DCT

8:10-cv-01483

Symantec Corp v. Uniloc USA Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 8:10-cv-01483, C.D. Cal., 10/01/2010
  • Venue Allegations: Venue is asserted based on a substantial part of the events giving rise to the claim occurring in the district, and on Defendants having previously filed an action and stipulated to continuing jurisdiction in the Central District of California.
  • Core Dispute: Plaintiffs seek a declaratory judgment of non-infringement and invalidity of a patent related to a software registration system, following a complex procedural history involving a prior license agreement, arbitration, and a dismissed lawsuit between the parties.
  • Technical Context: The technology concerns methods for preventing software piracy by requiring a unique registration process to activate the full functionality of a software program, a critical issue for software distributors.
  • Key Procedural History: The complaint details a significant history between the parties. Uniloc licensed the patent-in-suit to XtreamLok (now a Symantec subsidiary) in 2002. In 2008, Uniloc sued Symantec and XtreamLok for patent infringement and breach of contract in the same court. The parties agreed to arbitrate the contract claim while staying the patent claim, stipulating that the court would retain jurisdiction to resolve the infringement issue later. The arbitration, which proceeded on the assumption of infringement for contractual purposes only, found a breach of the license agreement. Following the arbitration, Uniloc unilaterally dismissed its 2008 lawsuit and filed new infringement actions against numerous defendants, including Symantec, in the Eastern District of Texas. This declaratory judgment action was filed by Symantec to bring the infringement dispute back to the Central District of California, the forum to which the parties had previously stipulated.

Case Timeline

Date Event
1992-09-21 '216 Patent Priority Date
1996-02-06 U.S. Patent No. 5,490,216 Issues
2002-09-10 Uniloc and XtreamLok enter into Patent License Agreement
2005-05-01 Symantec indirectly acquires XtreamLok
2008-05-30 Uniloc files initial infringement and contract action against Symantec/XtreamLok in C.D. Cal.
2008-10-22 Court stays the initial action pending arbitration of contract claims
2009-09-01 Arbitrator issues ruling finding breach of contract (based on assumption of infringement)
2009-11-30 Uniloc unilaterally dismisses the C.D. Cal. action
2010-09-14 Uniloc sues Symantec for infringement of the '216 patent in E.D. Tex.
2010-10-01 Symantec/XtreamLok file current Declaratory Judgment Complaint in C.D. Cal.

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 5,490,216 - "System for Software Registration"

  • Patent Identification: U.S. Patent No. 5,490,216, "System for Software Registration," issued February 6, 1996.

The Invention Explained

  • Problem Addressed: The patent addresses the ease with which software could be pirated. Simple security measures like a single registration number included with the software were ineffective, as an installed and registered program could often be copied from one computer to another without restriction. Conversely, security systems tied too rigidly to a specific machine created problems for legitimate users who needed to transfer software to a new computer. (’216 Patent, col. 1:11-28, 51-57).
  • The Patented Solution: The invention proposes a two-part registration system to create a unique link between a licensee and a specific software installation. A "code portion" integral to the software on the user's local machine ("platform") generates a unique ID based on information supplied by the user. The user communicates this information to a remote registration authority, which runs a duplicate of the generation algorithm to create a matching registration number. This number is then provided back to the user, who enters it to switch the software from a limited "demonstration mode" to a fully functional "use mode." This architecture is designed to prevent simple copying while allowing for authorized re-registration if a user changes platforms. (’216 Patent, Abstract; col. 3:1-17; Fig. 8).
  • Technical Importance: This approach sought to balance robust anti-piracy protection with user flexibility, moving beyond simple serial numbers or hardware-locked keys to a more dynamic, licensor-managed activation process. (’216 Patent, col. 2:51-61).

Key Claims at a Glance

  • The complaint seeks a declaratory judgment of non-infringement of all claims of the patent (’216 Patent, ¶19). Independent claim 1 is representative of the core system.
  • Independent Claim 1:
    • A registration system for licensing execution of digital data in a use mode, where the data is executable on a platform.
    • The system includes a "local licensee unique ID generating means" and a "remote licensee unique ID generating means".
    • The system includes a "mode switching means" on the platform that permits use of the digital data in the use mode only if a first ID from the local means has matched a second ID from the remote means.
    • The remote means comprises software executed on a separate platform that includes the same algorithm as the local means to produce the licensee unique ID. (’216 Patent, col. 13:54–col. 14:4).
  • The complaint makes a general request for non-infringement of "any claim" and does not limit its request to specific independent or dependent claims (Compl. ¶19).

III. The Accused Instrumentality

Product Identification

  • The complaint references "XtreamLok's technology" generally (Compl. ¶9). The underlying dispute, as described in the complaint and its exhibits, concerns software security products developed by XtreamLok and used in Symantec products, including "Norton AntiVirus" (Compl. Ex. B, ¶28).

Functionality and Market Context

  • The complaint does not describe the specific functionality of the accused technology in detail. The dispute arises from a 2002 license agreement wherein XtreamLok licensed the '216 patent for its technology, which was then sold to its customer, Symantec (Compl. ¶9). The core of the dispute is whether this technology, which relates to software security and activation, actually practices the invention claimed in the '216 patent (Compl. ¶16).

IV. Analysis of Infringement Allegations

This complaint is for a declaratory judgment of non-infringement; therefore, it does not contain affirmative infringement allegations or a claim chart. The infringement controversy stems from a prior lawsuit filed by Uniloc (attached as Compl. Ex. B), which alleged that XtreamLok's security products and Symantec's Norton AntiVirus products infringed the '216 patent (Compl. Ex. B, ¶¶ 26, 28). Those allegations were general and did not map specific product features to claim elements. Accordingly, a claim chart cannot be constructed from the pleadings. The analysis below identifies the likely points of contention based on the patent and the nature of the accused products.

No probative visual evidence provided in complaint.

  • Identified Points of Contention:
    • Scope Questions: A central question will be whether the accused products' activation mechanism constitutes the "local licensee unique ID generating means", "remote licensee unique ID generating means", and "mode switching means" recited in claim 1. The patent describes a system requiring communication between a user's machine and a distinct remote licensor's machine to generate and match keys (’216 Patent, Fig. 8). The dispute may turn on whether the accused products use such a remote, interactive architecture or a different method for validation and activation.
    • Technical Questions: Does the accused technology generate an ID based on "information uniquely descriptive of an intending licensee," as claim 2 requires and the specification emphasizes, or does it rely solely on machine or platform parameters? (’216 Patent, col. 14:5-9). Furthermore, what evidence shows that the accused products operate in a "demonstration mode" and switch to a "use mode" only if a locally generated ID matches a remotely generated one, as required by the structure of claim 1?

V. Key Claim Terms for Construction

  • The Term: "licensee unique ID" (from claim 1)

  • Context and Importance: The definition of this term is critical for determining whether the accused products meet a core limitation of the claims. The dispute will likely focus on what kind of information must be used to generate this ID. Practitioners may focus on this term because the patent appears to distinguish between user-specific information and platform-specific information, and infringement may depend on which type the accused products use.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The term itself, "licensee unique ID," could be argued to encompass any identifier that is unique to a particular license instance, regardless of its source (user or machine). Claim 1 itself does not specify the source of the information.
    • Evidence for a Narrower Interpretation: The specification repeatedly describes generating the ID from "information supplied by the licensee which characterizes the licensee" (’216 Patent, Abstract; col. 3:1-2) and distinguishes this from pure platform identification (col. 2:1-6). Dependent claim 6 specifies the information comprises "prospective licensee details including at least one of payment details, contact details and name" (’216 Patent, col. 14:20-23), which may be used to argue the patentee envisioned an ID tied to personal user data.

  • The Term: "mode switching means" (from claim 1)

  • Context and Importance: This term defines the mechanism that enforces the registration scheme. The infringement analysis will depend on whether the accused products' activation process performs the specific function required by this "means."

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: A party could argue the term covers any software function that enables or unlocks features upon successful registration.
    • Evidence for a Narrower Interpretation: The specification describes a distinct switch from a "demonstration mode" to a "use mode" (’216 Patent, col. 3:39-42) and a "fully enabled mode" versus a "partly enabled or demonstration mode" (col. 3:32-36). This suggests the "means" must implement a binary switch between two predefined operational states, triggered only by the matching of the local and remote IDs as laid out in the claim.

VI. Other Allegations

Since this is a complaint for declaratory judgment of non-infringement, it does not make allegations of indirect or willful infringement. However, these allegations were made in Uniloc's prior lawsuit, forming the basis of the underlying controversy.

  • Indirect Infringement: Uniloc's prior complaint alleged that Symantec and XtreamLok induced and contributed to infringement by their customers and/or through their products (Compl. Ex. B, ¶¶ 27, 29). The alleged basis for inducement would likely be the sale of products with instructions on how to perform the allegedly infringing registration process.
  • Willful Infringement: The prior complaint alleged that infringement was willful and deliberate, based on "actual knowledge of the '216 patent" (Compl. Ex. B, ¶f, p. 42). This allegation is likely grounded in the 2002 Patent License Agreement, which by its nature establishes knowledge of the patent as of that date (Compl. ¶9).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A threshold issue will be procedural and jurisdictional: what is the legal effect of the parties' prior stipulation to resolve infringement in the Central District of California, following Uniloc's subsequent dismissal of that case and re-filing in Texas? This will determine not only the forum but also the lens through which the parties' conduct is viewed.
  • A central claim construction question will be one of definitional scope: does the term "licensee unique ID" require the use of personal, user-supplied information as described in the patent’s embodiments, or can it be read more broadly to cover any unique identifier, including one based solely on machine characteristics?
  • The core evidentiary question will be one of technical operation: do the accused Symantec and XtreamLok products implement the specific two-party, local/remote architecture for generating and matching identifiers to perform a "mode switch" as claimed, or does their software activation system function in a fundamentally different way that falls outside the scope of the claims?