DCT
1:14-cv-01226
ViaTech Tech Inc v. Microsoft Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: ViaTech Technologies, Inc. (Delaware)
- Defendant: Microsoft Corporation (Washington)
- Plaintiff’s Counsel: Saul Ewing LLP; Kenyon & Kenyon LLP
- Case Identification: 1:14-cv-01226, D. Del., 09/24/2014
- Venue Allegations: Venue is based on Defendant’s registration to do business in Delaware, its transaction of business in the district, the presence of physical and online Microsoft stores serving the district, and the commission of alleged tortious acts within the district.
- Core Dispute: Plaintiff alleges that Defendant’s Windows operating systems and Office software suites, which include product activation features, infringe a patent related to digital rights management and license enforcement.
- Technical Context: The technology concerns systems for controlling the use of digital content, such as software, by embedding a license control mechanism within the content file itself to enforce licensing terms.
- Key Procedural History: The complaint alleges that Defendant has had knowledge of the patent-in-suit since at least September 2005, when it was cited by a U.S. Patent and Trademark Office examiner during the prosecution of a patent assigned to Defendant. The complaint further alleges that Defendant subsequently discussed the patent-in-suit in detail in an Office Action response and cited it in information disclosure statements for numerous other patents, which may be relevant to the question of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 1999-04-07 | U.S. Patent No. 6,920,567 Priority Date |
| 2005-07-19 | U.S. Patent No. 6,920,567 Issued |
| 2005-09-20 | Alleged date of Microsoft's knowledge of the '567 Patent |
| 2005-12-12 | Alleged date Microsoft discussed the '567 Patent in a PTO response |
| 2014-09-24 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,920,567 - "System and Embedded License Control Mechanism for the Creation and Distribution of Digital Content Files and Enforcement of Licensed Use of the Digital Content Files"
- Patent Identification: U.S. Patent No. 6,920,567, "System and Embedded License Control Mechanism for the Creation and Distribution of Digital Content Files and Enforcement of Licensed Use of the Digital Content Files," issued July 19, 2005.
The Invention Explained
- Problem Addressed: The patent’s background section describes the problem of controlling the use of licensed digital content, such as computer programs, after its distribution, a challenge made more severe by networked distribution like the Internet ('567 Patent, col. 1:26-32). Prior art solutions are described as being separate from the licensed program, media-based rather than file-based, or providing only static, one-time protection ('567 Patent, col. 2:37-64).
- The Patented Solution: The invention is a digital content file that contains not only the content itself (e.g., executable code) but also an integrally embedded "File Access Control Mechanism" (FACM) ('567 Patent, Abstract; col. 10:26-34). This FACM includes a dynamic license database stored on the user's system and a license monitor that checks usage against the terms in that database, allowing for flexible and dynamic enforcement of various license conditions (e.g., trial periods, execution limits) directly at the file level ('567 Patent, col. 4:1-14; Fig. 1A).
- Technical Importance: This approach aimed to create a self-enforcing digital file, moving license control from a separate, potentially vulnerable server or application into the protected content itself, thereby enabling more secure and flexible distribution and licensing models ('567 Patent, col. 3:36-52).
Key Claims at a Glance
- The complaint asserts infringement of independent claims 1, 28, and 31, among others (Compl. ¶38, 41).
- Independent Claim 1 (System Claim) recites a digital content file comprising:
- a digital content;
- an embedded file access control mechanism, which itself includes:
- a license monitor and control mechanism that communicates with a dynamic license database to check for compliance with a license;
- a license control utility with a graphical user interface (GUI) to facilitate communication between the user system and an external system for license definition; and
- a dynamic license database associated with the file for storing license information.
- The complaint reserves the right to assert infringement of dependent claims 2-7 and 13-15, which add limitations such as system fingerprinting and specific types of digital content (Compl. ¶38, 45).
III. The Accused Instrumentality
- Product Identification: The accused products are Microsoft’s software with "product activation" features, specifically including Windows operating systems (Vista, 7, 8, 8.1) and Microsoft Office software suites (2007, 2010, 2013, 365) (Compl. ¶13-14, 17).
- Functionality and Market Context:
- The complaint alleges that the accused products incorporate license control mechanisms referred to as "product activation," specifically the "Software Protection Platform" and "Windows Activation Technologies" (Compl. ¶17, 19). These features require a user to activate the software, a process that "pairs" a product key with the user's hardware configuration (Compl. ¶21). This activation is mandatory, and failure to activate results in reduced functionality or notifications (Compl. ¶18, 33).
- The activation technology allegedly involves installing program files (e.g., "slsvc.exe", "sppsvc.exe") and creating data files (e.g., "tokens.dat") and registry keys on the user's computer to store information about the licensing and activation status (Compl. ¶22, 27). This system is also alleged to check for significant hardware changes, which may require reactivation, by evaluating a "system fingerprint based on a pre-set, determined range of tolerance" (Compl. ¶21).
- No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
'567 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A digital content file, comprising: a digital content, and an embedded file access control mechanism embedded in the digital content file... | Microsoft’s Windows and Office products, which include executable code (the digital content) and product activation features (the alleged embedded file access control mechanism). | ¶39 | col. 41:1-4 |
| a license monitor and control mechanism communicating with a dynamic license database and monitoring use of the digital content by a user to determine whether a use ... complies with the license... | The activation features perform a licensing check when started, determine if the product is activated, and evaluate the user's system fingerprint against stored hardware information to control access. | ¶20, 21, 25, 39 | col. 41:7-13 |
| a license control utility providing communications between a user system and an external system to communicate license definition information, including a graphical user interface... | The activation features provide a mechanism for communicating with Microsoft's external servers to activate a license and a GUI (e.g., the "Microsoft Office Activation Wizard") for user interaction. | ¶23, 24, 27, 39 | col. 41:13-21 |
| the dynamic license database wherein the dynamic license database is associated with the digital content file for storing information controlling operations of the file access control mechanism... | Data files (e.g., "tokens.dat") and registry entries created on the user's computer that store information about the licensing and activation status of the software, and which can be updated. | ¶11, 22, 27, 39 | col. 41:22-26 |
- Identified Points of Contention:
- Scope Questions: A central dispute may concern the term "embedded". The complaint alleges that Microsoft's activation features, which involve separate executable files and registry entries installed with the main software, constitute an "embedded file access control mechanism". The court will need to determine if "embedded" requires the control mechanism to be within a single, monolithic file containing the digital content, or if being installed as an integral and inseparable part of the overall software package is sufficient.
- Technical Questions: The infringement analysis may turn on whether Microsoft's "product activation" performs the same function as the claimed "license monitor and control mechanism." The complaint alleges monitoring of use (Compl. ¶39), but the primary function described is a one-time (or periodic, upon hardware change) activation check (Compl. ¶21). A question for the court is whether this one-time check constitutes the ongoing "monitoring use" described in the patent, which provides examples like tracking execution counts and cumulative use time ('567 Patent, col. 21:1-3, 21:58-61).
V. Key Claim Terms for Construction
The Term: "embedded file access control mechanism"
Context and Importance: This term is critical because the entire claim depends on the control mechanism being "embedded" in the digital content file. Microsoft's accused activation technology is installed alongside its software but exists as distinct files (e.g., "sppsvc.exe") and system entries. Practitioners may focus on this term because its construction could determine whether Microsoft's architecture falls within the claim's scope at all.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states that the mechanism is "functionally embedded in the DCF [digital content file] to comprise an integral part or component of the DCF" ('567 Patent, col. 10:48-50). This language may support an argument that "embedded" refers to functional integration rather than physical containment within a single file.
- Evidence for a Narrower Interpretation: Claim 1 recites the mechanism as being "embedded in the digital content file" (singular). The specification also describes a process of constructing a "product installer" by combining various encrypted components ('567 Patent, col. 6:1-8). This could support an argument that the invention contemplates a single, self-contained file created by a specific construction process.
The Term: "dynamic license database"
Context and Importance: The "dynamic" nature of the database distinguishes it from static license keys. The case will hinge on whether the license data stored by Microsoft's products (e.g., in "tokens.dat" or the registry) is "dynamic" as the patent uses the term.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The complaint alleges the database "can be modified and updated as needed" (Compl. ¶11). The patent supports a broad meaning, describing the database as being used for "storing, referencing, and updating" license data ('567 Patent, col. 10:11-13) and for writing new information, such as an updated system fingerprint, into it ('567 Patent, col. 5:29-35).
- Evidence for a Narrower Interpretation: A defendant could argue that "dynamic" requires more than just storing an activation state and a hardware hash. It might point to specification examples like decrementing execution counts or monitoring cumulative use time ('567 Patent, col. 15:17-21) to argue for a more limited construction requiring ongoing, use-based updates, which may differ from Microsoft's activation check.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement by claiming Microsoft instructs and encourages customers (OEMs and end users) to use the accused product activation features, which are required for the software to function properly (Compl. ¶28, 45, 46). Contributory infringement is alleged on the basis that Microsoft sells software containing components (the activation features) that are a material part of the invention, are especially made for this infringing use, and have no substantial non-infringing uses (Compl. ¶47).
- Willful Infringement: Willfulness is alleged based on specific claims of pre-suit knowledge. The complaint asserts that Microsoft knew of the '567 Patent as early as September 20, 2005, when it was cited by a PTO Examiner against a Microsoft patent application. It further alleges Microsoft attorneys discussed the patent's technology in detail in a December 12, 2005 response to the PTO, and that Microsoft subsequently cited the '567 patent in its own prosecution of numerous other patents (Compl. ¶34, 35, 48).
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this dispute will likely depend on the answers to two central questions for the court:
- A core issue will be one of definitional scope: Can the term "embedded", as used in the patent, be construed to cover Microsoft's product activation architecture, which is installed as an integral part of the software but exists in separate files and registry entries rather than within a single, monolithic content file?
- A key evidentiary question will be one of functional correspondence: Does Microsoft’s product activation system—which primarily performs a one-time validation of a license against a hardware fingerprint—perform the functions of the claimed "license monitor and control mechanism", which the patent specification suggests involves more granular, ongoing monitoring of license terms like execution counts and cumulative use time?