DCT
1:03-cv-00440
Uniloc USA Inc v. Microsoft Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Uniloc USA, Inc. (Rhode Island) and Uniloc Singapore Private Limited (Singapore)
- Defendant: Microsoft Corporation (Washington), Unicom Technology Group, Inc. (Rhode Island), and Aladdin Knowledge Systems Inc. (New York)
- Plaintiff’s Counsel: Taylor Duane Barton & Gilman, LLP
- Case Identification: 1:03-cv-00440, D.R.I., 09/26/2003
- Venue Allegations: Venue is alleged to be proper based on Defendants doing business and committing acts of patent infringement within the District of Rhode Island.
- Core Dispute: Plaintiff alleges that Defendants’ anti-piracy and product activation technology infringes a patent related to a system for software registration that uses matching local and remote identifiers.
- Technical Context: The technology at issue addresses software piracy by requiring a user to register the software, a process that involves generating a unique identifier based on user-specific information that must be verified by a remote authority.
- Key Procedural History: The complaint was filed in 2003. Subsequent to the filing, the asserted patent underwent multiple post-grant proceedings at the U.S. Patent and Trademark Office. Two ex parte reexaminations, concluding in 2011 and 2013, confirmed the patentability of various claims. However, a subsequent inter partes review (IPR) proceeding, concluded in 2018, resulted in a final determination that all claims of the patent (1-20) are unpatentable and cancelled.
Case Timeline
| Date | Event |
|---|---|
| 1992-09-21 | ’216 Patent Priority Date |
| 1996-02-06 | ’216 Patent Issue Date |
| 2003-09-26 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 5,490,216 - "System for Software Registration"
- Patent Identification: U.S. Patent No. 5,490,216, titled "System for Software Registration," issued February 6, 1996.
The Invention Explained
- Problem Addressed: The patent describes the problem of software piracy, noting that simple security features like a registration number on distribution media do not prevent the copying of already-installed software from one computer to another (’216 Patent, col. 1:12-27). The background also distinguishes the invention from prior art systems that relied solely on "machine identification" rather than information unique to the user (’216 Patent, col. 2:1-6).
- The Patented Solution: The invention proposes a system where the software on a user's local computer contains an algorithm to generate a "licensee unique ID" based on information that characterizes the licensee (’216 Patent, Abstract). To fully activate the software, the user communicates this information to a remote registration authority, which uses an identical algorithm to generate a matching ID. The software’s "mode switching means" will only grant full access if the ID generated remotely is provided to the local system and matches the ID it generated, creating a user-specific registration key (’216 Patent, col. 3:22-32; Fig. 8).
- Technical Importance: This method aimed to create a more robust copy protection scheme by linking a software license to a unique licensee, not just a unique machine, while still allowing for the distribution of the complete software program on a single medium (’216 Patent, col. 1:40-48).
Key Claims at a Glance
- The complaint asserts infringement of "one or more of the claims" without specifying which ones (Compl. ¶11). Independent claim 1 is representative of the core invention.
- The essential elements of independent claim 1 include:
- A registration system for licensing digital data on a platform.
- A "local licensee unique ID generating means."
- A "remote licensee unique ID generating means" that utilizes the same algorithm as the local means.
- A "mode switching means" that permits use of the digital data only if the ID "first generated" by the local means has "matched" an ID "subsequently generated" by the remote means.
- The complaint does not specify assertion of any dependent claims but reserves the right to do so (Compl. ¶11).
III. The Accused Instrumentality
Product Identification
- The complaint identifies the accused instrumentalities as "anti-piracy and product activation technology products" made, used, or sold by the Defendants (Compl. ¶11).
Functionality and Market Context
- The complaint does not provide sufficient detail for analysis of the specific functionality of the accused products. It makes a conclusory allegation that this category of technology infringes the ’216 patent without describing how the technology operates (Compl. ¶11).
IV. Analysis of Infringement Allegations
The complaint provides only a high-level, conclusory allegation of infringement without a detailed infringement theory or claim chart. The following table summarizes a potential infringement theory for Claim 1 based on the general nature of "product activation technology" as alleged in the complaint.
No probative visual evidence provided in complaint.
'216 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a registration system for licensing execution of digital data in a use mode, said digital data executable on a platform, said system including local licensee unique ID generating means... | The complaint's allegation against "product activation technology" suggests a system on the user's computer for generating an identifier to initiate a software licensing process. | ¶11 | col. 3:22-29 |
| ...and remote licensee unique ID generating means... | The allegation implies that a remote server operated by Defendants receives information and uses it to generate a corresponding activation key. | ¶11 | col. 6:1-8 |
| ...said system further including mode switching means operable on said platform which permits use of said digital data...only if a licensee unique ID first generated by said local licensee unique ID generating means has matched a licensee unique ID subsequently generated by said remote licensee unique ID generating means... | The allegation implies the accused software operates in a limited mode until an activation key from the remote server is entered and verified, thereby unlocking the full "use mode." | ¶11 | col. 13:57-64 |
- Identified Points of Contention:
- Scope Questions: The patent repeatedly distinguishes its "licensee unique ID" from purely machine-based identifiers (’216 Patent, col. 2:1-6). A central question is whether Defendants' product activation technology, often understood to be based on a hardware identifier, can be considered to generate a "licensee unique ID" as that term is used in the patent.
- Technical Questions: The claim requires a specific sequence where an ID is "first generated" locally, then "subsequently generated" remotely, followed by a "match." A key question is what evidence exists that the accused systems perform this two-step generation and comparison, as opposed to a different process where the local system only sends identifying information to the remote server, which is the sole generator of the activation key.
V. Key Claim Terms for Construction
The complaint does not provide a basis for claim construction analysis, but based on the technology, the following terms may be central to the dispute.
"licensee unique ID"
- Context and Importance: The resolution of the case may depend on whether this term is construed to mean an identifier unique to the human user or if it can also cover an identifier unique to the user's computer hardware. Practitioners may focus on this term because the patent's specification explicitly distinguishes the invention from prior art based on "machine identification" (’216 Patent, col. 2:1-6).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The plain language of the independent claim does not explicitly restrict the ID to non-hardware information. One might argue that a hardware ID assigned to a specific licensee's machine for the purpose of the license still functions as a "licensee unique ID."
- Evidence for a Narrower Interpretation: The specification describes the ID as being generated from "information supplied by the licensee which characterizes the licensee" (’216 Patent, Abstract). Furthermore, dependent claim 6 recites specific user details like "payment details, contact details and name" as the basis for the ID, suggesting the inventor contemplated a person-centric, rather than machine-centric, identifier (’216 Patent, col. 14:19-23).
"matched"
- Context and Importance: Infringement may turn on the specific technical meaning of "matched." The claim requires that a "first generated" local ID "has matched" a "subsequently generated" remote ID. This suggests two distinct items are created and then compared for identity.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue "matched" broadly covers any cryptographic process where a key from a remote source successfully validates or unlocks the local software, regardless of the precise sequence of events.
- Evidence for a Narrower Interpretation: The claim language "first generated by said local... means has matched a... subsequently generated by said remote... means" (’216 Patent, col. 13:60-64) points toward a specific operational flow: (1) local generation, (2) remote generation, and (3) comparison of the two resulting data objects. A system that does not perform these distinct steps may fall outside the claim's literal scope.
VI. Other Allegations
Willful Infringement
- The complaint makes a conclusory allegation that "Defendants' acts of infringement are willful" but does not plead any specific facts to support this claim, such as pre-suit knowledge of the patent or egregious conduct (Compl. ¶12).
VII. Analyst’s Conclusion: Key Questions for the Case
Definitional Scope: A core issue will be one of definitional scope: can the term "licensee unique ID", which the patent specification appears to position as an alternative to machine-only identifiers, be construed to cover the hardware-based identifiers central to many real-world product activation systems?
Mechanism of Operation: A key evidentiary question will be one of technical mechanism: does the accused technology perform the specific sequence of (a) local ID generation, (b) remote ID generation with the same algorithm, and (c) a subsequent comparison, as recited in Claim 1, or does it follow a different operational model for activation?
Patent Validity: Although not at issue when the complaint was filed, the primary question for the ongoing viability of this case is the 2018 inter partes review decision that cancelled all claims of the ’216 patent, which presents a fundamental, and likely dispositive, challenge to the infringement action.