DCT
5:18-cv-00357
Uniloc USA Inc v. Apple Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Uniloc USA, Inc. (Texas) and Uniloc Luxembourg, S.A. (Luxembourg)
- Defendant: Apple Inc. (California)
- Plaintiff’s Counsel: Prince Lobel Tye LLP; Nelson Bumgardner PC
- Case Identification: 2:17-cv-00258, E.D. Tex., 04/03/2017
- Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas because Apple is deemed to reside there, has committed alleged acts of infringement in the district, and maintains regular and established places of business in the district.
- Core Dispute: Plaintiff alleges that Defendant’s iOS devices and associated services infringe three patents related to predictive information delivery based on location history, user authentication via device fingerprinting, and remote software updates.
- Technical Context: The patents concern technologies for personalizing and securing user experiences on mobile devices by leveraging device-specific data, such as location history and unique hardware identifiers.
- Key Procedural History: Subsequent to the filing of this complaint, the asserted patents were subject to Inter Partes Review (IPR) proceedings before the U.S. Patent and Trademark Office. An IPR on U.S. Patent No. 8,838,976 (IPR2017-01850) resulted in the cancellation of all claims challenged, including the asserted claim 13. An IPR on U.S. Patent No. 9,414,199 (IPR2017-01993) concluded with a finding that the asserted claims 1-5 were patentable.
Case Timeline
| Date | Event |
|---|---|
| 2009-02-10 | ’976 Patent Priority Date |
| 2009-06-24 | ’852 Patent Priority Date |
| 2012-08-07 | ’852 Patent Issue Date |
| 2013-03-07 | ’199 Patent Priority Date |
| 2013-09-18 | Accused Product Launch (iOS 7) |
| 2014-09-16 | ’976 Patent Issue Date |
| 2016-08-09 | ’199 Patent Issue Date |
| 2017-04-03 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,414,199 - "PREDICTIVE DELIVERY OF INFORMATION BASED ON DEVICE HISTORY," issued August 9, 2016
The Invention Explained
- Problem Addressed: The patent asserts that conventional location-based services are limited because they only consider a device's current location, which restricts the relevance of information that can be provided (ʼ199 Patent, col. 1:13-27).
- The Patented Solution: The invention describes a server-based system that collects location histories from user devices over time. This historical data is then used to predict a device's future locations. When the system determines there is a sufficient likelihood that a device will be at a predetermined location within a certain time frame, it performs an associated action, such as sending a promotional message (ʼ199 Patent, Abstract; col. 1:30-45). This prediction considers the "current context," such as the current time, day, and location, to improve relevance (ʼ199 Patent, col. 1:46-52).
- Technical Importance: This approach seeks to move beyond reactive, location-based alerts to a proactive system that anticipates user behavior to deliver more timely and contextually relevant information or advertisements (ʼ199 Patent, col. 2:30-36).
Key Claims at a Glance
- The complaint asserts claims 1-4, with Claim 1 being the sole independent claim asserted (Compl. ¶15).
- Independent Claim 1 requires:
- A method for delivering information to two or more user devices.
- Retrieving information from data records that associate it with predetermined locations, a time, a likelihood, and actions.
- For each device, predicting whether it will be at one of the predetermined locations within the predetermined time with at least the predetermined likelihood.
- In response to a positive prediction, performing the predetermined action.
- Ensuring at least one action includes delivering the information to the device.
- The complaint does not explicitly reserve the right to assert other claims, but this is a standard practice.
U.S. Patent No. 8,838,976 - "WEB CONTENT ACCESS USING A CLIENT DEVICE IDENTIFIER," issued September 16, 2014
The Invention Explained
- Problem Addressed: The patent identifies a need for reliable online user authentication that is less burdensome than methods requiring personally identifiable information like credit cards, which may deter legitimate users (ʼ976 Patent, col. 2:17-33).
- The Patented Solution: The invention proposes a system that generates a unique "device identifier" or "machine fingerprint" from a client device's specific hardware and software configuration. This identifier is created by measuring physical properties of the device, including "non-user-configurable" parameters like "carbon and/or silicon degradation characteristic[s]" ('976 Patent, col. 13:10-16). This fingerprint is then transmitted to an authentication server to verify the user's device without requiring traditional personal data ('976 Patent, col. 4:26-50).
- Technical Importance: The technology aims to create a persistent, hardware-based trust anchor for online interactions, allowing for user authentication based on the device itself rather than on user-provided credentials ('976 Patent, col. 3:1-15).
Key Claims at a Glance
- The complaint asserts at least claim 13 (Compl. ¶31). Claim 13 is an independent claim.
- Independent Claim 13 requires:
- A computer-implemented method for authenticating a user of an online service.
- Retrieving, by a network device, machine information comprising at least one user-configurable parameter and at least one physical non-user-configurable property.
- The physical non-user-configurable property comprises a "carbon and/or silicon degradation characteristic of a network device component."
- Generating a device identifier based at least in part on the retrieved machine information.
- Transmitting the generated device identifier to an authentication server.
- The complaint does not explicitly reserve the right to assert other claims.
Multi-Patent Capsule
- Patent Identification: U.S. Patent No. 8,239,852, "REMOTE UPDATE OF COMPUTERS BASED ON PHYSICAL DEVICE RECOGNITION," issued August 7, 2012 (Compl. ¶40).
- Technology Synopsis: The patent addresses the challenge of delivering appropriate software updates to client devices that have diverse hardware, software, and geographic configurations ('852 Patent, col. 1:17-26). The invention provides a system where a client device generates a unique identifier based on its physical "machine parameters" and sends it to an update server, which then analyzes the identifier to select and deliver a suitable update ('852 Patent, Abstract).
- Asserted Claims: At least claim 18 (Compl. ¶48).
- Accused Features: The complaint accuses Apple's system for delivering iOS software updates to devices like iPhones and iPads. This process allegedly involves the device sending authentication information, including an Apple ID and a Unique Device Identifier (UDID), to Apple's servers to receive upgrades (Compl. ¶¶42, 46, 48).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are Apple devices such as iPhones and iPads running iOS 7 and later releases, and the associated software and services including the "Frequent Locations" feature, Apple ID, Unique Device Identifier (UDID), iTunes, the App Store, and iCloud (Compl. ¶¶10, 26, 42).
Functionality and Market Context
- The complaint alleges that the "Frequent Locations" feature in iOS tracks places a user has recently and frequently visited to provide personalized services, such as predictive traffic routing (Compl. ¶¶11-12). A screenshot in the complaint shows a notification providing an estimated travel time to "Home," illustrating this predictive functionality (Compl. ¶14).
- The complaint further alleges that Apple devices use a combination of a user-configurable Apple ID and a non-user-configurable Unique Device Identifier (UDID) to authenticate users for access to services like the App Store and iCloud (Compl. ¶¶27, 29, 30).
- Finally, the complaint alleges that this same authentication information (Apple ID, UDID) is used when a device requests and receives software updates from Apple's servers (Compl. ¶¶43, 46). The complaint does not contain specific allegations regarding the market positioning of these features beyond their integration into Apple's widely used ecosystem.
IV. Analysis of Infringement Allegations
’199 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| retrieving the information from one or more data records that associate the information with one or more predetermined locations, a predetermined maximum amount of time, a predetermined likelihood, and one or more predetermined actions | The "Frequent Locations" feature stores a history of user locations, such as "Home" and "Work," which are associated with personalized services like traffic routing. | ¶¶11, 13-14 | col. 1:32-36 |
| predicting whether the user device will be at any of the one or more predetermined locations within the predetermined maximum amount of time with at least the predetermined likelihood | The complaint alleges the feature "guesses where you're headed next and provides a corresponding traffic update." A screenshot shows a notification, "7 minutes to Home now," which is presented as an example of this prediction. | ¶¶12, 14 | col. 1:36-41 |
| in response to the predicting... performing the one or more predetermined actions; wherein at least one of the actions includes delivering the information to the user device | In response to predicting the user's next destination, the accused devices deliver useful information, such as expected travel times and traffic conditions, to the user. | ¶¶14, 16 | col. 1:41-45 |
Identified Points of Contention
- Scope Questions: A central question may be whether the "Frequent Locations" feature, which appears to predict an immediate next destination, meets the claim limitation of predicting presence at a location "within the predetermined maximum amount of time with at least the predetermined likelihood." The court may need to determine if a "guess" about a next destination is equivalent to a "prediction" based on a specified "likelihood."
- Technical Questions: What evidence does the complaint provide that Apple's system uses a "predetermined likelihood" as a threshold for triggering an action, as required by the claim? The complaint describes the feature as making a "guess" but does not detail a specific likelihood threshold being met (Compl. ¶12).
’976 Patent Infringement Allegations
| Claim Element (from Independent Claim 13) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| retrieving, by a network device, machine information regarding the network device, the machine information comprising at least one user-configurable parameter and at least one physical non-user-configurable property | Apple devices retrieve a user-configurable "Apple ID" and a non-user-configurable "Unique Device Identifier (UDID)," which is described as being based on "various hardware characteristics." | ¶¶27, 29, 30 | col. 5:1-12 |
| wherein the at least one physical non-user-configurable property comprises a carbon and/or silicon degradation characteristic of a network device component | The complaint alleges the UDID is based on "various hardware characteristics" but provides no specific allegation that it is based on measuring carbon or silicon degradation. | ¶29 | col. 7:51-64 |
| generating a device identifier based at least in part on the retrieved machine information | An application on the device generates the UDID, which "uniquely identifies a particular iOS device." | ¶29 | col. 5:58-67 |
| transmitting the generated device identifier to an authentication server | The device transmits the Apple ID and UDID to Apple's servers to authenticate the user for services like iTunes, iCloud, and the App Store. The complaint includes a screenshot of the Apple ID login screen. | ¶¶26-28, 30 | col. 4:26-33 |
Identified Points of Contention
- Technical Questions: The primary point of contention will be evidentiary. The claim explicitly requires the device identifier to be based on a "carbon and/or silicon degradation characteristic." The complaint does not allege that Apple's UDID is generated using such a specific physical measurement, instead referencing a source stating it is based on "various hardware characteristics" (Compl. ¶29). This suggests a potential mismatch between the specific technology claimed and the functionality alleged to be infringing.
- Scope Questions: Does the term "carbon and/or silicon degradation characteristic" encompass the general "hardware characteristics" allegedly used to create a UDID, or is it limited to the specific method of measuring chip degradation described in the patent's specification?
V. Key Claim Terms for Construction
Term from ’199 Patent: "predicting ... with at least the predetermined likelihood"
- Context and Importance: The infringement analysis for the '199 Patent hinges on whether Apple's "Frequent Locations" feature performs this specific type of prediction. The construction of "likelihood" will determine whether a simple "guess" about a next destination meets the claim requirement, or if a more formal, quantitative probability assessment is needed.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the goal of providing information that is "relevant," which may suggest that any non-random method of anticipating user movement could be considered "predicting" in the context of the invention (ʼ199 Patent, col. 1:23-24).
- Evidence for a Narrower Interpretation: The claim's use of quantitative-sounding terms like "predetermined maximum amount of time" and "predetermined likelihood" suggests a specific, threshold-based system. The specification gives a concrete example of a manager specifying "50% as the predetermined minimum likelihood," supporting a narrower, numerical interpretation ('199 Patent, col. 1:57-61).
Term from ’976 Patent: "carbon and/or silicon degradation characteristic"
- Context and Importance: This term is highly technical and appears central to defining the scope of the claimed invention. Practitioners may focus on this term because the complaint lacks a specific allegation that Apple's UDID uses this technology, making its definition critical to the infringement case.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: It is difficult to find support for a broad interpretation, as the patent appears to treat this as a specific technique. One might argue it is merely an example of a "physical, non-user configurable" property, but the claim language itself includes it as a required limitation.
- Evidence for a Narrower Interpretation: The specification provides a detailed, narrow definition, describing this characteristic as measurable by tracking how chip degradation causes "gradually slower speeds that extend the processing time required to compute various benchmarking algorithms" ('976 Patent, col. 7:51-64). This points to a very specific method of physical measurement, not a general reference to hardware properties.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Apple induces infringement of all three patents by intentionally instructing customers to use the accused features through "training videos, demonstrations, brochures, installation, and/or user guides" available on its websites (Compl. ¶¶17, 33, 50). It also pleads contributory infringement, alleging that the accused software is a material component of the patented inventions and is not a staple article of commerce with substantial non-infringing uses (Compl. ¶¶18-19, 34-35, 51-52).
- Willful Infringement: The complaint alleges that Apple will have knowledge of the patents "at the latest, the service of this complaint," establishing a basis for post-suit willful infringement (Compl. ¶¶20, 36, 53). There are no allegations of pre-suit knowledge of the patents.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of evidentiary proof: Can Uniloc demonstrate that Apple's products practice the highly specific technologies recited in the claims? For the '976 and '852 patents, this raises the question of whether Apple's UDID is generated using the claimed "physical device recognition" method, specifically the measurement of "carbon and/or silicon degradation," a fact not alleged in the complaint.
- A key question of claim scope will arise for the '199 patent: Can the term "predicting," which the patent frames with quantitative measures of "likelihood" and "time," be construed to read on a feature that "guesses" a user's next immediate destination for a traffic update?
- A dispositive legal question overshadows the '976 patent allegations: Given that the only asserted claim (Claim 13) was cancelled in a post-filing IPR proceeding, the court will have to determine the viability of a count for infringement of a claim that is no longer legally valid.