DCT
3:13-cv-01204
Tse v. Blockbuster LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Ho Keung Tse (Hong Kong)
- Defendant: Blockbuster, L.L.C. (Texas)
- Plaintiff’s Counsel: Pro Se
- Case Identification: 3:13-cv-01204, E.D. Tex., 05/30/2012
- Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas because Defendant Blockbuster sells digital items to customers throughout the U.S., including within the district, and has established substantial contacts with the forum.
- Core Dispute: Plaintiff alleges that Defendant’s "Blockbuster On Demand" and "Blockbuster Total Access" services infringe a patent related to using pre-existing user identity information as a software-based key to authorize access to protected digital content.
- Technical Context: The technology relates to Digital Rights Management (DRM) for software and digital media distributed over networks, aiming to provide protection against unauthorized use without requiring specific hardware dongles.
- Key Procedural History: The complaint discloses that the patent-in-suit, U.S. Patent No. 6,665,797, has been the subject of multiple prior lawsuits against other technology companies, including Apple, eBay, and AOL. The patent also underwent an ex parte reexamination proceeding, which resulted in the cancellation of several claims and the amendment of others, including independent claims 1 and 16. The complaint was filed after the PTO issued a "Notice of Intent to Issue Ex Parte Reexamination Certificate," which confirmed the patentability of the amended claims. This history suggests that the scope of the asserted claims has been scrutinized and narrowed during reexamination, which will be a central factor in claim construction.
Case Timeline
| Date | Event |
|---|---|
| 1995-11-06 | Earliest Priority Date ('797 Patent) |
| 2003-12-16 | '797 Patent Issue Date |
| 2005-08-05 | Plaintiff files first lawsuit on '797 Patent (vs. Apple, et al.) |
| 2009-12-09 | Plaintiff files second lawsuit on '797 Patent (vs. eBay, et al.) |
| 2012-01-09 | Plaintiff files third lawsuit on '797 Patent (vs. Apple, et al.) |
| 2012-03-14 | PTO issues Notice of Intent to Issue Reexamination Certificate |
| 2012-05-30 | Complaint Filing Date |
| 2012-08-07 | '797 Patent Reexamination Certificate Issue Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,665,797 - "Computer Apparatus/Software Access Right Management"
- Issued: December 16, 2003
The Invention Explained
- Problem Addressed: The patent describes the problem of protecting commercial software, particularly that distributed over communication networks, from unauthorized use and copying. Conventional methods relied on specific hardware (e.g., a "dongle") connected to the user's computer, which the patent describes as "extremely cumbersome" for both users and vendors (Compl. ¶13; ’797 Patent, col. 1:12-24).
- The Patented Solution: The invention proposes a purely software-based method. It uses the existence of a separate "Encrypted Identity" (EI) program on a user's computer as a precondition to authorize the use of other protected software products ('797 Patent, Abstract). This EI program is linked to the rightful user's identity and financial account. The patent suggests this creates a "psychological barrier" against sharing, as a user would be unwilling to share a program that provides access to their personal account information ('797 Patent, col. 2:3-11). The system checks for the presence of this identity token before allowing access to the desired content.
- Technical Importance: The invention describes an early software-based approach to DRM, seeking to tie access rights to a user's verified identity rather than to a physical piece of hardware, a model that became foundational for internet-based content delivery.
Key Claims at a Glance
- The complaint asserts claims 1-5, 13, 16, 17, 20, 23, and 27-29 (Compl. ¶4). The lead independent claims are 1 and 16, which were amended during reexamination.
- Independent Claim 1 (as amended): A method for protecting software, with key elements including:
- Determining if "identity information" exists in a "processing apparatus."
- Using a positive result of that determination as a precondition to provide user access to the desired software.
- The "identity information" must be capable of enabling electronic commerce operations for which the user is responsible.
- Access is provided "without causing a said operation being performed" (i.e., no new charge for access).
- The protected software is made available as "protected file(s)," and access is obtained at a site with "no hardware specific for protecting" the software.
- The complaint does not explicitly reserve the right to assert other claims, but it asserts a broad range of both independent and dependent claims.
III. The Accused Instrumentality
Product Identification
- The complaint identifies the "Blockbuster On Demand" service and the "Blockbuster Total Access" free trial service as the accused instrumentalities (Compl. ¶9, 24).
Functionality and Market Context
- The complaint alleges that Defendant operates an "Internet Virtual Store" where it sells and offers digital items like movies and TV shows (Compl. ¶9, 15-16).
- To use the service, a user must create an account and submit financial information, such as a credit card account (Compl. ¶17).
- Users sign in with account information, including a password, to purchase and access content (Compl. ¶18-19).
- Once a digital item is purchased, the account holder can re-download it to an authorized "On Demand Device" without re-paying, by signing into the virtual store with the account credentials used for the original purchase (Compl. ¶20-21).
- The system uses Digital Rights Management (DRM) software to prevent a user from playing a purchased digital item on an unauthorized device (Compl. ¶22).
- The "Blockbuster Total Access" service is alleged to use similar user identity verification methods to manage free trials and prevent users from repeatedly signing up for free trials with fake information (Compl. ¶25-28).
- No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
'797 Patent Infringement Allegations
| Claim Element (from Independent Claim 1, as amended) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method for protecting publicly distributed software, from unauthorised use, comprising the steps of: determining if identity information, is existing in a processing apparatus; | Blockbuster requires users to create an account with a password and financial information. To access content, a user must sign in, which constitutes a determination of the existence of this information. | ¶17-18, 21 | col. 7:6-9 (as issued) |
| using a positive result of said determination as a pre-condition for causing said processing apparatus to provide user access to said software desired to be protected; | Blockbuster only allows an account holder to re-download a purchased item after successfully signing in to the virtual store with the correct account information. | ¶21 | col. 7:10-13 |
| wherein: said identity information...being capable of being used in enabling electronic commerce operation(s) for which rightful user(s) of said software desired to be protected has to be responsible; | The user's account information, including financial data, is used to authorize payment for the initial purchase of digital items from Blockbuster's website. | ¶19 | col. 7:16-20 |
| said access to said software desired to be protected is being provided without causing a said operation being performed and said identity information being specific to said rightful user(s); | Blockbuster allows a user to re-download a previously purchased item with no additional charge. This authorization is specific to the account that made the purchase. | ¶20-21 | col. 7:21-25 |
| and said software desired to be protected is being made available to said rightful user(s) in the form of protected file(s), and said access being obtained by human user(s) at a site having no hardware specific... | Blockbuster uses DRM to protect its digital items (movies/TV shows). The system is a software-based service delivered via the internet, without requiring a hardware dongle. | ¶13, 22-23 | col. 2:57-64 (C1) |
- Identified Points of Contention:
- Scope Questions: A primary question will be whether Blockbuster's server-based user account system constitutes "identity information...existing in a processing apparatus" as contemplated by the patent. The patent's specification often describes the "EI sub-program" residing on the user's computer, raising the question of whether a remote database meets this limitation.
- Technical Questions: The complaint alleges infringement by Blockbuster's servers and DRM software (Compl. ¶23). A factual question will be whether the architecture of the Blockbuster On Demand system, which authenticates a user against a central server, performs the same steps as the claimed method, which may be interpreted as a more localized check on a single "processing apparatus."
V. Key Claim Terms for Construction
The Term: "identity information"
- Context and Importance: This term is the lynchpin of the invention. Its definition will determine whether a standard username/password/credit card combination stored on a remote server qualifies as the patented "identity information." Practitioners may focus on this term because the patent repeatedly refers to an "EI sub-program" ('797 Patent, Abstract, col. 2:42), suggesting something more than just account credentials.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claims themselves use the general term "identity information" rather than the more specific "EI sub-program" from the specification. Claim 1 only requires that this information be "capable of being used in enabling electronic commerce operation(s)," a function that a Blockbuster account with a stored credit card arguably performs (col. 7:16-20).
- Evidence for a Narrower Interpretation: The specification describes the "EI sub-program" as a distinct piece of software that can be executed and can interact with other programs on the user's computer ('797 Patent, col. 3:23-28). An argument could be made that "identity information" must be embodied in such a program, not merely as data in a remote database.
The Term: "existing in a processing apparatus"
- Context and Importance: The location of the "identity information" is critical. If "a processing apparatus" is construed to mean only the user's local device, then Blockbuster's server-centric model may not infringe. If it can mean a remote server, the infringement case may be stronger.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term "processing apparatus" is generic. In a networked environment, a server is a "processing apparatus." The reexamined claims added language about access being obtained "at a site having no hardware specific," which acknowledges a distributed, network-based context ('797 Patent, col. 2:62-64 (C1)).
- Evidence for a Narrower Interpretation: The detailed description focuses heavily on programs and authentication events occurring on a "user's IBM PC computer" ('797 Patent, col. 2:37-38). The patent describes interactions between a running program and the "central program" on the same computer, which could suggest "a processing apparatus" refers to a single, local machine (col. 4:1-12).
VI. Other Allegations
- Indirect Infringement: The complaint makes a conclusory prayer for relief regarding indirect and contributory infringement but does not plead specific facts to support the knowledge and intent elements, such as alleging that Blockbuster's user manuals or instructions actively induce users to perform the infringing steps (Compl. p. 11).
- Willful Infringement: The complaint alleges willfulness based on the assertion that "Blockbuster has been given notice by Plaintiff of the '797 Patent" (Compl. ¶29). The extensive litigation history of the patent against other major technology companies, as detailed in the complaint, may be used as further evidence of the patent's notoriety and to support the allegation that infringement was deliberate (Compl. ¶2-5).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: Can the term "identity information", which the patent specification describes as an "EI sub-program," be construed to cover a user's account credentials stored in a remote, server-side database? The outcome of this question will likely determine whether a standard e-commerce architecture falls within the scope of the claims.
- A key architectural question will be one of location: Does the claimed method, which requires "identity information...existing in a processing apparatus," read on a distributed client-server system where authentication occurs on a remote server, or is it limited by the specification to processes occurring on a single user device?
- A final question relates to the reexamination's impact: How will the claim amendments made during reexamination—particularly the addition of language clarifying the software-only, network-based nature of the system—be interpreted? These changes were made to distinguish the invention from prior art and will be central to construing the final scope of the asserted claims against the accused Blockbuster system.