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IP Alert
IP Alert: Means-Plus-Function "Module" Claims Require Sufficient Disclosure of Structure

March 3, 2021

On March 2, in Rain Computing, Inc. v. Samsung Electronics Co., Ltd., the Federal Circuit held that the patent at issue was indefinite for lacking sufficient structure linked to the means-plus-function term “user identification module” used in the claims. This case represents the latest guidance from the Federal Circuit on means-plus-function case law under section 112(6) (since recast as 35 U.S.C. 112(f)).

The patent-in-suit is directed to delivering software application packages to a client terminal by using an operating system in the client terminal. Claim 1, for example, recites a method that includes sending “a user identification module configured to control access of said one or more software application packages.”

As an initial step in its validity analysis, the Federal Circuit determined the claimed “user identification module” is a means-plus-function term under section 112(6), stating “‘module’ is a well-known nonce word” that “here does not provide any indication of structure.” The court reiterated that method claims, like apparatus claims, can invoke section 112(6).

The Federal Circuit then analyzed the structure in the specification that is linked with the “control access” function of the term “user identification module.” The court stated the storage devices disclosed in the patent amounted to nothing more than a general-purpose computer, and that “some special programming, i.e., an algorithm, would be required to control access to the software application packages.” Finding nothing in the claim language or the written description provided such an algorithm, the Federal Circuit held the term “user identification module” lacks sufficient structure and renders the claims of the asserted patent indefinite.

This decision was issued shortly after the Federal Circuit’s February 12, 2021, decision in Synchronoss Technologies, Inc. v. Dropbox, Inc., previously reported here, which found a similar means-plus-function claim term, “user identifier module,” to be indefinite as lacking adequate structure in the specification.

The Rain Computing decision provides guidance on the requisite disclosure of structure, including an algorithm, in the specification for claims that may be determined to include means-plus-function elements. Patent applicants should keep the Rain Computing and Synchronoss cases in mind when drafting functional claim language, particularly in software-based inventions.

For more information on this topic, please contact Fitch Even partner Brett J. Smith, author of this alert.

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