DCT
8:19-cv-00780
Uniloc 2017 LLC v. Microsoft Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Uniloc 2017 LLC (Delaware)
- Defendant: Microsoft Corporation (Washington)
- Plaintiff’s Counsel: Feinberg Day Alberti Lim & Belloli LLP
- Case Identification: 8:19-cv-00780, C.D. Cal., 04/29/2019
- Venue Allegations: Venue is asserted based on allegations that Microsoft has committed acts of infringement and maintains multiple regular and established places of business within the Central District of California.
- Core Dispute: Plaintiff alleges that Defendant’s Skype messaging systems infringe a patent related to systems and methods for instant Voice over IP (VoIP) messaging.
- Technical Context: The technology concerns integrating real-time user presence information with store-and-forward voice messaging over packet-switched networks, a foundational element of modern asynchronous digital communication platforms.
- Key Procedural History: The complaint does not allege any prior litigation or licensing history. However, public records attached to the patent-in-suit indicate that the patent was subject to subsequent inter partes review and ex parte reexamination proceedings after the filing of this complaint. An Ex Parte Reexamination Certificate issued in 2024 states that claim 1—the only claim asserted in this action—has been cancelled. This post-filing development raises a threshold question regarding the viability of the infringement claim.
Case Timeline
| Date | Event |
|---|---|
| 2003-12-18 | ’622 Patent Priority Date |
| 2014-05-13 | ’622 Patent Issue Date |
| 2019-04-29 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Patent No. 8,724,622, System And Method For Instant VoIP Messaging, issued May 13, 2014.
The Invention Explained
- Problem Addressed: The patent's background describes conventional voice messaging as a cumbersome, non-instant process involving dialing a number, waiting for a connection, and navigating menus, without knowing in advance if the recipient is available. This is contrasted with the immediacy of instant text messaging, which uses presence information to show if a user is online (’622 Patent, col. 2:27-49). The patent identifies a need to bring the real-time, presence-aware nature of instant messaging to voice communications (’622 Patent, col. 2:49-52).
- The Patented Solution: The invention is an "instant voice messaging" system where a server architecture manages not only the delivery of voice messages but also maintains real-time "connection information" (i.e., presence) for all users (’622 Patent, Abstract). As depicted in the system architecture (e.g., Fig. 4), a central server (202) includes a client manager (406) and a user database (414) to track which users are online. This allows the system to deliver a voice message immediately to an available recipient or temporarily store it for an unavailable recipient, similar to an email or instant text message (’622 Patent, col. 8:35-39).
- Technical Importance: The technology aimed to merge the immediacy and convenience of text-based instant messaging with the expressive richness of voice, a key step toward the asynchronous, multi-modal communication platforms common today.
Key Claims at a Glance
- The complaint asserts independent claim 1 (’622 Patent, col. 23:23-24:10; Compl. ¶14).
- The essential elements of independent claim 1 are:
- A network interface connected to a packet-switched network.
- A messaging system for communicating with multiple instant voice message client systems.
- A communication platform system that maintains connection information indicating whether each client system has a current connection.
- A user database storing user records, with each record including a user name, a password, and a list of other users.
- The complaint does not specifically assert any dependent claims but reserves the right to do so (Compl. ¶21).
III. The Accused Instrumentality
Product Identification
- The "Accused Infringing System" is identified as Microsoft's messaging communications systems, specifically "Skype" (Compl. ¶¶2, 13).
Functionality and Market Context
- The complaint alleges that Skype is a cloud-based communication system that operates over a packet-switched network (the Internet) using protocols such as TCP and UDP (Compl. ¶16). Its core accused functionalities include enabling voice and video messaging between a plurality of users (Compl. ¶17), maintaining and displaying user "presence" information (e.g., "Online," "Away") to indicate connection status (Compl. ¶18), and requiring users to log in with a username and password to access their account and manage a contact list (Compl. ¶19). A screenshot provided in the complaint shows a diagram of the "Skype Developer Platform," which illustrates a foundation of "Servers and Services" that support features including "Messaging" and "Presence" (Compl. p. 4).
IV. Analysis of Infringement Allegations
U.S. Patent No. 8,724,622 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a network interface connected to a packet-switched network; | The Skype system is alleged to be a cloud-based service that connects users via the Internet, a packet-switched network, and requires open ports for TCP and UDP protocols. | ¶16 | col. 1:40-44 |
| a messaging system communicating with a plurality of instant voice message client systems via the network interface; | Skype is alleged to enable communication, including voice-only and video messages, among its large user base of clients (e.g., for Android, Windows). | ¶17 | col. 12:7-10 |
| a communication platform system maintaining connection information for each of the plurality of instant voice message client systems indicating whether there is a current connection to each of the plurality of instant voice message client systems; | The complaint alleges that Skype's developer platform, comprised of servers and services, maintains "connectivity (presence) information on users." A provided screenshot of Skype statuses (e.g., "Online," "Away," "Offline") is offered as evidence of this functionality (Compl. p.8). | ¶18 | col. 15:1-4 |
| and a user database storing user records identifying users...wherein each of the user records includes a user name, a password and a list of other users selected by a user. | The complaint alleges that Skype's platform requires a username and password for login and maintains this information in a database on its servers, which also manage a user's contact list. The complaint includes screenshots of the Skype login interface requiring a username and password (Compl. p.9). | ¶19 | col. 18:59-65 |
- Identified Points of Contention:
- Legal Question: A threshold legal question, arising from post-filing events documented in the patent’s reexamination certificate, is the viability of an infringement action based on a claim that was subsequently cancelled.
- Scope Questions: Assuming the claim were valid, a potential point of contention is whether the term "communication platform system," which the patent illustrates as a relatively consolidated "local IVM server" (e.g., ’622 Patent, Fig. 4), can be construed to read on the distributed, cloud-based microservices architecture that the complaint alleges for Skype.
- Technical Questions: A factual question may arise as to whether Skype’s user-facing "presence" status (e.g., "Online") is technically equivalent to the "connection information" indicating a "current connection" as required by the claim, or if the claim requires a more specific type of server-maintained logical session state.
V. Key Claim Terms for Construction
The Term: "communication platform system"
- Context and Importance: The definition of this term is central to determining whether the patent's teachings, which often depict a single logical server, can encompass a modern, distributed cloud architecture. Practitioners may focus on this term to dispute whether the accused product's architecture constitutes a single, infringing "system."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term itself is not explicitly defined or limited in the specification. The patent states the server is a "general-purpose programmable computer" (’622 Patent, col. 18:41-43), which could support a non-limiting interpretation of its architecture.
- Evidence for a Narrower Interpretation: The figures and their descriptions consistently show a "local IVM server 202" that contains a "server communication platform 402" comprising a suite of specific, co-located managers (client manager 406, station manager 408, etc.) (’622 Patent, Fig. 4; col. 6:50-57). This could support an argument that the "system" requires these components to be more integrated than in a distributed cloud service.
The Term: "connection information...indicating whether there is a current connection"
- Context and Importance: This term is critical for the "presence" feature. Its construction will determine whether a simple user-facing status like "Online" meets the limitation, or if a more specific technical state is required.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification refers to this concept using general language, such as determining if a client is "on-line" (’622 Patent, col. 12:55-59) and providing "contact presence (connection) information" (’622 Patent, col. 15:2-3), suggesting the user-facing status is what was contemplated.
- Evidence for a Narrower Interpretation: The patent also describes more technical "connection objects" that "maintain the logical connections" and represent the "state of the connection" (’622 Patent, col. 18:46-51). An argument could be made that "connection information" refers to this underlying technical data, not just the resulting "online" or "offline" indicator.
VI. Other Allegations
- Willful Infringement: The prayer for relief requests a finding of willful infringement and an award of enhanced damages (Compl. p.10, ¶c). However, the body of the complaint does not allege specific facts to support that Microsoft had either pre-suit or post-suit knowledge of U.S. Patent No. 8,724,622 or its alleged infringement.
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this case appears to depend on the following central questions:
A dispositive issue of procedural viability: Can an infringement action proceed when its sole asserted claim was cancelled in post-filing patent office proceedings, effectively rendering the claim invalid ab initio?
A secondary question of architectural scope: If the case were to proceed, a core issue would be whether the term "communication platform system," as described in the patent's embodiments, can be construed broadly enough to encompass the distributed, cloud-based architecture of the accused Skype service.