DCT
1:19-cv-01360
Synkloud Tech LLC v. Microsoft Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: SynKloud Technologies LLC (Delaware)
- Defendant: HP Inc (Delaware)
- Plaintiff’s Counsel: Klehr Harrison Harvey Branzburg & Ellers LLP; Carlineo Kee, PLLC (Of Counsel)
- Case Identification: 1:19-cv-01360, D. Del., 11/12/2019
- Venue Allegations: Venue is alleged to be proper in the District of Delaware because Defendant is a Delaware corporation that conducts business and has placed the accused products into the stream of commerce in the district.
- Core Dispute: Plaintiff alleges that Defendant’s laptops, desktops, and printer services infringe four patents related to remote data storage access for wireless devices and the formatting of digital messages for printing.
- Technical Context: The lawsuit involves technologies for extending the storage capacity of personal devices via cloud services and for formatting digital content, such as emails, into stylized templates for physical printouts.
- Key Procedural History: The complaint alleges that Defendant had pre-suit knowledge of the patents-in-suit based on a notice letter sent by Plaintiff in June 2019. Post-filing, in separate inter partes review proceedings, all claims of U.S. Patent No. 9,098,526 were found unpatentable and cancelled, a development that will likely be central to the disposition of that portion of the case.
Case Timeline
| Date | Event |
|---|---|
| 2000-10-13 | U.S. Patent No. 7,870,225 Priority Date |
| 2003-12-04 | U.S. Patent No. 9,098,526 Priority Date |
| 2003-12-04 | U.S. Patent No. 10,015,254 Priority Date |
| 2006-05-22 | U.S. Patent No. 8,694,590 Priority Date |
| 2011-01-11 | U.S. Patent No. 7,870,225 Issue Date |
| 2014-04-08 | U.S. Patent No. 8,694,590 Issue Date |
| 2015-08-04 | U.S. Patent No. 9,098,526 Issue Date |
| 2018-07-03 | U.S. Patent No. 10,015,254 Issue Date |
| 2019-06-XX | Plaintiff sends notice letter to Defendant |
| 2019-11-12 | Amended Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,098,526 - “System and Method for Wireless Device Access to External Storage,” issued August 4, 2015
The Invention Explained
- Problem Addressed: The patent addresses the problem of limited storage capacity on wireless devices like cell phones and PDAs, which makes it difficult for users to store large amounts of personal and multimedia data (’526 Patent, col. 2:29-38).
- The Patented Solution: The invention proposes a system where a server provides external storage to wireless devices. The server partitions its own storage system into multiple volumes, with each volume exclusively assigned to a specific wireless device user (’526 Patent, col. 2:39-50). Users can manage this remote storage (e.g., create folders, move files) via a web browser on their device and can also initiate "out-band" downloads, where the server is instructed to download content from a third-party website directly into the user's assigned storage space (’526 Patent, col. 4:2-27, Fig. 3).
- Technical Importance: This approach aimed to give mobile device users access to gigabyte-scale storage at a time when onboard device memory was severely limited, effectively creating an early model for personal cloud storage.
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶16).
- The essential elements of claim 1 are:
- A wireless device comprising at least one cache storage, one wireless interface, and program code.
- The program code is configured to establish a wireless link to access a storage space of a predefined capacity assigned exclusively to the user by a storage server.
- The device couples with the server to perform operations like storing or retrieving data objects.
- The storing operation includes downloading a file from a remote server into the assigned storage space by using download information for the file that is stored in the wireless device's cache.
- The complaint reserves the right to assert additional claims (Compl. ¶16 n.1).
U.S. Patent No. 10,015,254 - “System and Method for Wireless Device Access to External Storage,” issued July 3, 2018
The Invention Explained
- Problem Addressed: The patent identifies the common problem of users facing a "lack of storage capacity in their wireless devices," which are often limited in memory (’254 Patent, col. 2:28-35).
- The Patented Solution: The invention describes a system where a first server provides a remote storage service to a wireless device. The server allocates an exclusive storage space to the device's user, which the user can see and manage (’254 Patent, col. 4:3-10). The system allows the user's wireless device to instruct the first server to download a file from a second, remote server (e.g., a website) directly into the user's allocated storage space, using information for the file that was cached on the wireless device itself (’254 Patent, col. 5:4-29).
- Technical Importance: This technology provided a framework for offloading not only storage but also data transfer burdens from a resource-constrained mobile device to a more powerful server.
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶32).
- The essential elements of claim 1 are:
- A wireless device with a cache storage and computer-readable instructions.
- The instructions configure the device to establish a communication link with a first server to access a remote storage space.
- The instructions configure the device to display the remote storage space to the user.
- The instructions configure the device to couple with the first server to perform a requested operation, such as storing data.
- The storing operation comprises downloading a file from a second server into the remote storage space by "utilizing information for the file cached in the cache storage in the wireless device."
- The complaint reserves the right to assert additional claims (Compl. ¶32 n.2).
Multi-Patent Capsule: U.S. Patent No. 7,870,225
- Patent Identification: U.S. Patent No. 7,870,225, “Disk System Adapted To Be Directly Attached To Network,” issued January 11, 2011.
- Technology Synopsis: The patent discloses a network-attached disk (NAD) system where a special device driver on a host computer creates a "virtual host bus adapter." This makes a remote, networked disk drive appear to the host's operating system as if it were a physically connected local disk, enabling direct block-level access over a network without relying on a higher-level network file system. (’225 Patent, Abstract).
- Asserted Claims: Independent claim 1 is asserted (Compl. ¶50).
- Accused Features: The complaint alleges that systems including HP Inc Laptops (e.g., HP Envy x360 Laptop) used with cloud services like Microsoft Corp OneDrive infringe the patent (Compl. ¶¶47, 49).
Multi-Patent Capsule: U.S. Patent No. 8,694,590
- Patent Identification: U.S. Patent No. 8,694,590, “Method And System For Formatting Messages Into Stylized Messages For Print Out,” issued April 8, 2014.
- Technology Synopsis: The patent describes a service that receives digital messages (e.g., emails), parses their content (text, title, images), and automatically formats them into stylized, printer-friendly templates. These templates can include themed stationery, calendars, or to-do lists, which are then sent to a designated printer, targeting users who may not operate a computer directly. (’590 Patent, Abstract).
- Asserted Claims: Independent claim 1 is asserted (Compl. ¶65).
- Accused Features: The complaint identifies the "HP Printer Skill which is enabled on Amazon's Alexa device/service" as an infringing instrumentality (Compl. ¶64).
III. The Accused Instrumentality
- Product Identification: The complaint names two categories of accused instrumentalities:
- HP Laptops, 2-in-1s, and Desktops that use "Cloud Services," with Microsoft OneDrive cited as a specific example (Compl. ¶15, 31). The "HP 14" Laptop" and "HP Envy x360 Laptop" are identified as representative products (Compl. ¶¶15, 47).
- The "HP Printer Skill" which is enabled on Amazon's Alexa device/service (Compl. ¶64).
- Functionality and Market Context:
- The complaint alleges that HP markets its notebook computers as being "intended for use with cloud storage" for "optimal performance" (Compl. ¶¶21, 37). The complaint includes a screenshot from an HP customer support webpage that instructs users on "Freeing up space using the cloud (online storage)" by moving files to Microsoft OneDrive (Compl. ¶¶21, 37, 54). This visual evidence shows HP's own material encouraging the use of third-party cloud services to supplement local storage (Compl. ¶21).
- The complaint alleges the HP Printer Skill for Amazon Alexa allows users to use the voice-activated service to interact with HP printers, which is accused of infringing the ’590 Patent’s message formatting technology (Compl. ¶64).
IV. Analysis of Infringement Allegations
'526 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a storage space of a predefined capacity assigned exclusively to a user of the wireless device by a storage server | HP Laptops use cloud services like Microsoft OneDrive, which provides users with an exclusive storage account. | ¶15 | col. 2:44-47 |
| couple with the storage server across the wireless link to carry out a requested operation for remote access... comprising storing a data object therein or retrieving a data object therefrom | HP Laptops, using cloud services, allow users to store and retrieve files from their online storage account. | ¶15 | col. 4:42-55 |
| the storing of a data object including to download a file from a remote server across a network into the assigned storage space | HP Laptops using Cloud Services are alleged to perform this function. | ¶15 | col. 4:2-9 |
| through utilizing download information for the file stored in said cache storage in response to the user from the wireless device performed the operation for downloading the file | The HP Laptop is alleged to satisfy this limitation when using Cloud Services. | ¶16 | col. 4:10-27 |
'254 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| establishing a communication link for accessing the remote storage space served by a first server | HP Laptops connect to cloud services like Microsoft OneDrive (the alleged "first server"). | ¶31 | col. 6:8-10 |
| displaying the remote storage space upon receiving information of the remote storage space from the first server | The operating system on HP Laptops displays the cloud storage (e.g., as a folder in File Explorer) to the user. | ¶34 | col. 6:11-14 |
| the storing data comprising to download a file from a second server across a network into the remote storage space | HP Laptops, when using Cloud Services, are alleged to perform this download function. | ¶31 | col. 6:22-26 |
| through utilizing information for the file cached in the cache storage in the wireless device. | The HP Laptop is alleged to satisfy this limitation when a user directs a file to be saved to their cloud storage. | ¶32 | col. 6:26-29 |
- Identified Points of Contention:
- Technical Questions: The core allegations for the ’526 and ’254 patents center on a specific method of "out-of-band" downloading. A key technical question is whether the complaint provides evidence that the accused HP products actually perform this method. The provided screenshot shows a user moving local files to the cloud, which may not map to the claimed process of using cached information on the wireless device to instruct a first server to download a file from a second server (Compl. ¶21). The court may need to determine if the general use of a "save to cloud" browser extension or OS integration meets the specific "utilizing information... cached in the cache storage" limitation.
- Scope Questions: The infringement theory relies on HP products using third-party "Cloud Services" like Microsoft OneDrive. This raises the question of whether a user's account on a multi-tenant, public cloud platform constitutes a "storage space... assigned exclusively to a user" as contemplated by the patents, which describe partitioning a specific server's storage system (’526 Patent, col. 2:41-44). Another scope question is the extent to which actions performed by a third-party service (OneDrive) can be attributed to HP for direct infringement liability.
V. Key Claim Terms for Construction
The Term: "storage space... assigned exclusively to a user" (’526 Patent, Claim 1; ’254 Patent, Abstract)
Context and Importance: This term is fundamental to the infringement case against HP's laptops and desktops. The dispute may turn on whether a standard user account on a massive, multi-tenant public cloud service like Microsoft OneDrive, which hosts data for millions of users, meets the "exclusively assigned" limitation. Practitioners may focus on this term because the patents' original context of partitioning a single server for a set number of users appears technically distinct from modern cloud architecture.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification discusses providing each user with a storage volume of a certain size (e.g., 4 GB), which a server "can support" for a total number of users (e.g., 1024 users) (’254 Patent, col. 2:46-51). This could be argued to describe the functional outcome of a cloud service, where each user is allocated a specific quota of storage, regardless of the underlying hardware architecture.
- Evidence for a Narrower Interpretation: The detailed description repeatedly refers to a "server unit" partitioning "its storage system" into volumes, with a direct link between the physical disk capacity of that server and the number of users it can support (’254 Patent, col. 2:41-51). Figure 2 depicts a single server (3) connected to a single storage system (10) that is partitioned for multiple users, which may support a narrower construction tied to a more direct allocation of physical or logically partitioned hardware.
The Term: "download a file from a second server... through utilizing information for the file cached in the cache storage in the wireless device" (’254 Patent, Claim 1)
Context and Importance: This limitation defines the specific technical mechanism for the "out-of-band" download. Infringement requires showing not just that a file is downloaded to the cloud, but that it happens via this specific process. The complaint lacks detailed allegations on this point, making its construction critical.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent describes a general sequence where the user's web browser obtains a web page containing the "IP address of the remote web site and the data name," which is then obtained by other software on the wireless device and sent to the storage server to initiate the download (’254 Patent, col. 5:11-24). This could be argued to broadly cover any process where a link or URL is captured on the client device and used to trigger a server-side download.
- Evidence for a Narrower Interpretation: The claim language requires "utilizing information for the file cached in the cache storage in the wireless device." This could be construed narrowly to require that the specific data structure held in the device's cache is what is transmitted and used by the server. This might exclude, for example, a system where a browser extension re-requests the download URL from the remote site on behalf of the cloud server, rather than forwarding the originally cached information.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that HP actively induces infringement by providing "user guides, installation or instruction manuals," advertising, and customer support that instruct and encourage users to use HP products with cloud services in an infringing manner (Compl. ¶¶24, 40, 57, 70). The allegation is supported by the screenshot from HP's support website explicitly recommending the use of cloud storage (Compl. ¶¶21, 37, 54).
- Willful Infringement: The complaint alleges willful infringement for all four patents-in-suit. The basis for this allegation is Defendant's alleged pre-suit knowledge, stemming from a notice letter Plaintiff sent to HP in June 2019 that identified the patents and the accused products (Compl. ¶¶22, 38, 55, 68).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central evidentiary question will be one of technical mechanism: does the complaint provide, or can discovery reveal, evidence that HP's products, when used with third-party cloud services, perform the specific "out-of-band" download process recited in the ’526 and ’254 patents? The case may turn on whether the accused functionality is merely a "save to cloud" feature or if it truly mirrors the claimed method of using information cached on the wireless device to direct a server-side download from another remote server.
- A core issue for the court will be one of claim scope: can the term "storage space... assigned exclusively to a user," rooted in the patent's disclosure of partitioning a single server's disk, be construed to cover a user's account within a modern, virtualized, multi-tenant cloud computing environment like Microsoft OneDrive?
- A dispositive procedural question surrounds the viability of the '526 patent claims: given that all asserted claims of the lead '526 patent were cancelled in inter partes review proceedings after the complaint was filed, the court will have to address the continued justiciability of that count of the complaint.