DCT
2:17-cv-00375
Uniloc USA Inc v. Akamai Tech Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Uniloc USA, Inc. (Texas) and Uniloc Luxembourg, S.A. (Luxembourg)
- Defendant: Akamai Technologies, Inc. (Delaware)
- Plaintiff’s Counsel: Prince Lobel Tye LLP; Nelson Bumgardner PC
- Case Identification: 2:17-cv-00375, E.D. Tex., 05/01/2017
- Venue Allegations: Plaintiff alleges venue is proper because Defendant is deemed to reside in the district, has committed acts of infringement there, and has purposely transacted business in Texas, including deriving substantial revenue from Texas customers.
- Core Dispute: Plaintiff alleges that Defendant’s Akamai Download Manager infringes a patent related to pausing and resuming data copy and move operations.
- Technical Context: The technology addresses the management of large file transfers, such as software downloads over the internet, by enabling users to temporarily suspend and later resume the process without losing progress.
- Key Procedural History: An Inter Partes Review (IPR) was instituted against the patent-in-suit after the complaint was filed (IPR2017-02148). The proceeding resulted in the cancellation of claims 1-5 and 7-9, while claims 6 and 10-19 were confirmed as patentable. All claims asserted in this complaint (10-11, 14, 16, 18-19) survived the IPR challenge, which may strengthen their presumption of validity.
Case Timeline
| Date | Event |
|---|---|
| 2000-06-08 | U.S. Patent No. 6,564,229 Priority Date |
| 2003-05-13 | U.S. Patent No. 6,564,229 Issue Date |
| 2017-05-01 | Complaint Filing Date |
| 2017-09-27 | IPR Petition Filed against U.S. Patent No. 6,564,229 |
| 2021-04-16 | IPR Certificate Issued, confirming patentability of asserted claims |
II. Technology and Patent(s)-in-Suit Analysis
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: The patent's background section identifies the problem that large file copy operations are resource-intensive, which can "starve" other applications and cause them to slow down or halt (’229 Patent, col. 1:56-62). Canceling the operation to free up resources is inefficient, as it requires the user to re-copy the entire file from the beginning at a later time (’229 Patent, col. 2:1-7).
- The Patented Solution: The invention provides a system with a user interface feature to pause a file copy operation. When paused, the system saves the state of the operation—such as the source and target file names, the data block size, and an index pointing to the next block of data to be copied—allowing the operation to be resumed later from the exact point of interruption (’229 Patent, Abstract; col. 2:15-24). This process is depicted for both local file transfers (FIG. 2) and transfers over a network like the Internet (FIG. 4a).
- Technical Importance: This approach allows a user to temporarily suspend a non-critical, resource-heavy task to perform a more urgent one, thereby providing "increased flexibility and efficiency in their computer operating environment" without losing the progress of the initial task (’229 Patent, col. 13:61-66).
Key Claims at a Glance
- The complaint asserts independent claims 10 and 16, and reserves the right to assert dependent claims 11, 14, and 18-19 (Compl. ¶15).
- Independent Claim 10 (System Claim): Its essential elements are:
- A computer system with processors and nonvolatile storage devices.
- A "copy tool" that includes:
- means for reading a first portion of a data file and writing it to a new file.
- means for pausing the copy tool in response to a user request from a user interface.
- means for resuming the copy tool in response to a user request.
- means for reading a second portion of the data file after resuming.
- means for writing that second portion to the new file.
- Independent Claim 16 (Computer Program Product Claim): Its essential elements are:
- A computer program product on a computer-usable medium comprising:
- means for reading a first data portion from a source file.
- means for writing the first data portion to a target file.
- means for pausing the copying in response to a user request from a user interface.
- means for reading a second data portion from the source file in response to a resume request.
- means for writing the second data portion to the target file.
- A computer program product on a computer-usable medium comprising:
III. The Accused Instrumentality
Product Identification
- The Akamai Download Manager, also referred to as the Akamai NetSession Interface (Compl. ¶10-11).
Functionality and Market Context
- The complaint describes the Akamai Download Manager as a tool used for downloading large computer files, which provides features to "easily pause, resume, and stop the download process" (Compl. ¶10). The complaint includes a screenshot of the accused product downloading "Adobe Technical Communication Suite 2017," illustrating its function in a real-world use case (Compl. ¶12). This screenshot shows the download manager's user interface, including progress bars and file information (Compl. ¶12).
- The product is allegedly used by large technology companies such as Microsoft and Adobe to deliver their software to end-users, suggesting it has a significant market presence (Compl. ¶10-11).
IV. Analysis of Infringement Allegations
The complaint does not contain a formal claim chart but makes narrative allegations supported by screenshots of the accused product's user interface.
'229 Patent Infringement Allegations
| Claim Element (from Independent Claim 10) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| means for pausing the copy tool in response to a user request from a user interface, wherein the computer system is available for other processing operations following the pausing | The Akamai Download Manager provides a "pause key feature" that allows a user to pause a download. A screenshot shows a user interface with a pause button ("II" icon) next to a file being downloaded. | ¶13, ¶15 | col. 3:37-43 |
| means for resuming the copy tool in response to a user request | The Akamai Download Manager provides a "resume key" that allows a user to continue a paused download. A screenshot shows the user interface with a resume button ("►" icon) after the download was paused. | ¶14, ¶15 | col. 3:51-54 |
| means for reading a second portion of the data file in response to the resuming; and means for writing the second portion to the second location | The complaint alleges that "the user resuming the download in order to receive a second portion of the software from Akamai" infringes these elements. | ¶15 | col. 5:1-12 |
- Identified Points of Contention:
- Scope Questions: The asserted claims use "means-plus-function" language, which limits their scope to the specific structures disclosed in the patent's specification and their equivalents. A central question will be whether the software architecture of the Akamai Download Manager is structurally equivalent to the patent's disclosed method of creating and reading an "index file" or "pause file" containing the block number, source/target paths, and block size to manage the pause/resume state (’229 Patent, col. 4:40-55; FIG. 6).
- Technical Questions: The complaint alleges the function of pausing and resuming, but provides no direct evidence of the underlying technical mechanism used by the Akamai product. The dispute may focus on what evidence exists that the accused software performs the function in a way that is structurally equivalent to the detailed flowcharts and system diagrams in the ’229 patent specification, such as those in Figures 2, 6, and 7. The inclusion of an allegation under the doctrine of equivalents suggests Plaintiff anticipates a potential defense of non-literal infringement (Compl. ¶16).
V. Key Claim Terms for Construction
Given the use of means-plus-function limitations, the construction of the "means for" terms will be dispositive.
- The Term: "means for pausing the copy tool" (Claim 10)
- Context and Importance: This term is central to the invention. Its construction will determine the specific implementation details required for infringement. Practitioners may focus on this term because infringement will hinge on whether the accused product’s internal pause mechanism is structurally equivalent to the specific algorithm and data structures disclosed in the patent.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The function is broadly described as suspending the copy operation to free resources for other tasks (’229 Patent, col. 4:35-40). An argument could be made that any software module that achieves this functional outcome is covered.
- Evidence for a Narrower Interpretation: The specification discloses a specific corresponding structure: creating an "index file" that stores "the index of the next block to be read from [the] source file," along with file names and block size (’229 Patent, col. 4:40-55). For an "extended pause," the process involves writing this state information to a persistent "pause file" (’229 Patent, FIG. 6, elements 650-690). This suggests the "means" is not just any pause mechanism, but one that specifically involves creating and using a state file with these data elements.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement.
- Inducement is based on Akamai allegedly instructing customers on how to use the infringing pause/resume features through "training videos, demonstrations, brochures, installation and/or user guides" available on its websites (Compl. ¶17).
- Contributory infringement is based on the allegation that the Akamai Download Manager software is a material component of the patented system, is specially adapted for infringing use, and is not a staple article of commerce with substantial non-infringing uses (Compl. ¶18-19).
- Willful Infringement: The complaint alleges willfulness based on post-suit knowledge, stating that Akamai's continued infringement after being served with the complaint constitutes willful and deliberate conduct (Compl. ¶20).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of structural equivalence: As the asserted claims are in means-plus-function format, the case will likely turn on whether the internal software architecture of the Akamai Download Manager is legally equivalent to the specific structures disclosed in the '229 patent specification—namely, the system of creating and using an index or pause file that stores the next block number and other state data to resume a file transfer.
- A second key issue involves the impact of the IPR prosecution history. Although the asserted claims survived the IPR, the arguments made by the patent owner to distinguish the surviving claims from the prior art that invalidated other claims will be critical. The court will examine this history to determine the proper scope of the claims, which may narrow the grounds for finding infringement.