DCT
1:19-cv-11177
Via Tech Inc v. Adobe Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: ViaTech Technologies, Inc. (Delaware)
- Defendant: Adobe Inc. (Delaware)
- Plaintiff’s Counsel: Hamilton, Brook, Smith & Reynolds, P.C.
- Case Identification: 1:19-cv-11177, D. Mass., 05/24/2019
- Venue Allegations: Plaintiff alleges venue is proper because Defendant has committed acts of infringement in the District of Massachusetts and maintains a regular and established place of business there, including offices in Newton and Cambridge.
- Core Dispute: Plaintiff alleges that Defendant’s software activation and digital rights management (DRM) technologies infringe a patent related to methods for controlling the licensed use of digital content files.
- Technical Context: The technology at issue falls within the domain of digital rights management and software licensing, a field critical for protecting and monetizing software and digital media in an era of internet-based distribution.
- Key Procedural History: The complaint alleges a history of pre-suit knowledge by the Defendant. Plaintiff states it sent a notice letter with exemplary claim charts to Adobe on April 10, 2015. Furthermore, the complaint alleges that Adobe was aware of the patent-in-suit as early as 2011, as it was cited by Adobe or by the USPTO during the prosecution of at least three of Adobe's own patent applications related to similar technologies.
Case Timeline
| Date | Event |
|---|---|
| 1999-04-07 | ’567 Patent Priority Date |
| 2005-07-19 | ’567 Patent Issue Date |
| 2011-01-18 | ’567 Patent disclosed by Adobe in its own patent prosecution, per complaint |
| 2015-04-10 | Plaintiff sent notice letter to Defendant, per complaint |
| 2019-05-24 | Complaint Filing Date |
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"
The Invention Explained
- Problem Addressed: The patent’s background section describes the difficulty of controlling the use of licensed digital content after distribution, noting that prior art solutions were often inflexible, easily bypassed, or relied on separate, independent programs to enforce licensing, which lacked a robust functional relationship to the licensed content itself (’567 Patent, col. 1:25-33; col. 2:11-18).
- The Patented Solution: The invention discloses a "digital content file" that integrates the enforcement mechanism within the file itself. This is achieved by embedding a "file access control mechanism" (FACM) and an associated "dynamic license database" (Dldb) directly with the digital content. This FACM is designed to be an integral component that controls access based on the rules stored in the local license database, which can be updated through communication with external systems, creating a self-policing digital file. (’567 Patent, Abstract; col. 10:25-48).
- Technical Importance: This approach of embedding the license control mechanism directly into the digital file aimed to create a more secure and portable form of DRM that travels with the content, making enforcement independent of the distribution method and less vulnerable to tampering than systems relying on separate enforcement applications (Compl. ¶12; ’567 Patent, col. 10:9-24).
Key Claims at a Glance
- The complaint asserts infringement of one or more claims, with a focus on independent claim 1 (Compl. ¶49, ¶64).
- The essential elements of independent claim 1 include:
- A digital content file comprising a digital content and an embedded file access control mechanism.
- The embedded file access control mechanism includes a license functions mechanism, which in turn includes:
- A license monitor and control mechanism that communicates with a dynamic license database to monitor usage.
- A license control utility that provides for communication with an external system and includes a graphical user interface.
- The embedded file access control mechanism also includes the dynamic license database, which is associated with the digital content file and stores information controlling access.
- The complaint notes that prior notice letters accused infringement of additional claims, including dependent claims, suggesting Plaintiff may reserve the right to assert them later in the litigation (Compl. ¶¶ 38-39).
III. The Accused Instrumentality
Product Identification
- The complaint accuses two primary technology platforms: (1) "Adobe Software Activation Technologies" and (2) "Adobe Access" and its related DRM technologies, including Adobe Primetime (Compl. ¶20). These technologies are allegedly incorporated into numerous Adobe products, including the Adobe Creative Cloud, Document Cloud, Acrobat, and Creative Suite families of software (Compl. ¶50).
Functionality and Market Context
- The complaint alleges that Adobe’s Software Activation technology is a required process for its software to function, designed to validate a user's license and prevent piracy (Compl. ¶¶ 21, 23). This system allegedly includes an embedded access control component, the "Adobe AMT Library" (e.g., "amtlib.dll"), and stores license information locally (e.g., in the Windows Credential Storage or MacOS Keychain) to permit offline use for a defined grace period, demonstrating local license control (Compl. ¶¶ 24, 26, 51-52).
- The complaint describes Adobe Access as a DRM platform that allows content owners to protect and control the distribution of digital media like video and audio (Compl. ¶¶ 27-28). It allegedly works by creating licenses bound to a specific machine identity via a process called "individualization," with license information stored locally on the user's device in a "machine certificate" to enforce usage rules such as rental periods (Compl. ¶¶ 29, 34).
IV. Analysis of Infringement Allegations
The complaint outlines its infringement theory in two separate counts against the '567 patent, one for each accused technology. The following chart summarizes the allegations for Adobe's Software Activation technology against the elements of claim 1.
6,920,567 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A digital content file... | Adobe Product files, such as application installers and the installed applications themselves, which run on Windows or MacOS. | ¶50 | col. 3:56-61 |
| an embedded file access control mechanism embedded in the digital content file... | A combination of DLLs and services, including the Adobe AMT Library (e.g., "amtlib.dll"), which is described as an embedded file access control mechanism. | ¶¶ 26, 51 | col. 4:1-5 |
| a license monitor and control mechanism communicating with a dynamic license database and monitoring use of the digital content... | A mechanism within the Adobe Product files that communicates with a local license database to determine if use complies with the license, particularly to enable offline functionality. | ¶52 | col. 4:5-9 |
| a license control utility provides communications between a user system and an external system... | The Adobe AMT Library, which allegedly provides for communications with external Adobe licensing and activation servers. | ¶53 | col. 4:9-14 |
| ...including a graphical user interface associated with the license control utility... | Dialog boxes prompting users to "Sign In Required," notifications regarding trial periods, and interface elements in the Help menu or the Creative Cloud desktop application. | ¶54 | col. 4:11-14 |
| the dynamic license database... associated with the digital content file for storing information controlling operations... | The Windows Credential Storage or MacOS Keychain, and/or local files in SLStore and SLCache directories, which are alleged to store license information for the Adobe Product files. | ¶¶ 52, 55 | col. 10:37-44 |
- Identified Points of Contention:
- Scope Questions: A central question may be whether the term "embedded file access control mechanism" can be construed to cover a system where the alleged control mechanism is a separate library file ("amtlib.dll") and the alleged database is a general-purpose operating system feature (e.g., MacOS Keychain), as opposed to a single, structurally unified file wrapper as depicted in some patent embodiments.
- Technical Questions: The analysis may focus on whether the "Adobe AMT Library" actually performs the distinct functions of both the "license monitor and control mechanism" and the "license control utility" as described in the patent. Similarly, a question arises as to whether an OS-level keychain functions as a "dynamic license database associated with the digital content file" in the integrated manner required by the claim.
No probative visual evidence provided in complaint.
V. Key Claim Terms for Construction
The Term: "embedded file access control mechanism"
Context and Importance: The construction of "embedded" will be critical to the infringement analysis. Its definition will determine the required degree of integration between the content and the control mechanism. Practitioners may focus on this term because it distinguishes the invention from prior art systems that used separate, loosely coupled enforcement programs.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent repeatedly describes the mechanism as "integral" and "functionally embedded," which could support an interpretation where functional inseparability, rather than structural unity in a single file, is the key requirement (’567 Patent, col. 10:30-31; col. 13:49-50). The abstract also describes a "digital content file including a license control mechanism," which can be read as a functional combination.
- Evidence for a Narrower Interpretation: Figures like 1B illustrate a specific process of extracting critical code from an executable and inserting it into a "Wrapper Dll," suggesting a specific structural implementation where the mechanism and content are re-compiled into a new, unified structure (’567 Patent, col. 16:6-25, Fig. 1B). This could support a narrower, more structural definition of "embedded."
The Term: "dynamic license database"
Context and Importance: This term's construction is crucial because the complaint alleges that general-purpose OS components like the MacOS Keychain satisfy this limitation. The outcome will depend on whether the patent requires a bespoke database specifically created for the content file.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states the database "is associated with the DCF 10, resides in a licensed user's system and contains information..." (’567 Patent, col. 13:38-40). This language does not explicitly forbid using a pre-existing OS service, as long as it resides on the system and is used to store the required license information for the associated file.
- Evidence for a Narrower Interpretation: Figure 1A depicts the "Dldb" (14) as a component block within the "FACM" (12), which itself is within the "DCF" (10), suggesting a tightly integrated, proprietary structure rather than a generic system service. The specification also describes an embodiment where the database is stored "using a randomly generated file name," a behavior not typical of OS-level credential managers (’567 Patent, col. 11:51-53).
VI. Other Allegations
- Indirect Infringement: The complaint alleges both inducement and contributory infringement under 35 U.S.C. § 271(b) and (c). It alleges inducement based on Adobe's requirement that users activate the software to make it function, supported by instructions and user prompts (Compl. ¶¶ 57-58). It alleges contributory infringement on the basis that the activation technologies are a material part of the invention, are especially made for an infringing use, and have no substantial non-infringing uses (Compl. ¶¶ 59-60).
- Willful Infringement: The complaint alleges that Adobe’s infringement has been and continues to be willful. This allegation is based on alleged pre-suit knowledge from a 2015 notice letter with claim charts, and even earlier knowledge from the '567 patent being cited as prior art during the prosecution of Adobe's own patent applications dating back to at least 2011 (Compl. ¶¶ 36-38, 41-44). The complaint alleges that Adobe continued its infringing activities despite this knowledge (Compl. ¶45).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the patent's concept of a "digital content file" with an "embedded" control mechanism be construed to read on Adobe's modern software architecture, which utilizes separate library files (e.g., "amtlib.dll") and general-purpose operating system services (e.g., MacOS Keychain) to perform license control?
- A key evidentiary question will be one of technical operation: does the accused system, which separates functionalities across application code, dedicated libraries, and OS services, perform the functions of the claimed "license monitor," "license control utility," and "dynamic license database" in the integrated and specific manner disclosed and claimed in the '567 patent?