DCT

2:18-cv-00034

Flexijet Tech Inc v. Magicjack Vocaltec Ltd

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:18-cv-00034, E.D. Tex., 11/12/2018
  • Venue Allegations: Plaintiff alleges venue is proper because Defendant, a foreign corporation, maintains a regular and established place of business for research and development within the district.
  • Core Dispute: Plaintiff alleges that Defendant’s Voice over Internet Protocol (VoIP) dongles infringe five patents related to the use of autorun software on portable memory devices to provide protected services and copy protection.
  • Technical Context: The technology at issue involves embedding software on portable USB devices that automatically executes upon connection to a host computer, a functionality historically associated with CD-ROMs.
  • Key Procedural History: The complaint does not mention prior litigation between the parties, Inter Partes Review proceedings, or relevant licensing history.

Case Timeline

Date Event
2002-12-12 Earliest Priority Date for all Patents-in-Suit
2012-10-23 U.S. Patent No. 8,296,757 Issues
2013-09-10 U.S. Patent No. 8,533,352 Issues
2013-11-26 U.S. Patent No. 8,595,717 Issues
2015-05-26 U.S. Patent No. 9,043,482 Issues
2015-08-25 U.S. Patent No. 9,116,723 Issues
2018-11-12 Complaint Filed

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

U.S. Patent No. 8,296,757 - "Copy Protection of Software and/or Data"

  • Issued: October 23, 2012

The Invention Explained

  • Problem Addressed: The patent describes a market need to provide the "autorun" functionality common to CD-ROMs for portable integrated circuit memory devices, such as those using a Universal Serial Bus (USB) interface, which conventionally lack this feature (’757 Patent, col. 1:46-51).
  • The Patented Solution: The invention embeds "autorun firmware" into a portable device's microcontroller, which allows an application stored on the device to run automatically upon connection to a host computer. A key aspect is a copy protection mechanism where software in a "protected memory component" authenticates itself before executing, effectively using the physical device as a security key to prevent unauthorized use or copying (’757 Patent, Abstract; col. 6:14-52; Fig. 8).
  • Technical Importance: This approach sought to combine the portability and convenience of USB flash storage with the software distribution and copy protection capabilities of optical media.

Key Claims at a Glance

  • The complaint asserts infringement of at least independent claim 1 (Compl. ¶25).
  • The essential elements of Claim 1 are:
    • A portable memory device connectable by a user to a host computing device for running protected software.
    • A controller for managing interaction between the device and the host.
    • A memory component with a "protected memory component" storing at least part of the protected software, which cannot be accessed and copied by the user.
    • "Autorun software" stored on the device that is executable on the host upon connection.
    • The autorun software includes components for: (i) running automatically, (ii) accessing the protected software after a successful authentication, and (iii) installing or executing the protected software on the host.
  • The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 8,533,352 - "Method for Internet Access and for Communication"

  • Issued: September 10, 2013

The Invention Explained

  • Problem Addressed: The patent background describes the difficulty and security risks of enabling wireless communication and services like printing for mobile devices, which often lack appropriate drivers and require complex configuration when connecting to new systems (’352 Patent, col. 1:12-43).
  • The Patented Solution: The invention is a portable communication device that connects to a first computing device (e.g., via USB) and enables phone calling by using a software component stored on the portable device itself. The device can also connect to a second computing device via an alternate interface (e.g., Ethernet) to provide phone service without the first computer, functioning as a standalone dongle (’352 Patent, Abstract; col. 4:40-67).
  • Technical Importance: This technology aimed to create self-contained, portable service dongles that simplify tasks like VoIP calling by embedding the necessary software and drivers directly on the device.

Key Claims at a Glance

  • The complaint asserts infringement of at least independent claim 1 (Compl. ¶47).
  • The essential elements of Claim 1 are:
    • A method for phone calling with a portable communication device distinct from a first computing device.
    • The portable device has a USB interface, a memory area inaccessible to a user, and a phone calling software component stored in that memory area.
    • The method includes connecting the device to the first computer's USB port and, while connected:
      • Drawing power from the computer.
      • Accessing the phone calling software from the device's memory.
      • Providing that software to a phone calling application on the computer.
      • Enabling phone calls through the portable device.
    • Upon disconnection from the first computer, the device is connectable to an Ethernet port of a second computer to enable phone calls.
    • The device functions as a portable dongle for phone calling when connected to either the USB or Ethernet interface.
  • The complaint does not explicitly reserve the right to assert dependent claims.

Multi-Patent Capsule: U.S. Patent No. 8,595,717

  • Patent Identification: U.S. Patent No. 8,595,717, "Memory Controller that Includes Support for Autorun of Software or Data," issued November 26, 2013.
  • Technology Synopsis: This patent focuses on an integrated circuit microcontroller that supports autorun functionality. It describes a method where the device first identifies itself to a host computer with one interface description (e.g., as a generic USB device) and can then "re-enumerate" to identify itself with a second description (e.g., as a virtual CD-ROM drive) to enable autorun (’717 Patent, col. 4:54-67).
  • Asserted Claims: At least claim 10 (Compl. ¶68).
  • Accused Features: The complaint alleges the magicJack devices perform an autorun method, present themselves to the host computer as a CD drive to run software, and contain a microcontroller (MCU/DSP) that manages this process (Compl. ¶70, ¶72, ¶80).

Multi-Patent Capsule: U.S. Patent No. 9,043,482

  • Patent Identification: U.S. Patent No. 9,043,482, "Portable Communication Device for Providing Phone Calling Service," issued May 26, 2015.
  • Technology Synopsis: This patent describes a portable communication dongle that provides phone calling services when connected to a host computer via USB. A central concept is that the device itself contains the necessary software and is required for the service to function, and it can also operate via an Ethernet connection without a host computer (’482 Patent, Abstract).
  • Asserted Claims: At least claim 6 (Compl. ¶88).
  • Accused Features: The complaint alleges the magicJack products are portable USB dongles containing phone calling software, a memory component, and a controller, and that they can be used with or without a computer via USB or Ethernet connections (Compl. ¶90, ¶91, ¶99).

Multi-Patent Capsule: U.S. Patent No. 9,116,723

  • Patent Identification: U.S. Patent No. 9,116,723, "Communication Device or Media Device for Providing Phone Calling Service, Internet Access Service, or Digital Content Service," issued August 25, 2015.
  • Technology Synopsis: This patent covers a media or communication device with non-transitory autorun software that interacts with embedded firmware to access a protected memory component. It claims a device that identifies itself to a host computer with a description analogous to a CD-ROM or mass storage device to facilitate the running of protected software (’723 Patent, Abstract; col. 8:8-25).
  • Asserted Claims: At least claim 10 (Compl. ¶108).
  • Accused Features: The complaint alleges the magicJack devices contain autorun software that identifies the device as a CD Drive, accesses a protected memory area to install telephony software, and provides a phone calling service (Compl. ¶110, ¶112, ¶113, ¶116).

III. The Accused Instrumentality

  • Product Identification: The "Accused Products" include the magicJack GO, magicJack Express, and magicJack Plus, as well as similar VoIP devices (Compl. ¶20).
  • Functionality and Market Context: The Accused Products are described as portable, integrated circuit VoIP devices that connect to a host computer's USB port to provide phone calling services (Compl. ¶20, ¶27). The complaint alleges these devices contain a microcontroller, a memory chip storing protected software, and firmware that causes the device to present itself to the host computer as a CD drive to automatically run the phone calling software (Compl. ¶29, ¶30, ¶31). A photograph of the magicJack Express circuit board identifies a controller and a memory chip (Compl. p. 7-8). The complaint alleges the software will not run unless the magicJack device is physically connected to the host computer (Compl. ¶34).

IV. Analysis of Infringement Allegations

8,296,757 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A portable memory device connectable by a user to a host computing device for enabling said user to run or execute...a protected software or data... The magicJack Express is a portable device that can be plugged into a personal computer or laptop to run phone calling software. ¶27 col. 5:56-61
a controller for controlling interaction between the portable memory device and the host computing device; The magicJack Express contains a microcontroller (MCU) or digital signal processor (DSP) that controls interaction with the host computer. A teardown photograph shows the controller component on the device's circuit board. ¶29; Compl. p. 7 col. 1:60-63
a memory component that includes a protected memory component storing at least part of the protected software...that cannot be accessed and copied by said user... The device has a Winbond flash memory chip that stores internal software. When plugged in, the device identifies as a CD Drive, but the software on it is protected and cannot be accessed or copied by the user. ¶30, ¶31; Compl. p. 11 col. 6:36-44
an autorun software stored on the memory device and executable on the host computing device upon connection... The device has autorun software that is executable upon connection to the host computer, causing a pop-up window to appear allowing the user to run the magicJack software. ¶32; Compl. p. 12 col. 5:66-col. 6:13
software for accessing...at least part of the protected software or data from the protected memory component...in dependence of a successful authentication... The autorun software authenticates itself before allowing access to the protected memory component, as the device must be verified and installed with host software to permit calls. ¶35 col. 6:25-30
software for installing, executing, or running, on the host computing device at least part of the protected software or data accessed from the protected memory component... The autorun software installs, executes, or runs the magicJack application on the host computer, enabling phone calling functionality. ¶36, ¶37 col. 6:49-52
  • Identified Points of Contention:
    • Scope Questions: The complaint alleges the device's software "cannot be accessed and copied by the user" because attempts to explore the emulated "CD Drive" fail (Compl. ¶31; Compl. p. 11). A central question may be whether this method of obfuscation meets the "protected memory component" and "successful authentication" limitations of Claim 1, or if the claim requires a more robust cryptographic or password-based protection scheme as described in the patent's specification (e.g., ’757 Patent, col. 6:25-35).
    • Technical Questions: What specific technical mechanism constitutes the alleged "authentication" (Compl. ¶35)? The complaint suggests that the device verifying "that it is installed with host software" is the authentication step. The court may need to determine if this hardware-presence check is sufficient to meet the claim limitation.

8,533,352 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A method for phone calling with a portable communication device that is plug connectable to an external USB port of a first computing device... The Accused Products are portable communication devices used for phone calling that have a USB interface for connecting to a host computer. ¶48, ¶49 col. 2:8-12
a memory component that includes a memory area not accessible to a user... The device has a Winbond memory chip with a private memory area that is not accessible to a user. ¶50; Compl. p. 24 col. 5:40-43
a phone calling software component stored in the memory area for executing at the first computing device... The private memory area stores a protected software component (the magicJack application) for execution on the host computer. ¶51 col. 1:53-57
while the portable communication device is being connected...draws power to the portable communication device from the first computing device... The magicJack device has numerous circuit components that require power drawn over the USB interface from the host computer. ¶55 col. 3:40-44
accessing at least part of the phone calling software component from the memory area...by the memory controller... The device's controller (MCU/DSP) accesses the protected software component from the private memory area when the device is connected to the host. ¶56 col. 4:50-59
upon disconnection...is further operable to connect the portable communication device to an external Ethernet port of a second computing device...to enable phone calling... The magicJack device can be used without a computer by connecting to a modem or router via an Ethernet interface to enable phone calling service. ¶99; Compl. p. 59 col. 1:57-67
wherein, the portable communication device further functions as a portable dongle... The magicJack device is a portable dongle that enables phone calling when connected to either a USB or Ethernet interface. ¶100 col. 2:30-32
  • Identified Points of Contention:
    • Scope Questions: The claim requires the device to function as a "portable dongle." While the accused products appear to fit the common understanding of this term, its construction in the context of the patent could be a point of dispute. Similarly, the distinction between a "memory area not accessible to a user" and the publicly accessible autorun.inf file (Compl. ¶52; Compl. p. 26) may raise questions about how these private and public areas are defined and partitioned as required by related patents in the family.
    • Technical Questions: What is the specific role of the "memory controller" in accessing the software? The complaint identifies an MCU/DSP as the controller and alleges it provides access to the software (Compl. ¶54), but the precise mechanism of this access may require further evidence.

V. Key Claim Terms for Construction

  • Term from '757 Patent, Claim 1: "protected memory component"

    • Context and Importance: The scope of this term is fundamental to the infringement allegation for the '757 patent. The dispute will likely center on what level of security or inaccessibility is required for a memory area to be considered "protected."
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification suggests protection can be achieved by various means, stating a section of memory "may be protected from public access by password protecting it or by physical security means such as a lock, among other means" (’757 Patent, col. 6:36-40). This language may support an interpretation that any mechanism preventing direct user access qualifies.
      • Evidence for a Narrower Interpretation: The specification also describes a specific software-based authentication process where an "application launcher authenticates itself to an authentication agent" before gaining access (’757 Patent, col. 6:25-30; Fig. 8). A defendant may argue this specific, active authentication step is required for a component to be "protected" under the patent.

  • Term from '352 Patent, Claim 2: "functions as a key for enabling...phone calling" (Note: Claim 2 depends from Claim 1)

    • Context and Importance: This term appears in a dependent claim but reflects a core concept described in the patents. Its construction is critical to defining whether the device performs a security function or is merely a passive hardware component. Practitioners may focus on this term because it elevates the device's function beyond simple data storage to one of access control.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The abstract of the related ’757 patent states the device "may act as a security key to protect software or data." The complaint alleges the phone software will not run unless the device is plugged in (Compl. ¶60, Compl. p. 34). This could support a broad view where hardware presence acts as the "key."
      • Evidence for a Narrower Interpretation: The specification describes "security management software (e.g., protocol encoding/decoding, encryption/decryption, and authentication)" as a function of the device's controller (’352 Patent, col. 6:3-5). A defendant could argue that "functions as a key" requires the device to perform one of these more active cryptographic or authentication functions, not just be physically present.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges inducement of infringement for all asserted patents. The basis for this allegation is that Defendant provides customers with instructions, such as in user manuals and packaging, that explicitly direct users to plug the Accused Products into a computer's USB port, thereby performing the infringing method (Compl. ¶41, ¶63, ¶83, ¶103, ¶119). An image from a user manual shows a diagram instructing the user to "Plug the magicJack into a USB port on your computer" (Compl. p. 19).
  • Willful Infringement: The complaint alleges willful infringement based on notice provided "since at least filing of the Complaint in this case" (Compl. ¶40, ¶62, ¶82, ¶102, ¶118). It alleges that Defendant has continued its infringing activities without modification after this date.

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

  • A core issue will be one of definitional scope: does the term "protected memory component," as used in the ’757 patent, encompass a system where a device emulates an inaccessible CD-ROM, or does it require a more active cryptographic authentication process as detailed in the patent's preferred embodiments?
  • A key functional question will be one of technical implementation: does the magicJack device's requirement to be physically connected for its software to operate satisfy the claim limitation that it "functions as a key," or does this term, in the context of the patent family, necessitate a higher standard of active security and authentication functions?
  • A central evidentiary question will be one of technological equivalence: can Plaintiff demonstrate that the architecture and operation of the accused magicJack dongles—which automatically install and run proprietary VoIP software from an on-board, user-inaccessible memory partition—fall squarely within the specific sequence of steps and component interactions claimed across the five asserted patents?