DCT
8:19-cv-01149
Uniloc 2017 LLC v. H R Block Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Uniloc 2017 LLC (Delaware)
- Defendant: H&R Block, Inc. (Missouri) and HRB Digital LLC (Delaware)
- Plaintiff’s Counsel: Prince Lobel Tye LLP
- Case Identification: 8:19-cv-01149, C.D. Cal., 06/10/2019
- Venue Allegations: Venue is based on H&R Block, Inc. having numerous established places of business within the district and HRB Digital LLC distributing its software for use by taxpayers within the district.
- Core Dispute: Plaintiff alleges that Defendant’s online tax filing platform infringes patents related to the management and distribution of configurable software applications on a network.
- Technical Context: The technology concerns client-server architectures for deploying and personalizing software applications, a foundational element of modern software-as-a-service and cloud-based platforms.
- Key Procedural History: The complaint alleges that Defendant was put on notice of both patents-in-suit no later than June 8, 2017, through the service of a complaint in a prior litigation between the parties in the Eastern District of Texas. This prior notice forms the basis for the willfulness allegations.
Case Timeline
| Date | Event |
|---|---|
| 1998-12-14 | Priority Date ('578 Patent & '293 Patent) |
| 2001-11-27 | Issue Date (U.S. Patent No. 6,324,578) |
| 2006-06-27 | Issue Date (U.S. Patent No. 7,069,293) |
| 2017-06-08 | Alleged Notice of Infringement (via prior lawsuit) |
| 2019-06-10 | 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 addresses the difficulty of managing software applications and user preferences in a networked environment where users access applications from various client workstations with different hardware and connection types, making a consistent user experience difficult to maintain (’578 Patent, col. 1:44-59).
- The Patented Solution: The invention proposes a client-server system where an "on-demand server" centrally manages applications. For each application, an administrator uses a "configuration manager" program to set system-wide preferences, while end-users are provided an "application launcher" program. When a user initiates an application, the server combines the pre-set administrator preferences with the individual's user-specific preferences to execute the program, thereby providing a consistent, personalized session regardless of the client device used (’578 Patent, Abstract; col. 3:50-col. 4:20).
- Technical Importance: This architecture aimed to provide a user-centric, hardware-independent method for application management, combining the centralized control of older mainframe systems with the flexibility of distributed client-server networks (’578 Patent, col. 5:6-10).
Key Claims at a Glance
- The complaint asserts infringement of at least independent claim 1.
- The essential elements of independent claim 1 include:
- installing an application program with configurable preferences and authorized users on a server;
- distributing an associated application launcher program to a client;
- obtaining a user set of configurable preferences from an authorized user executing the launcher;
- obtaining an administrator set of configurable preferences from an administrator; and
- executing the application program using both the user and administrator preference sets in response to a user request.
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 June 27, 2006
The Invention Explained
- Problem Addressed: The patent addresses the challenge of centrally controlling the distribution and installation of software across a complex network with multiple servers and clients (’293 Patent, col. 1:46-col. 2:14).
- The Patented Solution: The invention describes a method for automated, end-to-end software deployment. A central network management server prepares a "file packet" containing an application program. This packet includes a special "segment configured to initiate registration operations" on the destination server. The central server distributes this packet to a target "on-demand server," which then uses the registration segment to automatically install and make the application available to its client users (’293 Patent, Abstract; col. 5:36-54).
- Technical Importance: The technology provides a framework for automated software deployment from a single central point to multiple intermediate servers within a large, managed network environment, reducing manual configuration at each target location (’293 Patent, col. 17:21-39).
Key Claims at a Glance
- The complaint asserts infringement of at least independent claim 1.
- The essential elements of independent claim 1 include:
- providing an application program to a network management server;
- specifying source and target directories for the program's distribution;
- preparing a file packet for the program that includes a segment for initiating registration at a target on-demand server; and
- distributing the file packet to the target on-demand server to make the program available to a client user.
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is Defendant's "Online Tax Filing" service, referred to as the "HRB platform," which includes Free, Deluxe, and Premium versions (Compl. ¶10).
Functionality and Market Context
- The HRB platform is hosted on a network of "high-security, access-controlled data centers" (Compl. ¶7). Users access the platform by creating an account and logging in, after which they can perform tax preparation tasks (Compl. ¶¶8-10). The platform is alleged to provide user-configurable preferences, such as account settings and security questions, as well as administrator-configurable preferences, such as system-wide password requirements and data retention policies (Compl. ¶¶11-12). The complaint includes a screenshot of the platform's "Account Settings" page, which shows fields for updating a password and security questions (Compl. p. 4). Another screenshot highlights administrator-set password complexity rules (Compl. p. 5). The platform is alleged to use "Apache on-demand servers in the United States to host its services" (Compl. ¶23).
IV. Analysis of Infringement Allegations
’578 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| installing an application program having a plurality of configurable preferences and a plurality of authorized users on a server coupled to the network; | The HRB platform software, which has configurable preferences and authorized users, is installed on Defendant's servers. | ¶15 | col. 3:26-28 |
| distributing an application launcher program associated with the application program to a client coupled to the network; | A user launches the "Online Tax Filing application downloaded from HRB" by creating an account and logging in. A screenshot depicts the "Sign In" interface used to launch the application. | ¶15, ¶8, p. 3 | col. 3:64-66 |
| obtaining a user set of the plurality of configurable preferences associated with one of the plurality of authorized users executing the application launcher program; | The HRB platform presents users with configurable preferences such as account settings, password updates, and security questions. A screenshot shows the "Account Settings" interface. | ¶15, ¶11, p. 4 | col. 4:11-14 |
| obtaining an administrator set of the plurality of configurable preferences from an administrator; and | The HRB platform provides administrator-configurable preferences such as password requirements, privacy provisions, and data storage duration. A screenshot shows password rules being enforced. | ¶15, ¶12, p. 5 | col. 3:55-60 |
| executing the application program using the obtained user set and the obtained administrator set of the plurality of configurable preferences responsive to a request from the one of the plurality of authorized users. | The HRB platform is executed for the user, applying both the user-selected preferences and the administrator-set preferences. | ¶15 | col. 4:33-39 |
’293 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| providing an application program to be distributed to the network management server; | HRB provides the platform software for distribution through its network architecture. | ¶24 | col. 5:36-39 |
| specifying a source directory and a target directory for distribution of the application program; | HRB's software and associated architecture specify source and target directories for distributing the program. | ¶24 | col. 18:45-48 |
| preparing a file packet associated with the application program and including a segment configured to initiate registration operations for the application program at the target on-demand server; and | HRB's system prepares a file packet that includes a segment to initiate registration operations on a target on-demand server. | ¶24 | col. 5:40-46 |
| distributing the file packet to the target on-demand server to make the application program available for use by a user at a client. | The file packet is distributed to HRB's on-demand servers, which are identified as Apache servers located in the United States. A screenshot provides details of one such server. | ¶24, ¶23, p. 7 | col. 7:7-10 |
Identified Points of Contention
- Scope Questions: A potential issue for the '578 Patent is whether the modern, browser-based HRB platform, accessed via a login page, meets the claim requirement of a distinct "application launcher program" being distributed to a client. The defense may argue the patent envisioned a separate, installable client-side program rather than a web interface.
- Technical Questions: For the '293 Patent, the complaint makes conclusory allegations about internal software deployment processes like "specifying directories" and "preparing a file packet". A central question will be what evidence, if any, the complaint or discovery provides to substantiate that HRB’s actual deployment methodology mirrors these specific claimed steps.
V. Key Claim Terms for Construction
The Term: "application launcher program" (’578 Patent, Claim 1)
- Context and Importance: The infringement theory for the '578 Patent depends on mapping the accused system to the patent's two-part "launcher" and "application" structure. The definition of the "launcher" is therefore critical. If the term is construed narrowly to require a standalone program, it may not read on a web-based login portal.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the launcher's function as providing a "user interface to execute the application program" (’578 Patent, col. 3:64-66), which could be argued to encompass a web login page that initiates the main application session.
- Evidence for a Narrower Interpretation: The patent repeatedly describes the launcher in the context of an "icon... displayed on the screen of the client station" (’578 Patent, col. 4:49-52), which could support a narrower construction requiring a distinct, persistent program on the client machine.
The Term: "administrator set of... configurable preferences" (’578 Patent, Claim 1)
- Context and Importance: The complaint identifies system-wide password rules and privacy policies as the "administrator set." Practitioners may focus on this term because the defense could argue that mandatory security policies are not "preferences" in the manner contemplated by the patent, which often discusses user-choice-oriented settings.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not explicitly limit what constitutes a preference, and an administrator's ability to configure a system parameter could fall within a plain-meaning definition.
- Evidence for a Narrower Interpretation: The specification's examples of preferences often relate to user-facing options like "keyboard mapping, screen configuration and destination host preference values" (’578 Patent, col. 9:15-17), potentially suggesting a narrower scope that excludes non-discretionary system rules.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that HRB induced infringement of the '578 Patent by "provid[ing] instructions on how to use the platform," thereby intentionally instructing its customers to perform the infringing steps (Compl. ¶16).
- Willful Infringement: Willfulness is alleged for both patents based on pre-suit knowledge. The complaint asserts that HRB has been on notice of the patents since at least June 8, 2017, from a prior lawsuit, and that its continued infringing activity is therefore willful (Compl. ¶¶18, 25).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of architectural mapping: does the integrated, web-based architecture of the HRB platform correspond to the distinct "application launcher program" and "application program" components required by Claim 1 of the '578 Patent, or does the claim language presuppose an older client-server model that does not map cleanly onto modern cloud services?
- A key evidentiary question for the '293 Patent will be one of operational proof: what discovery evidence will emerge to show that HRB's internal software deployment process involves the specific steps of "preparing a file packet" that includes a "segment configured to initiate registration", as recited in Claim 1, versus a more generic software update or continuous deployment methodology?