DCT
2:18-cv-00080
Uniloc USA Inc v. Amazon.com Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Uniloc USA, Inc. (Texas) and Uniloc Luxembourg S.A. (Luxembourg)
- Defendant: Amazon.com, Inc. (Delaware)
- Plaintiff’s Counsel: Etheridge Law Group, PLLC
- Case Identification: 2:18-cv-00080, E.D. Tex., 03/15/2018
- Venue Allegations: Venue is alleged based on Defendant offering accused products to customers in the district and distributing products from facilities within the district.
- Core Dispute: Plaintiff alleges that Defendant’s Kindle e-book lending service infringes a patent related to a method for sharing a digital media library.
- Technical Context: The technology addresses the challenge of enabling legitimate, controlled sharing of digital media in a manner analogous to the physical lending of copyrighted works under the "first sale doctrine."
- Key Procedural History: The complaint does not mention any prior litigation, Inter Partes Review (IPR) proceedings, or licensing history related to the patent-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 2008-01-14 | ’089 Patent Priority Date |
| 2013-07-09 | ’089 Patent Issue Date |
| 2018-03-15 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,484,089 - "Method and system for a hosted digital music library sharing service"
- Patent Identification: U.S. Patent No. 8,484,089, "Method and system for a hosted digital music library sharing service," issued July 9, 2013.
The Invention Explained
- Problem Addressed: The patent describes a legal and technical tension in the digital media market. While consumers purchase DRM-free digital music files (e.g., MP3s), licensing terms often prohibit actions like lending or reselling that would be permissible for a physical item (like a CD) under the "first sale doctrine." The patent seeks an architecture to enable such sharing without running afoul of copyright law or enabling uncontrolled duplication (’089 Patent, col. 1:26-65).
- The Patented Solution: The invention proposes a hosted web service where a single, verified copy of a digital media file is maintained on a central server. When a "borrower" requests a file from an "owner," the service copies the file to the borrower's account and simultaneously removes it from the owner's account, thereby prohibiting the owner's access. This ensures only one user can access the file at a time, mimicking physical lending (’089 Patent, Abstract; col. 2:8-31). The system manages the transfer back to the owner after a borrowing period expires or upon recall (’089 Patent, col. 2:21-31).
- Technical Importance: The described system attempts to create a framework for a legitimate secondary market or sharing community for digital goods, a concept that has faced significant legal and technical hurdles compared to established markets for used physical media (’089 Patent, col. 1:60-65).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶¶ 11, 13-15).
- Essential elements of independent claim 1 include:
- A computer-implemented method performed by a server hosting a web service.
- Receiving a request from a borrower to borrow a digital copy of media from an owner.
- Verifying the digital copy was purchased by the owner via an ecommerce component of the web service and has not been downloaded.
- If verification fails, denying the request.
- If verification succeeds, copying the digital copy from the owner's account to the borrower's account.
- Simultaneously removing the digital copy from the owner's account to prohibit their access.
- The complaint also asserts claims 2, 10-11, and 15-16, and reserves the right to assert other claims (Compl. ¶15).
III. The Accused Instrumentality
Product Identification
- The accused products are collectively the "Kindle web service, Amazon servers, and Kindle e-readers" (Compl. ¶10).
Functionality and Market Context
- The complaint alleges that the Kindle web service is hosted on Amazon servers and provides a feature that "allows users to borrow 'Kindle' books (digital copy of media) from a Kindle book owner for up to 14 days" (Compl. ¶10). The complaint further alleges that the system involves checking that the digital copy was purchased and is not in use by the owner to enable the loan (Compl. ¶12). This functionality positions Amazon in the market for digital content distribution with features that extend beyond simple sales to include limited sharing capabilities.
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
- Claim Chart Summary: The complaint does not include a claim chart, but its allegations in paragraphs 10 through 12 support the following infringement theory for claim 1.
U.S. Patent No. 8,484,089 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| receiving a request to borrow the digital copy from the borrower | The Kindle web service receives requests from users to borrow Kindle books from other users. | ¶10 | col. 11:10-11 |
| verifying that the digital copy was purchased by the owner through an ecommerce store component of the web service and has not been downloaded to a personal computer by the owner | The system performs a check to confirm the digital copy (the book) was purchased and is eligible for lending. | ¶12 | col. 11:12-16 |
| copying the digital copy from the account of the owner into an account of the borrower thereby enabling access to the digital copy by the borrower through the web service | A borrowed Kindle book is made available to the borrower's account for a limited time. | ¶10, ¶12 | col. 11:24-28 |
| and removing the digital copy from the account of the owner thereby prohibiting access to the digital copy by the owner | During the loan period, the lending user is unable to access or use the borrowed book. | ¶12 | col. 11:28-31 |
- Identified Points of Contention:
- Scope Questions: The patent is titled and primarily describes a "digital music library sharing service" (’089 Patent, Title; col. 1:20-22). The infringement claim targets a service for lending "Kindle" books (Compl. ¶10). A dispute may arise over whether the term "digital copy of media" should be construed narrowly to cover only audio files, as exemplified throughout the specification, or more broadly to encompass other media types like e-books.
- Technical Questions: Claim 1 requires "removing the digital copy from the account of the owner." The patent specification suggests this can be a "move" primitive that adjusts pointers to the file's memory address (’089 Patent, col. 2:54-61). The case may turn on evidence of how Amazon's system technically implements the owner's inability to access a lent book. The question is whether merely placing a temporary lock or flag on the owner's copy constitutes "removing the digital copy" as required by the claim.
V. Key Claim Terms for Construction
The Term: "digital copy of media"
Context and Importance: This term's scope is central to whether the patent applies to the accused Kindle e-book service. The defendant may argue the patent is limited to the "digital music" context heavily featured in the specification, while the plaintiff will likely argue "media" is a broad term not limited by the examples.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim itself uses the general term "media" without limitation to music (’089 Patent, col. 11:5-7). The specification mentions that "alternative media and embodiments may be implemented," including "video, images, photos, podcasts, etc." (’089 Patent, col. 10:31-34).
- Evidence for a Narrower Interpretation: The patent's title, abstract, and background are exclusively focused on "digital music," "songs," and "DRM-free MP3s" (’089 Patent, Title; Abstract; col. 1:20-22). A defendant could argue these repeated, specific references define the context and intended scope of the invention.
The Term: "removing the digital copy from the account of the owner"
Context and Importance: This term defines the core technical mechanism for enforcing the "one user at a time" rule. The infringement analysis depends on whether Amazon's method of making a book unavailable to the lender meets this claimed limitation.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language does not specify how the removal must occur, only that its effect is "prohibiting access to the digital copy by the owner" (’089 Patent, col. 11:29-31). This could support an interpretation where any technical means of blocking access qualifies.
- Evidence for a Narrower Interpretation: The specification describes a "move" of the file, where it is "deleted or removed from the song owner's account" (’089 Patent, col. 5:35-37). It also describes the "move" as potentially being an operating system primitive that "adjusts source and target pointers" such that the copy is "never deleted from its original memory location" (’089 Patent, col. 2:54-61). A defendant may argue this points to a specific type of data management, not just a temporary access flag.
VI. Other Allegations
- Indirect Infringement: The complaint alleges active inducement, stating Amazon "intentionally instructs its customers to infringe" by providing "training videos, demonstrations, brochures, installation and/or user guides" available at specific URLs (Compl. ¶13). It also alleges contributory infringement, asserting that the Accused Products constitute a material part of the invention and are not a staple commodity suitable for substantial non-infringing use (Compl. ¶14).
- Willful Infringement: The complaint alleges willfulness based on notice provided by the service of the complaint itself, asserting that any continued infringement thereafter will be knowing and intentional (Compl. ¶15).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of claim scope: can the term "digital copy of media", which arises from a patent specification focused almost exclusively on sharing digital music, be construed broadly enough to read on the lending of digital e-books?
- The case will also involve a key question of technical mechanism: does Amazon's system, which makes a lent e-book temporarily unavailable to the owner, perform the function of "removing the digital copy from the account of the owner" as that phrase is used in the patent, or is there a material difference in the technical implementation that places it outside the claim's scope?
- A third question relates to infringement evidence: beyond conclusory allegations, what evidence will emerge to show that the accused Kindle service performs the specific "verifying" step of Claim 1, which requires checking both that the media was purchased through the service's own ecommerce store and that it has not been downloaded to a personal computer?