DCT
3:23-cv-00063
Topia Technology Inc v. Box Inc
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Topia Technology, Inc. (Washington)
- Defendant: Box, Inc. (Delaware); SailPoint Technologies Holdings, Inc. (Delaware); Vistra Corp. (Delaware)
- Plaintiff’s Counsel: The Mort Law Firm, PLLC; Sughrue Mion, PLLC
- Case Identification: 6:21-cv-01372, W.D. Tex., 09/13/2022
- Venue Allegations: Plaintiff alleges venue is proper in the Western District of Texas because Defendant Box, Inc. maintains a regular and established place of business in Austin, Texas, and has committed acts of infringement within the District.
- Core Dispute: Plaintiff alleges that Defendant’s cloud storage and file synchronization services, including Box Sync and Box Drive, infringe six patents related to the architecture for managing and synchronizing digital files across a distributed network of electronic devices.
- Technical Context: The patents address technologies central to cloud-based file synchronization, a market focused on providing users with seamless access to up-to-date files across multiple personal devices like laptops, desktops, and smartphones.
- Key Procedural History: The operative filing is a Second Amended Complaint, indicating that the pleadings have been modified at least twice since the case was initiated. The complaint does not mention any prior litigation, licensing history, or post-grant proceedings involving the patents-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 2007-11-09 | Earliest Priority Date for all Patents-in-Suit |
| 2014-03-01 | Alleged inducement of infringement at Baylor University begins "at least since March 2014" |
| 2015-09-22 | U.S. Patent No. 9,143,561 Issues |
| 2017-02-01 | Alleged inducement of infringement at University of Texas at Austin begins "at least since February 2017" |
| 2018-09-04 | U.S. Patent No. 10,006,942 Issues |
| 2019-05-14 | U.S. Patent No. 10,289,607 Issues |
| 2020-05-05 | U.S. Patent No. 10,642,787 Issues |
| 2020-08-25 | U.S. Patent No. 10,754,823 Issues |
| 2021-05-11 | U.S. Patent No. 11,003,622 Issues |
| 2022-09-13 | Second Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,143,561 - “Architecture For Management of Digital Files Across Distributed Network”
- Issued: September 22, 2015
The Invention Explained
- Problem Addressed: The patent describes the challenge of managing digital files in an environment where a single user has multiple devices (e.g., desktop, laptop, smartphone). This creates problems such as the "proliferation of redundant file copies" and confusion over which file is the "official or newest version." (’561 Patent, col. 1:40-45).
- The Patented Solution: The invention proposes a system architecture where a "first electronic device" acts as a hub for a "second" and "third" electronic device associated with a single user. When a file is modified on one of the user's devices, a copy is automatically sent to the hub device, which in turn automatically sends the updated copy to the user's other device(s) to replace any older versions, thereby keeping all devices synchronized. (’561 Patent, Abstract; Fig. 3).
- Technical Importance: The technology provides a framework for automatic file synchronization across multiple devices, aiming to create a seamless user experience without requiring manual file transfers.
Key Claims at a Glance
- The complaint asserts independent claims 1 (a system) and 8 (a method), as well as dependent claims 3, 4, 10, and 11 (Compl. ¶¶23, 42).
- The essential elements of independent claim 1 include:
- A system comprising a first, second, and third electronic device associated with a user.
- The first device is configured to receive a copy of a first electronic file from the second device when the user modifies it.
- The first application is further configured to automatically transfer the modified first file copy to the third electronic device to replace an older version.
- The system performs a symmetric operation for a second electronic file modified on the third device, transferring it to the second device.
- The transfer from the second device to the first is triggered upon determining that a "save operation has been performed."
U.S. Patent No. 10,006,942 - “Architecture For Management of Digital Files Across Distributed Network”
- Issued: September 4, 2018
The Invention Explained
- Problem Addressed: The patent addresses the same general problem of file synchronization across multiple devices as the ’561 Patent (Compl. ¶74; ’942 Patent, col. 1:12-61).
- The Patented Solution: This invention adds a condition based on network connectivity. A central (first) device receives a modified file from a second device and then determines whether it is in communication with a third device. Only "responsive to the determination" that communication exists does the central device automatically send the file to the third device. This makes the synchronization process aware of the connectivity state of the target devices. (’942 Patent, Abstract; Fig. 3).
- Technical Importance: This approach makes the synchronization system more robust and efficient in environments with intermittent or unreliable network connections, a common scenario for mobile devices.
Key Claims at a Glance
- The complaint asserts independent claims 1 (a system) and 10 (a method), as well as dependent claims 3, 4, 12, and 13 (Compl. ¶¶75, 83).
- The essential elements of independent claim 1 include:
- A first electronic device configured to receive a copy of a modified first electronic file from a second device.
- The first device is configured to determine whether the first electronic device is in communication with a third electronic device.
- Responsive to the determination that communication exists, the first device automatically sends the modified file copy to the third device to replace an older version.
- The system performs a symmetric operation for a second file modified on the third device, determining communication with the second device before sending the file.
Multi-Patent Capsule: U.S. Patent No. 10,289,607
- Patent Identification: U.S. Patent No. 10,289,607, “Architecture For Management of Digital Files Across Distributed Network,” issued May 14, 2019 (Compl. ¶113).
- Technology Synopsis: This patent introduces prioritized data transfer. It describes a system where metadata associated with a modified file is assigned a higher priority than the file's content. The system transfers this metadata to other devices before transferring the actual file, particularly when a device comes back online after being disconnected (Compl. ¶¶114, 116).
- Asserted Claims: Independent claims 1 and 12 (Compl. ¶115).
- Accused Features: The complaint alleges that when a file is modified in the Box system, the file's metadata is uploaded to Box's servers with a higher priority than the file's contents, infringing the patent (Compl. ¶¶119, 121).
Multi-Patent Capsule: U.S. Patent No. 10,642,787
- Patent Identification: U.S. Patent No. 10,642,787, “Pre-file-transfer update based on prioritized metadata,” issued May 5, 2020 (Compl. ¶152).
- Technology Synopsis: This patent builds on the concept of prioritized metadata. It claims a system where the pre-transfer of metadata to a second device causes a file representation on the user interface of that device to update, indicating that a newer version of the file exists on the first device but is not yet stored locally (Compl. ¶¶153, 155).
- Asserted Claims: Independent claims 1 and 8 (Compl. ¶154).
- Accused Features: Box's system is accused of infringing by using prioritized metadata to trigger a notification on a user's second device (e.g., a web browser prompt to "refresh the page") before the actual file content is downloaded (Compl. ¶¶159, 161).
Multi-Patent Capsule: U.S. Patent No. 10,754,823
- Patent Identification: U.S. Patent No. 10,754,823, “Pre-file-transfer availability indication based on prioritized metadata,” issued August 25, 2020 (Compl. ¶193).
- Technology Synopsis: This patent further refines the prioritized metadata concept, claiming the display of a graphical availability indication (e.g., a file icon) on a second device based on the receipt of metadata. This graphical indicator signals that an updated version of the file is available for download before the file itself is transferred (Compl. ¶¶194, 196).
- Asserted Claims: Independent claims 1 and 8 (Compl. ¶195).
- Accused Features: The complaint alleges that Box Drive's use of status icons (e.g., an orange circle for "in the process of being saved") next to file names constitutes the claimed graphical indication that is presented before the file transfer is complete (Compl. ¶¶200-201).
Multi-Patent Capsule: U.S. Patent No. 11,003,622
- Patent Identification: U.S. Patent No. 11,003,622, “Architecture For Management of Digital Files Across Distributed Network,” issued May 11, 2021 (Compl. ¶233).
- Technology Synopsis: This patent claims a process where a server receives a modified file and its prioritized metadata, stores the file, transfers the metadata to a second client prior to the file, and subsequently transfers the file itself to replace the older version on the second client (Compl. ¶¶234, 236).
- Asserted Claims: Independent claims 1 and 11 (Compl. ¶235).
- Accused Features: Box's system is accused of infringing by receiving metadata first, using it to prompt a user's second device to receive an update, and subsequently transferring the file content to overwrite the older version (Compl. ¶¶239-241).
III. The Accused Instrumentality
Product Identification
- Defendant Box, Inc.’s online document storage and synchronization products and services, including "Box Sync" and "Box Drive" (Compl. ¶27).
Functionality and Market Context
- The accused products are client-server applications that allow users to synchronize files between their local devices (laptops, smartphones) and Box's cloud servers (Compl. ¶¶28, 30).
- The complaint cites a marketing document describing Box Sync as a tool to "mirror data stored on Box to your desktop," where changes made to synced files locally "automatically sync back up to your Box account" (Compl. ¶29).
- Another document shows a marketing graphic depicting Box's global data center infrastructure (Compl. ¶31).
- Plaintiff alleges that Box's server infrastructure functions as the claimed "first electronic device," while users' computers and mobile devices function as the "second" and "third" electronic devices (Compl. ¶28).
- The complaint asserts that Box has approximately 41 million users across multiple countries (Compl. ¶10).
IV. Analysis of Infringement Allegations
9143561 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A system, comprising: a first electronic device configured to selectively execute a first application, the first electronic device being in communication with a second electronic device and a third electronic device, each associated with a user | The system includes Box’s server infrastructure (the first device) in communication with a first client device (the second device) and a second client device (the third device), all associated with a single user's Box account. | ¶28, ¶32 | col. 7:49-55 |
| wherein the first electronic device is configured to: receive from a second application executable on the second electronic device a copy of a first electronic file automatically transferred from the second application when the user modifies a content of the first electronic file | Box’s server system receives a copy of a file from a first client device when a user modifies the content of the file in their local Box Sync or Box Drive folder. | ¶33-¶34 | col. 8:53-58 |
| wherein the first application is further configured to automatically transfer the modified first electronic file copy to the third electronic device to replace an older version of the first electronic file | Box’s server system automatically transfers the modified file copy to a second client device to synchronize the file and replace the older version stored there. | ¶37 | col. 8:27-33 |
| wherein the second application automatically transfers the copy of the modified first electronic file to the first electronic device upon determining that a save operation has been performed on the modified first electronic file. | The Box software application on the client device automatically transfers the modified file to the server system upon determining a save operation has occurred. | ¶40 | col. 6:12-16 |
- Identified Points of Contention:
- Scope Questions: A central question may be whether the term "first electronic device," as used in the patent, can be construed to read on a distributed, multi-tenant cloud server infrastructure like Box's, as opposed to a user-controlled device like a personal computer or hub. The complaint's theory relies entirely on casting Box's servers in this role (Compl. ¶28).
- Technical Questions: The defense may question whether the accused system performs the specific reciprocal transfers as claimed. Further, it raises the evidentiary question of whether Box's synchronization is triggered by "determining that a save operation has been performed," or by a different mechanism such as monitoring file system events or file handle closures.
10,006,942 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a first electronic device, associated with a user, configured to: receive, via a first application... a copy of a modified first electronic file from a second application at a second electronic device | The Box server system (first device) receives a copy of a modified file from a user's client device (second device). | ¶79 | col. 12:20-27 |
| determine whether the first electronic device is in communication with a third electronic device | Box’s server and client software determine if a client device is online and in contact with the server. | ¶80 | col. 8:49-52 |
| automatically send, via the first application, the modified first electronic file copy to a third application at the third electronic device responsive to the determination that the first electronic device is in communication with the third electronic device | The Box server system automatically sends the modified file to the second client device (third device) responsive to determining that the client device is connected to the server. | ¶81 | col. 8:53-58 |
| wherein, responsive to sending the modified first electronic file copy to the third electronic device, an older version of the first electronic file...is automatically caused to be replaced | The transfer of the modified file causes the older version on the recipient client device to be overwritten with the new version. | ¶81 | col. 9:10-17 |
- Identified Points of Contention:
- Scope Questions: As with the ’561 Patent, the construction of "first electronic device" as a cloud server will be a primary issue.
- Technical Questions: A key technical question will be what constitutes "determin[ing] whether the...device is in communication." The complaint alleges Box determines if a device is "online" (Compl. ¶80), but the specific technical mechanism used by Box (e.g., active polling, passive listening for a connection) will be compared against the patent's disclosure and the claim language. Another point of contention may be the claimed logical sequence: whether the Box system sends files in direct response to a specific communication check, as the claim requires.
V. Key Claim Terms for Construction
The Term: "first electronic device" (asserted in all patents-in-suit)
- Context and Importance: Plaintiff's infringement theory across all six patents depends on construing this term to cover Defendant's cloud-based server infrastructure. Defendant may argue that the specification and context limit this term to a user-owned device (e.g., a primary desktop computer) acting as a personal hub, not a remote, third-party commercial server system. The construction of this term may therefore be dispositive for the entire case.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The plain language of the term "electronic device" is broad and not inherently limited to a user device. The specification includes figures depicting a "Server" (230) in communication with "User Device"s (210, 280) over a network, which may support the interpretation that a server can be one of the "electronic devices" in the claimed system (’942 Patent, Fig. 2, col. 4:32-38).
- Evidence for a Narrower Interpretation: The patent's background section focuses on the problem of a single customer managing files across their personal devices, such as "a desktop computer at home, one at work, and a constantly connected 'smart phone'" (’942 Patent, col. 1:28-31). This context may be used to argue that the "electronic devices" are all peers within the user's personal ecosystem.
The Term: "determine whether the first electronic device is in communication with a third electronic device" (’942 Patent, Claim 1)
- Context and Importance: This limitation is a key element of the ’942 Patent. The dispute will likely center on whether Box's method for assessing if a client device is online or offline meets this requirement. Practitioners may focus on this term because its construction will define the scope of novelty for this patent over prior art and the other patents in the family.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term uses plain and ordinary language. Plaintiff may argue that any technical means by which the server becomes aware of a client's connectivity status—such as receiving a heartbeat signal, maintaining an active connection, or a successful ping—constitutes "determining communication."
- Evidence for a Narrower Interpretation: The specification describes an embodiment where a "synch application 380 polls the device 280 to determine whether the device 280 is in communication with the server 230" (’942 Patent, col. 8:49-52). Defendant may argue that this disclosure of active "polling" limits the claim's scope to such an active inquiry, potentially excluding systems that rely on passive connection state awareness.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement, stating that Box provides its products and services with the knowledge that its customers (including named entities like the University of Texas at Austin and Baylor University) will infringe the patents-in-suit. The basis for inducement includes Box's marketing, user manuals, and promotion of its services (Compl. ¶¶43, 46, 48). The complaint also pleads contributory infringement, alleging that Box's products are especially adapted for an infringing use and have no substantial non-infringing uses (Compl. ¶57).
- Willful Infringement: The complaint alleges that Box had knowledge of each patent at least as of the date of service of the complaint and seeks enhanced damages for willful infringement in the Prayer for Relief (Compl. ¶44; Prayer for Relief, ¶e). The allegations appear to be based on post-suit knowledge.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "first electronic device," which is described in the patents' context of a user's personal device ecosystem, be construed to encompass a remote, multi-tenant, commercial cloud server system as alleged by the plaintiff? The viability of the infringement case for all six patents may depend on the answer.
- A second central issue will be one of operational equivalence: does the accused Box platform, which manages file synchronization for millions of users, perform the specific, ordered, and conditional steps recited in the claims? This will likely require a detailed factual analysis of, for example, whether Box's system uses prioritized metadata to trigger a "graphical availability indication" before file transfer (’823 Patent) or whether it performs a discrete "determination" of connectivity before initiating a transfer (’942 Patent).
- A third question will be one of patent distinction: given that all six patents stem from the same original application and address similar aspects of file synchronization, the case may involve close scrutiny of the distinct contribution of each patent's claims and whether the accused system practices the specific refinements added in the later-issued patents.