DCT
8:19-cv-00956
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-00956, C.D. Cal., 05/20/2019
- Venue Allegations: Venue is alleged to be proper based on Microsoft's commission of infringing acts within the Central District of California and its maintenance of regular and established places of business in the district.
- Core Dispute: Plaintiff alleges that Defendant’s Windows Update service infringes a patent related to methods for managing electronic device reconfigurations by checking for component compatibility before an upgrade.
- Technical Context: The technology concerns automated software update systems that must ensure new software components are compatible with the existing hardware and software on a device to prevent instability.
- Key Procedural History: The complaint was filed on May 20, 2019. Subsequently, an Inter Partes Review (IPR) proceeding, IPR2020-00023, was initiated against the patent-in-suit on October 11, 2019. According to the U.S. Patent and Trademark Office, this proceeding concluded with the issuance of a certificate on March 8, 2024, cancelling all claims asserted in this complaint.
Case Timeline
| Date | Event |
|---|---|
| 1999-06-30 | '088 Patent Priority Date |
| 2002-10-15 | '088 Patent Issue Date |
| 2019-05-20 | Notice Letter to Microsoft |
| 2019-05-20 | Complaint Filing Date |
| 2019-10-11 | IPR2020-00023 Filed |
| 2024-03-08 | IPR Certificate Issued Cancelling Asserted Claims 1 & 21 |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,467,088, Reconfiguration Manager For Controlling Upgrades Of Electronic Devices, issued October 15, 2002
The Invention Explained
- Problem Addressed: The patent addresses the difficulty of determining component compatibility when incrementally upgrading electronic devices like computers. Users and developers often need to know if a new or improved component will work with the rest of the device, a task that becomes complex with a large range of possible device configurations and interdependencies between components (’088 Patent, col. 1:11-34).
- The Patented Solution: The invention proposes a "reconfiguration manager" that automates compatibility checks. When it receives a request to upgrade or reconfigure a device, it identifies the needed component(s) and the existing components. It then compares this proposed new configuration to previously-stored "lists of known acceptable and unacceptable configurations" to either approve or deny the request (’088 Patent, Abstract; col. 2:37-48). The core concept is illustrated in FIG. 1, where a "Reconfiguration Manager" consults known good and bad configurations before responding to a device's upgrade request (’088 Patent, FIG. 1).
- Technical Importance: The described method provides a generalized technique for ensuring upgrades are compatible with a device's specific configuration before they are installed, thereby aiming to prevent system failures caused by inconsistent components (’088 Patent, col. 2:53-59).
Key Claims at a Glance
- The complaint asserts independent claims 1 (a method) and 21 (an article of manufacture) (Compl. ¶13). It may be noted that an Inter Partes Review Certificate attached to the patent indicates these claims have since been cancelled.
- The essential elements of independent claim 1 include:
- receiving information representative of a reconfiguration request relating to the electronic device;
- determining at least one device component required to implement the reconfiguration request;
- comparing the determined component and information specifying at least one additional component currently implemented in the electronic device with at least one of a list of known acceptable configurations for the electronic device and a list of known unacceptable configurations for the electronic device; and
- generating information indicative of an approval or a denial of the reconfiguration request based at least in part on the result of the comparing step.
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are devices, such as computers running a version of Microsoft Windows, that use the "Windows Update" service or method (Compl. ¶12, ¶14).
Functionality and Market Context
The complaint alleges that the Windows Update Orchestrator runs in the background to scan for, download, and install updates automatically (Compl. ¶14, p.4). The process involves determining which updates apply to a specific computer based on its existing configuration, such as its OS Architecture (Compl. ¶16). A diagram from a Microsoft website is included in the complaint, illustrating the update process through "Scan," "Download," "Commit," and "Install" phases (Compl. p.5). A component called the "Arbiter" is alleged to compare downloaded metadata with device details to create an "action list" for installation (Compl. ¶20).
IV. Analysis of Infringement Allegations
'088 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| receiving information representative of a reconfiguration request relating to the electronic device | The Windows Update Orchestrator initiates a request for reconfiguration at random intervals to check for new updates. | ¶15 | col. 6:45-48 |
| determining at least one device component required to implement the reconfiguration request | Windows Update determines which updates apply to a computer, which depends on factors including the device's OS Architecture (e.g., 32-bit or 64-bit). | ¶16 | col. 6:48-50 |
| comparing the determined component and information specifying at least one additional component currently implemented in the electronic device with at least one of a list of known acceptable configurations for the electronic device and a list of known unacceptable configurations for the electronic device | The accused devices allegedly compare the required update with currently implemented components (e.g., drivers, OS) against lists of acceptable and unacceptable configurations. The "Show/Hide Updates" tool is alleged to create a list of known unacceptable configurations by allowing users to block problematic updates. | ¶17, ¶19 | col. 6:50-58 |
| generating information indicative of an approval or a denial of the reconfiguration request based at least in part on the result of the comparing step | Approval is allegedly generated when the "Arbiter" creates an "action list" to proceed with installation or when an "update history" is generated showing a successful installation. | ¶20 | col. 6:58-61 |
- Identified Points of Contention:
- Scope Questions: A primary issue for the court would be whether the dynamic, rule-based compatibility check performed by Windows Update constitutes a comparison against "a list of known acceptable configurations" and "a list of known unacceptable configurations" as required by the claim. The dispute may focus on whether the claim requires static, pre-compiled lists, versus a more flexible, policy-based system of determining compatibility.
- Technical Questions: What evidence does the complaint provide that Windows Update consults both an "acceptable" and an "unacceptable" list? The complaint identifies the "Show/Hide Updates" tool, depicted in a screenshot, as creating a list of unacceptable configurations by preventing certain updates from installing (Compl. ¶19; p. 8). However, the complaint's basis for the "list of known acceptable configurations" appears to be the general process by which Windows determines an update is "appropriate for your computer," raising the question of whether this constitutes a "list" in the manner claimed (Compl. ¶16).
V. Key Claim Terms for Construction
- The Term: "a list of known acceptable configurations for the electronic device and a list of known unacceptable configurations for the electronic device"
- Context and Importance: This limitation is central to the invention, defining the specific mechanism for ensuring compatibility. Practitioners may focus on this term because the infringement case hinges on whether the functionality of Windows Update, which involves complex dependency resolution, can be mapped onto this dual-list structure.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent states that the list "may be implemented, e.g., as a stored table, set of tables or other type of list in a memory... as a potion of a program" (’088 Patent, col. 4:1-4). This language could be used to argue that the "lists" need not be simple data tables but could encompass algorithms or rules within the update software that functionally distinguish between compatible and incompatible states.
- Evidence for a Narrower Interpretation: The patent's Abstract and Summary of the Invention repeatedly refer to comparing components with "previously-stored lists" of "known acceptable and unacceptable configurations" (’088 Patent, Abstract; col. 2:38-41). The consistent use of the plural "lists" and the distinct categories of "acceptable" and "unacceptable," as well as their depiction as distinct sets in FIG. 1, could support an interpretation requiring two separate, pre-defined sets of configuration data.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Microsoft induces infringement by providing customers with instructions, user guides, and training videos on how to use Windows Update (Compl. ¶22). It also alleges contributory infringement, asserting that Microsoft provides portions of the Accused Infringing Devices that are especially adapted for infringement and are not staple articles of commerce (Compl. ¶23).
- Willful Infringement: Willfulness is alleged based on Microsoft's purported knowledge of the ’088 Patent from a letter sent by Uniloc on May 20, 2019, the same day the complaint was filed (Compl. ¶24).
VII. Analyst’s Conclusion: Key Questions for the Case
While the subsequent cancellation of the asserted claims by the U.S. Patent and Trademark Office is a dispositive development, the original dispute as framed in the complaint centered on the following core questions:
- A core issue would be one of definitional scope: could the claim phrase "a list of known acceptable configurations... and a list of known unacceptable configurations," which suggests discrete, stored data sets, be construed to cover the dynamic, rule-based compatibility and dependency checks performed by the Windows Update service?
- A key evidentiary question would be one of functional mapping: assuming a favorable claim construction, does the evidence show that Windows Update's process of determining which updates "apply" to a computer, combined with a user's ability to "hide" specific updates, functionally equates to the claimed method of consulting two distinct lists—one for "acceptable" and one for "unacceptable" configurations?