DCT

2:17-cv-00172

Uniloc USA Inc v. Big Fish Games Inc

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:17-cv-00172, E.D. Tex., 03/06/2017
  • Venue Allegations: Plaintiff alleges venue is proper because Defendant is deemed to reside in the district, has committed alleged acts of infringement in the district, and has purposefully transacted business in Texas.
  • Core Dispute: Plaintiff alleges that Defendant’s online game portal, which facilitates game downloads and updates, infringes two patents: one directed to remote software maintenance and another to pausing and resuming data copy operations.
  • Technical Context: The patents relate to technologies for software distribution and management over networks, a core function for online gaming platforms and digital storefronts.
  • Key Procedural History: Subsequent to the filing of the complaint, U.S. Patent No. 6,564,229 was subject to an Inter Partes Review (IPR2017-02148), which resulted in the cancellation of asserted claims 1-5 and 7-9. Asserted claims 6 and 10-16 survived the proceeding.

Case Timeline

Date Event
1994-12-28 U.S. Patent No. 6,110,228 Priority Date
2000-06-08 U.S. Patent No. 6,564,229 Priority Date
2000-08-29 U.S. Patent No. 6,110,228 Issue Date
2003-05-13 U.S. Patent No. 6,564,229 Issue Date
2017-03-06 Complaint Filing Date
2017-09-27 U.S. Patent No. 6,564,229 IPR Filed
2021-04-16 U.S. Patent No. 6,564,229 IPR Certificate Issued

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

U.S. Patent No. 6,110,228 - *"METHOD AND APPARATUS FOR SOFTWARE MAINTENANCE AT REMOTE NODES"*

  • Issued: August 29, 2000

The Invention Explained

  • Problem Addressed: The patent describes the difficulty and inefficiency of maintaining and updating software across a distributed network of remote computers. It notes that different software products often have unique updating methodologies, creating a lack of commonality and requiring significant manual "service research" to ensure all prerequisite fixes are installed correctly (’228 Patent, col. 2:1-46).
  • The Patented Solution: The invention proposes a centralized system where a user at a "remote node" sends a service request to a "central site." This central site, which maintains the master source code, performs the requested service (e.g., applying patches), rebuilds the executable code, and sends only the updated, ready-to-execute component back to the remote user. This eliminates the need for the remote user to have the source code or perform complex update procedures (’228 Patent, Abstract; col. 2:47-67). The overall process flow is illustrated in Figure 2 of the patent (’228 Patent, Fig. 2).
  • Technical Importance: This approach aimed to create a common, streamlined interface for software maintenance across disparate systems, reducing complexity for end-users and centralizing control over the software update process (’228 Patent, col. 2:40-46).

Key Claims at a Glance

  • The complaint asserts independent claims 1, 18, and 67. Independent claim 1 is representative and recites:
    • interactively receiving a request for a computer program service from a customer at a remote location interface;
    • providing the received request for service over the computer network to a service facility at the central computer site;
    • determining the components of the requested service at the central computer site; and
    • providing the results of the requested service over the computer network back to the customer at the remote location interface.
  • The complaint reserves the right to assert other claims, including dependent claims 6-7, 10, 18, 26, and 29 (Compl. ¶16).

U.S. Patent No. 6,564,229 - *"SYSTEM AND METHOD FOR PAUSING AND RESUMING MOVE/COPY OPERATIONS"*

  • Issued: May 13, 2003

The Invention Explained

  • Problem Addressed: The patent recognizes that copying large files can monopolize a computer's resources (processor, memory, network bandwidth), preventing or slowing down other user tasks. Simply canceling a large copy operation is inefficient, as all progress is lost and the entire file must be re-copied later (’229 Patent, col. 1:19-67).
  • The Patented Solution: The invention provides a user interface with a "pause" feature for file copy operations. When a user pauses a copy, the system saves the state of the operation, for example by storing an index pointing to the next block of data to be copied. The operation can later be resumed from that exact point, preserving the progress already made. For extended pauses (e.g., across a system reboot), this state information can be saved to a persistent file (’229 Patent, Abstract; col. 2:10-34).
  • Technical Importance: This technology allows users to temporarily free up system resources during a long data transfer without having to restart the entire process, improving user efficiency and control (’229 Patent, col. 1:56-67).

Key Claims at a Glance

  • The complaint asserts independent claims 6, 10, and 16, which survived an IPR proceeding. Independent claim 10 is representative and recites a system with a "copy tool" comprising:
    • means for reading a first portion of the data file;
    • means for writing the first portion to a new file;
    • means for pausing the copy tool in response to a user request, wherein the computer system is available for other processing operations;
    • means for resuming the copy tool in response to a user request;
    • means for reading a second portion of the data file in response to the resuming; and
    • means for writing the second portion to the second location.
  • The complaint reserves the right to assert other claims, including dependent claims 11-13 (Compl. ¶34).

III. The Accused Instrumentality

Product Identification

  • The "Big Fish Games portal," including its associated software and backend server architecture (Compl. ¶16, 34).

Functionality and Market Context

  • The complaint alleges the Big Fish Games portal is a software application that allows users to manage their purchased games (Compl. ¶11). Its functionality includes allowing a remote user to request updates from Big Fish Games' servers (Compl. ¶11, 16). The complaint provides a screenshot of the application's interface, which shows an "About the Big Fish Games app" dialog containing a "Check for Updates" button (Compl. ¶12). The portal is also used for downloading games, and the complaint alleges this download process can be paused and subsequently resumed by the user (Compl. ¶30-34). A screenshot shows a download in a "Download paused" state with an active resume button available to the user (Compl. ¶32).

IV. Analysis of Infringement Allegations

U.S. Patent No. 6,110,228 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
interactively receiving a request for a computer program service from a customer at a remote location interface... The complaint alleges that the Big Fish Games portal allows a user to request service, such as an upgrade, via the user interface. A screenshot shows a "Check for Updates" button. ¶11, 12, 16 col. 6:40-54
providing the received request for service over the computer network to a service facility at the central computer site; The complaint alleges the portal communicates users' requests for service to Big Fish Games' backend server architecture. ¶16 col. 6:1-6
determining the components of the requested service at the central computer site; and The complaint alleges the backend servers determine the service requested, such as providing an upgrade. ¶16 col. 5:25-40
providing the results of the requested service over the computer network back to the customer at the remote location interface. The portal allegedly provides the upgrade to the user in response to the request. ¶13, 16 col. 5:10-24

U.S. Patent No. 6,564,229 Infringement Allegations

Claim Element (from Independent Claim 10) Alleged Infringing Functionality Complaint Citation Patent Citation
a copy tool, the copy tool including: means for reading a first portion of the data file; The Big Fish Games portal software allegedly allows for downloading a first portion of a data file, such as a game. ¶34 col. 4:24-34
means for writing the first portion to a new file...; The portal software allegedly writes the first portion of the game file to the user's computer. ¶34 col. 4:24-34
means for pausing the copy tool in response to a user request...; The portal allegedly allows a user to pause the download via a "Pause" button, making the computer available for other operations. A screenshot shows a paused download. ¶31, 34 col. 4:35-42
means for resuming the copy tool in response to a user request; The portal allegedly allows a user to resume the download via a "Resume" button. ¶32, 34 col. 4:43-51
means for reading a second portion of the data file...; and Upon resumption, the portal allegedly allows a second portion of the game to be downloaded. ¶33, 34 col. 4:43-51
means for writing the second portion to the second location. The second portion of the game is allegedly written to the file on the user's computer. ¶33, 34 col. 4:43-51

Identified Points of Contention

  • Scope Questions: For the ’228 Patent, a central question may be whether the patent's architectural terms, such as "central computer site" and "remote location," can be construed to read on a modern client-server or cloud-based architecture. The specification's examples are rooted in 1990s-era mainframe technology (e.g., "System/370") (’228 Patent, col. 3:62-67), which may raise questions of scope when applied to Defendant's system.
  • Technical Questions: The asserted claims of the ’229 Patent are means-plus-function claims. Infringement will require a showing that the structure within the Big Fish Games portal that performs the claimed functions (e.g., pausing, resuming) is the same as or equivalent to the specific corresponding structures disclosed in the patent's specification, such as the algorithms detailed in the flowcharts of Figures 6 and 7 (’229 Patent, Figs. 6, 7). The complaint does not detail the specific software algorithms used by the accused portal.

V. Key Claim Terms for Construction

Term: "central computer site" (’228 Patent, Claim 1)

Context and Importance

  • The definition of this term is critical for determining whether the architecture of the accused system falls within the scope of the claims. Practitioners may focus on this term because Defendant may argue its modern, distributed cloud infrastructure is fundamentally different from the "central site" concept described in the 1994-filed patent.

Intrinsic Evidence for Interpretation

  • Evidence for a Broader Interpretation: The term itself is not explicitly limited in the claims. The specification describes it functionally as a site that includes a "service facility" for handling requests and a "data repository" for storing program files, which could arguably describe a modern backend system (’228 Patent, col. 5:1-10; Fig. 1).
  • Evidence for a Narrower Interpretation: The preferred embodiments and detailed descriptions repeatedly refer to mainframe computer systems, such as an IBM "System/370" or "System/390," as the CPU for the remote location, suggesting the "central site" is also envisioned as part of this type of architecture (’228 Patent, col. 3:62-67).

Term: "means for pausing the copy tool" (’229 Patent, Claim 10)

Context and Importance

  • As a means-plus-function limitation, the scope of this term is not its literal meaning but is instead limited to the corresponding structure disclosed in the specification and its equivalents. The infringement analysis for the ’229 patent will hinge on whether the accused portal's pausing mechanism is structurally equivalent to what is disclosed in the patent.

Intrinsic Evidence for Interpretation

  • Disclosed Structure: The corresponding structure disclosed in the specification for performing the "pausing" function includes the algorithm detailed in the flowchart of Figure 6. For an "extended pause," this structure involves receiving a pause file name (input 650) and writing the state of the copy operation—including the source file name, target file name, block size, and current block number—to that persistent file (outputs 660-690) (’229 Patent, Fig. 6). The infringement determination will depend on a comparison of this disclosed algorithm to the Defendant's accused software structure.

VI. Other Allegations

Indirect Infringement

  • The complaint alleges both induced and contributory infringement for both patents. The inducement claim is based on allegations that Big Fish Games provides "training videos, demonstrations, brochures, installation and/or user guides" that instruct customers on how to use the infringing features of the portal (Compl. ¶18, 36). The contributory infringement claim is based on the allegation that the Big Fish Games portal software is a material component of the patented inventions, is not a staple article of commerce, and is known to be especially made for use in an infringing manner (Compl. ¶19-20, 37-38).

Willful Infringement

  • The complaint alleges willfulness based on notice provided by the service of the complaint itself, asserting that by the time of trial, Defendant will have known of the patents and that its continued actions constitute willful infringement (Compl. ¶21, 39).

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

  • A core issue will be one of architectural scope: Can the term "central computer site" from the ’228 Patent, which is described in the context of a 1994-era mainframe environment, be construed to cover the modern, distributed client-server architecture allegedly used by the Big Fish Games portal?
  • A key evidentiary question will be one of structural equivalence: For the means-plus-function claims of the ’229 Patent, does the accused portal's software for pausing and resuming downloads use a structure that is identical or equivalent to the specific algorithms disclosed in the patent's flowcharts, particularly the creation of a "pause file" containing specific state data?
  • A central procedural question will be the impact of the IPR proceeding: How will the post-filing cancellation of the majority of the originally asserted claims of the ’229 Patent affect the litigation, focusing the dispute for that patent on a narrower set of surviving claims and potentially influencing damages models and settlement posture?