Ubisoft Inc v. Uniloc 2017 LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Ubisoft, Inc. (California)
  • Defendant: Uniloc 2017, LLC (Delaware)
  • Plaintiff’s Counsel: Erise IP, PA.
• Case Identification: 19-cv-01962, C.D. Cal., 05/31/2019
• Venue Allegations: Venue is alleged to be proper in the Central District of California because Defendant Uniloc 2017, LLC maintains a place of business within the district and has repeatedly initiated patent lawsuits in the district.
• Core Dispute: Plaintiff Ubisoft seeks a declaratory judgment that its "Uplay game portal" does not infringe two patents owned by Defendant Uniloc related to the network-based management and distribution of configurable software applications.
• Technical Context: The patents address technologies for centrally managing software in a client-server environment, specifically focusing on deploying applications and maintaining user-specific configurations across different devices.
• Key Procedural History: The complaint arises from a prior lawsuit filed by Uniloc's predecessors against Ubisoft in the Eastern District of Texas, which was voluntarily dismissed by Uniloc without prejudice. In a related case, the patents-in-suit were found ineligible under 35 U.S.C. § 101 by the district court, but that finding was subsequently reversed by the U.S. Court of Appeals for the Federal Circuit, prompting Ubisoft to file this action. The complaint notes that U.S. Patent No. 6,324,578 has expired.

Case Timeline

Date	Event
1998-12-14	Priority Date ('578 and '293 Patents)
2001-11-27	Issue Date (U.S. Patent No. 6,324,578)
2006-06-27	Issue Date (U.S. Patent No. 7,069,293)
2016-07-08	Uniloc's predecessors file Texas Litigation against Ubisoft
2017-09-28	E.D. Texas finds Patents-in-Suit ineligible in a related case
2017-10-26	Uniloc's predecessors voluntarily dismiss the Texas Litigation
2019-05-24	Federal Circuit reverses the patent ineligibility ruling
2019-05-31	Complaint Filing Date

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

U.S. Patent No. 6,324,578 - Methods, Systems and Computer Program Products for Management of Configurable Application Programs on a Network (Issued Nov. 27, 2001)

The Invention Explained

• Problem Addressed: The patent's background describes the challenges of managing software applications in distributed, heterogeneous computer networks where users may access the network from different types of client workstations. (’578 Patent, col. 1:46-2:34). This environment makes it difficult to maintain consistent user preferences and to control software deployment and licensing centrally. (’578 Patent, col. 1:46-56).
• The Patented Solution: The invention proposes a system centered around an "on-demand server" that manages configurable applications by using two distinct program files. A "configuration manager" program allows an administrator to establish system-wide or group-level application preferences. A separate "application launcher" program, distributed to client stations, allows a user to initiate an application. The launcher sends the user's identity to the server, which then retrieves and applies both the administrator-set preferences and the specific user's preferences to execute the application. (’578 Patent, col. 3:51-4:20; Abstract).
• Technical Importance: This approach provided a framework for user personalization to "roam" with the user across different physical machines, improving user experience while centralizing administrative control over application configurations. (’578 Patent, col. 6:1-9).

Key Claims at a Glance

• The complaint does not identify specific asserted claims but makes a blanket request for a declaration of non-infringement of the patent. Independent claim 1 is representative of the invention's method.
• Independent Claim 1 recites a method with the following essential elements:
  • installing an application program having a plurality of configurable preferences and authorized users on a server;
  • distributing an application launcher program associated with the application program to a client;
  • obtaining a "user set" of preferences from an authorized user executing the launcher;
  • obtaining an "administrator set" of preferences from an administrator; and
  • executing the application program using the obtained user and administrator sets in response to a request from the user.

U.S. Patent No. 7,069,293 - Methods, Systems and Computer Program Products for Distribution of Application Programs to a Target Station on a Network (Issued Jun. 27, 2006)

The Invention Explained

• Problem Addressed: As a divisional of the '578 Patent, this patent addresses the same general problem: the difficulty of deploying and managing software in a distributed network environment. (’293 Patent, col. 2:46-60).
• The Patented Solution: This invention focuses on the distribution mechanism. It describes a centralized network management server that prepares a "file packet" for an application. This packet is distributed to a target "on-demand server" and includes a "segment configured to initiate registration operations," which automatically installs and registers the application on the target server, making it available for use by authorized clients. (’293 Patent, col. 5:36-44; Abstract).
• Technical Importance: The invention aimed to automate and centralize the process of software deployment, allowing an administrator to distribute and register applications on multiple servers from a single point of control. (’293 Patent, col. 6:1-5).

Key Claims at a Glance

• The complaint does not identify specific asserted claims. Independent claim 1 is representative of the patent's distribution method.
• Independent Claim 1 recites a method with the following essential elements:
  • providing an application program to a centralized network management server;
  • specifying a source directory and a target directory for distribution;
  • preparing a file packet associated with the application, where the packet includes a "segment configured to initiate registration operations" at the target server; and
  • distributing the file packet to the target on-demand server to make the application available.

III. The Accused Instrumentality

Product Identification

The complaint identifies "Ubisoft's Uplay game portal" as the accused instrumentality (Compl. ¶¶ 10, 24, 28).

Functionality and Market Context

The complaint alleges that Uniloc's predecessors accused the Uplay portal of infringement in a prior litigation (Compl. ¶10). However, this declaratory judgment complaint does not provide specific details regarding the technical functionality or market context of the Uplay portal as it relates to the patents-in-suit. No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The declaratory judgment complaint does not contain specific infringement allegations or claim charts from the patent holder, Uniloc. The Plaintiff, Ubisoft, makes a general denial of infringement for all claims of the patents-in-suit (Compl. ¶¶ 25, 29). Therefore, a detailed analysis of specific infringement allegations is not possible based on the provided complaint.

Identified Points of Contention

Based on the technology of the patents and the general nature of the accused product, the dispute may raise the following questions:

• Architectural Questions ('578 Patent): A central question may be whether the architecture of the Uplay portal maps onto the claimed structure. For example, does the Uplay client function as the claimed "application launcher program" that communicates a user ID to a server to retrieve distinct "user sets" and "administrator sets" of preferences for executing a game? Or does it operate on a different architectural principle?
• Functional Questions ('293 Patent): The dispute may turn on whether the method by which Ubisoft deploys software updates to the Uplay client constitutes "distributing the file packet" containing a "segment configured to initiate registration operations" as claimed. The technical nature of Uplay's installer and update packages will be critical to this analysis.

V. Key Claim Terms for Construction

Term from '578 Patent: "obtaining a user set of the plurality of configurable preferences... and obtaining an administrator set of the plurality of configurable preferences"

• Context and Importance: This language is at the core of Claim 1 of the '578 Patent. The infringement analysis will depend on whether the Uplay system is found to separately obtain and then combine two distinct sets of preferences—one controlled by the user and one by an administrator—to configure an application at launch. Practitioners may focus on this term to determine if there is a technical match with how Uplay manages game settings and platform rules.
• Intrinsic Evidence for a Broader Interpretation: The specification does not strictly limit the form of these sets, suggesting they could encompass any collection of preference data, such as a user's graphics settings and an administrator's access control list. (’578 Patent, col. 9:5-20).
• Intrinsic Evidence for a Narrower Interpretation: The patent repeatedly describes the "configuration manager" as a separate program used by an administrator to establish the administrator set. (’578 Patent, col. 3:55-62). A party could argue this requires a system with two explicitly separate management interfaces, one for users and one for administrators, to generate the two distinct "sets."

Term from '293 Patent: "segment configured to initiate registration operations"

• Context and Importance: This term from Claim 1 of the '293 Patent defines the "active" component within the distributed software packet. The case may hinge on whether an installer or update for Uplay contains a component that performs what the patent means by "registration operations."
• Intrinsic Evidence for a Broader Interpretation: The term could be construed broadly to cover any script or code within an installer that makes an application executable on a target system, such as setting file permissions or creating necessary registry entries.
• Intrinsic Evidence for a Narrower Interpretation: The specification provides a specific example of this segment as a "PMImport command script" that is added to the packet and interacts with a "profile manager" on the target server to register the application. (’293 Patent, col. 19:23-41). This could support an argument that the term is limited to a script that specifically interacts with a corresponding management system on the target server, not just a generic installer.

VI. Other Allegations

Indirect Infringement

The complaint seeks a declaration of non-infringement both directly and indirectly (Compl. ¶¶ 25, 29). As a declaratory judgment complaint filed by the accused infringer, it does not set forth facts that would support a claim for indirect infringement.

Willful Infringement

The complaint does not mention willfulness.

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

• A core issue will be one of architectural mapping: Does the Uplay game portal, a consumer-facing digital distribution platform, embody the specific dual-preference "user set"/"administrator set" management architecture recited in the '578 patent, which is described in the context of enterprise network administration from the late 1990s?
• A key evidentiary question will be one of functional equivalence: Do the automated software update installers for the Uplay platform perform the function of a "segment configured to initiate registration operations" as required by the '293 patent, or is there a fundamental mismatch between a modern software updater and the patent's description of registering an application with a specific on-demand server's profile manager?
• A pivotal question for damages will be the effect of patent expiration: As the '578 patent is expired (Compl. ¶23), litigation will likely focus on whether Uniloc can prove and recover damages for past infringement during the patent's term, and how the expiration affects any potential ongoing royalty or injunctive relief calculations related to the unexpired '293 patent.