DCT
1:17-cv-00570
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: Ashby & Geddes; Bunsow De Mory LLP
- Case Identification: 1:17-cv-00570, D. Del., 12/10/2018
- Venue Allegations: Plaintiff alleges venue is proper in the District of Delaware because Microsoft is registered to do business in Delaware, transacts business there, has physical retail locations (a Microsoft Store and a Windows Store within a Best Buy), and operates an online store accessible to Delaware residents.
- Core Dispute: Plaintiff alleges that Defendant’s digital rights management technologies (PlayReady) and product activation technologies (Software Protection Platform/Office Software Protection Platform) infringe a patent related to controlling the use of digital content files.
- Technical Context: The lawsuit concerns the field of Digital Rights Management (DRM), a critical technology for protecting digital content such as software, music, and video from unauthorized copying and use.
- Key Procedural History: This case follows a prior lawsuit between the same parties (ViaTech I), which involved the same patent but focused on Microsoft’s product activation features. In ViaTech I, the district court’s construction of key claim terms led to a summary judgment of non-infringement for Microsoft. On appeal, the Federal Circuit reversed the district court’s construction of the terms “file” and “dynamic license database,” but affirmed the judgment on waiver grounds. The current complaint argues that issue and claim preclusion do not bar this new action, particularly in light of the Federal Circuit’s revised claim constructions and because the new allegations concern post-judgment conduct and different products (PlayReady).
Case Timeline
| Date | Event |
|---|---|
| 1999-04-07 | ’567 Patent Priority Date |
| 2005-07-19 | U.S. Patent No. 6,920,567 Issued |
| 2007-01-01 | Microsoft releases Software Protection Platform (SPP) (approximate) |
| 2010-01-01 | Microsoft implements Office Software Protection Platform (approximate) |
| 2014-09-24 | ViaTech I litigation filed |
| 2016-06-14 | District Court issues claim construction order in ViaTech I |
| 2017-05-15 | Current action (ViaTech II) initially filed |
| 2017-06-12 | District Court enters summary judgment in ViaTech I |
| 2018-05-23 | Federal Circuit issues opinion in ViaTech I Appeal |
| 2018-12-10 | Second Amended Complaint filed in current action |
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 addresses the challenge of distributing licensed digital content files (like software or media) and subsequently controlling their use, a problem exacerbated by networked distribution like the internet (’567 Patent, col. 1:26-33). Prior art systems often relied on mechanisms separate from the content file itself, such as external license managers or hardware-based keys, which limited their applicability and were vulnerable to being bypassed (’567 Patent, col. 1:34-2:62).
- The Patented Solution: The invention proposes a self-contained digital content file (DCF) that includes not only the digital content but also an integral or "embedded" File Access Control Mechanism (FACM) and an associated Dynamic License Database (Dldb) (’567 Patent, Abstract; col. 3:56-col. 4:14). This embedded mechanism, illustrated in Figure 1A, controls access to the content according to the rules and status stored in its own license database, which can be dynamically updated to reflect changes in the license (e.g., purchase, expiration, transfer) (’567 Patent, Fig. 1A; col. 13:25-47).
- Technical Importance: The described approach provides for a file-level, self-enforcing security model, where the protection travels with the content file itself rather than depending on a separate, external enforcement system (’567 Patent, col. 3:36-44).
Key Claims at a Glance
- The complaint asserts infringement of claim 8 (against PlayReady) and claims 1–7, 13–15, and 28–31 (against SPP/OSPP) (Compl. ¶¶ 74, 106). Claim 8 is dependent on independent claim 1.
- Independent Claim 1 recites a digital content file comprising:
- A digital content.
- An embedded file access control mechanism, which itself includes:
- A license functions mechanism, which further includes:
- A license monitor and control mechanism that communicates with a dynamic license database to check if the user’s use complies with the license.
- A license control utility that communicates with an external system to exchange license definition information, including a graphical user interface (GUI).
- A license functions mechanism, which further includes:
- The dynamic license database, which is associated with the digital content file and stores information for controlling the file access control mechanism’s operations and the licensed use.
- The complaint does not explicitly reserve the right to assert other dependent claims but seeks judgment on "one or more claims" of the patent (’567 Patent, cl. 1; Compl. ¶75, Prayer for Relief ¶A).
III. The Accused Instrumentality
Product Identification
- The complaint accuses two distinct sets of Microsoft technologies: (1) the PlayReady Product Suite and (2) the Software Protection Platform (SPP) and Office Software Protection Platform (OSPP) (Compl. ¶15, ¶18).
Functionality and Market Context
- PlayReady Product Suite: This is a Digital Rights Management (DRM) technology that Microsoft licenses to third-party content providers to protect multimedia content like music and video (Compl. ¶¶ 15-16). The system involves a PlayReady Encoder to encrypt content and apply a security wrapper, a PlayReady License Server to manage and issue licenses, and PlayReady clients (on devices like PCs, tablets, and phones) to decrypt and play the content according to the license terms (Compl. ¶16). The complaint includes a diagram from a Microsoft white paper illustrating this ecosystem, which shows content flowing from an encoder to a distribution network, with clients requesting licenses from a license server to enable playback (Compl. p. 5). PlayReady is platform-agnostic, with Microsoft providing SDKs for various operating systems including Android and iOS (Compl. ¶¶ 21-23).
- SPP/OSPP: This technology, also referred to as "product activation," is used by Microsoft to protect its own Windows and Office software from unauthorized use and counterfeiting (Compl. ¶¶ 18, 39). It functions by requiring users to activate their software, a process that "pairs" the product key with the user's hardware configuration (Compl. ¶45). SPP/OSPP performs a license check at startup and communicates with Microsoft's Activation Verification Servers to obtain and validate a license (Compl. ¶¶ 43-44). If activation is not completed, the software may enter a reduced functionality mode (Compl. ¶51).
IV. Analysis of Infringement Allegations
’567 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| [A] The digital content file including a license control mechanism for controlling the licensed use of digital content of claim 1, comprising: [B] a digital content, and [C] an embedded file access control mechanism... | The complaint alleges that the combination of PlayReady-protected content (e.g., music, video) and the PlayReady software (e.g., header object, client software) constitutes the claimed "digital content file" with an embedded control mechanism. | ¶77, ¶81, ¶83, ¶86 | col. 3:56-65 |
| [C][i] a license functions mechanism embedded in the digital content file and including [a] a license monitor and control mechanism communicating with a dynamic license database and monitoring use of the digital content by a user... | The PlayReady client software on a user device allegedly includes a mechanism that monitors and controls the use of the content to determine if it complies with the license defined in the dynamic license database (i.e., the PlayReady Header Object or another secure repository). | ¶86, ¶88 | col. 4:1-9 |
| [b] a license control utility providing communications between a user system and an external system to communicate license definition information... including [i] a graphical user interface... | The PlayReady client software allegedly provides a utility for communicating with an external PlayReady License Server to acquire a license. The complaint points to Microsoft's own diagrams showing a "License Request" from clients to a server. User interfaces in applications like Groove Music are alleged to provide the claimed GUI. | ¶86, ¶88, ¶92 | col. 4:9-18 |
| [D] 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 and license information... | The complaint alleges that the "PlayReady Header Object," which is added to the content file and can store metadata and licenses, functions as the claimed dynamic license database. This database can be updated post-distribution (e.g., when new licenses are acquired). | ¶79, ¶80, ¶81, ¶86 | col. 3:65-4:1 |
- Identified Points of Contention:
- Scope Questions: The primary dispute will likely concern claim construction, heavily influenced by the prior ViaTech I litigation. A central question is whether the distributed architecture of PlayReady—comprising software on a client device, a header object within a media file, and a remote license server—can be considered a single "digital content file" with an "embedded" control mechanism and "dynamic license database" under the Federal Circuit's revised (but unspecified in the complaint) claim constructions. The complaint's assertion that the combination of content and software constitutes a "file" will be a focal point (Compl. ¶81).
- Technical Questions: A key factual question will be how the PlayReady Header Object and associated secure storage on a client device actually function. The analysis will require determining if this system operates as a "dynamic license database" that is "associated with the digital content file" in the manner required by the claim, or if its functionality is technically distinct from the patent's description of a fully integrated, resident database like Dldb 14 (’567 Patent, Fig. 1A).
V. Key Claim Terms for Construction
The Term: "digital content file"
Context and Importance: The construction of this term is fundamental to the entire case. In the prior ViaTech I litigation, the district court's narrow construction ("a collection of data that is treated as a unit by a file system") was outcome-determinative, and this construction was subsequently changed by the Federal Circuit (Compl. ¶¶ 55, 58). Practitioners will focus on this term because the plaintiff's infringement theory depends on interpreting "file" to encompass a combination of distributed elements, including protected content and client-side software (Compl. ¶81).
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification uses the term generally to refer to licensable content, such as "computer programs and data and digitally formatted audio and image information" (’567 Patent, col. 1:18-20), which may support an interpretation not strictly limited to a traditional, single data structure on a disk.
- Evidence for a Narrower Interpretation: Figure 1A depicts the "DCF 10" as a distinct container that includes the "FACM 12" and "DCF Content 10A" within its boundaries, which could support a narrower interpretation requiring a more integrated, self-contained unit (’567 Patent, Fig. 1A).
The Term: "dynamic license database"
Context and Importance: This term was also construed in ViaTech I and changed on appeal (Compl. ¶58). Its meaning is critical for determining if the PlayReady Header Object and associated data stores meet the claim limitations. The "dynamic" quality—the ability to be updated post-distribution—is central to the plaintiff’s theory that PlayReady's ability to acquire and renew licenses satisfies this element (Compl. ¶80).
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the database as containing information that can be written to and updated, for example, to reflect a new system fingerprint or decrement an execution count, suggesting that any data store capable of such modification could qualify (’567 Patent, col. 4:29-34; col. 5:20-25).
- Evidence for a Narrower Interpretation: The patent consistently refers to a resident "Dynamic License Database (Dldb) 14" as a specific component of the FACM, which itself is embedded in the file (’567 Patent, col. 13:38-44). This could support an argument that the database must be a singular, resident component, not a combination of a file header and other repositories.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Microsoft induces infringement by actively encouraging and instructing third-party content providers, developers, and end-users to use the PlayReady suite in an infringing manner. Evidence cited includes promotional materials, developer documentation (SDKs), and the operation of services like the Microsoft Store that distribute PlayReady-protected content (Compl. ¶¶ 90-93, 98-100). The complaint also alleges contributory infringement, stating that the PlayReady components are material parts of the invention, are not staple articles of commerce, and have no substantial non-infringing use other than to practice the patent (Compl. ¶¶ 94-96).
- Willful Infringement: The complaint alleges a long history of pre-suit knowledge. It claims Microsoft became aware of the ’567 patent as early as September 2005, when it was cited as prior art during the prosecution of Microsoft's own patents (Compl. ¶66). Further allegations of knowledge are based on correspondence between the parties from 2011-2013 and the filing of the ViaTech I lawsuit in 2014 (Compl. ¶¶ 68, 71).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim scope and preclusion: Can the asserted claims, under the new constructions from the ViaTech I appeal, be proven to read on the accused PlayReady and SPP/OSPP technologies? A related threshold question will be whether claims against SPP/OSPP, which were at issue in ViaTech I, are barred by claim preclusion or the Kessler doctrine, a legal battle for which both sides appear prepared.
- A key evidentiary question will be one of technical mapping: Does the distributed architecture of the PlayReady Product Suite—with its separate client software, file headers, and remote license servers—constitute a single "digital content file" with an "embedded" control mechanism and "dynamic license database" as recited in Claim 1? The outcome will likely depend on whether the court finds these distributed components to be functionally and structurally equivalent to the integrated system described in the patent.