DCT
3:24-cv-00097
UiPath Inc v. Rule 14 LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: UiPath Inc. (Delaware)
- Defendant: Rule 14 LLC (Nevada); SPX Holdings LLC (Nevada)
- Plaintiff’s Counsel: Fennemore Craig, P.C.; Foley & Lardner LLP
- Case Identification: 3:24-cv-00097, D. Nev., 02/27/2024
- Venue Allegations: Venue is alleged to be proper in the District of Nevada as both Defendant entities are organized under Nevada law and are thus subject to personal jurisdiction in the district.
- Core Dispute: Plaintiff seeks a declaratory judgment that its business automation software does not infringe two patents related to adaptive data mining, and further alleges that one of the defendants lacked standing to bring a prior infringement action in Texas.
- Technical Context: The technology concerns methods for real-time data mining from diverse online sources, including non-indexed and non-textual data, by generating, expanding, and monitoring queries over time.
- Key Procedural History: This declaratory judgment action follows an infringement lawsuit filed by Defendant Rule 14 against UiPath in the Eastern District of Texas on December 22, 2023. UiPath alleges that Rule 14 had assigned its interests in the patents-in-suit to Defendant SPX Holdings in March 2022, prior to filing the Texas suit, and therefore lacked standing. UiPath also alleges Defendants have "unclean hands" due to attempts to manufacture venue in Texas and obfuscate the true ownership of the patents. A recent disclaimer filed for U.S. Patent 11,048,712 on December 18, 2024, disclaims the complete text of claims 8 and 17.
Case Timeline
| Date | Event |
|---|---|
| 2012-08-02 | Earliest Priority Date for '977 and '712 Patents |
| 2016-01-05 | U.S. Patent 9,229,977 Issued |
| 2021-06-29 | U.S. Patent 11,048,712 Issued |
| 2022-03-18 | Patents-in-Suit allegedly assigned from Rule 14 to SPX Holdings |
| 2023-12-22 | Rule 14 files infringement complaint against UiPath in E.D. Texas |
| 2024-02-27 | UiPath files this Declaratory Judgment Complaint in D. Nevada |
| 2024-12-18 | Disclaimer filed for Claims 8 and 17 of U.S. Patent 11,048,712 |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,229,977 - “Real-Time and Adaptive Data Mining,” issued January 5, 2016
The Invention Explained
- Problem Addressed: The patent describes the limitations of typical search engines, which are not designed for real-time analysis, are restricted to exact search terms, and cannot access the large portion of the web that is not indexed, such as proprietary data silos or comment sections on web pages (’977 Patent, col. 1:29-48).
- The Patented Solution: The invention proposes a system that moves beyond a simple, one-time search. It generates a query based on a "topic of interest," expands the search terms, executes it across multiple data sources, and then selects at least one source to "monitor" based on a set schedule. This monitoring function extracts new or updated data that matches the original query, and the system can then establish a communication channel with a second user based on this newly extracted data, creating an interactive and adaptive feedback loop (’977 Patent, Abstract; col. 2:5-14; Fig. 1).
- Technical Importance: This approach aimed to provide more dynamic and relevant information by continuously tracking sources for changes rather than relying on static, indexed search results (’977 Patent, col. 1:49-55).
Key Claims at a Glance
- The complaint focuses on independent claim 1, which was asserted in the prior Texas litigation (Compl. ¶31). The essential elements are:
- Generating, via a first user, a query based on a topic of interest.
- Expanding the search terms of the query.
- Executing the query on a plurality of data sources.
- Selecting at least one data source based on the query results meeting an accuracy threshold.
- Monitoring the selected data source on a set schedule to extract data when an update or newly added data matches the query.
- Establishing a communication channel with a second user based on the extracted data.
- The complaint notes that the remaining independent claims contain similar elements (Compl. ¶31).
U.S. Patent No. 11,048,712 - “Real-Time and Adaptive Data Mining,” issued June 29, 2021
The Invention Explained
- Problem Addressed: The patent identifies a similar problem to its parent '977 patent but places a specific emphasis on the limitations of conventional search engines in analyzing non-textual data, such as images, video, or audio (’712 Patent, col. 3:22-38).
- The Patented Solution: The invention claims a method for analyzing non-textual data. The system receives a query for non-textual data (e.g., an image of a beach), expands the query, executes it across data sources, and then monitors a selected source for new or updated non-textual data that matches. Based on the extracted data, it can establish a communication channel with a user (’712 Patent, Abstract; col. 4:40-50). The use of a "convolutional neural network" is described for identifying images related to a query ('712 Patent, col. 17:53-57).
- Technical Importance: The technology extends adaptive data mining techniques beyond text-based searches to the increasingly prevalent domain of multimedia content on the internet (’712 Patent, col. 1:53-58).
Key Claims at a Glance
- The complaint focuses on independent claim 1, asserted in the prior Texas litigation (Compl. ¶36). The essential elements are:
- Receiving, from a first user, a query for non-textual data.
- Expanding the search terms of the query.
- Executing the query on a plurality of data sources.
- Selecting at least one data source based on results meeting an accuracy threshold.
- Monitoring the selected data source on a set schedule to extract non-textual data when an update or new data matches the query.
- Establishing a communication channel with a second user based on the extracted data.
- The complaint notes that the remaining independent claims contain similar elements (Compl. ¶36).
III. The Accused Instrumentality
Product Identification
- The complaint identifies the accused instrumentalities generally as "UiPath products," which are part of a "global provider of business automation software" platform (Compl. ¶¶2, 7).
Functionality and Market Context
- The complaint alleges that UiPath's products are used for business automation (Compl. ¶7). However, it provides limited technical detail about their operation, instead focusing on what they allegedly do not do. The central non-infringement argument is that the "identified UiPath products simply do not utilize a query-based system in the manner contemplated by the '977 Patent" (Compl. ¶31). One of the complaint's exhibits, a screenshot of the Rule 14 website from early 2024, is presented to support UiPath's allegation that Rule 14 manufactured a Texas business address to create venue for its lawsuit (Compl. ¶21; Ex. H at p. 5). The commercial importance of UiPath's platform is implied by its status as a "global provider" (Compl. ¶7).
IV. Analysis of Infringement Allegations
UiPath’s complaint seeks a declaratory judgment of non-infringement. The following tables summarize UiPath’s allegations that its products do not practice the elements of the asserted claims.
U.S. Patent 9,229,977 Infringement Allegations
| Claim Element (from Independent Claim 1) | UiPath's Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| generat[es], via a first user, a query based at least in part on a topic of interest | No identified UiPath product performs this function. | ¶31 | col. 20:13-15 |
| expand[s] search terms of the query | No identified UiPath product performs this function. | ¶31 | col. 20:16-17 |
| execut[es] the quest on a plurality of data sources | No identified UiPath product performs this function. | ¶31 | col. 20:18-19 |
| select[s] at least one data source from the plurality of data sources, the at least one data source being selected when results of the query are greater than or equal to an accuracy thresholds | No identified UiPath product performs this function. | ¶31 | col. 20:20-23 |
| monitor[s], based on a set schedule, the at least one data source to extract data...when at least an update to stored data that matches the query, newly added data that matches the query... | No identified UiPath product performs this function. | ¶31 | col. 20:24-29 |
| establish[es] a communication channel with a second user based at least in part on the data extracted from the at least one monitored data source | No identified UiPath product performs this function. | ¶31 | col. 20:30-33 |
U.S. Patent 11,048,712 Infringement Allegations
| Claim Element (from Independent Claim 1) | UiPath's Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| receiv[es], from a first user, a query for non-textual data | No identified UiPath product performs this function. | ¶36 | col. 32:18-19 |
| expand[s] search terms of the query | No identified UiPath product performs this function. | ¶36 | col. 32:20 |
| execut[es] the query on a plurality of data sources | No identified UiPath product performs this function. | ¶36 | col. 32:21 |
| select[s] at least one data source from the plurality of data sources, the at least one data source being selected when results of the query are greater than or equal to an accuracy thresholds | No identified UiPath product performs this function. | ¶36 | col. 32:22-26 |
| monitor[s], based on a set schedule, the at least one data source to extract non-textual data...when at least an update to stored data matches the query, newly added non-textual data matches the query | No identified UiPath product performs this function. | ¶36 | col. 32:27-32 |
| establish[es] a communication channel with a second user based at least in part on the data extracted from the at least one monitored data source | No identified UiPath product performs this function. | ¶36 | col. 32:33-36 |
Identified Points of Contention:
- Scope Questions: A principal question will be whether the processes performed by UiPath's "business automation software" fall within the scope of the patents' "query-based system" (Compl. ¶31). The patents describe a system initiated by a user "query" about a "topic of interest," whereas business automation software typically executes pre-defined, rules-based workflows. The court may need to determine if a configured automation workflow constitutes a "query" in the claimed sense.
- Technical Questions: The complaint's blanket denials raise the question of the fundamental operational model of the accused products. Does UiPath's software "monitor" data sources in the manner claimed (i.e., on a "set schedule" to find updates), or does it operate on an event-driven or direct API-call basis? For the ’712 patent, a key question is whether the data processed by UiPath's platform constitutes "non-textual data" as contemplated by the patent, which uses images as a primary example (’712 Patent, col. 4:48-50).
V. Key Claim Terms for Construction
The Term: "query" (and "query based at least in part on a topic of interest" / "query for non-textual data")
- Context and Importance: This term is the starting point for the claimed methods and its definition is central to the dispute. Practitioners may focus on this term because UiPath’s core non-infringement theory appears to be that its automation software does not utilize a "query-based system" (Compl. ¶31). The outcome may depend on whether a pre-configured automation script is construed as a "query."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification does not explicitly define "query" in a restrictive way, which may support an argument for its plain and ordinary meaning. The term could be argued to encompass any request for information, including an automated one.
- Evidence for a Narrower Interpretation: The specification repeatedly provides examples of user-initiated, natural language queries (e.g., "find people that go to the beach") or image-based queries, suggesting a process more akin to an interactive search than a pre-programmed robotic process (’977 Patent, col. 3:40-42; ’712 Patent, col. 4:45-48).
The Term: "monitoring, based on a set schedule"
- Context and Importance: This limitation defines the ongoing, adaptive nature of the claimed invention. Its construction is important because it distinguishes the invention from a one-time search. The dispute may turn on whether UiPath's software performs this specific type of scheduled, periodic checking for updated or new data.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term could be argued to cover any form of repeated or periodic data extraction, regardless of the precise mechanism.
- Evidence for a Narrower Interpretation: The phrase "set schedule" suggests a deliberate, time-based polling (e.g., "once a week, hour, month, minute, or other time") rather than an event-triggered or on-demand data retrieval process, which might be more common in business automation (’712 Patent, col. 8:31-33).
VI. Other Allegations
- Indirect Infringement: The complaint makes a blanket denial of all forms of infringement, stating UiPath has not infringed any claim "either directly or indirectly, literally or under the doctrine of equivalents" (Compl. ¶¶30, 35). No specific facts related to indirect infringement are discussed beyond this denial.
- Willful Infringement: The complaint does not directly address willfulness, but the request for a declaratory judgment is premised on a "reasonable apprehension" of being sued, stemming from the prior Texas litigation filed by Rule 14 (Compl. ¶26).
- Lack of Standing / Unclean Hands: The complaint dedicates significant attention to non-infringement defenses beyond the technical merits. UiPath alleges that Defendant Rule 14 assigned all rights in the patents-in-suit to SPX Holdings in March 2022, and therefore lacked constitutional standing when it filed the Texas litigation in December 2023 (Compl. ¶¶16-18, 24, 39-46). UiPath further alleges that Defendants engaged in an "improper scheme to obfuscate the true ownership" and "improperly manufacture facts" to justify venue in Texas, constituting unclean hands that should bar enforcement of the patents (Compl. ¶¶47-50).
VII. Analyst’s Conclusion: Key Questions for the Case
- A threshold procedural question will be one of standing and equity: Did Rule 14 possess the requisite ownership rights to sue UiPath in the original Texas action, and if not, what is the effect on this subsequent declaratory judgment case? Further, do the allegations of manufactured venue and ownership obfuscation give rise to an unclean hands defense that could bar enforcement?
- A core issue will be one of definitional scope: Can the term "query", which the patents describe in the context of user-initiated searches on a "topic of interest," be construed to cover the pre-defined, rules-based workflows executed by UiPath's business automation software?
- A key technical question will be one of operational equivalence: Does the functionality of the accused UiPath platform, which automates business processes, align with the specific operational steps of the claimed invention, particularly the requirement to "monitor" a data source based on a "set schedule" to extract new or updated data matching an initial query?