1:18-cv-12639
Rain Computing Inc v. Samsung Electronics Co Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Rain Computing, Inc. (Delaware)
- Defendant: Samsung Electronics Co., Ltd. (South Korea); Samsung Electronics America, Inc. (New York); Samsung Research America, Inc. (California)
- Plaintiff’s Counsel: HSUANYEH LAW GROUP, Group
- Case Identification: 1:18-cv-12639, D. Mass., 12/26/2018
- Venue Allegations: Plaintiff alleges venue is proper in the District of Massachusetts because Defendant maintains a place of business in the district, sells products and services to Massachusetts customers, and provides app stores used by customers in the state.
- Core Dispute: Plaintiff alleges that Defendant’s smartphones and application store infrastructure infringe a patent related to a method for delivering on-demand software applications to a client device for native execution.
- Technical Context: The technology concerns a system for providing software on a subscription basis, where applications are stored on a central server but executed using the resources of the local client device, a model contrasted with "cloud computing" where execution occurs on the server.
- Key Procedural History: The complaint notes that the asserted patent issued after a successful appeal to the Patent Trial and Appeal Board. A subsequent ex parte reexamination proceeding, which concluded after the complaint was filed, resulted in the cancellation of all three independent claims asserted in this action (Claims 1, 5, and 8) and most of the asserted dependent claims.
Case Timeline
| Date | Event |
|---|---|
| 2007-11-22 | Priority Date for U.S. Patent No. 9,805,349 |
| 2017-08-23 | PTAB Decision in Ex parte Chang Appeal No. 2015-003805 |
| 2017-10-31 | U.S. Patent No. 9,805,349 Issues |
| Prior to 2018-12-26 | Launch of Accused Products (Galaxy S7, S8, S9, S9+ smartphones) |
| 2018-12-26 | Complaint Filed |
| 2020-06-26 | Request for Ex Parte Reexamination of the '349 Patent Filed |
| 2021-12-27 | Reexamination Certificate (9,805,349 C1) Issues, Cancelling Claims |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,805,349 - “Method and System for Delivering Application Packages Based on User Demands,” Issued October 31, 2017
The Invention Explained
- Problem Addressed: The patent describes conventional software distribution models—such as purchasing physical copies or paying a one-time fee for a download—as potentially unattractive and cost-prohibitive for infrequent users. It also notes that web-based applications are often slower than applications running directly on a local operating system (OS). (’349 Patent, col. 1:36-57).
- The Patented Solution: The invention proposes a system where a user subscribes to software applications that are stored on a central server. The client terminal can then request and receive a subscribed application package from the server for execution. A key aspect described is that the application runs natively on the client terminal, using the client's own processor and memory resources, rather than running inside a web browser. (’349 Patent, Abstract; col. 2:3-14; col. 5:51-61). The system authenticates the user's subscription before delivering the application, and billing can be handled periodically based on subscriptions. (’349 Patent, col. 5:56-61; col. 6:51-54).
- Technical Importance: The described method sought to provide the commercial flexibility of on-demand subscription models while retaining the performance benefits of locally executed software. (’349 Patent, col. 7:1-4).
Key Claims at a Glance
- The complaint asserts independent claims 1, 5, and 8. (Compl. ¶17).
- Independent Claim 1, which is representative, recites the following essential elements:
- Accepting a user’s subscription for software application packages through a web store.
- Sending the user a "user identification module" that is coupled to the user's client device.
- A server authenticating the user by requesting subscription information from the user identification module.
- The server providing a list of subscribed applications to the client device upon authentication.
- The server receiving a selection of an application from the list from the client device.
- The server transmitting the selected application package to the client device.
- Executing the application package on the client device's processor using resources of an OS resident in the client device's memory.
- The complaint also asserts dependent claims 2-3, 6-7, 9-12, 14-19, 21-24, and 26-27. (Compl. ¶17).
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are Samsung’s electronic devices, including its Galaxy S7, S8, S9, and S9+ smartphones; the "Galaxy Apps app store"; and software applications such as the "Samsung Smart Home app." (Compl. ¶¶13-15, 17).
Functionality and Market Context
The complaint alleges that Samsung operates a system to deliver software applications to its electronic devices via its app store. (Compl. ¶15). To use the app store, users are allegedly required to "register, subscribe, and/or agree to certain terms." (Compl. ¶16). Following this, users can select, download, and install applications onto their devices, where the applications are then executed. (Compl. ¶¶14, 16). The complaint frames this entire ecosystem—from user subscription to app execution—as the infringing method. (Compl. ¶17).
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
’349 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| accepting, through a web store, a subscription of one or more software application packages from a user | Samsung provides the "Galaxy Apps app store" through which users access software applications. (Compl. ¶15). | ¶15 | col. 7:20-23 |
| sending, to the user, a user identification module configured to control access... and coupling the user identification module to a client terminal device of the user | Samsung requires users to "register, subscribe, and/or agree to certain terms" to access and receive apps. (Compl. ¶16). | ¶16 | col. 7:25-29 |
| a server device authenticating the user by requesting subscription information of the user from the user identification module... | Samsung "controls access to the apps stores" by requiring users to register or subscribe. (Compl. ¶16). | ¶16 | col. 7:30-33 |
| upon authentication of the user, the server device providing, to the client terminal device... a listing of one or more software application packages subscribed through the web store... | The app store provides users access to software applications to which they are subscribed. (Compl. ¶8). | ¶8 | col. 7:33-38 |
| the server device receiving, from the client terminal device... a selection of a first software application package from said listing... | Samsung "allows users of the electronic devices to select certain software applications for delivery through the app stores." (Compl. ¶16). | ¶16 | col. 7:38-41 |
| the server device transmitting the first software application package to the client terminal device through the computer network | Users "must download and install those apps on the electronic devices." (Compl. ¶16). | ¶16 | col. 7:41-44 |
| 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 | Samsung's software applications can be "downloaded, installed, and executed on the electronic devices." (Compl. ¶14). | ¶14 | col. 7:45-48 |
Identified Points of Contention
- Scope Questions: The complaint does not specify what component of the accused system constitutes the claimed "user identification module." A central question will be whether a user's account and login credentials for the Galaxy Apps store can meet this limitation, especially when the patent specification provides concrete examples such as a "SIM card, an IC card, a flash memory drive, a memory card, a CD-ROM." (’349 Patent, col. 4:26-31).
- Technical Questions: A potential mismatch exists between the patented method's architecture and the accused system's operation. The patent specification describes a "network booting process" where the client terminal may be initiated using an OS transmitted from the server (’349 Patent, col. 4:44-48, Claim 4). In contrast, the accused Samsung smartphones operate on a pre-installed native OS (i.e., Android). The dispute may turn on whether Claim 1, which recites execution using an OS "resident in a memory of the client terminal device," is broad enough to cover a pre-installed OS, or if its scope is limited by the specification's more specific network-booting embodiments.
V. Key Claim Terms for Construction
The Term: "user identification module"
Context and Importance
The infringement case for Claim 1 hinges on whether a standard software-based user account for an app store satisfies this limitation. The patent ties authentication and access control to this "module."
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: The claim language itself is functional, defining the module by what it does: "configured to control access." (’349 Patent, col. 7:26-28). Parties arguing for a broad construction may assert that any logical component performing this function qualifies.
- Evidence for a Narrower Interpretation: The specification provides a list of physical or discrete examples, stating the module could be a "SIM card, an IC card, a flash memory drive, a memory card, a CD-ROM," or be "integrated with ROM 230 of client terminal 200." (’349 Patent, col. 4:26-38). This may support an argument that the term requires a more tangible or distinct component than a user account.
The Term: "executing the first software application package... using resources of an operating system resident in a memory of the client terminal device"
Context and Importance
This term is critical for determining if the patent covers modern app store models. Its interpretation will decide whether the claims read on devices with a self-contained, pre-installed OS or are limited to the network-booting architecture described in the patent.
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: The plain language does not specify the origin of the OS, only that it must be "resident in a memory of the client terminal device" during execution. This could arguably encompass a pre-installed mobile OS like Android once it is loaded into RAM.
- Evidence for a Narrower Interpretation: The detailed description repeatedly references a "network booting process" where the server transmits the OS to the client. (’349 Patent, col. 4:44-48). Claim 4 explicitly recites this step. A narrow construction might argue that the term "operating system" in Claim 1 should be read in light of these specific embodiments, thereby excluding devices with a permanently installed local OS.
VI. Other Allegations
Indirect Infringement
The complaint does not include a separate count for indirect infringement. However, it alleges that Samsung "establishes the manner in which the users perform such download and installation by requiring the users to access the app stores to do so," which may provide a factual predicate for a future claim of induced infringement. (Compl. ¶16).
Willful Infringement
The complaint does not contain an allegation of willful infringement or plead facts related to pre-suit knowledge of the patent by the Defendant.
VII. Analyst’s Conclusion: Key Questions for the Case
Claim Viability: The most immediate issue is the legal status of the complaint itself. Given that a post-filing reexamination cancelled all asserted independent claims and the majority of asserted dependent claims, a primary question is whether Plaintiff can maintain its action based on the few remaining, unexamined dependent claims or will need to seek leave to amend its infringement contentions.
Definitional Scope: Assuming the case proceeds, a core issue will be one of claim construction: can the term "user identification module," which the patent illustrates with physical hardware examples, be construed broadly enough to read on a software-based user account for Samsung’s app store?
Architectural Mismatch: A key evidentiary question will be whether the asserted claims are limited to the "network booting" architecture detailed in the patent's specification. The court will need to determine if executing an app on a standard, pre-installed mobile OS is technically equivalent to the claimed method of "executing... using resources of an operating system resident in a memory," or if the patent's disclosure implicitly limits the claims to a system where the OS is provisioned from the server.