Uniloc USA Inc v. Kaspersky Lab Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Uniloc USA, Inc. (Texas) and Uniloc Luxembourg, S.A. (Luxembourg)
  • Defendant: Kaspersky Lab, Inc. (Massachusetts)
  • Plaintiff’s Counsel: Etheridge Law Group, PLLC
• Case Identification: 2:17-cv-00305, E.D. Tex., 04/12/2017
• Venue Allegations: Plaintiff alleges venue is proper because Defendant provides online services to subscribers residing in the Eastern District of Texas, has committed acts of infringement in the district, and has transacted business there.
• Core Dispute: Plaintiff alleges that Defendant’s software platform, including its security products, infringes patents related to remote software maintenance and the pausing and resuming of data transfer operations.
• Technical Context: The patents address technologies for managing software updates from a central server to remote computers and for improving user control over large file transfers.
• Key Procedural History: An inter partes review (IPR) was subsequently filed against U.S. Patent No. 6,564,229. The IPR resulted in the cancellation of claims 1-5 and 7-9. The complaint asserts claim 1 of the '229 patent, which is now cancelled. This development significantly impacts the viability of the infringement count related to the '229 patent.

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", Issued August 29, 2000

The Invention Explained

• Problem Addressed: In the 1990s, managing software updates across a distributed network of computers was complex and inconsistent. Different programs and operating systems had unique, often manual, update procedures, creating a need for a "common method of updating for all products" that could be managed from a central location ('228 Patent, col. 2:38-45).
• The Patented Solution: The patent describes a client-server system where a user at a "remote node" can request software service through a standardized "front end" interface ('228 Patent, col. 1:50-56). This request is sent to a "central site" which performs the necessary service (e.g., researching required fixes, applying updates) and returns the updated, executable code to the user's machine ('228 Patent, col. 2:54-63; Fig. 2). This centralizes the process and keeps the master source code secure at the central site.
• Technical Importance: This approach aimed to streamline enterprise software maintenance, reducing the burden on individual system administrators and ensuring consistency across a network.

Key Claims at a Glance

• Independent Claim 1:
  • interactively receiving a request for a computer program service from a customer at a remote location interface with optional service incorporation instructions of the remote location customer;
  • 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 ('228 Patent, Compl. ¶25).

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: Large file copy operations can consume significant system resources, slowing down or stalling other tasks a user wants to perform. Simply cancelling the operation is inefficient because any data already transferred would have to be re-copied later ('229 Patent, col. 2:1-7).
• The Patented Solution: The invention provides a user interface with a "pause" button for a file copy operation ('229 Patent, Fig. 1a). When paused, the system saves information about the operation's progress, such as an index pointing to the next block of data to be copied ('229 Patent, col. 2:18-21). A "resume" button then allows the operation to continue from where it left off, freeing system resources during the pause without losing progress ('229 Patent, Fig. 1b). For extended pauses (e.g., across a system reboot), this state information can be saved to a file ('229 Patent, col. 2:25-30).
• Technical Importance: This technology enhances user control over resource-intensive tasks, making computer use more efficient, particularly as file sizes for media and software grew.

Key Claims at a Glance

• Independent Claim 1 (Cancelled by IPR):
  • reading a first data portion from the source file;
  • writing the first data portion to the target file;
  • pausing the copying in response to a user requesting a pause operation from a user interface, wherein the computer system is available for other processing operations following the pausing;
  • reading a second data portion from the source file in response to the user requesting a resume operation; and
  • writing the second data portion to the target file.
• The complaint reserves the right to assert other claims ('229 Patent, Compl. ¶36).

III. The Accused Instrumentality

Product Identification

• The "Kaspersky platform," which includes various software titles such as "Kaspersky Internet Security" and "Kaspersky Total Security" that are updated through interaction with a remote server (Compl. ¶11, 25, 36).

Functionality and Market Context

• The accused products are security software that require regular updates of their "databases and application modules" to protect against new threats (Compl. ¶13).
• Users can initiate these updates manually via a taskbar menu or an in-application button, or the updates can run automatically (Compl. ¶12-13). The complaint provides a screenshot showing a user initiating an update by right-clicking a taskbar icon and selecting "Update" (Compl. ¶12).
• During an update, a user can pause the download process by clicking a red square icon (Compl. ¶18). The complaint includes a screenshot of a "Detailed Reports" screen showing an "Operation canceled by the user" along with the amount of data downloaded and the duration before the cancellation (Compl. ¶20). This screen is cited as evidence for the pause-and-resume capability.
• The complaint alleges that when resuming, Kaspersky's system "considers files just downloaded before the pause" (Compl. ¶19).

IV. Analysis of Infringement Allegations

'228 Patent Infringement Allegations

Identified Points of Contention

• Scope Questions: A central question may be whether the user's action of clicking a single "Update" button constitutes "interactively receiving a request for a computer program service with optional service incorporation instructions" as contemplated by the patent. The '228 patent's specification describes a more complex interface with menus for configuring specific service parameters (e.g., '228 Patent, Figs. 4, 7, 8). The court may need to determine if the simple update function falls within this potentially narrower scope.
• Technical Questions: What evidence demonstrates that Kaspersky's backend server performs the "determining the components" step in the claimed manner? The complaint asserts this occurs but provides limited direct evidence of the server-side process, beyond a screenshot indicating the client is "Receiving the list of files to download..." (Compl. ¶17).

'229 Patent Infringement Allegations

Note: The asserted independent claim, Claim 1, was cancelled in an IPR proceeding initiated after the complaint was filed. The following analysis is based on the allegations in the complaint as filed.

Identified Points of Contention

• Legal Questions: The primary issue is the cancellation of Claim 1, which likely renders Count II of the complaint untenable unless amended to assert a surviving claim.
• Technical Questions: Does the accused functionality of pausing a download from a server equate to pausing a copy operation as claimed? Furthermore, the evidence provided shows an "Operation canceled by the user" (Compl. ¶20), which raises the question of whether this is a true "pause and resume" function or a cancellation that requires restarting the download process, potentially from the beginning.

V. Key Claim Terms for Construction

For U.S. Patent No. 6,110,228

• The Term: "interactively receiving a request for a computer program service"
• Context and Importance: This term is at the heart of the infringement allegation. The dispute may turn on whether a simple "Update" button qualifies as an "interactive request for service," or if the claim requires a more detailed, multi-option user interaction as described in the patent's embodiments. Practitioners may focus on this term because its breadth will determine if the patent covers modern, streamlined update mechanisms.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The claim language itself is broad, not explicitly limiting the "request" to any specific format. One could argue any user-initiated action to obtain a service is an "interactive request."
  • Evidence for a Narrower Interpretation: The specification repeatedly shows detailed menu screens (e.g., '228 Patent, Fig. 4, "MAIN Select one of the following...") and configuration profiles ('228 Patent, Fig. 7) as the means for making a request. An argument could be made that these embodiments define the scope of an "interactive request," limiting it to more than a single-click action.

For U.S. Patent No. 6,564,229

• The Term: "pausing the copying"
• Context and Importance: This term is critical because the complaint's evidence shows a user "hitting the red square" to stop a download, and a report screen describes this as an "Operation canceled by the user" (Compl. ¶18, 20). The case may hinge on whether this "cancellation" is functionally equivalent to the claimed "pausing," which implies the ability to resume without loss of progress.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The patent's abstract describes the invention as allowing a user to "pause and subsequently resume a move or copy command" ('229 Patent, Abstract). Plaintiff may argue that any user-initiated suspension of a data transfer that can be continued later falls under this general concept.
  • Evidence for a Narrower Interpretation: The detailed description distinguishes "pausing" from "canceling" ('229 Patent, col. 2:1-7). The specification focuses on retaining progress by saving an index to the next data block, so that "the data that has already been copied would [not] have to be recopied" ('229 Patent, col. 2:3-4). Defendant could argue that if the "canceled" operation requires a full restart, it does not meet the definition of "pausing."

VI. Other Allegations

• Indirect Infringement:
  • '228 Patent: Plaintiff alleges inducement by claiming Kaspersky "intentionally instructs its customers to infringe through training videos, demonstrations, brochures, installation and/or user guides" (Compl. ¶27). It alleges contributory infringement on the basis that Kaspersky's software is a material part of the invention and not a staple article of commerce (Compl. ¶28-29).
  • '229 Patent: Similar allegations of inducement and contributory infringement are made, based on customer use of the Kaspersky platform in accordance with Kaspersky's instructions (Compl. ¶38-40).
• Willful Infringement: The complaint alleges willfulness will be established based on Defendant's knowledge of the patents "at the latest, the service of this complaint" (Compl. ¶30, 41). This is a standard post-filing willfulness allegation.

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

1. Impact of IPR: A threshold question is how the case proceeds given that Claim 1 of the '229 patent, the sole basis for Count II, has been cancelled. Will the plaintiff be permitted to amend the complaint to assert one of the surviving claims (e.g., independent claim 10), and if so, do the current infringement allegations support such a claim?
2. Claim Scope vs. Modern UI: For the '228 patent, a central issue will be one of definitional scope: does the claim term "interactively receiving a request for a computer program service," which the patent specification illustrates with detailed configuration menus, read on the streamlined, one-click "Update" function common in modern software and allegedly used by the accused product?
3. Functional Equivalence: For the '229 patent (should the case proceed on a surviving claim), a key evidentiary question will be one of functional equivalence: does the accused product's feature, described in the complaint’s own evidence as an "Operation canceled by the user," perform the specific function of "pausing" as required by the claims—that is, suspending and then resuming a data transfer from the point of interruption without loss of progress?