DCT

5:23-cv-00090

Softex LLC v. Lenovo Shanghai Electronics Technology Co Ltd

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 5:23-cv-00090, E.D.N.C., 05/23/2023
  • Venue Allegations: Venue is alleged to be proper in the Eastern District of North Carolina because Defendant Lenovo (United States), Inc. has a regular and established place of business in the district and has allegedly committed acts of infringement there. Venue is also alleged as proper for the foreign-domiciled defendants as alien corporations.
  • Core Dispute: Plaintiff alleges that Defendant’s computers, which incorporate device security features such as Microsoft's "Find My Device" and Absolute Software's "Persistence" technology, infringe seven patents related to persistent, low-level electronic device security and tracking systems.
  • Technical Context: The technology involves embedding security software into a computer's firmware (BIOS) or protected storage areas to enable device tracking, disabling, and data recovery that can survive operating system reinstallation or hard drive replacement.
  • Key Procedural History: The action was originally filed in the U.S. District Court for the Western District of Texas on December 14, 2022. On February 17, 2023, the parties stipulated to transfer the case to the Eastern District of North Carolina. The operative complaint is the Second Amended Complaint.

Case Timeline

Date Event
2003-08-23 Earliest Priority Date for Asserted Patents
2009-09-15 U.S. Patent No. 7,590,837 Issues
2012-03-06 U.S. Patent No. 8,128,710 Issues
2012-03-20 U.S. Patent No. 8,137,410 Issues
2012-03-27 U.S. Patent No. 8,145,892 Issues
2012-10-16 U.S. Patent No. 8,287,603 Issues
2013-08-13 U.S. Patent No. 8,506,649 Issues
2013-08-20 U.S. Patent No. 8,516,235 Issues
2022-12-14 Original Complaint Filed in W.D. Tex.
2023-05-23 Second Amended Complaint Filed in E.D.N.C.

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

U.S. Patent No. 7,590,837 - “Electronic Device Security and Tracking System and Method”

The Invention Explained

  • Problem Addressed: The patent addresses the ineffectiveness of traditional software-based theft prevention systems, which are easily defeated because their components are stored on viewable parts of a hard drive and can be tampered with by thieves (Compl. ¶49; ’837 Patent, col. 1:22-30). Conventional physical security measures do not allow for tracking or recovery once a device is stolen (’837 Patent, col. 1:28-30).
  • The Patented Solution: The invention is an Electronic Device Security and Tracking System and Method (ESTSM) that creates a persistent security presence on a device. It achieves this through a three-part architecture: an application component that runs in the operating system, a non-viewable security component stored in a hidden area, and a security component embedded in the device’s Basic Input/Output System (BIOS). The BIOS component, which resides in secure, non-volatile memory, checks the integrity of the other two components every time the device boots up and can restore them if they have been tampered with, ensuring the security system cannot be easily removed (Compl. ¶50; ’837 Patent, col. 2:12-17, col. 17:62-18:8).
  • Technical Importance: This architectural approach provides a security solution that can survive attempts to remove it by reformatting the hard drive or reinstalling the operating system, thereby increasing the probability of tracking and recovering a stolen device (Compl. ¶45, 52).

Key Claims at a Glance

  • The complaint asserts at least independent claim 1 (Compl. ¶97).
  • The essential elements of Claim 1 include:
    • An electronic device security and tracking system with an electronic device and a server system.
    • An "application component" to send location information and determine if the device is stolen based on information from the server.
    • A "non-viewable security component" with a "validator module" to determine if the application component has been tampered with.
    • A "non-volatile storage device" with a "secure area".
    • A "basic input/output security (BIOS) component" stored in the secure area.
    • The BIOS component is configured to check the integrity of the application component during boot, determine if the non-viewable component has been tampered with, automatically restore the application component if an integrity check is negative, and prevent the OS from booting if the device is reported stolen.
    • The application component is configured to notify the BIOS component that the device has been reported stolen.

U.S. Patent No. 8,506,649 - “Electronic Device Security and Tracking System and Method”

The Invention Explained

  • Problem Addressed: The patent addresses the difficulty of providing persistent security for mobile electronic devices, where software on viewable storage components is easily tampered with, rendering traditional theft prevention and data recovery systems ineffective (Compl. ¶55; ’649 Patent, col. 1:24-32).
  • The Patented Solution: The invention is a mobile electronic device with a security application that utilizes code stored at least partially in a "system area" of memory that "cannot be modified by the user" (’649 Patent, Claim 1). Upon receiving a notification from a remote security service that the device has been lost or stolen, the application is configured to automatically disable at least one user function while still allowing the device to communicate with the security service, and to automatically copy user data from the device to a server (Compl. ¶57; ’649 Patent, col. 2:16-37).
  • Technical Importance: This invention provides a method for persistent security on mobile devices, enabling remote data recovery and device disabling by locating the security software's core functions in a protected memory area inaccessible to a typical user (Compl. ¶58).

Key Claims at a Glance

  • The complaint asserts at least independent claim 1 (Compl. ¶103).
  • The essential elements of Claim 1 include:
    • A mobile electronic device with non-transitory storage mediums and a security application.
    • The security application causes the device to "periodically communicate" with a security service.
    • The application accepts a "notification" from the service indicating the device is lost or stolen.
    • In response, the application "automatically disables at least one user function" while maintaining communication with the service.
    • The application "automatically causes at least some user data to be copied" to a server.
    • The storage medium includes a "changeable area" and a "system area that cannot be modified by the user".
    • The security application utilizes code residing at least partially in the "system area".

Multi-Patent Capsules

U.S. Patent No. 8,516,235 - "Basic Input/Output System Read Only Memory Image Integration System and Method"

  • Patent Identification: U.S. Patent No. 8,516,235, "Basic Input/Output System Read Only Memory Image Integration System and Method," issued August 20, 2013 (Compl. ¶60).
  • Technology Synopsis: This patent describes a system and method for integrating a security application into a device's BIOS ROM image. It addresses the technical problem of creating a persistent security solution by embedding it at the firmware level, making it resistant to tampering that would affect OS-level software (Compl. ¶61-62). The system uses a three-part architecture (application, non-viewable component, BIOS component) where the BIOS component verifies and can restore the other components (Compl. ¶62).
  • Asserted Claims: At least independent claim 8 (Compl. ¶109).
  • Accused Features: Absolute Functionality (Compl. ¶109).

U.S. Patent No. 8,145,892 - "Providing an Electronic Device Security and Tracking System and Method"

  • Patent Identification: U.S. Patent No. 8,145,892, "Providing an Electronic Device Security and Tracking System and Method," issued March 27, 2012 (Compl. ¶66).
  • Technology Synopsis: This patent discloses systems and methods for security and tracking that rely on a three-component architecture (application, non-viewable, BIOS) to create a persistent anti-theft solution. The BIOS component ensures the application cannot be tampered with by checking the integrity of the system at boot and restoring components if necessary, thereby overcoming the weaknesses of traditional software-only security (Compl. ¶67-68).
  • Asserted Claims: At least independent claim 12 (Compl. ¶115).
  • Accused Features: Absolute Functionality (Compl. ¶115).

U.S. Patent No. 8,137,410 - "Electronic Device Disabling System and Method"

  • Patent Identification: U.S. Patent No. 8,137,410, "Electronic Device Disabling System and Method," issued March 20, 2012 (Compl. ¶71).
  • Technology Synopsis: This patent describes a security apparatus that uses a hidden memory partition to store a non-viewable component and an application component for tracking and locating a device. The system is designed to overcome tampering by automatically determining if the application component operated correctly during power-up and, if not, restoring it from a backup fileset stored in the hidden partition (Compl. ¶73-74).
  • Asserted Claims: At least independent claim 8 (Compl. ¶121).
  • Accused Features: Absolute Functionality (Compl. ¶121).

U.S. Patent No. 8,287,603 - "Electronic Device With Protection From Unauthorized Utilization"

  • Patent Identification: U.S. Patent No. 8,287,603, "Electronic Device With Protection From Unauthorized Utilization," issued October 16, 2012 (Compl. ¶77).
  • Technology Synopsis: This patent discloses an electronic device that prevents booting if the device is lost or stolen. It uses an application component to ascertain the device's stolen status and its own operational integrity. If operating correctly, it provides information to the BIOS component, which in a subsequent boot process will prevent the device from completing boot if that information is not found (Compl. ¶78, 80).
  • Asserted Claims: At least independent claim 18 (Compl. ¶127).
  • Accused Features: Absolute Functionality (Compl. ¶127).

U.S. Patent No. 8,128,710 - "Electronic Device Security System and Method"

  • Patent Identification: U.S. Patent No. 8,128,710, "Electronic Device Security System and Method," issued March 6, 2012 (Compl. ¶83).
  • Technology Synopsis: This patent describes a persistent security system using the three-component architecture (application, non-viewable, BIOS) to deter theft and thwart tampering. In addition to tracking and integrity checks, this system is operable to remotely erase the non-volatile storage of the device after receiving a report that the device has been stolen, providing a data security function (Compl. ¶84-86).
  • Asserted Claims: At least independent claim 2 (Compl. ¶133).
  • Accused Features: Absolute Functionality (Compl. ¶133).

III. The Accused Instrumentality

Product Identification

  • The Accused Products are Lenovo computers and devices, including notebooks, tablets, desktops, and workstations, that utilize either "Windows Functionality" or "Absolute Functionality" (Compl. ¶17, 21). A comprehensive, non-exhaustive list of accused model families and series is provided in the complaint (Compl. ¶21, pp. 8-10).

Functionality and Market Context

  • The complaint identifies two distinct functionalities. "Windows Functionality" refers to Microsoft's "Find My Device" feature included in Windows 10 and 11, which allows an owner to locate, lock, or send messages to a lost or stolen device via a web portal connected to Microsoft's servers (Compl. ¶90-91).
  • "Absolute Functionality" refers to Absolute's security software, which includes a component called "Computrace" or "Absolute Persistence Technology" that is "embedded in the firmware" of Lenovo devices during manufacturing (Compl. ¶19, 93). This component is designed to be persistent, meaning it can "self-heal" or reinstall itself if removed, and survives factory resets or hard drive replacements (Compl. ¶93, 95). The complaint includes a marketing diagram from Absolute illustrating this "Undeletable Security" process (Compl. p. 51). The functionality allows a user to track, remotely lock, and remotely delete files from a device via a server-based console (Compl. ¶94). The complaint alleges that Lenovo is a "leading PC player" and that these security features are marketed as important for protecting devices and data (Compl. ¶11, 18).

IV. Analysis of Infringement Allegations

Claim Chart Summary

U.S. Patent No. 7,590,837 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
an electronic device operable to support an operating system (OS) environment and operable to communicate with a server system The Accused Products are Lenovo computers that run an OS and contain Absolute Functionality, which communicates with Absolute's servers. ¶92-94, 98 col. 35:46-49
an application component ... configured to cause the electronic device to send ... a message that contains location information ... and ... determine whether the electronic device has been reported stolen Absolute Functionality includes services that allow a user to view a device's location on a map and is activated upon installation, which initiates a call to the Absolute Monitoring Center. ¶94-95 col. 35:50-57
a non-viewable security component ... comprising a validator module capable of determining whether the application component is present and ... has been tampered with The Absolute Persistence component is embedded in the firmware, is persistent, and can self-heal the software if it is removed or damaged. ¶93, 95 col. 35:58-63
a basic input/output security (BIOS) component stored in the secure area, the BIOS security component configured to check the integrity of the application component during a boot process The Absolute Persistence component is "built into the BIOS or firmware during the manufacturing process" and "embedded in the firmware" to provide continuous, tamper-proof security. ¶95, p. 51 col. 36:1-5
wherein the BIOS security component is configured to automatically cause the electronic device to restore the integrity of the application component, in response to a negative integrity check The Absolute agent is continuously monitored, and "if it is missing or damaged, a reinstallation will automatically occur." It is designed to "self-heal our software onto the device if we are removed." ¶93, p. 52 col. 36:11-15

U.S. Patent No. 8,506,649 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a mobile electronic device, comprising: one or more non-transitory machine-readable storage mediums; and a security application The Accused Products are Lenovo computers and devices (e.g., laptops) that run Microsoft's "Find My Device" feature. ¶90, 104 col. 35:48-54
causing the mobile electronic device to periodically communicate with the security service The "Find My Device" feature, when enabled, causes the device to periodically send its location to the Microsoft security service. ¶91 col. 35:55-57
accepting a notification ... from the security service ... indicating that the owner ... has reported a loss or requested disabling A Lenovo device with "Find My Device" enabled can accept a notification from the service to lock the device. ¶91 col. 35:58-62
automatically disabling at least one user function ... while still allowing the mobile electronic device to communicate with the security service The device is locked ("disabled") in response to the notification but can still communicate, for example, by continuing to share its location. ¶91 col. 36:1-5
automatically causing at least some user data to be copied from the mobile electronic device to at least one of the servers An owner can view device details and location from the owner's Microsoft user account, indicating information is sent to the server. ¶91 col. 36:6-9
wherein the non-volatile memory comprises a changeable area that can be modified by a user and a system area that cannot be modified by the user The complaint alleges that by "segregating access and not allowing the user access to the administrator area, MSFT provides a system area that cannot be accessed by the user." ¶91 col. 36:12-15

Identified Points of Contention

  • Architectural Questions: The patents claim a specific, multi-part architecture (e.g., distinct application, non-viewable, and BIOS components). The infringement analysis may focus on whether the accused "Absolute Functionality," which is described as a component "embedded in the firmware," actually contains these distinct and separately functioning components as claimed, or if it is a more monolithic piece of code.
  • Scope Questions: A central question for the allegations against "Windows Functionality" is whether an operating system's use of user permissions to protect certain files or settings constitutes a "system area that cannot be modified by the user," as required by claim 1 of the ’649 patent. This raises the question of whether the claim term requires a hardware- or firmware-level partition, as depicted in the patent's figures, rather than a software-based restriction that a sophisticated user could potentially bypass.

V. Key Claim Terms for Construction

  • The Term: "non-viewable security component" (’837 Patent, Claim 1)

  • Context and Importance: This term is central to the claimed invention's persistence. Its definition will be critical to determining whether the accused "Absolute Functionality," described as being "embedded in the firmware," meets this limitation. The dispute may turn on whether this component must be a distinct software module in a hidden partition or if it can be code integrated directly into the BIOS/firmware itself.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The specification states that "non-viewable components may reside in hidden partitions on the hard disk drive" or "in the Protected Area (HPA) of the HDD," but does not explicitly limit the invention to these locations, which may support a broader definition covering any non-standard, user-inaccessible location (’837 Patent, col. 2:48-52).
    • Evidence for a Narrower Interpretation: Figure 44 of the patent depicts the "ESTSM NON-VIEWABLE COMPONENTS" (4440) as a distinct block within a "HIDDEN PARTITION" (4455), separate from the "ESTSM BIOS COMPONENT" (4410). This visual separation may support an interpretation that the non-viewable component must be architecturally distinct from the BIOS component.

  • The Term: "system area that cannot be modified by the user" (’649 Patent, Claim 1)

  • Context and Importance: The infringement allegation against Microsoft's "Find My Device" appears to hinge on this term. Practitioners may focus on this term because the complaint's theory is that standard OS-level administrator privileges create such an area. The case may turn on whether this term requires a hardware-level or firmware-level protected partition, or if software-based access controls suffice.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The patent's Figure 45 describes the system area as "NON-CHANGEABLE TO NORMAL USER," which could be read to encompass areas protected by OS permissions that a "normal user" without administrative rights cannot change.
    • Evidence for a Narrower Interpretation: The patent family consistently describes overcoming the limitations of OS-level software that can be easily tampered with. The abstract of the '649 patent itself refers to a "Basic Input/Output System (BIOS) component," suggesting the invention operates at a level below the OS. Figure 45 shows a clear architectural division between a "CHANGEABLE AREA" (4510) and a "SYSTEM AREA" (4520) in flash memory, which suggests a physical or firmware-defined partition rather than a logical one created by OS permissions.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges that Lenovo induces infringement of all asserted patents. This is based on allegations that Lenovo encourages customers to activate and use the accused functionalities by providing the software itself, along with instructions, user manuals, and marketing materials that facilitate and promote the infringing use (Compl. ¶99, 105).
  • Willful Infringement: Willfulness is alleged for all asserted patents. The complaint bases this on Lenovo's alleged knowledge of the patents and its infringement "at least as of the day the Original Complaint was filed" on December 14, 2022, and its continued alleged infringement thereafter (Compl. ¶100, 106).

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

This case presents several key questions for the court that will likely define the litigation:

  • A core issue will be one of architectural correspondence: Do the accused "Absolute" and "Windows" security systems, as implemented in Lenovo's products, map onto the specific multi-component structures recited in the asserted claims (e.g., the distinct "application", "non-viewable", and "BIOS" components of the '837 patent), or is there a fundamental mismatch in their technical design?
  • A critical claim construction question will be one of definitional scope: Can the term "a system area that cannot be modified by the user," which appears in patents focused on creating persistence against OS-level tampering, be construed to cover an area of storage protected merely by OS-level user permissions, as is alleged for the Windows "Find My Device" feature?
  • A third key question will be one of technical distinction: Given the substantial overlap in the specifications and inventive concepts across the seven asserted patents, the analysis may focus on whether the specific functionalities of the Accused Products meet the nuanced distinctions recited in the independent claims of each patent, or if the infringement theories apply only to the broader, shared concepts.