DCT
1:19-cv-11272
Uniloc 2017 LLC v. Paychex Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Uniloc 2017 LLC (Delaware)
- Defendant: Paychex, Inc. (Delaware)
- Plaintiff’s Counsel: Prince Lobel Tye LLP
- Case Identification: 1:19-cv-11272, D. Mass., 06/07/2019
- Venue Allegations: Venue is based on Defendant Paychex, Inc. having regular and established places of business within the District of Massachusetts.
- Core Dispute: Plaintiff alleges that Defendant’s Paychex Flex human resources and payroll software-as-a-service platform infringes two patents related to the network-based management and distribution of configurable software applications.
- Technical Context: The technology concerns client-server systems for deploying and managing enterprise software, where both administrators and end-users can set configuration preferences that are centrally stored and applied.
- Key Procedural History: The complaint alleges that Defendant was put on notice of the patents-in-suit via a prior patent infringement action filed in the Eastern District of Texas by related Uniloc entities. This prior notice forms the basis for the current allegations of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 1998-12-14 | Priority Date for '578 Patent and '293 Patent |
| 2001-11-27 | U.S. Patent No. 6,324,578 Issues |
| 2006-06-27 | U.S. Patent No. 7,069,293 Issues |
| 2019-06-07 | Complaint Filed in the District of Massachusetts |
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’s background section describes the increasing difficulty of managing software application programs in modern distributed computing environments, where users may access the network from various client stations with different hardware and software configurations, making it hard to maintain consistent user preferences and control software licenses (ʼ578 Patent, col. 1:46-2:39).
- The Patented Solution: The invention proposes a centralized management system where an "on-demand server" stores and executes applications. The system uses two distinct program files: a "configuration manager" for an administrator to set system-wide or mandatory preferences, and an "application launcher" distributed to clients, which allows users to set their own personal preferences and initiate the application ('578 Patent, Abstract; col. 3:50-4:8). This architecture separates administrator and user control, allowing a user's personalized environment to follow them across different client devices while maintaining central administrative oversight ('578 Patent, col. 9:30-39).
- Technical Importance: This approach provided a framework for centrally managing enterprise software in a way that supported user mobility and personalization, a key challenge in the transition from mainframe-style computing to distributed, heterogeneous client-server networks ('578 Patent, col. 1:21-34).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶16).
- Independent Claim 1 requires a method with the following essential elements:
- Installing an application program with configurable preferences on a server.
- Distributing an "application launcher program" to a client.
- Obtaining a "user set" of preferences from an authorized user executing the launcher.
- Obtaining an "administrator set" of preferences from an administrator.
- Executing the application program using both the user and administrator sets of preferences in response to a user request.
- The complaint does not explicitly reserve the right to assert dependent claims.
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: As a divisional of the '578 patent application, the '293 patent addresses the same general problem domain. It focuses more specifically on the technical challenge of deploying and installing software from a central management server (like a Tivoli server) to other servers (termed "target stations" or "on-demand servers") within a network ('293 Patent, col. 2:6-14).
- The Patented Solution: The invention describes a method for automated software distribution where a central server prepares a "file packet" containing the application program. This packet includes a special "segment configured to initiate registration operations" at the target server. When the packet is distributed, this segment automatically installs and registers the application on the target server, making it available to end-users without manual intervention on that server ('293 Patent, Abstract; col. 5:36-48). The detailed description provides an example implementation using a Tivoli management server to distribute a file package to an on-demand server ('293 Patent, Figs. 8, 9A-C).
- Technical Importance: This system streamlined the process of deploying enterprise applications across multiple servers in a large network, automating what would otherwise be a complex and error-prone manual installation and configuration process at each server location ('293 Patent, col. 17:20-37).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶27).
- Independent Claim 1 requires a method executed on a centralized network management server with the following essential elements:
- Providing an application program for distribution.
- Specifying source and target directories for the program.
- Preparing a "file packet" that includes a "segment configured to initiate registration operations for the application program at the target on-demand server."
- Distributing this 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 dependent claims.
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is the "Paychex Flex (f/k/a Paychex Online) software distribution and management system" and its "associated backend server architecture" (Compl. ¶16).
Functionality and Market Context
- The Paychex Flex system is a software-as-a-service platform providing human resources, payroll, and benefits services (Compl. ¶6). Users can access the platform through a web browser or dedicated mobile applications for Apple and Android devices (Compl. ¶7, ¶8).
- The system presents users with a dashboard interface providing access to various applications like Payroll, Reporting, Time Off, and Retirement (Compl. ¶9). This dashboard is allegedly configurable; a screenshot in the complaint shows instructions for a user to "customize how the Paychex Flex app displays your data" by showing or hiding items (Compl. ¶11). A screenshot depicts the mobile application interface listing available functions such as "Reporting" and "Payroll." (Compl. ¶9).
- The complaint alleges that administrators can also control the system's features, for example by enabling or disabling certain options for users (Compl. ¶13). A screenshot shows administrator settings to "Allow this employee to clock in/out via a mobile device," which the complaint puts forth as an example of an administrator setting configurable preferences (Compl. ¶15).
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...on a server | The Paychex Flex and MyPaychex software and associated backend architecture are installed on a server coupled to a network (Compl. ¶16). | ¶16 | col. 7:55-60 |
| distributing an application launcher program associated with the application program to a client... | The Paychex Flex web interface and mobile applications are distributed to clients, serving as the launcher (Compl. ¶16). The complaint shows the app is available for download from Google Play and iTunes (Compl. ¶8). | ¶8, ¶16 | col. 8:21-33 |
| obtaining a user set of the plurality of configurable preferences... | Users can set preferences, such as customizing the dashboard to display or hide certain items (Compl. ¶11, ¶16). | ¶11, ¶16 | col. 8:56-60 |
| obtaining an administrator set of the plurality of configurable preferences from an administrator | Administrators can control user access to features and enable options (Compl. ¶13, ¶15, ¶16). The complaint includes a screenshot of an administrator interface for controlling employee mobile access (Compl. ¶15). | ¶13, ¶15, ¶16 | col. 8:61-64 |
| executing the application program using the obtained user and administrator sets of...preferences... | The Paychex Flex system allegedly executes the application program using both sets of preferences when a user makes a request (Compl. ¶16). | ¶16 | col. 9:30-39 |
- Identified Points of Contention:
- Scope Questions: A central question may be whether a modern web or mobile application interface, as shown in the complaint's screenshots (Compl. ¶9), meets the definition of an "application launcher program" as understood in the context of the 1998-filed patent. The defense may argue the patent envisioned a more distinct, separate program file.
- Technical Questions: What evidence demonstrates that the accused system uses distinct "user sets" and "administrator sets" of preferences in the specific manner claimed, as opposed to a more integrated permissions model? The functionality shown for customizing a dashboard (Compl. ¶11) will be compared against the administrator's ability to control application access (Compl. ¶15) to determine if they represent the distinct sets required by the claim.
'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 the network management server | The Paychex Flex software is provided for distribution to a network server (Compl. ¶27). | ¶27 | col. 5:36-39 |
| specifying source and target directories for the program to be distributed | Paychex allegedly distributes its applications from a source directory to a target directory using on-demand servers (Compl. ¶25, ¶27). The complaint includes a network traffic screenshot mentioning a server named "h7" (Compl. ¶25). | ¶25, ¶27 | col. 5:40-41 |
| preparing a file packet...including a segment configured to initiate registration operations... | The accused software allegedly includes a segment for user registration (Compl. ¶27). A screenshot of a "Sign-Up" page is provided as evidence of this segment (Compl. ¶26). | ¶26, ¶27 | col. 5:42-45 |
| distributing the file packet to the target on-demand server to make the program available for use... | The file packet is allegedly distributed to a target on-demand server to make the program available to a client user (Compl. ¶27). A screenshot of a Paychex dashboard is provided as evidence of applications being distributed from servers (Compl. ¶24). | ¶24, ¶27 | col. 5:46-48 |
- Identified Points of Contention:
- Scope Questions: A critical dispute will likely involve the term "segment configured to initiate registration operations for the application program at the target on-demand server". The complaint points to a user-facing "Sign-Up" form (Compl. ¶26), raising the question of whether this user registration process is equivalent to the technical, server-side application registration process described in the patent's specification (e.g., '293 Patent, Fig. 9C, block 176, "Call PMImport to Register Applet With Data Store").
- Technical Questions: The infringement theory for the '293 patent relies on Paychex's internal, server-side software deployment architecture. A key question for the court will be what evidence, likely from discovery, the plaintiff can produce to show that Paychex actually uses a "file packet" and specifies "source and target directories" in a manner that maps onto the claim limitations.
V. Key Claim Terms for Construction
'578 Patent
- The Term: "application launcher program"
- Context and Importance: This term is fundamental to the '578 patent's architecture. Its construction will determine whether a modern, integrated web or mobile application falls within the scope of what was claimed. Practitioners may focus on this term because the accused technology (a web/mobile SaaS platform) differs significantly from the standalone client applications common at the time of filing.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification suggests flexibility, stating that the launcher may be a "JAVA™ applet" and that a "web browser" can be used to provide the user interface and communicate with the server, which could support reading the claim on browser-based technologies ('578 Patent, col. 8:1-12).
- Evidence for a Narrower Interpretation: The specification describes a multi-step process where the launcher is first "distributed" to a client, an "icon is displayed," and a user "selects the displayed icon" to execute the program, which may suggest a discrete, installed software component rather than a transient web page ('578 Patent, col. 9:50-63; Fig. 4).
'293 Patent
- The Term: "segment configured to initiate registration operations for the application program at the target on-demand server"
- Context and Importance: This term is the core of the novel deployment method claimed in the '293 patent. The infringement case hinges on mapping this limitation to the accused user sign-up functionality. Practitioners may focus on this term because there appears to be a potential mismatch between the patent's technical description of application registration and the complaint's allegation regarding user registration.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: An argument could be made that user registration is a necessary precondition for an application to be used and is therefore part of the overall "registration operations" in a broad sense. The patent's claims do not explicitly limit the operations to purely technical software installation steps.
- Evidence for a Narrower Interpretation: The patent's detailed embodiment describes a highly technical process involving a "PMImport command script" that registers an "Applet With Data Store," suggesting a server-side, programmatic function, not a user-facing account creation workflow ('293 Patent, Fig. 9A, block 142; Fig. 9C, block 176). This could support a narrower construction limited to the technical registration of the software itself with the server's management system.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement. Inducement is based on Paychex allegedly providing instructions to its customers on how to use the infringing Flex system, with the complaint's screenshots offered as examples of such instructions (Compl. ¶17). Contributory infringement is based on allegations that Paychex commercializes the system knowing it is used to infringe and that the infringing functionalities were specially written for this purpose with no substantial non-infringing use (Compl. ¶18).
- Willful Infringement: Willfulness is alleged based on Paychex having pre-suit knowledge of both patents-in-suit. This knowledge allegedly stems from a prior patent infringement lawsuit filed by Uniloc entities against Paychex in the Eastern District of Texas concerning the same patents (Compl. ¶19, ¶28).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the 1998-era claim terms "application launcher program" ('578 patent) and "segment configured to initiate registration operations" ('293 patent), which are rooted in a specific technical context of client-server software, be construed to cover the corresponding features of a modern, integrated SaaS platform, namely its web/mobile front-end and its user account sign-up process?
- A key evidentiary question will be one of functional proof: particularly for the '293 patent, the infringement allegations rest on Paychex's internal, server-side software deployment methods. The case may turn on whether Uniloc can obtain and present sufficient evidence from discovery to prove that Paychex's internal architecture performs the specific steps of specifying directories and preparing/distributing a "file packet" as claimed.
- A final question will be one of technical equivalence: does the accused system's method for setting user and administrator permissions function in the same way as the claimed method of obtaining and executing distinct "user sets" and "administrator sets" of preferences, or is there a fundamental mismatch in the underlying technical operation?