Uniloc USA Inc v. Ubisoft Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Uniloc USA, Inc. (Texas) and Uniloc Luxembourg, S.A. (Luxembourg)
  • Defendant: Ubisoft, Inc. (California)
  • Plaintiff’s Counsel: Prince Lobel Tye LLP
• Case Identification: 2:17-cv-00175, E.D. Tex., 03/06/2017
• Venue Allegations: Plaintiff alleges venue is proper because Defendant Ubisoft offers its accused Uplay products and services to customers in the Eastern District of Texas, has committed acts of infringement in the district, and derives substantial revenue from goods and services provided to customers in the state.
• Core Dispute: Plaintiff alleges that Defendant’s Uplay digital distribution platform infringes two patents related to remote software maintenance and the pausing and resuming of data copy operations.
• Technical Context: The technologies at issue concern the architecture for delivering software updates over a network and user-facing features for managing large file downloads, both of which are core functionalities for modern digital content platforms.
• Key Procedural History: Subsequent to the filing of this complaint, U.S. Patent No. 6,564,229 was the subject of an Inter Partes Review (IPR2017-02148). The resulting IPR certificate, issued April 16, 2021, cancelled claims 1-5 and 7-9. This is significant because the complaint asserts several of these now-cancelled claims, including independent claim 1. However, the complaint also asserts other claims that survived the IPR, including independent claim 10.

Case Timeline

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

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

The Invention Explained

• Problem Addressed: The patent's background section describes the complexity and lack of a standardized method for applying software updates ("fixes") to programs installed on remote computers within a distributed network. It notes that performing "service research"—the process of identifying all necessary prerequisite fixes for a given update—was often a manual and error-prone task for system programmers (’228 Patent, col. 2:4-23).
• 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 sends a service request to the central facility, which maintains the program's source code. The central facility then performs the necessary service research, applies the fix, and returns an updated, executable version of the program to the customer over the network ('228 Patent, Abstract; col. 4:36-62). This centralizes and automates the software update process.
• Technical Importance: This approach aimed to streamline patch management in complex, distributed computing environments by offloading the technical work of applying and verifying updates from remote administrators to a specialized central site ('228 Patent, col. 2:47-49).

Key Claims at a Glance

• The complaint asserts independent claim 1, among others (Compl. ¶15).
• The essential elements of independent claim 1 include:
  • Interactively receiving a request for a computer program service from a customer at a remote location interface, with optional instructions for service incorporation.
  • Providing the request over a network to a service facility at a central computer site.
  • Determining the components of the requested service at the central site.
  • Providing the results of the service back to the customer over the network.
• The complaint also asserts dependent claims 6-7, 10, 18, 25-26, 29, 67-68, and 70-71 (Compl. ¶15).

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

The Invention Explained

• Problem Addressed: Large file copy operations can consume significant system resources, making other applications slow or unresponsive. The patent notes that canceling a long copy operation is inefficient, as any data already transferred would have to be re-copied when the operation is restarted (’229 Patent, col. 1:21-34, col. 2:1-7).
• The Patented Solution: The invention provides a user interface with a "pause" feature that allows a user to temporarily suspend a file copy operation. The system stores the state of the operation—for example, by creating an index file that points to the next block of data to be copied. This allows the operation to be resumed later from the exact point it was paused, even after a system restart, thereby freeing up system resources for other tasks ('229 Patent, Abstract).
• Technical Importance: The technology provided users with greater control over resource-intensive file transfers, a particularly relevant feature for managing large downloads over increasingly popular computer networks like the Internet ('229 Patent, col. 1:36-54).

Key Claims at a Glance

• The complaint asserts independent claims 1 (now cancelled) and 10, among others (Compl. ¶33).
• The essential elements of surviving independent claim 10, a system claim, include:
  • One or more processors and nonvolatile storage devices.
  • A data file stored at a first location.
  • A "copy tool" that includes means for:
    • reading a first portion of the data file and writing it to a new file at a second location;
    • pausing the copy tool in response to a user request from a user interface;
    • resuming the copy tool in response to a user request; and
    • reading and writing a second portion of the data file after resuming.
• The complaint also asserts dependent claims 2-7, 10-13, and 16, though several of these have since been cancelled by IPR (Compl. ¶33).

III. The Accused Instrumentality

Product Identification

• The accused instrumentality is Defendant's "Ubisoft Uplay" software, also referred to as the "Uplay PC games portal," and its associated backend server architecture (Compl. ¶4, ¶15, ¶26).

Functionality and Market Context

• The complaint describes Uplay as a client application installed on a user's computer that communicates with Ubisoft's servers to deliver services. One such service is the delivery of game updates, or patches, which a user can configure to occur automatically (Compl. ¶12, ¶15). A screenshot in the complaint shows a settings panel for the Uplay client with a checkbox to "Enable automatic game updates" (Compl. p. 4).
• The Uplay portal is also described as a platform for distributing and downloading large files, such as game demos and full games, from Ubisoft's servers to a user's computer (Compl. ¶26, ¶28). During these downloads, the Uplay interface provides "Pause" and "Resume" buttons, which allegedly allow a user to suspend and later continue the file transfer (Compl. ¶29-31). The complaint provides a screenshot of a "Flashback" game demo being downloaded, showing a "Pause" button next to the progress bar (Compl. p. 10).

IV. Analysis of Infringement Allegations

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

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

Identified Points of Contention

• '228 Patent: A potential point of contention may be the contextual scope of the claims. The patent specification heavily describes the invention in an enterprise software context involving "system programmers" and mainframe systems like "VM/ESA" ('228 Patent, col. 2:4-8; col. 5:59-62). The dispute may turn on whether the consumer-facing game patching functionality of Uplay constitutes "software maintenance" as contemplated by the patent.
• '229 Patent: The infringement analysis for claim 10, which uses means-plus-function language, will raise the question of whether the structure of Ubisoft's Uplay software is equivalent to the specific algorithms disclosed in the '229 patent for pausing and resuming (e.g., Figures 5-7). Another question may be whether a network "download" from a server to a client is the same as a "copy" operation between a "source file" and a "target file" as those terms are used in the patent.

V. Key Claim Terms for Construction

• Term: "service facility" ('228 Patent, Claim 1)

  • Context and Importance: The definition of this term is central to whether Ubisoft's backend server infrastructure meets the claim limitations. Practitioners may focus on this term because the patent describes a facility with specific, distinct functional processors, which may not align with a general-purpose web server architecture.
  • Intrinsic Evidence for a Broader Interpretation: The abstract describes a "central software service site" that performs the requested service, which could be argued to cover any centralized server system that fulfills a client request ('228 Patent, Abstract).
  • Intrinsic Evidence for a Narrower Interpretation: The specification describes the "service facility 34" as including a "rebuild processor 36, a service application processor 38, and a service research processor 40" ('228 Patent, col. 4:47-49). This detailed breakdown may support a narrower construction requiring a more structured, multi-component system than what Ubisoft is alleged to use.

• Term: "copy tool" ('229 Patent, Claim 10)

  • Context and Importance: This term's construction is critical to determining if the Uplay download manager falls within the scope of the claims. The dispute hinges on whether a network download manager is a "copy tool."
  • Intrinsic Evidence for a Broader Interpretation: The patent explicitly states that it covers copying files over a network like the Internet and that the receiving computer may simply append incoming data to a file without needing detailed information ('229 Patent, col. 1:36-54; col. 5:38-44). This may support construing "copy tool" to include a download manager.
  • Intrinsic Evidence for a Narrower Interpretation: The primary embodiments shown in the figures depict local file-to-file copy operations, such as from "c:\bigfile.exe" to "d:\bigfile.exe" ('229 Patent, Fig. 1a). An argument could be made that the core invention disclosed is for local file management, potentially limiting the structural scope of the "means for" limitations within the "copy tool."

VI. Other Allegations

• Indirect Infringement: The complaint alleges that Ubisoft induces infringement by providing instructions, user guides, and demonstrations on its websites that direct customers to use the Uplay platform in an infringing manner—specifically, to obtain automatic updates (implicating the '228 patent) and to download games using the pause/resume functionality (implicating the '229 patent) (Compl. ¶17, ¶35).
• Willful Infringement: The complaint makes standard allegations that willfulness will be established based on Ubisoft's continued infringement after having been put on notice of the patents by the filing and service of the complaint (Compl. ¶20, ¶38).

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

• A core issue will be one of definitional scope: can the '228 patent’s claims, rooted in the specification's context of enterprise "software maintenance" for "system programmers," be construed to cover the automated "game update" feature of a consumer-facing digital distribution platform?
• A key question of procedural impact and claim construction will surround the '229 patent: given the IPR cancellation of asserted independent claim 1, can Plaintiff's case proceed on the surviving asserted system claim 10? If so, the dispute will likely turn on a structural analysis of the "means for pausing" and "means for resuming" limitations, questioning whether the accused Uplay software contains structures equivalent to the specific algorithms disclosed in the patent's specification.
• An evidentiary question will be one of functional operation: what evidence can be produced to show that Ubisoft's backend servers perform the specific, multi-step "service research" process as required by the '228 patent claims, as opposed to simply delivering a universal, pre-packaged update file?