DCT
3:18-cv-07038
Uniloc 2017 LLC v. Box Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Uniloc 2017 LLC (Delaware)
- Defendant: Box, Inc. (Delaware)
- Plaintiff’s Counsel: Prince Lobel Tye LLP
- Case Identification: 4:18-cv-07038, N.D. Cal., 11/20/2018
- Venue Allegations: The complaint alleges that Defendant’s principal place of business is in Redwood City, California, which is located within the Northern District of California.
- Core Dispute: Plaintiff alleges that Defendant’s content management and file-sharing software infringes a patent related to methods for replacing text-based substrings in file and directory pathnames with more efficient numeric tokens.
- Technical Context: The technology addresses performance and compatibility issues in computer file systems, particularly in networked environments where lengthy pathnames can slow down operations and conflict with system limitations.
- Key Procedural History: The complaint alleges that Defendant has been on notice of the patent-in-suit since, at the latest, the service of a complaint in a prior case, [Uniloc 2017 LLC](https://ai-lab.exparte.com/party/uniloc-2017-llc) v. [Box, Inc.](https://ai-lab.exparte.com/party/box-inc), Case No. 3:18-cv-03432-JST. This prior notice may form the basis for an allegation of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2000-01-04 | U.S. Patent No. 6,470,345 Priority Date |
| 2002-10-22 | U.S. Patent No. 6,470,345 Issues |
| 2018-11-20 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Patent No. 6,470,345, "REPLACEMENT OF SUBSTRINGS IN FILE/DIRECTORY PATHNAMES WITH NUMERIC TOKENS," issued October 22, 2002.
- The Invention Explained:
- Problem Addressed: The patent’s background section describes performance penalties associated with computer file systems, particularly in client-server networks where validating each component of a long file path requires multiple, time-consuming remote procedure calls. It also notes that some file systems have restrictive naming conventions (e.g., "8.3" names) that are incompatible with modern, longer filenames. (’345 Patent, col. 1:43-53, col. 2:1-11).
- The Patented Solution: The invention proposes a method to improve efficiency and flexibility by converting a standard file pathname (e.g.,
\dir1\dir2\filename) into a list of unique tokens. The system first "canonicalizes" the name into a full path, then "parses" it into its constituent parts ("substrings" likedir1,dir2,filename). Each unique substring is stored once in a "string dictionary" and assigned a corresponding token (e.g., a numeric value). Subsequent operations then use the shorter, faster-to-process list of tokens instead of the full text strings for validation and comparison. (’345 Patent, Abstract; col. 2:25-41). - Technical Importance: This approach of separating the syntactic structure (tokens) from the semantic content (text strings) was designed to reduce storage needs and significantly speed up file system operations in networked environments. (’345 Patent, col. 1:60-66).
- Key Claims at a Glance:
- The complaint asserts independent claims 1, 9 (methods), 17, 25 (computer readable media), and 33, 41 (systems).
- Independent Claim 1, a method claim, recites the core process with the following essential elements:
- reading a name string to be converted into a list of tokens;
- canonicalizing a current working directory and the name string to form a pathname containing a plurality of substrings;
- parsing the pathname and replacing each substring with an associated token; and
- validating the parsed pathname containing the list of tokens.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
- Product Identification: The "Accused Products" are identified as Box's "content management and file sharing software, including Business, Individual, and Enterprise Editions" (Compl. ¶8).
- Functionality and Market Context: The complaint alleges that the Accused Products perform the patented method by implementing a specific sequence of functions for handling file and directory pathnames. This includes "reading a name string," "canonicalizing a current working directory and the name string to form a pathname," "parsing the pathname and replacing each substring with an associated token," and "validating the parsed pathname containing the list of tokens" (Compl. ¶8). The complaint does not provide further detail on the Accused Products' market context or commercial importance. No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
’345 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| reading a name string to be converted into a list of tokens | reading a name string to be converted into a list of tokens | ¶8 | col. 16:56-58 |
| canonicalizing a current working directory and the name string to form a pathname containing a plurality of substrings | canonicalizing a current working directory and the name string to form a pathname that contains a plurality of substrings | ¶8 | col. 16:59-62 |
| parsing the pathname and replacing each substring with an associated token | parsing the pathname and replacing each substring with an associated token | ¶8 | col. 16:63-64 |
| validating the parsed pathname containing the list of tokens | validating the parsed pathname containing the list of tokens | ¶8 | col. 16:65-66 |
- Identified Points of Contention:
- Scope Questions: The complaint's infringement allegations in paragraph 8 closely mirror the language of Claim 1. A primary point of contention will be whether the terms used in the claim, such as "canonicalizing" and "validating," read on the specific technical operations actually performed by the Box software.
- Technical Questions: A key factual question will be what evidence demonstrates that the Accused Products perform a "replacing" step where a text "substring" is exchanged for an "associated token" for the purpose of "validating" a path. Discovery will likely focus on the internal architecture and data structures of the Box platform to determine if such a tokenization and validation scheme exists as claimed.
V. Key Claim Terms for Construction
- The Term: "token"
- Context and Importance: The invention's core concept is the replacement of text "substrings" with "tokens." The definition of "token" is therefore fundamental to the scope of all asserted claims. Practitioners may focus on this term because the patent's title and specification frequently use the more specific phrase "numeric tokens," while the asserted claims use the broader, unmodified term "token."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The asserted independent claims consistently use the word "token" without the "numeric" qualifier, as in "replacing each substring with an associated token" (’345 Patent, col. 16:63-64). An argument for a broader construction would emphasize this plain language, suggesting any unique identifier could qualify as a token.
- Evidence for a Narrower Interpretation: The patent is titled "REPLACEMENT OF SUBSTRINGS IN FILE/DIRECTORY PATHNAMES WITH NUMERIC TOKENS." The Abstract and detailed description repeatedly and consistently refer to "numeric tokens" and replacing substrings with a "numeric value," which "can be arithmetically compared" for a performance gain (’345 Patent, Abstract; col. 2:28-36). This consistent description may be used to argue that a person of ordinary skill in the art would have understood the invention to be limited to tokens that are numeric.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement, asserting that Box instructs its customers to infringe through materials such as "training videos, demonstrations, brochures, and installation and user guides" available at specific URLs (Compl. ¶10). The complaint also pleads contributory infringement, alleging Box provides a non-staple component of the invention that is especially made for use in an infringing manner (Compl. ¶11).
- Willful Infringement: While the complaint does not use the word "willful," it lays the groundwork for such a claim. It alleges that Box had knowledge of the ’345 Patent due to a prior lawsuit and continued its allegedly infringing activities despite this notice (Compl. ¶12). This allegation of post-notice conduct could support a claim for enhanced damages.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim construction: Can the term "token," as used in the claims, be defined broadly to encompass any unique identifier, or will the court narrow its meaning to the "numeric tokens" consistently described in the patent’s title and specification? The outcome of this construction will significantly impact the infringement analysis.
- A key evidentiary question will be one of technical implementation: Does discovery into the architecture of the Box platform reveal a system that, as a factual matter, performs the specific, sequential process of canonicalizing a path, parsing it, replacing text substrings with distinct tokens, and then validating that list of tokens, as required by the claims? The case may turn on whether the accused system's functionality matches this claimed sequence or operates in a technically distinct manner.