DCT
2:17-cv-00207
Soverain IP LLC v. Apple Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Soverain IP, LLC (Texas)
- Defendant: Apple, Inc. (California)
- Plaintiff’s Counsel: Capshaw Derieux, LLP
- Case Identification: 2:17-cv-00207, E.D. Tex., 03/16/2017
- Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas because Apple maintains offices and facilities in the state, is registered to do business in Texas, sells products to customers in the district, and has entered into contracts governed by Texas law.
- Core Dispute: Plaintiff alleges that Defendant’s e-commerce platform, secure messaging services, and operating system authentication features infringe four patents related to network data management, session-based access control, and credential management.
- Technical Context: The patents-in-suit relate to foundational technologies for managing client-server interactions and security in the nascent internet environment of the mid-1990s.
- Key Procedural History: The complaint states that two of the patents-in-suit, the ’447 and ’780 patents, previously survived inter partes reexamination proceedings where their claims were confirmed as patentable. It further notes that claims of the ’780 patent were the subject of a prior Markman claim construction order in the Eastern District of Texas in separate litigation. The complaint also references prior litigation against Amazon.com, which it alleges resulted in a $40 million license payment to Soverain for its patents.
Case Timeline
| Date | Event |
|---|---|
| 1995-06-07 | ’780 Patent Priority Date |
| 1995-10-25 | ’447 and ’706 Patents Priority Date |
| 1996-11-15 | ’634 Patent Priority Date |
| 1998-01-13 | ’780 Patent Issue Date |
| 2001-04-03 | ’634 Patent Issue Date |
| 2006-04-04 | ’780 Patent Reexamination Certificate Issued |
| 2007-03-13 | ’447 Patent Issue Date |
| 2012-10-05 | ’447 Patent Reexamination Certificate Issued |
| 2015-01-13 | ’706 Patent Issue Date |
| 2017-03-16 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,191,447 (“the ’447 Patent”) - Managing Transfer of Information in a Communications Network, Issued March 13, 2007
The Invention Explained
- Problem Addressed: The patent describes a need for systems to extract specific data from sources of network-based information (e.g., a web page) for use in other applications, without needing to manually process the entire source or include extraneous information (’447 Patent, Abstract).
- The Patented Solution: The invention discloses a system where an "object embedding program" implemented on a computer locates a "script program." This script program is then applied to network-based information to extract specific data and make it available over the network, for example, by embedding it within a compound document (’447 Patent, Abstract; col. 2:40-50). This allows for dynamic updating of information within one document (e.g., a spreadsheet) based on changes in another source document (e.g., a financial website).
- Technical Importance: This technology provided a method for creating dynamic, self-updating documents by linking them to live network data sources, a foundational concept for modern web applications and data integration (Compl. ¶24, ¶41).
Key Claims at a Glance
- The complaint asserts "one or more claims... including at least claim 5" (Compl. ¶85). Claim 5 depends from independent claim 1.
- Independent Claim 1 (Method):
- Executing an object embedding program implemented on a computer in a communications network to locate a script program from a link in the object embedding program,
- to apply said script program to network-based information, provided by one of a plurality of network servers, to which said object embedding program is linked by a link in said object embedding program,
- to extract said data from said network-based information, and
- to embed said data within a compound document implemented on a computer in said communications network.
- The complaint does not explicitly reserve the right to assert dependent claims but references claim 5.
U.S. Patent No. 8,935,706 (“the ’706 Patent”) - Managing Transfers of Information in a Communications Network, Issued January 13, 2015
The Invention Explained
- Problem Addressed: The patent addresses the problem of centrally managing numerous authentication credentials for computer users across different network services. Requiring users to enter a unique ID and password for each service is inconvenient, while using the same credentials for many services increases security risks (Compl. ¶45).
- The Patented Solution: The invention describes a system, such as a proxy server, that maintains a table of authenticating credentials for various network servers. When a user needs to access a service, the system receives a request for authentication from the network server, retrieves the appropriate credentials from its table, and transmits them to the server, thereby automating the authentication process for the user (’706 Patent, Abstract; Compl. ¶44).
- Technical Importance: This approach aimed to solve user authentication challenges in a networked environment by centralizing credential management in a way that could streamline access without compromising security (Compl. ¶45).
Key Claims at a Glance
- The complaint asserts "at least claims 1-5" (Compl. ¶115).
- Independent Claim 1 (Method):
- Receiving and storing, by an authentication management server, authentication credentials for each of a plurality of sources of network-based information in a table of pairs,
- wherein each pair stored in the table represents a subscription service network server and corresponding credentials for the subscription service,
- wherein each of the corresponding credentials comprises at least an associated asymmetric encryption key pair,
- receiving a request for authentication from the subscription service network server,
- in response to the request for authentication, retrieving the stored authentication credentials that are specific to the subscription service network server, and
- transmitting the retrieved authentication credentials to the subscription service network server.
- The complaint does not explicitly reserve the right to assert additional dependent claims beyond those listed.
U.S. Patent No. 5,708,780 (“the ’780 Patent”) - Internet Server Access Control and Monitoring, Issued January 13, 1998
- Technology Synopsis: The patent addresses the "stateless" nature of the early internet by teaching the use of a "session identifier" to permit web servers to recognize a series of requests from the same client during an online session. This identifier, appended to a URL, allows a server to control and monitor access to resources without requiring repeated authentication for each request (Compl. ¶51-53; ’780 Patent, Abstract).
- Asserted Claims: Claims 22, 23, 32, 33, 112-114, 127, 128, and 129 are asserted (Compl. ¶147). Claim 32 is an independent system claim.
- Accused Features: Apple's "NSURLSession" class and related APIs in iOS, macOS, tvOS, and watchOS, which allegedly append a unique session identifier to a URL path to process service requests between a client and a server (Compl. ¶124, ¶126-128). A code snippet from an Apple developer presentation is provided as an example of this functionality (Compl. p. 36).
U.S. Patent No. 6,212,634 (“the ’634 Patent”) - Certifying Authorization in Computer Networks, Issued April 3, 2001
- Technology Synopsis: The patent teaches a system for certifying specific authorizations, not just user identities. An authorizing computer creates an authorization certificate that certifies a holder is permitted to perform a specific action. This is accomplished by generating a new public/private key pair and embedding the new public key within the certificate itself, which is then transmitted to an authorized computer (’634 Patent, Abstract; Compl. ¶63).
- Asserted Claims: At least claim 4 is asserted (Compl. ¶166). Claim 4 is an independent method claim.
- Accused Features: Apple’s technology in iOS for certifying authorizations, which allegedly uses intermediate certificates containing "Certificate Attributes" or "Extensions" to identify what specific actions or programs a user is authorized to access (Compl. ¶153, ¶155-156). A diagram from Apple's "Cryptographic Services Guide" is included to show a certificate with these attributes (Compl. p. 42).
III. The Accused Instrumentality
Product Identification
- Accused of infringing the ’447 Patent: The Apple.com webstore (www.apple.com/shop/) and associated web browsers such as Apple Safari (Compl. ¶67, ¶71).
- Accused of infringing the ’706 Patent: Apple iMessage, FaceTime, Handoff, and iOS mobile devices (collectively, the "Apple '706 Products") (Compl. ¶98-99).
Functionality and Market Context
- Apple.com Webstore (’447 Infringement): The complaint alleges that when a user accesses the Apple.com webstore, the user's web browser (the "object embedding program") executes. This browser locates JavaScript links embedded in the website's HTML source files. These scripts are then applied to network-based information provided by Apple's web servers to extract data (e.g., product details) and embed it within the webpage for the user to view (Compl. ¶71-73, ¶80). A code excerpt from an "external.js" file allegedly used on the Apple Store website is provided as evidence (Compl. p. 25).
- Apple '706 Products: The complaint alleges these products manage authentication credentials for accessing data stored on Apple's network servers, such as iCloud (Compl. ¶101). For iMessage, a user's device generates public/private key pairs, and the public keys are sent to Apple's directory service (IDS) where they are associated with the user's phone number or email address (Compl. ¶104). This system allegedly stores and retrieves these credentials to authenticate users for various services (Compl. ¶101, ¶107). A diagram from Apple's "iOS Security Guide" illustrates the flow of encrypted messages and keys via iCloud and Apple Push Notification service (APNs) (Compl. p. 29).
IV. Analysis of Infringement Allegations
’447 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| executing an object embedding program implemented on a computer... | A web browser such as Apple Safari is executed on a viewer's computer connected to the internet. | ¶71 | col. 2:40-42 |
| to locate a script program from a link in said object embedding program... | The web browser locates embedded Javascript links within the Apple website's HTML source files provided by Apple web servers. | ¶72 | col. 2:42-44 |
| to apply said script program to network-based information... | The Apple website applies the script program to network-based information provided by Apple webservers. | ¶80 | col. 2:44-46 |
| to extract said data from said network-based information... | The application of the script program, such as the RetailAvailability-SearchViewController function, causes data to be extracted from a networked server. |
¶80 | col. 2:47-48 |
| and to embed said data within a compound document... | The system executes the object embedding program to embed the extracted data within a compound document implemented on a computer. | ¶83 | col. 2:48-50 |
Identified Points of Contention
- Scope Questions: A central question may be whether a standard web browser rendering an HTML webpage constitutes an "object embedding program" that "embeds said data within a compound document" in the manner contemplated by the patent, or if the claim scope is limited to contemporaneous technologies like OLE (Object Linking and Embedding).
- Technical Questions: The analysis may focus on whether the browser's action of locating a JavaScript file via a
<script>tag in HTML constitutes locating a script "from a link in said object embedding program", as required by the claim.
’706 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| receiving and storing... authentication credentials for each of a plurality of sources of network-based information in a table of pairs... | Apple stores a plurality of encrypted records, such as iMessage records, in at least one database. | ¶104 | col. 4:24-27 |
| wherein each pair stored in the table represents a subscription service network server and corresponding credentials... | The table used by the accused products is allegedly organized so that each pair represents a subscription service network server and its corresponding credentials. | ¶103 | col. 4:28-30 |
| wherein each of the corresponding credentials comprises at least an associated asymmetric encryption key pair... | Apple's iMessage service generates and stores credentials that include an RSA-1280 asymmetric key pair for each user device. | ¶104 | col. 4:31-33 |
| receiving a request for authentication from the subscription service network server... | In the HomeKit provisioning process, an iOS device asks an accessory to sign a challenge, which constitutes a request for authentication from a network server. | ¶107 | col. 4:34-36 |
| in response... retrieving the stored authentication credentials that are specific to the subscription service network server... | The Apple iMessage server receives device-specific RSA-1280 asymmetric key information. | ¶107 | col. 4:37-39 |
| and transmitting the retrieved authentication credentials to the subscription service network server. | The transmission of authentication credentials occurs following successful verification of a user's password. | ¶111 | col. 4:40-42 |
Identified Points of Contention
- Scope Questions: The dispute may center on whether Apple's Identity Service (IDS), a directory that associates public keys with user identifiers, meets the claim limitation of a "table of pairs" where each pair represents a "server and corresponding credentials".
- Technical Questions: A key factual question will be whether the sequence of events described for HomeKit or iMessage provisioning constitutes "receiving a request for authentication" from a "subscription service network server" that then triggers the retrieval and transmission of credentials as claimed.
V. Key Claim Terms for Construction
’447 Patent
- The Term: "object embedding program"
- Context and Importance: The definition of this term is critical, as infringement hinges on whether a standard web browser (e.g., Apple Safari) falls within its scope. Practitioners may focus on this term because Apple could argue it is limited to specific "compound document" technologies of the mid-1990s, such as OLE, rather than general-purpose web browsers.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification may describe the program in general functional terms as a tool that "embeds within a compound document" a link to an object, which could be argued to cover a browser rendering linked content within a webpage (’447 Patent, col. 2:40-50).
- Evidence for a Narrower Interpretation: The patent's background or specific embodiments may heavily reference OLE and OpenDoc, suggesting the inventor envisioned a more specific type of application than a web browser (’447 Patent, col. 2:37-39).
’706 Patent
- The Term: "table of pairs"
- Context and Importance: The infringement theory depends on mapping Apple's data storage architecture for user credentials to this specific structural limitation. The construction will determine whether a complex directory service or database qualifies as a "table of pairs."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification might use the term "table" generically to refer to any organized collection of data where credentials are associated with servers, potentially supporting a broad functional definition (’706 Patent, col. 4:24-27).
- Evidence for a Narrower Interpretation: The patent may include figures or descriptions of a more literal two-column data structure, which could support an argument that Apple's more distributed system for storing keys, device tokens, and user IDs does not meet the limitation.
VI. Other Allegations
- Indirect Infringement: The complaint alleges Apple induces infringement of the asserted patents. For the ’447 Patent, it alleges that Apple provides user manuals, product support, and marketing materials that instruct and encourage customers to use the Apple.com webstore in a manner that directly infringes (Compl. ¶88). Similar allegations are made for the ’706 Patent regarding Apple's instructions for using iMessage, FaceTime, and other services (Compl. ¶118).
- Willful Infringement: Willfulness is alleged for all asserted patents. The complaint bases this on Apple's alleged post-suit knowledge of the patents and its infringement. It further contends that Apple's infringement is "willful, wanton, malicious, in bad faith, deliberate, consciously wrongful, flagrant, or characteristic of a pirate" because Apple's competitors have allegedly paid considerable licensing fees for the same technology (Compl. ¶89, ¶119, ¶148, ¶167).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope and technological evolution: Can claim terms rooted in the mid-1990s computing landscape—such as "object embedding program" ('447 Patent) and "session identifier" ('780 Patent)—be construed to cover modern, general-purpose technologies like web browsers and standardized networking APIs ("NSURLSession"), or is their scope limited to the specific software architectures described in the patents' specifications?
- A key evidentiary question will be one of structural correspondence: Does Apple's system for managing user credentials across its ecosystem, which involves a directory service associating multiple keys and tokens with user accounts, meet the specific structural requirements of a "table of pairs" as claimed in the '706 patent, or is there a fundamental architectural mismatch?
- A central legal and factual question will be the impact of prior proceedings: How will the previous inter partes reexaminations of the '447 and '780 patents, and the prior Markman order construing terms in the '780 patent, influence claim construction and validity arguments in this case, particularly concerning the asserted means-plus-function claims?