DCT
2:18-cv-17573
Rain Computing Inc v. LG Electronics Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Rain Computing, Inc. (Delaware)
- Defendant: LG Electronics, Inc. (South Korea); LG Electronics U.S.A., Inc. (Delaware); LG Electronics MobileComm U.S.A, Inc. (California)
- Plaintiff’s Counsel: Meagher Emanuel Laks Goldberg & Liao, LLP; HSUANYEH LAW GROUP, Group
- Case Identification: 2:18-cv-17573, D.N.J., 12/26/2018
- Venue Allegations: Venue is based on Defendants' alleged business activities within the District of New Jersey, including the importation, distribution, and sale of the accused products. For two of the defendant entities, LG Electronics U.S.A., Inc. and LG Electronics MobileComm U.S.A., Inc., the complaint alleges their principal place of business is in the District.
- Core Dispute: Plaintiff alleges that Defendant’s smart televisions and mobile devices, through their respective application stores, infringe a patent related to methods for delivering on-demand software applications that execute locally on a user's device.
- Technical Context: The technology concerns a hybrid software delivery model that combines the subscription-based access of cloud services with the performance of applications running natively on a client device.
- Key Procedural History: The patent-in-suit issued following a successful appeal to the Patent Trial and Appeal Board. Notably, subsequent to the filing of this complaint, the patent underwent an ex parte reexamination, which concluded on December 27, 2021. The reexamination resulted in the cancellation of all asserted claims (1, 9, 12, 14-17), rendering the infringement allegations in this complaint moot.
Case Timeline
| Date | Event |
|---|---|
| 2007-11-22 | Patent Priority Date |
| 2017-08-23 | Patent Trial and Appeal Board Decision in Ex parte Chang |
| 2017-10-31 | U.S. Patent No. 9,805,349 Issues |
| 2018-12-26 | Complaint Filed |
| 2020-06-26 | Reexamination Request Filed for U.S. Patent No. 9,805,349 |
| 2021-12-27 | Reexamination Certificate Issued, Cancelling Asserted Claims |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: 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's background section identifies the drawbacks of conventional software distribution methods from the mid-2000s, such as the high one-time cost of purchasing physical or downloaded software for potentially infrequent use, and the performance limitations of applications running within a web browser (’349 Patent, col. 1:36-54; Compl. ¶14).
- The Patented Solution: The invention proposes a system where a user subscribes to software applications via a service provider's server. Upon authentication, a selected application is transmitted from the server and executed directly on the client's terminal using the terminal's own operating system and resources (’349 Patent, Abstract; col. 2:60-col. 3:3). This architecture is designed to enable a flexible, on-demand pricing model without sacrificing the performance of a natively-run application (’349 Patent, col. 7:1-12).
- Technical Importance: The described system sought to provide a more efficient and cost-effective method for software deployment by merging the economic model of on-demand services with the technical advantages of local application execution (Compl. ¶14).
- Key Claims at a Glance:
- The complaint asserts independent claim 1 and dependent claims 9, 12, and 14-17 (’349 Patent, col. 7:21-col. 10:60; Compl. ¶18).
- Independent Claim 1 recites a method with the following essential elements:
- Accepting, through a web store, a user's subscription to one or more software application packages.
- Sending the user a "user identification module" configured to control access, and coupling that module to the user's client terminal device.
- A server device authenticating the user by requesting subscription information from the user identification module.
- Upon authentication, the server provides the client device with a list of subscribed software application packages.
- The server receives a selection of an application package from the client device.
- The server transmits the selected application package to the client device.
- Executing the application package on the client device's processor using resources of an operating system resident in the client device's memory.
III. The Accused Instrumentality
- Product Identification: The accused instrumentalities are LG's smart televisions that use the webOS operating system and LG mobile devices (including, but not limited to, the V40, V35, and G7 smartphones) (Compl. ¶16). The infringement allegations center on the use of LG's Content Store on the smart TVs and the SmartWorld app on the mobile devices (Compl. ¶16, ¶18).
- Functionality and Market Context: The complaint alleges that these LG products provide users with access to application marketplaces, described as a "portal to limitless premium content and apps" (LG Content Store) and "a service that provides applications for LG mobile and tablet users" (LG SmartWorld) (Compl. ¶16). To use these services, a user must agree to LG's Terms of Use ("TOU"), after which they can select, download, and install applications (e.g., Spotify) directly onto their LG device for execution (Compl. ¶17). No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
'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; | LG controls access to the Content Store and SmartWorld by requiring users to agree to its Terms of Use ("TOU") before they can receive applications. | ¶17 | col. 7:23-25 |
| sending, to the user, a user identification module configured to control access of said one or more software application packages... | The complaint does not provide sufficient detail for analysis of this element. | N/A | col. 7:26-29 |
| a server device authenticating the user by requesting subscription information of the user from the user identification module... | The complaint alleges LG controls access to its application stores, which suggests a form of authentication, but does not specify the technical mechanism. | ¶17 | col. 7:30-33 |
| upon authentication of the user, the server device providing, to the client terminal device of the user, a listing of one or more software... | LG's Content Store and SmartWorld act as portals that present users with available applications. | ¶16 | col. 7:34-38 |
| the server device receiving, from the client terminal device... a selection of a first software application package from said listing... | Users of LG devices select and choose to "download and install" specific applications, such as Spotify, from the application store. | ¶17 | col. 7:39-42 |
| the server device transmitting the first software application package to the client terminal device through the computer network; and | Users "must download and install" the selected apps onto their LG smart TV or smartphone. | ¶17 | col. 7:43-45 |
| executing the first software application package by a processor of the client terminal device using resources of an operating system resident... | The complaint alleges that applications are downloaded to and installed on the user's device, implying local execution native to the device's operating system. | ¶17, ¶2 | col. 7:46-col. 8:1 |
- Identified Points of Contention:
- Scope Questions: A principal question for the court would concern the meaning of "user identification module." The complaint does not allege facts showing how LG's system provides such a module. The dispute may turn on whether a standard software-based user account, authenticated by a username and password and governed by a TOU, can be construed as the claimed "module," which the patent specification exemplifies with physical items like a "SIM card" or "flash memory drive" (’349 Patent, col. 4:26-31).
- Technical Questions: The infringement theory raises the question of what evidence Plaintiff possesses to demonstrate that LG's system performs the steps of "sending" and "coupling" a "user identification module" to the client device, and then "requesting subscription information" from that specific module for authentication. The complaint's allegations are silent on these technical details (Compl. ¶¶16-17).
V. Key Claim Terms for Construction
- The Term: "user identification module"
- Context and Importance: This term appears in multiple limitations of the asserted independent claim and is central to the claimed method of authentication and access control. The viability of the infringement case would likely depend heavily on whether LG's accused system, which appears to be a conventional app store, can be shown to contain a "user identification module." Practitioners may focus on this term because its construction could be dispositive.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim itself defines the module by its function: "configured to control access of said one or more software application packages" (’349 Patent, col. 7:27-28). An argument could be made that any logical construct, including a software-based user profile, that performs this function meets the claim's requirements.
- Evidence for a Narrower Interpretation: The detailed description provides specific, physical examples of the module, stating it may be "a SIM card, an IC card, a flash memory drive, a memory card, a CD-ROM, and the like" (’349 Patent, col. 4:27-31). This list of tangible, often removable, hardware could support a narrower construction that excludes purely software-based account credentials stored diffusely on a device.
VI. Other Allegations
The complaint does not contain specific counts or factual allegations supporting indirect infringement or willful infringement.
VII. Analyst’s Conclusion: Key Questions for the Case
The analysis of the complaint as filed reveals several key questions that would have been central to the litigation. However, the subsequent cancellation of all asserted claims in reexamination is the dispositive event for this case.
Procedural Viability: The primary issue is the legal status of the complaint itself. With all asserted claims cancelled by the USPTO, the basis for the lawsuit has been extinguished, making the original infringement allegations unenforceable.
Definitional Scope: Had the claims survived, a core issue would be one of claim construction: can the term "user identification module," described in the patent with tangible hardware examples, be interpreted broadly enough to read on the software-based user account and authentication system of a modern application store?
Evidentiary Sufficiency: A related question would be factual and evidentiary: does the plaintiff's pre-suit investigation provide the necessary evidence to map the specific, unclaimed steps of "sending" and "coupling" this "module" to the operation of LG's Content Store and SmartWorld, a mapping that is absent from the complaint's text?