DCT
1:20-cv-00665
Uniloc 2017 LLC v. Blackboard Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Uniloc USA, Inc. (Texas) and Uniloc Luxembourg, S.A. (Luxembourg)
- Defendant: Blackboard, Inc. (Delaware)
- Plaintiff’s Counsel: Prince Lobel Tye LLP; Nelson Bumgardner PC
- Case Identification: 1:17-cv-00753, W.D. Tex., 08/11/2017
- Venue Allegations: Plaintiff alleges venue is proper in the Western District of Texas because Defendant maintains a regular and established place of business in Austin, Texas.
- Core Dispute: Plaintiff alleges that Defendant’s educational software platform, including its Software-as-a-Service (SaaS) offerings, infringes three patents related to the network-based management, configuration, and distribution of application programs.
- Technical Context: The technology relates to client-server architectures for managing and deploying software applications, allowing for centralized control and user-specific customization in a networked environment.
- Key Procedural History: The complaint alleges that Defendant has been on notice of infringement since at least August 18, 2016, the date a prior complaint was served in the Eastern District of Texas. U.S. Patent No. 6,510,466, one of the patents-in-suit, was the subject of an inter partes review (IPR2017-01315) where several claims were cancelled, but other claims now asserted in this litigation were found patentable.
Case Timeline
| Date | Event |
|---|---|
| 1998-12-14 | Earliest Priority Date for ’578, ’293, and ’466 Patents |
| 2001-11-27 | U.S. Patent No. 6,324,578 Issues |
| 2003-01-21 | U.S. Patent No. 6,510,466 Issues |
| 2006-06-27 | U.S. Patent No. 7,069,293 Issues |
| 2016-08-18 | Notice of infringement alleged via service of prior E.D. Tex. complaint |
| 2017-04-24 | IPR petition filed against the ’466 Patent |
| 2017-08-11 | Complaint Filing Date |
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 November 27, 2001
The Invention Explained
- Problem Addressed: The patent describes the difficulty of managing software applications in complex, heterogeneous computer networks where users may "roam" between different client workstations, each with its own hardware and software characteristics (’578 Patent, col. 1:45-57, col. 2:5-20). This environment makes it difficult to maintain consistent user experiences and centralized administrative control.
- The Patented Solution: The invention proposes a system where each application is managed by two distinct programs: a "configuration manager" for administrators and an "application launcher" for end-users (’578 Patent, col. 4:50-55). An administrator uses the manager program to set system-wide preferences, while a user employs the launcher program to run the application and set their own personal preferences. When a user requests an application, the server combines the administrator-set and user-set preferences to execute a customized instance of the program (’578 Patent, col. 4:8-19, Abstract).
- Technical Importance: This approach aimed to provide user mobility and centralized control, allowing user-specific settings to follow the user across different devices while preserving an administrator's ability to enforce policies on a network-wide basis (’578 Patent, col. 6:1-9).
Key Claims at a Glance
- The complaint asserts independent claims 1 (method), 16 (system), and 32 (computer program product), among others (Compl. ¶31).
- The essential elements of independent claim 1 include:
- installing an application program on a server, where the program has configurable preferences and authorized users;
- distributing an "application launcher program" to a client;
- obtaining a "user set" of configurable preferences from an authorized user executing the launcher;
- obtaining an "administrator set" of configurable preferences from an administrator; and
- executing the application program using both the user and administrator sets in response to a user request.
- Plaintiff reserves the right to assert all claims from 1-8, 10-11, 13-39, and 41-46 (Compl. ¶31).
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 June 27, 2006
The Invention Explained
- Problem Addressed: The patent addresses the challenge of deploying software from a central management server to multiple, potentially different, "on-demand" servers in a large network (’293 Patent, col. 13:28-34, col. 18:19-25).
- The Patented Solution: The invention describes a method for creating and distributing a "file packet." A central network management server specifies source and target directories and prepares the packet, which includes a special "segment configured to initiate registration operations" for the application on the target server (’293 Patent, col. 22:25-33). This segment allows the target on-demand server to automatically install and register the new application, making it available to its local clients (’293 Patent, col. 21:39-47).
- Technical Importance: This system was designed to automate and centralize the process of software distribution and updates across a large, distributed server infrastructure, reducing the need for manual intervention at each target server location (’293 Patent, col. 18:26-34).
Key Claims at a Glance
- The complaint asserts independent claims 1 (method), 12 (system), and 17 (computer program product) (Compl. ¶42).
- The essential elements of independent claim 1 include:
- providing an application program to a centralized network management server;
- specifying source and target directories for distribution;
- preparing a "file packet" associated with the program, which includes a segment to "initiate registration operations" at the target; and
- distributing the file packet to the "target on-demand server" to make the program available for use.
- The complaint does not explicitly reserve the right to assert additional claims.
U.S. Patent No. 6,510,466 - "METHODS, SYSTEMS AND COMPUTER PROGRAM PRODUCTS FOR CENTRALIZED MANAGEMENT OF APPLICATION PROGRAMS ON A NETWORK," issued January 21, 2003
Technology Synopsis
This patent focuses on the user-facing side of a centralized application management system. It describes a server receiving a login request, establishing a "user desktop" interface that displays icons for authorized applications, and then providing an instance of a selected application to the client for execution (’466 Patent, Abstract). The invention enables user mobility by providing a consistent, permission-based desktop regardless of the client device used (’466 Patent, col. 3:9-14).
Asserted Claims
Claims 15-20, 22-24, 28-33, 35-37, and 41-42 are asserted (Compl. ¶53). Independent claims include 15 (system) and 16 (computer program product).
Accused Features
The complaint alleges that Blackboard's system infringes by allowing for installing applications on a server, receiving a login request, establishing a user desktop, and providing a program for execution upon user selection (Compl. ¶53).
III. The Accused Instrumentality
Product Identification
The "Blackboard software distribution and management system," which includes products and services such as Blackboard Learn, Blackboard Analytics, and Blackboard Collaborate (Compl. ¶11-13, ¶31).
Functionality and Market Context
- The accused system is described as a learning management platform delivered via a Software-as-a-Service (SaaS) model, where the platform is "hosted, delivered, and managed using... state-of-the-art cloud-computing infrastructure" (Compl. ¶16).
- A screenshot provided in the complaint depicts a client-server flow diagram where a client requests information, the server receives and processes the request, and sends a response back to the client, illustrating the basic accused architecture (Compl. ¶14).
- Users, such as students and instructors, log into the system to access course content, collaborative tools, and analytics dashboards (Compl. ¶12, ¶23). The complaint includes a screenshot of the Blackboard login screen, which is central to the user authentication process (Compl. ¶23).
- The complaint alleges the system functions as a platform for distributing and managing applications, such as through the integration of third-party "SCORM-compliant content" and "Blackboard e-Packs" (Compl. ¶20-21).
IV. Analysis of Infringement Allegations
’578 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| installing an application program having a plurality of configurable preferences and a plurality of authorized users on a server coupled to the network; | Blackboard's backend server architecture allegedly allows for installing application programs (e.g., Blackboard Learn, Collaborate) which have configurable preferences and are accessible only to authorized users (e.g., students, instructors). | ¶31 | col. 9:25-30 |
| distributing an application launcher program associated with the application program to a client coupled to the network; | The Blackboard system allegedly distributes a launcher program (e.g., the Blackboard App or web interface) to user devices (clients) that allows access to the applications on the server. | ¶31 | col. 8:21-23 |
| obtaining a user set of the plurality of configurable preferences associated with one of the plurality of authorized users executing the application launcher program; | A user allegedly sets configurable preferences after logging into the Blackboard system through the launcher program. | ¶31 | col. 8:56-60 |
| obtaining an administrator set of the plurality of configurable preferences from an administrator; and | An administrator allegedly sets a separate set of configurable preferences for the applications, controlling system-wide settings. | ¶31 | col. 8:61-65 |
| executing the application program using the obtained user set and the obtained administrator set...responsive to a request from the one of the plurality of authorized users. | The Blackboard system allegedly executes an application for a user by combining the user's preferences with the administrator's preferences after the user requests it through the launcher. | ¶31 | col. 10:30-46 |
Identified Points of Contention
- Scope Questions: A central question is whether the web-based interface and mobile app for the Blackboard learning platform, which provide access to various educational tools and content, meet the definition of an "application launcher program" as described in the patent. The defense may argue that this term implies a system for launching distinct, general-purpose software, not integrated components of a single SaaS platform.
- Technical Questions: The complaint alleges the system uses separate "user" and "administrator" sets of preferences. A key factual question will be whether Blackboard’s system architecture actually maintains and applies two distinct sets of preferences (one for the end-user, one for the administrator) in the manner required by the claim when executing a function.
’293 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| providing an application program to be distributed to a centralized network management server; | Blackboard allegedly provides its application programs (e.g., updates, new features) to its own centralized cloud management infrastructure for distribution. | ¶42 | col. 18:45-51 |
| specifying a source directory and a target directory for distribution of the application program; | Blackboard allegedly specifies source locations for its software and target locations within its SaaS infrastructure (i.e., specific servers or server clusters) for deployment. | ¶42 | col. 18:35-41 |
| preparing a file packet associated with the application program and including a segment configured to initiate registration operations for the application program at the target on-demand server; and | Blackboard allegedly prepares software updates or modules as "file packets" that include scripts or code ("a segment") to automatically install and register the new functionality on the target servers within its cloud environment. | ¶42 | col. 22:25-33 |
| distributing the file packet to the target on-demand server to make the program available for use by a client user. | Blackboard allegedly distributes these packets to its cloud servers ("target on-demand server"), which makes the new features or applications available to end-users on their client devices. The complaint points to Blackboard's SaaS deployment model. | ¶16, ¶42 | col. 18:51-54 |
Identified Points of Contention
- Scope Questions: Does Blackboard’s internal cloud/SaaS infrastructure, which hosts its learning platform, constitute a "centralized network management server" distributing to a "target on-demand server" in the manner contemplated by the patent? The defense may argue the patent describes distribution between distinct administrative entities, not internal software deployment within a single, integrated cloud service.
- Technical Questions: What evidence does the complaint provide that Blackboard's software updates are structured as a "file packet" containing a specific "segment configured to initiate registration"? This is a highly technical element, and infringement will depend on the specific mechanisms of Blackboard's internal deployment and continuous integration/continuous delivery (CI/CD) pipeline.
V. Key Claim Terms for Construction
’578 Patent
The Term: "application launcher program"
- Context and Importance: This term is the core of the user-facing component of the invention. Its construction will determine whether the web portals and mobile apps of modern SaaS platforms like Blackboard fall within the claim scope. Practitioners may focus on this term because the patent was written before the widespread adoption of SaaS and integrated web platforms, and its examples focus on launching distinct applications.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the launcher as providing a "user interface to execute the application program itself" (’578 Patent, col. 4:63-65). This could be argued to cover any interface, including a web page or app, that allows a user to initiate a function.
- Evidence for a Narrower Interpretation: The specification discusses displaying an "icon" on the client screen to initiate execution and describes the launcher as a distinct program distributed to clients, which may suggest a more traditional desktop application model rather than a web-based portal (’578 Patent, col. 4:1-3, col. 8:21-23). The examples also reference specific applets like a "terminal emulator" as the application being launched (’578 Patent, col. 9:14-15).
’293 Patent
The Term: "target on-demand server"
- Context and Importance: The infringement theory depends on mapping Blackboard's cloud infrastructure to the patent's "target on-demand server." The definition of this term will be critical to determining if the patent applies to modern, internally managed SaaS environments.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification defines "on-demand" as "a server delivering applications as needed responsive to user requests" (’293 Patent, col. 10:51-53). This functional definition could be argued to read on any server in a cloud environment that serves application components to users.
- Evidence for a Narrower Interpretation: The patent's architecture diagram (Fig. 1) shows a central "Network Management Server (20)" distributing to separate "on-demand servers (22, 22')" which in turn serve distinct groups of clients. This may suggest that the "target on-demand server" is a discrete, intermediate entity in a distribution chain, rather than a component of a monolithic cloud platform.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement for all three patents. The basis for inducement is the allegation that Blackboard instructs its customers on how to use the infringing system through materials like its website, help pages, and YouTube channel (Compl. ¶33, ¶44, ¶55). Contributory infringement is alleged on the basis that the Blackboard system is a material part of the invention and not a staple article of commerce (Compl. ¶35, ¶46, ¶57).
- Willful Infringement: Willfulness is alleged for all three patents based on Blackboard having received notice of infringement "at the latest, the service of the original complaint filed in the Eastern District of Texas on August 18, 2016" (Compl. ¶36, ¶47, ¶58). The complaint alleges that any infringement after this date has been willful.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope and technological evolution: Can claim terms drafted in the late 1990s for managing discrete, client-server applications (e.g., "application launcher program", "file packet") be construed to cover the integrated features and internal deployment mechanisms of a modern, cloud-native SaaS platform?
- A second central question will be one of architectural correspondence: Does the Blackboard system, as a factual matter, operate using the specific two-part preference structure (distinct "user set" and "administrator set") required by the ’578 Patent, or the specific distribution hierarchy ("centralized management server" to "target on-demand server") claimed in the ’293 Patent?
- Finally, a key legal and procedural question will revolve around the impact of the IPR for the ’466 Patent: How will the Patent Office’s finding that certain claims are patentable, while others are not, influence claim construction and validity arguments for not only the ’466 Patent but also its closely related family members, the ’578 and ’293 patents?