applications. However, running a web application, i.e.,

under a web browser, may be several times slower than running

the application directly under an OS. Accordingly, there is a need

to develop a method and a system that can more efficiently

deliver application packages based on user demands.

Id. col. 1, ll. 36-55.

To effectuate its stated goal, the ’349 patent envisions a service

provider including a server that is connected to a wide area network or a

local area network. See id. Figs. 1 and 2. Installed on the server, among

1 Chang, a member of plaintiff’s law firm, also prosecuted the patent.

other features, are a number of application packages, such as OpenOffice

or Office 2007. See id. col. 2, ll. 53-57. Using a client terminal, a “user

may [] visit a web store of the service provider, and subscribe the services

of the service provider through the web store.” Id. col. 4, Il. 24-26. The

service provider then “issue[s] a user identification device, such as a SIM

card, an IC card, a flash memory drive, a memory card, a CD-ROM, and the

like, which may record subscription information of the user.” Id. col. 4, ll.28-

31.

Figure 3 is illustrative of the patented application delivery method.

foo 200 oo 14 100

Client Communication —

Terminal Network Server

Power ON $300

Associate with Network

Network Associated $310

Request Operating System

Boot-up Download Operating System $320

ee

Provide the List of Application Packages £350

Request the Selected Application Package

Select and Download the Selected Application Package

Agplization Communicate between Client Terminal and Server 3340

Package ane eee eS

Store/Retrieve/Output Data Files

Terminate Terminate the Application Package $350

Update Update the List of Application Packages $360

Bill the User of the Client Terminal

Bill | 8370

FIG. 3

After powering up the client terminal (S300), associating with a

network (S310), and finding and establishing a connection with the server

(S320), the “server 100 may need to authenticate the user” before the client

terminal initiates a booting process. Id. col. 5, ll. 2-4. In the booting process,

the client terminal “transfer[s] from server 100 the operating system

subscribed by the user.” Id. col. 4, l. 66 – col. 5, l. 2. “In Step [S]330, after

performing the network booting process, client terminal 200 may request

server 100 to send a list of application packages installed in AP server 120.

Server 100 may then provide the list of application packages to client

terminal 200.” Id. col. 5, ll. 36-40. The user is licensed to use one or more

of the applications on the list based on the subscription information recorded

on the user identification device. “Because the subscribed application

packages are installed in server 100, client terminal 200 does not require the

application packages be installed in mass storage device 260 of client

terminal 200.” Id. col. 5, ll. 44-47.

In Step S340, in order to execute or run a subscribed application

package on client terminal 200, the user may select the

subscribed application package from the list of application

packages, and send a request for the selected application package

to server 100. In one embodiment, server 100 may need to verify

the user’s subscription of the selected application package before

activating the selected application package. Once the user’s

subscription is verified, client terminal 200 then begin

transferring the selected application package and execute the

selected application package on client terminal 200, using

resources of the operating system resident in RAM [(random

access memory)] 220 of client terminal 200.

Id. col. 5, ll. 51-63. In Steps 350 and 360, the user may “terminate the

execution of the selected application package,” id. col. 6, l. 10, or “change his

subscription of services,” id. col. 6, l. 17-18. Finally, in step 370, “the service

provider may charge the user a fee for the services that are subscribed.” Id.

col. 6, ll. 51-52.

The ’349 patent sets out 27 method claims, including independent

claims 1, 5, and 8. 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 server device transmitting the first software 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.

The parties dispute the construction of the following terms, listed here

in the order they are presented in the Joint Claim Construction Statement.

• “a user identification module configured to control access of said one

or more software application packages” (all independent claims)

• “executing the [first/second] 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” (“first

software application”: all independent claims; “second software

application”: dependent claims 3, 19, 24)

• “sending, to the user, a user identification module” (all independent

claims)

• “a subscription of one or more software application packages” (all

independent claims) and “a subscription of a storage unit”

(independent claim 5)

• “web store” (all independent claims)

• “providing software applications through a computer network based

on user demands” (preamble of all independent claims except claim 5)

and “providing software applications over a through a computer

network based on user demands” (preamble of independent claim 5)

• “update request” (dependent claims 2, 3, 18, 19, 23, 24)

DISCUSSION

Claim construction is an issue of law. See Markman, 517 U.S. at 388-

389. Claim terms are generally given the ordinary and customary meaning

that would be ascribed by a person of ordinary skill in the art in question at

the time of the invention.2 See Phillips v. AWH Corp., 415 F.3d 1303, 1312-

1313 (Fed. Cir. 2005) (en banc). In ascertaining how a person of ordinary

skill in the art would have understood the claim terms, the court looks to the

specification of the patent, its prosecution history, and, where appropriate,

extrinsic evidence such as dictionaries, treatises, or expert testimony. Id. at

1315-1317. Ultimately, “[t]he construction that stays true to the claim

language and most naturally aligns with the patent’s description of the

invention will be, in the end, the correct construction.” Id. at 1316 (citation

omitted).

2 According to Rain, “[a] person of ordinary skill in the art [] would

possess a bachelor’s degree in computer science or computer engineering, or

an equivalent degree, or possess equivalent academic and/or industry

experience.” Rain Br. (dkt # 33) at 3. Samsung’s expert opines that such a

person would have, additionally, “two years of experience working in

distributed computing systems” or a graduate education equivalent.

Chatterjee Decl. (dkt # 31-1) ¶ 34.

• a user identification module configured to control access of said one

or more software application packages

At the threshold, the parties dispute whether this term is subject to

means-plus-function analysis. Rain denies that it is, and maintains that to

the extent a construction is necessary, the subphrase “a user identification

module” refers to “a logical unit capable of recording subscription

information and that identifies a user.” For its part, Samsung contends that

the term itself does not denote structure, and that because the specification

fails to disclose a corresponding algorithm, the term is indefinite. In the

alternative, Samsung argues that the function of the term is “to control access

to one or more server-based software application packages to which the user

has a subscription,” and that the corresponding structure is “a hardware

device.”

Under 35 U.S.C. § 112, para. 6,

[a]n element in a claim for a combination may be expressed as a

means or step for performing a specified function without the

recital of structure, material, or acts in support thereof, and such

claim shall be construed to cover the corresponding structure,

material, or acts described in the specification and equivalents

thereof.

Section 112 permits purely functional claiming on the condition that the

scope of such claim language is “restrict[ed] . . . to the structure disclosed

in the specification and equivalents thereof.” Greenberg v. Ethicon Endo-

Surgery, Inc., 91 F.3d 1580, 1582 (Fed. Cir. 1996). In identifying means-

plus-function terms, the absence of the signal phrase “means,” as is the case

here, creates a rebuttable presumption that Section 112, para. 6 does not

apply. Advanced Ground Info. Sys., Inc. v. Life360, Inc., 830 F.3d 1341,

1347 (Fed. Cir. 2016), citing Williamson v. Citrix Online, LLC, 792 F.3d

1339, 1348 (Fed. Cir. 2015).

The standard is 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. Greenberg [v.

Ethicon Endo-Surgery, Inc.], 91 F.3d [1580,] 1583 [(Fed. Cir.

1996)]. When a claim term lacks the word “means,” the

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.” Watts

[v. SL Systems, Inc.], 232 F.3d [877,] 880 [(Fed. Cir. 2000)].

Williamson, 792 F.3d at 1349 (Fed. Cir. 2015).3

The term “module” is not terra incognita. “‘Module’ is a well-known

nonce word that can operate as a substitute for ‘means’ in the context of §

112, para. 6.” Id. at 1350. In Williamson, the Court held that a claimed

“distributed learning control module” did not recite sufficient structure

because “the word ‘module’ . . . sets forth the same black box recitation of

3 In Williamson, the Federal Circuit overruled a line of cases

characterizing as “strong” the presumption that a limitation without the

phrase “means” does not fall under Section 112. Id.

structure for providing the same specified function as if the term ‘means’ had

been used.” Id. at 1350. The “distributed learning control” prefix also did

not contribute discernible structure to the term – “[a]lthough the

‘distributed learning control module’ is described in a certain level of detail

in the written description, the written description fails to impart any

structural significance to the term.” Id. at 1351; see also Grecia v. Samsung

Elecs. Am., Inc., 780 F. App’x 912, 914-916 (Fed. Cir. 2019) (“customization

module” subject to Section 112, para. 6); Synchronoss Techs., Inc. v.

Dropbox Inc., 2017 WL 6059302, at *6-*8 (N.D. Cal. Dec. 7, 2017) (“user

identifier module” subject to Section 112, para. 6).

Here too, “module” is a doppelganger for “means.” In Rain’s own

words, “[m]odule has a plain meaning of a component unit that serves a

function, in the context of digital electronics, a logical function, thus a logical

unit.” Rain Br. (dkt # 33) at 6 (emphasis added). Rain’s expansive

suggestion that a “module” in the context of the ’349 patent may be “(1)

software, (2) hardware, and (3) either/both,” Rain Br. at 6 n.3, confirms that

the word “sets forth [a] black box recitation of structure.” Like the prefix in

Williamson, the modifier “user identification” supplies no additional

structure. The term “user identification module” does not designate any

structure – indeed, the term does not appear at all in the specification. As

reflected in Rain’s proposed construction, the “user identification” prefix

simply states the objective of the “module,” namely, to “identif[y] a user.”4

Having determined that the phrase “user identification module”

triggers Section 112, para. 6, following Williamson, the proper claim

limitation is “a user identification module configured to control access of said

one or more software application packages.” See Williamson, 792 F.3d at

1350 (“This passage, as lengthy as it is, is nonetheless in a format consistent

with traditional means-plus-function claim limitations.”). Construction of

means-plus-function claim terms proceeds in two steps. “First, we must

identify the claimed function, staying true to the claim language and the

limitations expressly recited by the claims. Once the functions performed by

the claimed means are identified, we must then ascertain the corresponding

structures in the written description that perform those functions.” Omega

4 Contrary to Rain’s suggestion, that “a user identification module”

appears in a method rather than in an apparatus claim does not alter the

conclusion that it is a means-plus-function term. See, e.g., Media Rights

Techs., Inc. v. Capital One Fin. Corp., 800 F.3d 1366, 1372-1374 (Fed. Cir.

2015) (holding that the phrase “compliance mechanism” – recited in the

method step of “activating a compliance mechanism in response to receiving

media content by a client system, said compliance mechanism coupled to

said client system, said client system having a media content presentation

application operable thereon and coupled to said compliance mechanism” –

is a means-plus-function limitation).

Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1321 (Fed. Cir. 2003) (citations

omitted).

The function of the “user identification module” is self-evident in the

claim language – “to control access of said one or more software application

packages.” “Said one or more software application packages” finds its

antecedent in the prior step in the method – “accepting, through a web store,

a subscription of one or more software application packages from a user.”

Thus, the function of a “user identification module” is “to control access to

one or more software application packages to which the user has a

subscription.”5

According to the claimed methods, access to the application package(s)

is controlled by requesting a user’s subscription information from the “user

identification module.” See ’349 patent, Claim 1 (“a server device

authenticating the user by requesting subscription information of the user

from the user identification module through the computer network,”); Claim

5 Samsung proposes to qualify the “software application packages” as

“server-based.” That a server transmits a software application package to a

user’s client terminal is a requirement of another claim limitation, see ’349

patent claim 1 (“the server device transmitting the first software application

package to the client terminal device through the computer network”), but is

not inherent in this limitation.

5 (same); and Claim 8 (same). The only source of subscription information

disclosed in the specification is a “user identification device.”

After the user subscribes the services, the service provider may

then issue a user identification device, such as a SIM card, an IC

card, a flash memory drive, a memory card, a CD-ROM, and the

like, which may record subscription information of the user. The

user identification device may be connected with client terminal

200 via EP 250. . . . In one embodiment, the user identification

device may be integrated with ROM 230 of client terminal 200.

For example, the subscription information may be recorded in

ROM 230 of client terminal 200, if client terminal 200 is

provided to the user by the service provider.

Id. col. 4, ll. 27-40. In the detailed description, the user and the user’s

license(s) are authenticated by requesting and verifying subscription

information from the “user identification device” (via the client terminal).

See id. col. 5, ll. 4-6 (“server 100 may authenticate the user by requesting, for

example, the subscription information from client terminal 200”); id. col. 5,

ll. 40-44 (“According to the subscription information recorded in the user

identification device, the user is licensed to use one or more application

packages in the list. For those application packages not subscribed by the

user, the user is not licensed to use them.”). The patent discloses no other

mechanism – in the form of software or an algorithm – that performs the

access control function.

Because the sole access control mechanism is the request and retrieval

of a user’s subscription information from a “user identification device,” the

court agrees with Samsung that the structure of the claimed “user

identification module” is a hardware device. However, the structure is not

an undifferentiated “hardware device” as suggested by Samsung. As

Samsung’s own expert notes, consistent with the disclosure that “a user

identification device . . . record subscription information of the user,” id. col.

4, ll. 30-31, the exemplars cited in the patent are all “computer-readable

media or storage device.” Chatterjee Decl. ¶ 67. Accordingly, the structure

of the “user identification module” is “a hardware device capable of recording

a user’s subscription information.”6

6 Samsung contends that because the patent does not explain how a

“user identification module” is “configured to control access,” the claim term

is invalid for indefiniteness. “[A] patent is invalid for indefiniteness if its

claims, read in light of the specification delineating the patent, and the

prosecution history, fail to inform, with reasonable certainty, those skilled in

the art about the scope of the invention.” Nautilus, Inc. v. Biosig

Instruments, Inc., 572 U.S. 898, 901 (2014). Like other invalidity defenses,

indefiniteness must be proven by clear and convincing evidence. Biosig

Instruments, Inc. v. Nautilus, Inc., 783 F.3d 1374, 1377 (Fed. Cir. 2015).

Here, the structure of “a user identification module” is not a general

computer performing a specialized function requiring a disclosure of the

function’s algorithm. Cf. Aristocrat Techs. Australia Pty Ltd. v. Int’l Game

Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008). Recording and retrieving a

user’s subscription information is precisely the intended and ordinary

function of “a hardware device capable of recording a user’s subscription

information.”

• executing the [first/second] software application package by a

processor of the client terminal device using resources of an operating

system resident in the memory of the client device

For this term, Samsung proposes the construction of “executing, with

local processing and operating system resources, the [first/second] software

application package without installing it on the client terminal device.” Rain

objects to the “without installing it on the client terminal device” aspect of

Samsung’s proposal, and otherwise contends that that term should be given

its plain and ordinary meaning.

While the claim language makes no reference to installation, the court

agrees with Samsung that the “executing” step proceeds without installing

the software application on the user’s client terminal.7

Although the construction of a claimed term is usually controlled

by its ordinary meaning, we will adopt an alternative meaning “if

the intrinsic evidence shows that the patentee distinguished that

term from prior art on the basis of a particular embodiment,

expressly disclaimed subject matter, or described a particular

embodiment as important to the invention.

7 Installation of software, in the words of Rain’s counsel at the

Markman hearing, refers to the software application residing “in what is

called ‘non-volatile memory,’ something [that] is a little bit more long term

than random access memory.” This is consistent with the patent’s use of the

term. See ’349 patent, col. 5, ll. 44-60 (equating non-installation on the

user’s client terminal with not using any capacity of the client terminal’s

mass storage device).

Edwards Lifesciences LLC v. Cook Inc., 582 F.3d 1322, 1329 (Fed. Cir.

2009), quoting CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366-

1367 (Fed. Cir. 2002). We carefully survey the intrinsic evidence. First, the

’349 patent sets out to improve upon the traditional method of software

delivery, where “the user . . . purchase[s] a special application package . . .

and install[s] the purchased special application in the [user’s] data processor

before use.” ’349 patent, col. 1, ll. 32-35. Part and parcel of the traditional

method is “the purchase of a license which allows a user to use that

application package on a single machine with an unlimited time period.

However, the purchase of such a license may be very costly.” Id. col. 1, ll. 38-

40.

The solution offered by the patent is a species of an on-demand license,

where “the user [pays] a fee only when the licensed application package is

subscribed and/or used. The user will not need to pay anything if the

application package is unsubscribed and/or not in use.” Id. col. 1, ll. 45-48.

In contrast to the traditional method, the patent emphasizes that its claimed

invention operates by installing the software applications on the server. See

id. Abstract and Summary (“executing in the client terminal a subscribed

application package installed in the server using resources of the operating

system resident in the client terminal.”) (emphasis added); Summary (“the

application packages being installed in the server”); col. 3, ll. 57-60 (“The

service provider provides licenses for a client terminal 200 to use the

operating systems installed in OS server 110 and the application packages

installed in AP server 120.”).

The user indicates a demand for a particular software package through

a subscription. See id. col. 6, ll. 39-43 (“When the user demands an

application package, the user may simply subscribe it from the service

provider. On the other hand, when the user no longer demands a certain

application package, the user may simply unsubscribe it.”). To use a

subscribed software application, “the user may select the subscribed

application package from the list of application packages, and send a request

for the selected application package to server 100.” Id. col. 5, ll. 52-55. “Once

the user’s subscription is verified, client terminal 200 then begin[s]

transferring the selected application package and execute[s] the selected

application package on client terminal 200, using resources of the operating

system resident in RAM 220 of client terminal 200.” Id. col. 5, ll. 58-63.

“[W]hen the user is to terminate the execution of the selected application

package, client terminal 200 may inform server 100 that the selected

application package is to be terminated. Client terminal 200 may then

release the running application package from RAM 220 of client terminal

200.” Id. col. 6, ll. 10-13.

As is clear from the above description, a software application is

transferred from a server to a user terminal’s RAM for execution, and

released from the client terminal’s RAM upon the termination of execution.

Nowhere in the specification does the patent indicate that a software package

may be installed on any non-volatile memory of the user’s client terminal for

execution.8 Indeed, a persistent installation is contrary to the invention’s

8 Rain asserts that the patent discloses the installation of the software

application on the user’s client terminal because the specification describes

saving dynamic data to non-volatile memory for hibernation.

If the user wants to power off client terminal 200 to save energy,

but does not want to spend time on the network booting process

when powering on client terminal 200 again, dynamic data in

RAM 220 of client terminal 200 may be transferred to the non-

volatile memory when powering off, so as to allow client terminal

200 to enter a hibernation mode.

’349 patent, col. 5, ll. 18-27; see also, e.g., claim 12 (“prior to powering off the

client terminal device, hibernating the client terminal device by transferring

dynamic data in the memory of the client terminal device to a non-volatile

memory of the client terminal device”). Hibernation mode, as limned in the

specification, is an off state where the user’s client terminal powers down

(and does not execute any software). When the user powers on again to

resume execution of the program, the data must then be reloaded into the

RAM. See id. col. 5, ll. 24-27 (“When the user powers on client terminal 200

again, the dynamic data stored in the non-volatile memory module may be

loaded back to RAM 220.”). Accordingly, the patent does not disclose that a

software application may be installed in non-volatile memory during

execution.

stated objective and the patent’s title, i.e., “Delivering Application Packages

Based on User Demand.” (emphasis added). The patent touts the benefits of

non-installation on the user’s client terminal.

Because the subscribed application packages are installed in

server 100, client terminal 200 does not require the application

packages be installed in mass storage device 260 of client

terminal 200. Accordingly, if client terminal 200 includes mass

storage device 260, the user may use the entire capacity of mass

storage device 260 to store user data.

Id. col. 5, ll. 44-50. Likewise, during prosecution, the patentee distinguished

prior art (Kirkland) on the basis that the software applications of the on-

demand media streaming system were resident on the client device, and were

not “streamed” from the server. See, e.g., Jun. 18, 2014 Amendment and

Response to Office Action, dkt # 33-4 at RAIN-000180 (arguing that

modifying Kirkland to include software applications in the media library

“would render Kirkland’s system unsatisfactory for its intended purpose, at

least because Kirkland’s software applications . . . are all resident on the

client device 410, not in media library 435, and Kirkland does not intend to

stream software applications and does not disclose that any software

applications could be streamed from Kirkland’s media server device (or

media library 435) to Kirkland’s receiving device (or client device 410).”)

(emphasis in original).

In light of the compelling weight of the intrinsic evidence, the court is

persuaded to adopt Samsung’s proposed construction of “executing, with

local processing and operating system resources, the [first/second] software

application package without installing it on the client terminal device.”

• sending, to the user, a user identification module

Samsung asserts that the “sending” step necessarily occurs after the

preceding “accepting, through a web store, a subscription of one or more

software application packages from a user” step, while Rain argues that the

steps may occur in either sequence. “Unless the steps of a method actually

recite an order, the steps are not ordinarily construed to require one.

However, such a result can ensue when the method steps implicitly require

that they be performed in the order written.” Altiris, Inc. v. Symantec Corp.,

318 F.3d 1363, 1369 (Fed. Cir. 2003), quoting Interactive Gift Express, Inc.

v. Compuserve Inc., 256 F.3d 1323, 1342-1343 (Fed. Cir. 2001). To

determine whether steps of a method must be executed in the order in which

they are written, “[f]irst, we look to the claim language to determine if, as a

matter of logic or grammar, they must be performed in the order written.”

Id. “If not, we next look to the rest of the specification to determine

whether it directly or implicitly requires such a narrow construction. If not,

the sequence in which such steps are written is not a requirement.” Id. at

1370 (emphasis in original).

The court agrees with Samsung that the claim language requires that

the “accepting step” occur prior to the “sending step.” In the “accepting”

step, a user subscribes to “one of more software packages.” The “sending”

step provides the user with “a user identification module configured to

control access of said one or more software application packages.”

(emphasis added). “Subsequent use of the definite articles ‘the’ or ‘said’ in a

claim refers back to the same term recited earlier in the claim.” Wi-Lan, Inc.

v. Apple, Inc., 811 F.3d 455, 462 (Fed. Cir. 2016). In Wi-Lan, the Federal

Circuit held that a step that “combine[s] the modulated data symbols” must

occur subsequent to a step that “produce[s] modulated data symbols

corresponding to an invertible randomized spreading” because “[t]he term

‘the modulated data symbols’ refers back to the randomized data symbols

produced by the computing means in the second claim element.” Id

(emphasis in original). So it is here. The object of the access control function

– “said one or more software application packages” – refers back to the “one

or more software packages” that the user has subscribed in the “accepting”

step.9

• a subscription of one or more software application packages & a

subscription of a storage unit remote from a client terminal device of

the user

In Samsung’s view, a “subscription” is an “on-demand license . . . for a

predetermined and finite period of time;” “a subscription of one or more

software application packages” is “an on-demand license to one or more

server-based software application packages for a predetermined and finite

period of time;” and “a subscription of a storage unit remote from a client

terminal device of the user” is “an on-demand license to use a remote storage

unit for a predetermined and finite period of time.” Rain, for its part,

disputes Samsung’s constructions and proposes that the terms be given their

plain and ordinary meaning.

9 Rain contends that because the specification contemplates that “the

user may already have a client terminal,” ’349 patent col. 4, l. 11, and “the

user identification device may be integrated with ROM 230 of client terminal

200,” id. col. 4, ll. 36-37, the user may be in possession of the user

identification device (as part of the client terminal) before subscribing any

application packages. Having determined that the claim language was

determinative of the order of the “accepting” and “sending” steps, it is

unnecessary to proceed to the second step of the Altiris test. See 318 F.3d at

1370 (“If not, we next look to the rest of the specification to determine

whether it directly or implicitly requires such a narrow construction.”)

(emphasis added).

Although a subscription is a condition-precedent to a user having a

license to use a software package application, see ’349 patent, col., 5, ll. 43-

44 (“For those application packages not subscribed by the user, the user is

not licensed to use them.”), the court agrees with Rain that a subscription is

not itself equivalent to a license. The asserted claims recite a step for

“accepting, through a web store, a subscription of one or more software

application packages from a user.” Replacing the “a subscription” with “a

license” results in a nonsensical reading of this step – in the ’349 patent, the

user is a recipient, and not a source, of a license to use a subscribed software

application package. 10

Nothing in the patent suggests that the word “subscription” is used in

any other than its usual sense of a revocable agreement to receive or to

participate in something (often in exchange for a payment). As reflected by

the title of the patent and the preamble of the claims, the object of the patent

is to provide software application packages “based on user demand.” A

subscription is the vehicle for a user’s demand – “[w]hen the user demands

an application package, the user may simply subscribe it from the service

10 Claim 5 includes the parallel limitation of “accepting, through the

web store, a subscription of a storage unit remote from a client terminal

device of the user,” which is susceptible to the same incongruence under the

“license” reading.

provider. On the other hand, when the user no longer demands a certain

application package, the user may simply unsubscribe it.” Id. col. 6, ll. 39-

43; cf. id. col. 1, ll. 36-40 (contrasting prior methods where a user paid a

potentially costly fee for an unlimited single-machine license “with an

unlimited time period”). Nothing in the patent restricts the user to a

subscription of a predetermined or limited duration. Because the terms use

common words in their common sense, the court agrees with Rain that “a

subscription of one or more software application packages” and “a

subscription of a storage unit remote from a client terminal device of the

user” be given their plain and ordinary meaning.

• web store

While the parties agree that a “web store” is an e-commerce entity, they

disagree on its parameters. According to Rain, in the context of the ’349

patent, the plain meaning of “web store” is “an e-commerce location offering

software application packages for download and that is accessed via a

computer network.” Samsung proposes the construction of “an e-commerce

web site installed on the service provider’s server.”

The court agrees with Samsung that Rain’s requirements – that the

web store offer software application packages for download and be accessed

through a computer network – are redundant of other claim limitations. See,

e.g., ’349 patent claim 1 (“[a] method for providing software applications

through a computer network,” “accepting, through a web store, a

subscription of one of more software application packages from a user,” and

“the server transmitting the first software application package to the client

terminal device through the computer network”). The court also agrees with

Rain that nothing in the intrinsic record requires that a “web store” (as

opposed to software application packages) be “installed on the service

provider’s server.” What remains at the heart of the dispute is whether a

“web store” is an “e-commerce web site,” or more broadly, an “e-commerce

location.”

The specification’s discussion of a “web store” is barebones and does

not describe any attribute other than that it accepts a user’s subscription. See

id. col. 4, ll. 23-26 (“[I]f the user already ha[s] a client terminal, the user may

then visit a web store of the service provider, and subscribe the services of

the service provider through the web store.”). The court agrees with

Samsung that the prosecution history reveals the definition of a “web store.”

In distinguishing a prior art reference (Cover), the patentee stated that

“Cover clearly discloses that streaming application manager 116 is a software

application installed in the client system 102. Cover does not disclose that

streaming application 116 could constitute a web store or an e-commerce

web site, as would be understood by one of ordinary skill in the art.” Feb. 14,

2014 Response to Office Action, dkt # 33-5 at RAIN-000289 (emphasis

added). As is clear from the context, the patentee equated “a web store” with

“an e-commerce web site.”11 Neither party has provided the court with

extrinsic evidence, such as a dictionary definition, of how a person of

ordinary skill in the art would have understood “web store” at the time of the

invention. Accordingly, the court construes a “web store” to be an “e-

commerce web site.”

• providing software applications through a computer network based

on user demands12

The parties first dispute whether the preamble of the claims is limiting.

Preamble language that merely states the purpose or intended

use of an invention is generally not treated as limiting the scope

of the claim. However, [w]hen limitations in the body of the

claim rely upon and derive antecedent basis from the preamble,

then the preamble may act as a necessary component of the

claimed invention.

11 Rain argues that a “web store” cannot be confined to a “web site”

because the specification discloses that a server of the service provider may

be located in a local area network as well as in a wide area network. Being

familiar with intranet web sites, the court does not understand a web site to

be limited to a wide area network.

12 The parties agree that the preamble of claim 5 – “providing software

applications over a through a computer network based on user demands” –

should be construed identically.

Pacing Techs., LLC v. Garmin Int’l, Inc., 778 F.3d 1021, 1023-1024 (Fed. Cir.

2015) (internal quotation marks and citations omitted). Here, “a computer

network” in the preamble provides the antecedent to “the computer network”

in the limitation reciting “a server device authenticating the user by

requesting subscription information of the user from the user identification

module through the computer network” limitation.

Further, a preamble is limiting if “it states a necessary and defining

aspect of the invention.” Computer Docking Station Corp. v. Dell, Inc., 519

F.3d 1366, 1375 (Fed. Cir. 2008). To overcome the examiner’s section 101

rejection during prosecution, the patentee relied on the recitation of a

“computer network” in the preamble as evidencing that the invention utilizes

a particular machine.

For example, claim 20 recites a “computer network” in both the

preamble and the body of the claim. One of ordinary skill in the

art would readily understand that the claimed “computer

network” includes one or more electrical and/or optical devices

(e.g., electrical and/or optical cable for wired computer network

or antenna for wireless computer network, switches, etc.) that

performs telecommunication (e.g., the receiving and

transmitting steps) with the claimed client terminal device, so as

to achieve the claimed on-demand provision of software

applications. Without tying to a “computer network,” no

software applications can possibly be provided to a client

terminal device as required by claim 20. Accordingly, the

method claims of this application involve and integrally use at

least a particular machine, namely a computer network, so as to

achieve performance of the claimed methods.

June 19, 2014 Amendment and Response to Office Action, dkt # 33-4 at

RAIN-000172. In response, the examiner withdrew the section 101

objection. June 30, 2014 Advisory Action, dkt # 33-3 at RAIN-000154.

Accordingly, the court agrees with Samsung that the preamble is limiting.

The parties next dispute the appropriate scope of the preamble.

Samsung’s construction is “providing on-demand use of server-based

software applications through a computer network,” while Rain relies on the

plain and ordinary meaning. The court agrees with Rain that Samsung’s

proposed definition confuses rather than clarifies. First, the claimed

methods are concerned with providing software applications based on a

user’s subscription, not the “on demand use” of the application. Second,

characterizing the software applications as “server-based” muddies the water

– although the software applications are installed on the server, as claimed,

they are “transmitt[ed] . . . to the client terminal device through the

computer network” for execution. Because the preamble uses common

terms in their usual sense, the court agrees with Rain that it should be

accorded the plain and ordinary meaning.

• update request

Samsung proposes to construe an “update request” as “a request to

change the user’s subscription,” while Rain relies again on the plain and

ordinary meaning. The court agrees with Rain that it is redundant to define

“update request” in terms of a user’s subscription, as this is clear from the

context of the claim element. See, e.g., ’349 patent claim 2 (“the server device

receiving an update request from the client terminal device and updating

said subscription of one or more software application packages in response

the update request by removing the first software application package from

said listing of one or more software application packages”). Because the term

uses common words in their usual sense, the court agrees with Rain that it

should be accorded the plain and ordinary meaning.

ORDER

The disputed claim terms will be construed for the jury and for all

other purposes in the pending litigation in a manner consistent with the

above rulings of the court.

SO ORDERED.

/s/ Richard G. Stearns

UNITED STATES DISTRICT JUDGE