DCT
2:12-cv-10927
MyKey Technology Inc v. Intelligent Computer Solutions Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: MyKey Technology Inc. (Delaware)
- Defendant: Intelligent Computer Solutions, Inc. (California)
- Plaintiff’s Counsel: Garvey Schubert Barer
- Case Identification: 2:12-cv-10927, D. Md., 09/11/2012
- Venue Allegations: Venue is alleged to be proper in the District of Maryland because the Defendant conducts business in the state, has placed the accused products into the stream of commerce with the expectation of sales in Maryland, and has allegedly committed acts of patent infringement within the district.
- Core Dispute: Plaintiff alleges that Defendant’s data storage security and duplication products infringe three patents related to write-protection, forensically sound duplication, and secure data erasure for computer long-term memory devices.
- Technical Context: The technology at issue involves hardware-level control and manipulation of computer storage devices, a field critical to digital forensics, data security, and IT management where preserving or sanitizing data integrity is essential.
- Key Procedural History: The complaint alleges that Defendant had pre-suit knowledge of two of the three patents-in-suit since at least August 2009, based on a High Tech Crime Investigation Association Conference.
Case Timeline
| Date | Event |
|---|---|
| 2000-09-29 | U.S. Patent No. 6,813,682 Priority Date |
| 2001-06-21 | U.S. Patent No. 7,228,379 Priority Date |
| 2003-01-29 | U.S. Patent No. 7,159,086 Priority Date |
| 2004-11-02 | U.S. Patent No. 6,813,682 Issued |
| 2007-01-02 | U.S. Patent No. 7,159,086 Issued |
| 2007-06-05 | U.S. Patent No. 7,228,379 Issued |
| 2009-08-01 | Alleged Pre-Suit Knowledge of ’086 and ’379 Patents |
| 2012-09-11 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,813,682 - "Write Protection for Computer Long-Term Memory Devices"
- Patent Identification: U.S. Patent No. 6,813,682, "Write Protection for Computer Long-Term Memory Devices," issued November 2, 2004.
The Invention Explained
- Problem Addressed: The patent’s background section describes the need for professionals, such as law enforcement, to examine computer storage devices without altering their contents. Conventional operating systems may automatically write data to a drive, and software-based write-protection methods can be unreliable or operating-system-specific (’682 Patent, col. 1:16-34).
- The Patented Solution: The invention is a physical hardware "blocking device" inserted between a host computer and a storage device (e.g., a hard drive) (’682 Patent, Fig. 2). This device intercepts and examines all commands sent from the host. It is configured to block commands that would modify the storage device (e.g., "write" commands) while allowing "safe" commands (e.g., "read" commands) to pass through, thereby providing hardware-enforced write protection (’682 Patent, col. 2:22-38). The device is designed to be "transparent," meaning it does not require special software on the host computer (’682 Patent, col. 5:38-40).
- Technical Importance: The invention provides an operating-system-independent method to guarantee the integrity of data on a storage device, a foundational requirement for digital forensic investigations (’682 Patent, col. 1:20-28).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶11).
- The essential elements of claim 1 include:
- An interface emulator to connect to a host.
- An interface to connect to the storage device.
- A processor that examines commands from the host, allowing only commands from a "predetermined set" known not to modify the drive's state to pass to the storage device.
- The blocking device is "transparent to normal operation of the host and the storage device."
- The complaint reserves the right to assert additional claims.
U.S. Patent No. 7,159,086 - "Systems and Methods For Creating Exact Copies Of Computer Long-Term Storage Devices"
- Patent Identification: U.S. Patent No. 7,159,086, "Systems and Methods For Creating Exact Copies Of Computer Long-Term Storage Devices," issued January 2, 2007.
The Invention Explained
- Problem Addressed: The patent describes challenges in creating forensically sound, "exact copies" of storage devices. Software-based methods may alter the source drive, while existing dedicated hardware duplicators can be complex to operate and may fail to copy data from hidden areas of a drive, known as the Host Protected Area (HPA) or Device Configuration Overlay (DCO) (’086 Patent, col. 1:20-58).
- The Patented Solution: The invention is a standalone, operating-system-independent hardware device for duplicating drives (’086 Patent, col. 2:8-20). It features physically separate and electrically isolated interfaces for the source and destination drives to prevent data corruption (’086 Patent, col. 3:55-65). The device is initiated by a simple user switch and its control circuitry automatically performs a complete forensic workflow: it accesses and removes protections on hidden areas (HPA/DCO), performs a bit-for-bit copy, verifies the copy against the source, and restores the source drive to its original state (’086 Patent, col. 11:2-9).
- Technical Importance: This technology aims to simplify the forensic duplication process, reduce the risk of operator error, and ensure a more complete and verified copy by automatically handling hidden data areas that other tools might miss (’086 Patent, col. 4:38-53).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶19).
- The essential elements of claim 1 include:
- An interface for a source device and one or more interfaces for destination devices.
- The interfaces are "electronically isolated from each other through the use of separate interface circuitry."
- A "user controllable switch" to initiate the copy process.
- A control circuit that issues commands to: compare drive sizes, open hidden areas, make an exact copy, compare the source and destination data, and "restore the source drive to its original condition."
- The complaint reserves the right to assert additional claims.
U.S. Patent No. 7,228,379 - "Systems and Methods For Removing Data Stored On Long-Term Memory Devices"
- Patent Identification: U.S. Patent No. 7,228,379, "Systems and Methods For Removing Data Stored On Long-Term Memory Devices," issued June 5, 2007.
Technology Synopsis
This patent addresses the problem of securely and completely erasing data from storage devices (’379 Patent, col. 1:12-17). It proposes a dedicated hardware device that overwrites drive tracks multiple times with varying bit patterns. The overwriting sequence is specifically designed to force the drive's read/write head to make large jumps across the platter, introducing "jitter" in its position to ensure that residual data at the edges of the tracks is also overwritten (’379 Patent, col. 8:1-14).
Asserted Claims
The complaint asserts claim 2, which depends from independent claim 1 (Compl. ¶27). Claim 1 recites a stand-alone device for irretrievably removing data, including a control circuit configured to open a hidden storage area. Claim 2 adds the limitation that the control circuit opens the hidden area "without user intervention."
Accused Features
The complaint alleges that the "IM Solo-4 Forensic Hard Drive Acquisition/Duplicator" and "IM Solo-4 IT Hard Drive Duplicator" infringe the ’379 patent (Compl. ¶27).
III. The Accused Instrumentality
Product Identification
- The complaint names the "ICS Super DriveLock," the "IM Solo-4 Forensic Hard Drive Acquisition/Duplicator," and the "IM Solo-4 IT Hard Drive Duplicator" as the accused instrumentalities (Compl. ¶¶11, 19, 27).
Functionality and Market Context
- The complaint does not provide specific details regarding the technical operation, features, or functionality of the accused products. The product names suggest that the "ICS Super DriveLock" is a write-blocking device intended for data protection or forensic acquisition, while the "IM Solo-4" products are hardware-based drive duplicators designed for forensic and IT applications. No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint alleges infringement in a conclusory manner without providing claim charts or detailed mapping of accused functionality to claim elements. The following charts are constructed based on the asserted claims and the implied functionality of the accused products as suggested by their names.
'682 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| an interface emulator configured to emulate an interface presented by a storage device and configured to connect to a host | The ICS Super DriveLock is alleged to provide a host-side connection that appears as a standard drive interface to a host computer. | ¶11 | col. 2:25-28 |
| an interface for connecting to the storage device | The ICS Super DriveLock is alleged to provide a drive-side connection for a physical storage device. | ¶11 | col. 2:28-29 |
| a processor coupled to the interface emulator and the interface, the processor examining commands received... allowing only those of the commands that match a predetermined set of commands to pass | The ICS Super DriveLock is alleged to contain processing logic that intercepts and inspects commands from the host, blocking write commands while allowing read commands to pass. | ¶11 | col. 2:32-38 |
| wherein the blocking device is transparent to normal operation of the host and the storage device | The ICS Super DriveLock is alleged to operate by being physically inserted between the host and drive without requiring special host software. | ¶11 | col. 5:38-40 |
- Identified Points of Contention:
- Technical Question: The complaint does not provide evidence regarding the internal architecture of the ICS Super DriveLock. A question for the court may be whether the accused device uses a "processor" that "examin[es] commands," as claimed, or employs a simpler, non-programmable logic gate that merely blocks a write-enable signal without command-level examination.
- Scope Question: The complaint does not specify which commands the accused product allegedly blocks or passes. This raises the question of whether its filtering logic performs the function required by the claim limitation "match a predetermined set of commands."
'086 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| an interface for connecting to a storage device (source); one or more interfaces for connecting to the storage device(s) (destination) | The IM Solo-4 products are alleged to have dedicated interfaces for a source drive and one or more destination drives. | ¶19 | col. 2:10-14 |
| wherein the interfaces are electronically isolated from each other through the use of separate interface circuitry for each interface | The IM Solo-4 products are alleged to use separate and electrically isolated circuitry for the source and destination ports. | ¶19 | col. 10:55-60 |
| a user controllable switch that, when actuated by a user, causes the device to commence a copy | The IM Solo-4 products are alleged to be operable via a simple user control to initiate the duplication process. | ¶19 | col. 2:15-18 |
| a control circuit... issuing commands to: compare the size of the source device... open hidden areas on the source device, make an exact copy... read and compare data... restore the source drive to its original condition | The IM Solo-4 products are alleged to contain a control circuit that automatically performs a sequence of forensically sound operations, including handling HPA/DCO, copying, verifying the copy, and restoring the source drive's state. | ¶19 | col. 11:2-9 |
- Identified Points of Contention:
- Technical Question: What evidence does the complaint provide that the IM Solo-4 products perform the complete, multi-step sequence required by the claim? In particular, the court may need to resolve whether the products execute an affirmative step to "restore the source drive to its original condition" after handling hidden areas.
- Scope Question: The meaning of "electronically isolated from each other through the use of separate interface circuitry" may be a subject of claim construction. The degree of electrical and logical separation in the accused products will need to be compared to the scope of this term.
V. Key Claim Terms for Construction
Term from the '682 Patent: "processor"
- Context and Importance: Practitioners may focus on this term because the defendant could argue its device uses simple, hard-wired logic rather than a programmable "processor" that actively "examin[es]" commands. A narrow construction could support a non-infringement defense if the accused device's architecture is sufficiently simple.
- Intrinsic Evidence for a Broader Interpretation: The patent specification also uses the term "logic circuit" when describing the invention's functionality, which could suggest that "processor" is not limited to a programmable microprocessor but can encompass other forms of control logic (’682 Patent, col. 2:45-46).
- Intrinsic Evidence for a Narrower Interpretation: The patent’s detailed description discloses a specific embodiment using an "embedded processor," such as an "80386 EX," which implies a level of programmability and complexity beyond simple logic gates (’682 Patent, col. 7:13-16).
Term from the '086 Patent: "restore the source drive to its original condition"
- Context and Importance: This term recites a specific, affirmative step in the claimed method. Its construction is critical because if the accused duplicator achieves a similar outcome (e.g., the source drive's hidden areas are re-protected on power-off) without performing an active restoration step commanded by its control circuit, it may fall outside the scope of the claim.
- Intrinsic Evidence for a Broader Interpretation: A party could argue this phrase covers any method that results in the drive returning to its prior state, including an automatic reset that occurs upon a power cycle after the copying is complete.
- Intrinsic Evidence for a Narrower Interpretation: The claim language lists this as one of a series of actions performed by the "control circuit," which suggests it is an active, commanded step in the automated sequence, rather than a passive or external event like a user-initiated power-off (’086 Patent, col. 11:2-9).
VI. Other Allegations
- Indirect Infringement: The complaint includes allegations of induced and contributory infringement for all three patents, asserting that the accused products have "no substantial non-infringing uses" (Compl. ¶¶12, 20, 28). The complaint does not, however, plead specific facts to support these allegations, such as references to user manuals or marketing materials that instruct on infringing use.
- Willful Infringement: Willfulness is alleged for all three patents. For the '682 patent, the allegation is based on "information and belief" of knowledge (Compl. ¶13). For the '086 and '379 patents, the allegation is more specific, asserting that Defendant had knowledge "as early as August 2009 during the High Tech Crime Investigation Association Conference" (Compl. ¶¶21, 29).
VII. Analyst’s Conclusion: Key Questions for the Case
A central issue will be one of evidentiary proof: given the complaint's lack of specific technical allegations, the case may turn on whether discovery reveals that the accused products' internal hardware and software routines actually perform the specific, multi-step functions recited in the asserted claims, particularly the "processor"-based command examination of the '682 patent and the full "open-copy-verify-restore" sequence of the '086 patent.
The dispute may also hinge on claim construction: a key question will be one of definitional scope. Can the term "processor" in the '682 patent be construed to cover simple, non-programmable logic? And does the phrase "restore the source drive to its original condition" in the '086 patent require an affirmative command from the device's control circuit, or can it be satisfied by a passive reset upon power-down?