Uniloc USA Inc v. Atlassian Corp PLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Uniloc USA, Inc. (Texas) and Uniloc Luxembourg S.A. (Luxembourg)
  • Defendant: Atlassian Corporation PLC (Australia) and Atlassian, Inc. (Delaware)
  • Plaintiff’s Counsel: Etheridge Law Group, PLLC
• Case Identification: 2:17-cv-00353, E.D. Tex., 04/25/2017
• Venue Allegations: Venue is alleged based on Defendants having committed acts of infringement in the district and transacting business there, including sales to customers in Texas.
• Core Dispute: Plaintiff alleges that Defendant’s HipChat voice and messaging system infringes three patents related to initiating a conference call from within an instant messaging application.
• Technical Context: The technology involves integrating real-time voice and video conferencing capabilities directly into enterprise instant messaging platforms to streamline the transition from text-based chat to a live conversation.
• Key Procedural History: The complaint notes that the patents-in-suit underwent extensive examination at the USPTO. Subsequent to the filing of this complaint, all three patents were subject to inter partes review (IPR) proceedings. These IPRs resulted in the cancellation of all asserted claims of the ’194 and ’000 patents, and the cancellation of two of the four asserted claims of the ’948 patent. The survival of the case may therefore depend entirely on the remaining asserted claims of the ’948 patent.

Case Timeline

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

U.S. Patent No. 8,571,194 - "SYSTEM AND METHOD FOR INITIATING A CONFERENCE CALL," issued October 29, 2013

The Invention Explained

• Problem Addressed: The patent family's background describes the inefficiency of conventional methods for starting conference calls, which often require participants to manually dial a number and enter a passcode or require a host to individually dial out to each participant, creating a clumsy user experience, particularly when escalating an existing instant messaging session to a voice call (’948 Patent, col. 1:49-65).
• The Patented Solution: The invention provides a method where a user within an instant messaging (IM) session can initiate a voice conference with other participants of that session through a single action. A central server receives this request, automatically identifies the session participants, and establishes a conference call connecting them, thereby streamlining the process (’194 Patent, Abstract; ’948 Patent, col. 3:50-58). The server-based approach is designed to abstract away the complexities of underlying telephone networks and PBX systems (’948 Patent, col. 2:35-43).
• Technical Importance: This technology aimed to bridge the gap between text-based collaboration and real-time voice communication, a critical step for improving the efficiency of enterprise software in an era of increasing remote work (’948 Patent, col. 2:3-13).

Key Claims at a Glance

• The complaint asserts independent claim 16 (Compl. ¶24).
• Essential elements of claim 16 (a non-transitory computer readable medium with instructions for a server) include:
  • Exchanging IM messages between a first party and at least one other party.
  • Sending an indication to the first party of whether the other party is connected.
  • Receiving a request from the first party to establish voice communication, where the request lacks a specific identification of the other party.
  • Determining the other party from information associated with the IM session after receiving the request.
  • Establishing the voice communication between the first party and the determined other party.
• Subsequent IPR proceedings resulted in the cancellation of claim 16.

U.S. Patent No. 7,804,948 - "SYSTEM AND METHOD FOR INITIATING A CONFERENCE CALL," issued September 28, 2010

The Invention Explained

• Problem Addressed: As the parent patent to the ’194 patent, it addresses the same technical problem: the cumbersome and inefficient process of initiating multi-party voice calls from within digital collaboration environments (’948 Patent, col. 1:19-2:2).
• The Patented Solution: The invention discloses a system where a user on a network access device (NAD) can generate a conference call request within an IM environment. A conference call server receives and parses this request to determine parameters (like participants and their contact info) and then automatically initiates a conference bridge to connect the parties, as illustrated in the system diagram in Figure 4 (’948 Patent, Abstract; Fig. 4).
• Technical Importance: The solution's value lies in its use of IM "presence" awareness and a centralized server to automate the setup of what was previously a manual, multi-step process, making voice collaboration more spontaneous and accessible (’948 Patent, col. 4:7-24).

Key Claims at a Glance

• The complaint asserts claims 3, 4, 34, and 35 (Compl. ¶37). Claims 3 and 34 are independent.
• Essential elements of independent claim 34 (a method for initiating a conference call) include:
  • Parsing a conference call request to determine parameters associated with it.
  • Automatically initiating a conference call in accordance with those parameters between the requester and potential targets.
• The complaint also asserts dependent claims 4 and 35. Subsequent IPR proceedings resulted in the cancellation of claims 3 and 4, while claims 34 and 35 appear to have survived.

U.S. Patent No. 7,853,000 - "SYSTEM AND METHOD FOR INITIATING A CONFERENCE CALL," issued December 14, 2010

• Technology Synopsis: As a continuation of the ’948 patent, this patent describes a similar system for simplifying the creation of conference calls. It focuses on a method where a user indicates a desire for a conference call from an IM session, and a server automatically establishes the call with the other participants of that session based on a single request (’000 Patent, Abstract).
• Asserted Claims: The complaint asserts claims 3 and 4 (Compl. ¶50).
• Accused Features: The accused functionality is the HipChat system's ability to initiate a voice or video call directly from a messaging window, allegedly comprising instructions for indicating potential targets and generating a conference call request from a single user action (Compl. ¶50). Subsequent IPR proceedings resulted in the cancellation of these asserted claims.

III. The Accused Instrumentality

Product Identification

The accused instrumentality is Defendant's "HipChat" voice and messaging system, including its browser-based web application and downloaded applications for various operating systems (Compl. ¶14).

Functionality and Market Context

The complaint alleges that HipChat is a system provided from servers that communicate with client applications (Compl. ¶15). It allows individuals in an instant messaging session to initiate a conference call with a "single click" (Compl. ¶17). The complaint provides visual evidence from Atlassian's website to support this. A screenshot from Defendant's website illustrates the user interface for starting a group video chat from within a HipChat room, highlighting the video call icon (Compl. ¶18). Further screenshots show that after initiation, an invitation message appears in the chat room for other participants to join (Compl. ¶19), and the system shows presence features indicating which members are in the chat (Compl. ¶23).

IV. Analysis of Infringement Allegations

’194 Patent Infringement Allegations

’948 Patent Infringement Allegations

Identified Points of Contention

• Mootness: The primary point of contention is procedural and potentially dispositive. The IPR-based cancellation of asserted claim 16 of the ’194 patent and claims 3 and 4 of the ’000 patent raises the question of whether the infringement counts for those patents are moot.
• Scope Questions: For the surviving claims of the ’948 patent, a key question may be whether the user's "single click" (Compl. ¶17) constitutes a "conference call request" that is "parsed" by a server as required by claim 34. The defense may argue that the client-side action and server-side processing do not align with the specific steps laid out in the patent.
• Technical Questions: The complaint lacks specific factual allegations about the inner workings of Atlassian's servers. A central question for the court will be what evidence shows that the accused system performs the specific function of "parsing" a request to "determine parameters" in the manner claimed, versus a more generic initiation process.

V. Key Claim Terms for Construction

Analysis focuses on terms from the surviving asserted claims of the ’948 Patent.

• The Term: "single request"

• Context and Importance: This term appears in the preambles and bodies of several claims (e.g., ’948 Patent, claim 34 preamble refers to claim 23, which recites "a single step"). Its construction is critical because the invention's purported advance is simplifying call initiation. Practitioners may focus on this term because infringement may turn on whether a user's single click maps to the legal definition of a "single request," or if the underlying network communications are considered multiple requests.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The specification suggests a broad, user-centric view, stating a user could request a call "with one step, such as through actuation of a 'call now' button or icon" (’948 Patent, col. 7:39-42).
  • Evidence for a Narrower Interpretation: The specification also describes more complex user flows, including selecting participants from a list, which could support an argument that the "request" is not a single, atomic event but a multi-part process (’948 Patent, Fig. 3, col. 7:42-45).

• The Term: "parsing said conference call request"

• Context and Importance: This term from claim 34 is central to the method's operation. The infringement analysis for this claim will depend heavily on what actions by Atlassian's servers constitute "parsing." The complaint provides no direct evidence on server-side operations.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: A party could argue for a general meaning of simply processing the incoming data from the user's client to identify the necessary information (e.g., the identities of users in a chat room).
  • Evidence for a Narrower Interpretation: The specification suggests a more formal, technical process, stating the "instant messaging service may be adapted to receive information in a tagged field format, such as HTML or XML, such that information contained in the message may be correctly parsed" (’948 Patent, col. 6:31-35). A party could argue this limits "parsing" to the syntactic analysis of a structured message.

VI. Other Allegations

• Indirect Infringement: The complaint alleges active inducement, stating that Defendants' instructions, user guides, and training videos instruct customers on how to use the allegedly infringing functionality. The complaint provides specific URLs to this instructional material (Compl. ¶¶ 27, 40, 53). It also alleges contributory infringement, arguing the messaging software module is a material part of the patented invention and not a staple article of commerce suitable for substantial non-infringing use (Compl. ¶¶ 28-29, 41-42, 54-55).
• Willful Infringement: The complaint does not contain an explicit allegation of pre-suit willful infringement. It establishes a basis for post-filing willfulness by pleading that "Defendants will have been on notice of the ['194, '948, and '000 Patents] since, at the latest, the service of this complaint," which may support a claim for enhanced damages for any post-suit infringement (Compl. ¶¶ 30, 43, 56).

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

• A core issue will be one of procedural viability: given that inter partes reviews have cancelled the asserted claims of two patents-in-suit and half of the asserted claims of the third, the central question is whether a viable case remains. The dispute will likely narrow to the surviving method claims 34 and 35 of the ’948 patent.
• A key evidentiary question will be one of technical proof: for the surviving claims, the case will likely depend on evidence obtained in discovery regarding the specific operations of Atlassian's back-end servers. Does the HipChat system technically "parse" a "conference call request" as required by the claim language, or is there a fundamental mismatch between the claim's requirements and the accused system's actual implementation?
• A final question will be one of claim scope: can the term "single request," which is central to the invention's alleged novelty, be construed to read on the accused single-click functionality, or will the court adopt a narrower definition that requires a more specific, structured message format as suggested by portions of the patent specification?