2:11-cv-00294
Achates Reference Publishing Inc v. Symantec Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Achates Reference Publishing, Inc. (Texas)
- Defendant: Symantec Corporation (Delaware), et al.
- Plaintiff’s Counsel: Capshaw DeRieux, LLP
- Case Identification: 2:11-cv-00294, E.D. Tex., 06/20/2011
- Venue Allegations: Venue is alleged to be proper based on Defendants conducting business in Texas and the inventor, Jason Paul DeMont, being a resident of the district.
- Core Dispute: Plaintiff alleges that Defendants’ software products requiring activation infringe patents related to cryptographic methods for securely distributing and authorizing the installation of information products.
- Technical Context: The patents address methods to combat software piracy by using unique, encrypted "launch codes" to control software installation, a foundational technology in digital rights management (DRM) and product activation.
- Key Procedural History: The complaint alleges that Plaintiff has previously filed suit in the same court to enforce the patents-in-suit, which it contends placed Defendants on notice. Notably, after the filing of this complaint, both patents-in-suit were subject to Inter Partes Review (IPR) proceedings initiated by Apple Inc. As a result of IPR2013-00081 and IPR2013-00080, all asserted claims of the '889 Patent and the '403 Patent, respectively, were subsequently cancelled in 2016.
Case Timeline
| Date | Event |
|---|---|
| 1997-04-30 | Earliest Priority Date ('889 and '403 Patents) |
| 1999-11-09 | U.S. Patent No. 5,982,889 Issues |
| 2001-01-09 | U.S. Patent No. 6,173,403 Issues |
| 2011-06-20 | Complaint Filed |
| 2016-04-21 | IPR Certificate Cancels Asserted Claims of '403 Patent |
| 2016-04-22 | IPR Certificate Cancels Asserted Claims of '889 Patent |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 5,982,889 - Method and Apparatus for Distributing Information Products, Issued Nov. 9, 1999
The Invention Explained
- Problem Addressed: The patent seeks to solve the problem of small-scale software piracy, where individuals purchase one copy of a program and install it on multiple computers, and the related problem of passwords or keys being shared publicly. (’889 Patent, col. 1:21-44).
- The Patented Solution: The invention proposes a system where an end-user’s computer generates a unique string ("R"). The user transmits this string to the software publisher. The publisher then uses "R" as a cryptographic key to encrypt authorization data—such as the user's identity and the specific products they purchased—into a "launch code." This unique launch code is sent back to the user, whose installer software uses the same string "R" to decrypt the code and authorize installation. (’889 Patent, Abstract; Fig. 4). This process ties a specific installation authorization to a specific user and transaction.
- Technical Importance: This method provided a more robust anti-piracy mechanism than a static, universal password by creating a unique, transaction-specific authorization token. (’889 Patent, col. 11:21-26).
Key Claims at a Glance
- The complaint asserts independent Claim 1. (Compl. ¶37).
- Essential elements of Claim 1 include:
- generating a string, R;
- encrypting a first authentication code, an indicium of an end-user's identity, an indicium of a first information product, and an indicium of a second information product with said string, R, as the key to create a launch code;
- decrypting said launch code with said string, R, to recover the encrypted data; and
- installing the information products onto the end-user's computer.
U.S. Patent No. 6,173,403 - Method and Apparatus for Distributing Information Products, Issued Jan. 9, 2001
The Invention Explained
- Problem Addressed: As with the parent '889 patent, this invention addresses the need for publishers to control the distribution and installation of software to prevent unauthorized use and piracy. ('403 Patent, col. 1:15-30).
- The Patented Solution: The '403 patent describes a method where the end-user's installer receives an encrypted launch code. The installer uses a string "R" as a key to decrypt this code. The decryption recovers a "candidate authentication code" and an indicium of the product to be installed. The installer then compares the recovered candidate code to a "known authorization code" stored within the installer. If the codes match, the product is installed. ('403 Patent, Abstract; col. 2:9-15).
- Technical Importance: This approach refines the activation process by potentially allowing for pre-generated launch codes, simplifying the authorization workflow compared to the interactive key exchange described in the '889 patent. ('403 Patent, col. 10:4-9).
Key Claims at a Glance
- The complaint asserts independent Claim 1. (Compl. ¶37).
- Essential elements of Claim 1 include:
- receiving an encrypted launch code;
- decrypting the encrypted launch code with a string, R, as a key to recover a first candidate authentication code and an indicium of a first information product; and
- installing the first information product when the candidate authorization code matches a first known authorization code.
III. The Accused Instrumentality
Product Identification
The complaint accuses numerous products from multiple defendants. For Symantec, the primary defendant, the accused instrumentalities are "the Norton family of products that require activation and the Symantec Security, Information Risk and Compliance, Storage, Infrastructure Operations, and Business Continuity products that require activation," as well as "Symantec's activation systems including its Licensing Portal and/or FileConnect." (Compl. ¶37).
Functionality and Market Context
The complaint alleges that these products employ "product activation technology." (Compl. ¶35). It further alleges that Symantec sells these products to entities in Texas. (Compl. ¶38). The complaint does not provide specific technical details about how the accused activation systems operate beyond the general assertion that they require activation to function.
Visual Evidence
No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint does not contain a detailed claim chart. The infringement allegations are based on the general assertion that the defendants' "product activation technology" meets the limitations of the asserted claims. (Compl. ¶35).
'889 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| generating a string, R; | The complaint alleges that Symantec's activation systems, when used with its products, perform the steps of the claimed method. (Compl. ¶37). | ¶37 | col. 11:10-14 |
| encrypting a first authentication code, an indicium of an end-user's identity, an indicium of a first information product, and an indicium of a second information product with said string, R, as the key to create a launch code; | The complaint alleges that Symantec's activation systems, when used with its products, perform the steps of the claimed method. (Compl. ¶37). | ¶37 | col. 11:32-44 |
| decrypting said launch code with said string, R, to recover said authentication code...; and | The complaint alleges that Symantec's activation systems, when used with its products, perform the steps of the claimed method. (Compl. ¶37). | ¶37 | col. 12:1-10 |
| installing said first information product and said second information product onto a computer associated with said end-user. | The complaint alleges that Symantec's activation systems, when used with its products, perform the steps of the claimed method. (Compl. ¶37). | ¶37 | col. 12:50-65 |
'403 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| receiving an encrypted launch code; | The complaint alleges that Symantec's products and activation systems, when used, receive an encrypted launch code. (Compl. ¶37). | ¶37 | col. 10:41-45 |
| decrypting said encrypted launch code with a string, R, as the key to recover a first candidate authentication code and an indicium of a first information product; and | The complaint alleges that Symantec's products and activation systems perform this decryption to authorize installation. (Compl. ¶37). | ¶37 | col. 10:46-48 |
| installing said first information product onto said computer when said candidate authorization code matches a first known authorization code. | The complaint alleges that installation of Symantec's products is conditioned on a successful activation process. (Compl. ¶37). | ¶37 | col. 11:18-26 |
Identified Points of Contention
- Evidentiary Questions: The complaint's lack of technical specifics raises the question of what evidence Plaintiff will offer to show that the accused activation systems perform the exact cryptographic steps of the claims. For the ’889 patent, a central question is whether the accused systems perform the two-way key exchange where the end-user's system "generates a string, R" that is then used by the publisher for encryption.
- Scope Questions: A likely point of dispute is whether a standard, pre-printed serial or license key qualifies as the dynamically "generat[ed]... string, R" of '889 Claim 1 or the "encrypted launch code" of '403 Claim 1. The patents appear to describe a more complex cryptographic object and process.
V. Key Claim Terms for Construction
Term: "generating a string, R" ('889 Patent, Claim 1)
- Context and Importance: The definition of this term is critical to determining if the claim reads on common activation systems that use pre-assigned license keys. Practitioners may focus on this term because the infringement case for the '889 patent hinges on whether "generating" requires a new, unique string created by the end-user's system for each transaction, or if it can be interpreted more broadly to cover the act of inputting any unique string.
- Evidence for a Broader Interpretation: The patent does not explicitly forbid the string from being pre-assigned, which could support an argument that any unique string used as a key meets the limitation.
- Evidence for a Narrower Interpretation: The specification states that the string "R" is "generated by the installer" and can be "based, in part, on the end-user's name," suggesting a dynamic process initiated on the end-user's machine rather than the passive receipt of a pre-made key. ('889 Patent, col. 11:10-17).
Term: "launch code" ('403 Patent, Claim 1)
- Context and Importance: This term's construction will determine whether any activation key infringes or if the key must be a specific type of encrypted data structure. The viability of the infringement claim depends on whether a typical software license key meets this definition.
- Evidence for a Broader Interpretation: A party could argue that any code which, when entered, "launches" the installation process fits the plain meaning of the term.
- Evidence for a Narrower Interpretation: The specification describes the launch code as the result of "encrypting a data structure" that comprises an authentication code, an indicium of the user's name, a product list, and expiration data, suggesting it is more than just a simple character string. ('403 Patent, col. 10:30-39).
VI. Other Allegations
Indirect Infringement
The complaint alleges that Defendants induce infringement by, among other things, "causing its customers to use" the accused products. (Compl. ¶37). This suggests a theory that Defendants provide the means (the software) and instructions for customers to carry out the infringing activation methods.
Willful Infringement
The complaint alleges willfulness "upon information and belief," asserting that Defendants were aware of the patents because Achates had "previously brought an action in this Court to enforce the '889 and '403 patents" and had marked its own software with the patent numbers. (Compl. ¶48).
VII. Analyst’s Conclusion: Key Questions for the Case
Procedural Viability
The most significant question for this case is its continued viability, given that all asserted claims in both patents-in-suit were cancelled in IPR proceedings that concluded in 2016. A court would need to determine how, or if, an infringement action filed in 2011 can proceed when its statutory basis has been retroactively eliminated by the USPTO.
Pleading Sufficiency
A threshold legal question is whether the complaint's general allegations that an unspecified "activation technology" performs the claimed methods are sufficient to state a plausible claim for relief, or if they represent the type of formulaic recitation of elements that may not survive a motion to dismiss under modern pleading standards.
Definitional Scope
Assuming the case proceeds, a central issue will be one of claim construction: can terms like "generating a string, R" and "launch code", which are described in the patents as part of a specific cryptographic exchange, be construed broadly enough to read on the potentially different mechanisms used in modern commercial software activation systems?