Blackboard Inc v. Uniloc 2017 LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Blackboard Inc. (Delaware)
  • Defendant: Uniloc 2017 LLC (Delaware)
  • Plaintiff’s Counsel: McDermott Will & Emery LLP
• Case Identification: 1:19-cv-02073, D. Del., 10/31/2019
• Venue Allegations: Venue is alleged to be proper in the District of Delaware because the defendant, Uniloc 2017 LLC, is a Delaware entity and therefore resides in the district.
• Core Dispute: Plaintiff seeks a declaratory judgment that it does not infringe Defendant's patents related to the management and distribution of configurable software applications over a network.
• Technical Context: The technology concerns centralized, server-based systems for deploying software to client computers and managing user-specific preferences and access rights in a networked environment.
• Key Procedural History: The complaint notes extensive prior litigation involving the same parties and patents. An earlier case was filed by other Uniloc entities in the Eastern District of Texas, voluntarily dismissed, and re-filed in the Western District of Texas. The complaint alleges the patents-in-suit were assigned to the current defendant, Uniloc 2017 LLC, in May 2018, and asserts that a claim construction order from the E.D. Tex. case precludes a good faith infringement claim.

Case Timeline

Date	Event
1998-12-14	Earliest Priority Date ('578 and '293 Patents)
2001-11-27	'578 Patent Issued
2006-06-27	'293 Patent Issued
2016-01-01	Prior litigation filed by other Uniloc entities in E.D. Tex.
2017-01-01	Prior litigation dismissed and re-filed in W.D. Tex.
2018-05-01	Patents-in-suit allegedly assigned to Defendant Uniloc 2017 LLC
2019-10-31	Complaint for Declaratory Judgment Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 6,324,578 - “Methods, Systems and Computer Program Products for Management of Configurable Application Programs on a Network” (Issued Nov. 27, 2001)

The Invention Explained

• Problem Addressed: The patent describes the difficulty of managing software applications, user preferences, and licenses in modern distributed computing environments, especially heterogeneous networks where users access applications from different types of client workstations (Compl., Ex. A, '578 Patent, col. 1:45-57). Traditional approaches made it difficult to provide a consistent user experience and maintain centralized administrative control (Compl., Ex. A, '578 Patent, col. 2:11-24).
• The Patented Solution: The invention proposes a system using two distinct program files for each managed application: a "configuration manager" program used by an administrator to set non-user-configurable preferences, and an "application launcher" program distributed to clients (Compl., Ex. A, '578 Patent, col. 4:51-68). The launcher allows a user to initiate the application and specify their own preferences, which are then combined with the administrator-set preferences to execute the program, enabling user-specific configurations to be managed centrally by a server (Compl., Ex. A, '578 Patent, Abstract).
• Technical Importance: This approach provided a framework for centralized control over both software deployment and user personalization in complex client-server networks, addressing the challenges of user mobility and hardware diversity (Compl., Ex. A, '578 Patent, col. 6:1-9).

Key Claims at a Glance

• The complaint seeks a declaratory judgment of non-infringement of "one or more claims" of the '578 patent but does not specify which claims (Compl. ¶15). Independent claim 1 is representative of the core invention.
• Essential elements of Independent Claim 1 (Method):
  • installing an application program having configurable preferences and authorized users on a server;
  • distributing an application launcher program to a client;
  • obtaining a "user set" of preferences from a user executing the launcher;
  • obtaining an "administrator set" of preferences from an administrator; and
  • executing the application program using both the user and administrator sets of preferences in response to a user request.

U.S. Patent No. 7,069,293 - “Methods, Systems and Computer Program Products for Distribution of Application Programs to a Target Station on a Network” (Issued Jun. 27, 2006)

The Invention Explained

• Problem Addressed: Arising from the same work as the '578 patent, the '293 patent addresses the challenges of centralized software distribution and installation from a network management server to multiple, potentially diverse, target stations (Compl., Ex. B, '293 Patent, col. 1:47-60). The goal is to automate the deployment process from a single control point (Compl., Ex. B, '293 Patent, col. 3:35-40).
• The Patented Solution: The invention claims a method where a central server prepares and distributes a "file packet" to a target on-demand server (Compl., Ex. B, '293 Patent, Abstract). This packet includes a specific "segment configured to initiate registration operations" at the target, which automates the process of making the new software available to users of that target server (Compl., Ex. B, '293 Patent, col. 5:37-48). The registration may involve updating a profile management list on the target server (Compl., Ex. B, '293 Patent, col. 22:50-54).
• Technical Importance: The invention describes a method for end-to-end, automated software deployment and registration in a managed network environment, reducing the need for manual administrative tasks at each target server location (Compl., Ex. B, '293 Patent, col. 18:30-38).

Key Claims at a Glance

• The complaint seeks a declaratory judgment of non-infringement of "one or more claims" of the '293 patent but does not specify which claims (Compl. ¶19). Independent claim 1 is representative.
• Essential elements of Independent Claim 1 (Method):
  • providing an application program to a centralized network management server;
  • specifying a source and target directory for distribution;
  • preparing a file packet that includes a "segment configured to initiate registration operations" at the target on-demand server; and
  • distributing the file packet to the target on-demand server to make the application available for use.

III. The Accused Instrumentality

The complaint, being an action for declaratory judgment of non-infringement, does not identify a specific accused product, method, or service. It makes a general assertion that "Blackboard has not infringed one or more claims" of the patents-in-suit (Compl. ¶¶15, 19).

IV. Analysis of Infringement Allegations

As this is a complaint for a declaratory judgment of non-infringement, it does not set forth infringement allegations. Instead, it asserts that Blackboard has not infringed one or more claims of the '578 and '293 patents (Compl. ¶¶15, 19). The complaint's primary contention is that, based on a prior, "final non-appealable claim construction order by the Eastern District of Texas, there can be no good faith basis for a claim that Blackboard infringes the patents-in-suit" (Compl. ¶12). The complaint does not provide specific technical mappings or arguments regarding how its products avoid infringement.

No probative visual evidence provided in complaint.

• Identified Points of Contention:
  • Procedural Question: A threshold question is what legal effect, if any, the prior claim construction from the Eastern District of Texas litigation has on the current case (Compl. ¶12).
  • Standing Question: The complaint raises the question of whether Uniloc 2017 LLC has standing to pursue infringement claims, pointing to a complex litigation and patent assignment history (Compl. ¶¶9-11).
  • Technical Question: The complaint does not provide sufficient detail for analysis of technical points of contention. The central technical dispute, once reached, will likely involve comparing the functionality of Blackboard's systems against the court's construction of the patent claims.

V. Key Claim Terms for Construction

The complaint does not identify specific claim terms for construction, but it heavily relies on the outcome of a prior claim construction proceeding (Compl. ¶12). Based on the technology, the following terms from the independent claims are likely to be central to the dispute.

For the ’578 Patent:

• The Term: "application launcher program"
• Context and Importance: This term defines one of the two core software components of the claimed system. Its construction is critical because it dictates the type of client-side software that could be found to infringe. Practitioners may focus on this term to determine if it is limited to the specific embodiments described or covers a broader class of client-side application agents.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification suggests the launcher can be a minimal piece of code, such as a JAVA™ applet, that is populated on-demand, potentially covering a wide range of modern software clients. It may "only contain code required to obtain user preferences and/or license information and the application program’s executable code from the server on-demand" (Compl., Ex. A, '578 Patent, col. 11:32-39).
  • Evidence for a Narrower Interpretation: The detailed description and figures tie the launcher to a specific sequence of operations, including displaying an icon, obtaining a user ID, and providing a request to the server, which could support a more limited definition (Compl., Ex. A, '578 Patent, Fig. 4; col. 4:1-5).

For the ’293 Patent:

• The Term: "segment configured to initiate registration operations"
• Context and Importance: This term defines the key active component within the distributed "file packet." The scope of "registration operations" will determine what kinds of automated installation or configuration scripts fall within the claim.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The patent describes the outcome of registration as making the program "available for use by a user at a client," which could be interpreted broadly to include any set of actions that achieves this result (Compl., Ex. B, '293 Patent, col. 22:34-36).
  • Evidence for a Narrower Interpretation: The patent provides a specific example of the segment as an "import data file and a call to an import program," such as a "PMImport command script" within a Tivoli™ network management environment, which could be used to argue for a narrower construction limited to more structured, command-based registration processes (Compl., Ex. B, '293 Patent, col. 22:40-44, col. 19:23-31).

VI. Other Allegations

• Exceptional Case: Blackboard requests that the Court find the case "exceptional under 35 U.S.C. § 285 and award Blackboard its attorneys' fees and costs" (Compl. p. 4, ¶c). The complaint does not state an explicit basis for this request, but it may relate to the extensive litigation history and the allegation that Uniloc's infringement contention lacks a good faith basis (Compl. ¶¶9-12).

VII. Analyst’s Conclusion: Key Questions for the Case

1. Procedural Preclusion and Standing: A threshold issue for the court will be to determine the procedural posture of the case, including whether Uniloc 2017 LLC has standing to enforce the patents and what preclusive or persuasive effect the prior litigation history, particularly the claim construction from the Eastern District of Texas, will have on this action.
2. Definitional Scope: The substantive dispute will likely center on whether Blackboard’s products practice the claims as construed by the court. This will turn on key definitional questions, such as whether Blackboard's software distribution and management tools contain an "application launcher program" and a "segment configured to initiate registration operations" as those terms are ultimately defined.