DCT
2:17-cv-00174
Uniloc USA Inc v. Nutanix Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Uniloc USA, Inc. (Texas) and Uniloc Luxembourg, S.A. (Luxembourg)
- Defendant: Nutanix, Inc. (Delaware)
- Plaintiff’s Counsel: Prince Lobel Tye LLP; Nelson Bumgardner PC
- Case Identification: 2:17-cv-00174, E.D. Tex., 03/06/2017
- Venue Allegations: Plaintiff alleges venue is proper because Defendant offers its products in the Eastern District of Texas, has committed acts of infringement in the district, and maintains regular places of business in Texas.
- Core Dispute: Plaintiff alleges that Defendant’s Prism software and associated backend architecture for managing software updates infringe a patent related to methods for software maintenance at remote computer nodes.
- Technical Context: The lawsuit concerns technology for managing and deploying software updates from a central server to remote computer systems, a core function in enterprise information technology infrastructure management.
- Key Procedural History: The complaint does not mention any prior litigation, Inter Partes Review (IPR) proceedings, or licensing history relevant to the patent-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 1994-12-28 | U.S. Patent No. 6,110,228 Priority Date |
| 2000-08-29 | U.S. Patent No. 6,110,228 Issues |
| 2017-03-06 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,110,228 - "METHOD AND APPARATUS FOR SOFTWARE MAINTENANCE AT REMOTE NODES"
- Patent Identification: U.S. Patent No. 6,110,228 (“the ’228 Patent”), "METHOD AND APPARATUS FOR SOFTWARE MAINTENANCE AT REMOTE NODES," issued August 29, 2000. (Compl. ¶9).
The Invention Explained
- Problem Addressed: The patent’s background section describes the complexity and lack of a common methodology for applying software updates ("fixes") to programs installed at various remote locations within a distributed computing network. It notes that different programs and operating systems have disparate update procedures, requiring system programmers to perform manual and error-prone "service research" to identify all necessary prerequisite fixes. (’228 Patent, col. 2:5-45).
- The Patented Solution: The invention discloses a system with a central service facility that communicates with remote customer nodes through a common interface. A customer at a remote node can submit a service request (e.g., for a software update). The central facility performs the necessary service research, applies the fix, and returns updated, executable code to the remote node. This centralizes the complex maintenance tasks and eliminates the need for source code to reside at the remote location. (’228 Patent, Abstract; col. 2:46-67; Fig. 1).
- Technical Importance: The described approach sought to standardize and simplify the process of software maintenance across heterogeneous, distributed computing environments, thereby improving efficiency and reducing the potential for errors. (’228 Patent, col. 2:40-45).
Key Claims at a Glance
- The complaint asserts independent claims 1, 25, 29, and 67, along with numerous dependent claims. (Compl. ¶16).
- Independent Claim 1, a method claim, includes the following essential elements:
- Interactively receiving a request for a computer program service from a customer at a remote location interface, with optional service incorporation instructions.
- Providing the received request over a computer network to a service facility at a central computer site.
- Determining the components of the requested service at the central computer site.
- 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 additional claims. (Compl. ¶16).
III. The Accused Instrumentality
Product Identification
The complaint identifies "Nutanix Prism software products ('Prism')" and the "associated backend server architecture" as the accused instrumentalities. (Compl. ¶16).
Functionality and Market Context
The complaint alleges that Nutanix Prism provides software that allows a user at a remote location to manage and update software. (Compl. ¶¶11-12). The system allegedly enables a remote user to request an upgrade via a user interface. A screenshot provided in the complaint shows a pull-down menu within the Prism software that presents an "Upgrade Prism Central" option for the user to select. (Compl. ¶13). In response to such a request, the system allegedly identifies available upgrades and presents them to the user, who may then initiate a download. (Compl. ¶¶14-15).
IV. Analysis of Infringement Allegations
Claim Chart Summary
The complaint does not contain a claim chart exhibit but provides a narrative infringement theory supported by screenshots. The following table summarizes the allegations for claim 1 of the ’228 Patent.
| 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... | A remote user interacts with the Prism software interface and selects the "Upgrade Prism Central" option from a menu to request a software update. A visual in the complaint depicts this pull-down menu. (Compl. ¶13). | ¶13, ¶16 | col. 26:10-14 |
| providing the received request for service over the computer network to a service facility at the central computer site | The user’s request, made from a remote location, is transmitted to Nutanix's backend server architecture. | ¶16 | col. 26:15-18 |
| determining the components of the requested service at the central computer site | Nutanix's system determines the service requested (e.g., provide an upgrade). A screenshot shows the system identifying the user's current software version (4.1.1) and an available compatible version (4.1.1.2) for download. (Compl. ¶14). | ¶14, ¶16 | col. 26:19-21 |
| and providing the results of the requested service over the computer network back to the customer... | Nutanix provides the upgrade to the user by presenting a "Download" button for the available software version. A visual in the complaint depicts this download option next to the identified available upgrade. (Compl. ¶15). | ¶15, ¶16 | col. 26:22-25 |
Identified Points of Contention
- Scope Questions: A potential issue is whether the terminology of the ’228 Patent, filed in 1994 with descriptions of "mainframe" and "VM/ESA" systems, can be construed to cover a modern, web-based hyper-converged infrastructure management platform like Nutanix Prism. (’228 Patent, col. 4:63-65, col. 5:60-62). The interpretation of what constitutes a "central computer site" in the context of modern distributed cloud architecture may be a point of dispute.
- Technical Questions: A question may arise regarding the "determining the components" step. The patent specification describes a detailed "service research" process that involves analyzing requisites, program errors, and service history. (’228 Patent, col. 7:35-56). It is an open question whether the accused functionality—allegedly identifying a current version and displaying a newer available version—is coextensive with the more complex process detailed in the patent's disclosure.
V. Key Claim Terms for Construction
"service facility at the central computer site"
- Context and Importance: The definition of this architectural term is critical for determining whether Nutanix's modern, potentially distributed backend infrastructure falls within the patent's scope. Practitioners may focus on this term because its construction will likely decide whether the patent's claims, rooted in a client-server architecture of the 1990s, can read on current cloud-based service delivery models.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent abstract mentions that in a "distributed implementation, the service site is provided as a central node and one or more slave nodes," and Figure 18 explicitly depicts such an architecture. (’228 Patent, Abstract; Fig. 18). This may support a construction that is not limited to a single, monolithic mainframe.
- Evidence for a Narrower Interpretation: The specification frequently refers to a "central mainframe computer processor" and a "central site" in a manner that could suggest a singular, centralized physical location or system, which may be argued as distinct from a geographically distributed cloud service. (’228 Patent, col. 2:10-12).
"determining the components of the requested service"
- Context and Importance: This term is central to the function of the claimed invention. Its interpretation will be key to establishing whether the accused Nutanix Prism system performs the claimed method. The dispute may turn on whether "determining components" requires the detailed "service research" described in the specification or if it can be met by a simpler version-checking process.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself is broad and does not explicitly require the complex "service research" steps. A party could argue that any process that identifies the necessary elements for a service (e.g., identifying the correct update file) meets the claim limitation.
- Evidence for a Narrower Interpretation: The specification provides a detailed description of "service research" as the process of "determining all of the changes necessary from the original program version to result in the fully updated program," including identifying "requisite fixes." (’228 Patent, col. 2:11-17). This could support an argument that the term should be limited to this more complex, disclosed functionality.
VI. Other Allegations
Indirect Infringement
The complaint alleges inducement of infringement, stating that Nutanix provides instructions to its customers on how to use the infringing Prism features through materials such as "training videos, demonstrations, brochures, installation and/or user guides" available on its corporate and other websites. (Compl. ¶18). It also alleges contributory infringement, asserting that the Prism software is a material part of the invention, is not a staple article of commerce, and is known to be especially made for use in an infringing manner. (Compl. ¶¶19-20).
Willful Infringement
The complaint makes a standard allegation of post-filing willfulness, asserting that Nutanix will be on notice of the ’228 Patent as of the service of the complaint and that any continued infringement will be willful and deliberate. (Compl. ¶21).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can claim terms rooted in the 1990s mainframe and client-server computing context (e.g., "service facility at the central computer site") be construed to read on the accused modern, distributed, web-based infrastructure management platform?
- A key evidentiary question will be one of functional matching: does the accused Prism system's process for identifying and providing an available software update perform the specific function of "determining the components of the requested service" as claimed and described in the ’228 Patent, which details a more complex "service research" process, or is there a fundamental mismatch in technical operation?