Uniloc 2017 LLC v. Kaspersky Lab Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Uniloc 2017 LLC (Delaware)
  • Defendant: Kaspersky Lab, Inc. (Massachusetts)
  • Plaintiff’s Counsel: Etheridge Law Group, PLLC
• Case Identification: 2:19-cv-00219, W.D. Tex., 06/12/2019
• Venue Allegations: Plaintiff alleges venue is proper because Defendant is registered to do business in Texas, has transacted business in the district, and has committed alleged acts of infringement in the district.
• Core Dispute: Plaintiff alleges that Defendant’s software licensing and delivery system infringes two patents related to the network-based management and distribution of configurable software applications.
• Technical Context: The technology relates to centralized management and on-demand delivery of software applications in a client-server network environment, a foundational concept for modern software-as-a-service (SaaS) and enterprise software deployment.
• Key Procedural History: The complaint alleges that Defendant has been on notice of both patents-in-suit since at least the service of a complaint in a prior case, Uniloc USA, Inc. et al v. Kaspersky America, Inc., Case No. 2:16-cv-00871 (E.D. Tex.), which may be used to support allegations of willfulness.

Case Timeline

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

U.S. Patent No. 6,324,578 - "METHODS, SYSTEMS AND COMPUTER PROGRAM PRODUCTS FOR MANAGEMENT OF CONFIGURABLE APPLICATION PROGRAMS ON A NETWORK"

• Patent Identification: U.S. Patent No. 6,324,578, "METHODS, SYSTEMS AND COMPUTER PROGRAM PRODUCTS FOR MANAGEMENT OF CONFIGURABLE APPLICATION PROGRAMS ON A NETWORK," issued November 27, 2001.

The Invention Explained

• Problem Addressed: The patent addresses the difficulty of managing software applications in a distributed network where users may access the network from various client workstations with different hardware and connection types, making it challenging to maintain a consistent user experience and control software licenses (’578 Patent, col. 1:46-57; col. 2:12-24).
• The Patented Solution: The invention proposes a client-server system where an on-demand server manages application deployment. It utilizes a two-tiered preference system: a "configuration manager" program allows an administrator to set system-wide or mandatory preferences, while an "application launcher" program allows an end-user to set their own personal preferences. When a user requests to run an application, the server executes it using a combination of the administrator-set and user-set preferences, ensuring a consistent and properly configured experience regardless of the client device (’578 Patent, Abstract; col. 3:51-col. 4:20).
• Technical Importance: This approach provided a framework for user-centric, centralized software management in complex, heterogeneous enterprise networks, a shift away from device-centric configuration models (’578 Patent, col. 2:35-44).

Key Claims at a Glance

• The complaint asserts at least independent claim 1 (Compl. ¶21).
• Claim 1 requires:
  • Installing an application program having configurable preferences and authorized users on a server.
  • Distributing an application launcher program to a client.
  • Obtaining a "user set" of configurable preferences from an authorized user.
  • Obtaining an "administrator set" of configurable preferences from an administrator.
  • Executing the application program using both the user set and the administrator set in response to a user's request.

U.S. Patent No. 7,069,293 - "METHODS, SYSTEMS AND COMPUTER PROGRAM PRODUCTS FOR DISTRIBUTION OF APPLICATION PROGRAMS TO A TARGET STATION ON A NETWORK"

• Patent Identification: U.S. Patent No. 7,069,293, "METHODS, SYSTEMS AND COMPUTER PROGRAM PRODUCTS FOR DISTRIBUTION OF APPLICATION PROGRAMS TO A TARGET STATION ON A NETWORK," issued June 27, 2006.

The Invention Explained

• Problem Addressed: The patent addresses the challenge of efficiently deploying and registering new software from a central management server to other servers within a large, distributed network (’293 Patent, col. 1:46-2:13).
• The Patented Solution: The invention describes a method for automated software distribution. A central "network management server" prepares a "file packet" for a given application. This packet uniquely contains not just the application files, but also a "segment configured to initiate registration operations" at the destination. When this packet is distributed to a "target on-demand server," the registration segment automatically installs and configures the application, making it available to end-users without requiring manual administrative action on the target server (’293 Patent, Abstract; col. 5:36-49).
• Technical Importance: This method provided a model for automated, end-to-end software deployment and lifecycle management in large-scale, managed enterprise environments, aiming to reduce administrative costs and complexity (’293 Patent, col. 17:21-29).

Key Claims at a Glance

• The complaint asserts at least independent claim 1 (Compl. ¶33).
• Claim 1 requires:
  • Providing an application program to a network management server for distribution.
  • Specifying a source directory and a target directory for the distribution.
  • Preparing a file packet that includes a "segment configured to initiate registration operations" for the application at the target server.
  • Distributing the file packet to the "target on-demand server" to make the application available for use.

III. The Accused Instrumentality

Product Identification

• The complaint accuses "Kaspersky's software licensing and delivery system," including its "associated backend server architecture" and the "My Kaspersky" web portal (Compl. ¶¶12, 21, 33). Accused products include Kaspersky Total Security and Kaspersky Password Manager (Compl. ¶13).

Functionality and Market Context

• The accused system allows users to manage their Kaspersky software subscriptions through a centralized online portal. The complaint alleges that this system allows users to enter activation codes, check license status, and manage software installations across multiple devices (Compl. ¶¶13-17). The screenshot on page 3 of the complaint depicts the "My Kaspersky" portal, showing license duration and the number of devices covered, alongside a feature to add a new activation code (Compl. p. 3). This portal acts as a central hub for users to interact with Kaspersky's backend servers, which deliver and manage the software and its associated licenses.

IV. Analysis of Infringement Allegations

’578 Patent Infringement Allegations

• Identified Points of Contention:
  • Scope Questions: A central question is whether Kaspersky's consumer-facing licensing system implements the claimed two-tiered preference model. The case may turn on the definition of an "administrator set of... preferences" and whether it can be distinguished from the "user set" derived from an activation code or user account.
  • Technical Questions: What evidence demonstrates that the accused system obtains and uses a distinct "administrator set" of preferences, as required by Claim 1? The complaint's allegations on this element are conclusory and lack specific factual support tying them to the functionality of the "My Kaspersky" portal.

’293 Patent Infringement Allegations

• Identified Points of Contention:
  • Scope Questions: Does the accused system, which distributes software from a central server to end-user devices (e.g., PCs, mobile phones), fall within the scope of the claimed architecture, which describes distribution from a "network management server" to a "target on-demand server"? A dispute may arise over whether an end-user's device can be considered a "target on-demand server" as that term is used in the patent.
  • Technical Questions: What evidence supports the allegations that the accused system uses distinct "source and target directories" for distribution or that its software installers contain a specific "segment configured to initiate registration operations" that is distinct from a standard executable installer?

V. Key Claim Terms for Construction

Term from the ’578 Patent: "administrator set of... configurable preferences"

• Context and Importance: This term is critical because Claim 1 requires executing the application using both a user set and an administrator set. If the accused system is found to use only a single set of preferences (e.g., tied to a user's license key), it may not infringe. Practitioners may focus on this term because the distinction between the two sets appears to be a core aspect of the invention.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification defines an administrator simply as an authorized user designated to set certain preferences, which could arguably include any system-level or default settings not directly controlled by the end-user (’578 Patent, col. 3:55-61).
  • Evidence for a Narrower Interpretation: The patent's detailed description and figures consistently depict a formal, two-party system with a "configuration manager applet" for the administrator and a separate "application launcher applet" for the user, suggesting a more structured, role-based hierarchy than may exist in a direct-to-consumer product (’578 Patent, col. 8:49-67).

Term from the ’293 Patent: "target on-demand server"

• Context and Importance: Infringement of Claim 1 requires distributing a file packet to a "target on-demand server." The accused system distributes software to end-user client devices. The viability of the infringement claim may depend on whether an end-user's personal computer can be construed as a "target on-demand server."
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The patent defines "on-demand" functionally as a "server delivering applications as needed responsive to user requests" (’293 Patent, col. 6:11-14). Plaintiff may argue that an end-user's device, which receives and runs the application when requested, meets this functional definition.
  • Evidence for a Narrower Interpretation: The patent figures and description consistently illustrate a multi-tiered architecture where a central "Network Management Server" (20) distributes software to intermediate "on-demand servers" (22, 22'), which in turn serve fleets of "Clients" (24, 26'). This suggests the "target on-demand server" is an element of network infrastructure, not an end-user client device (’293 Patent, FIG. 1; col. 6:47-62).

VI. Other Allegations

• Indirect Infringement: The complaint alleges both induced and contributory infringement. Inducement is based on allegations that Defendant instructs its customers on how to use the system through "training videos, demonstrations, brochures, and installation and user guides" (Compl. ¶¶23, 35). Contributory infringement is based on the allegation that the accused software is a material part of the invention and not a staple article of commerce suitable for substantial non-infringing use (Compl. ¶¶25-26, 37-38).
• Willful Infringement: While not pleaded as a separate count, the complaint establishes a basis for willfulness by alleging that Defendant had pre-suit knowledge of both asserted patents. This knowledge is alleged to stem from a prior lawsuit filed in 2016, putting Defendant on notice "at the latest, the service of the complaint" in that matter (Compl. ¶¶27, 39).

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

• A central issue for the case will be one of architectural scope: can the patents’ claimed system, which appears rooted in a two-tiered, administrator-and-user model for enterprise networks, be construed to cover the accused direct-to-consumer software licensing and delivery system? This question applies to both the "administrator set" of preferences in the ’578 patent and the "target on-demand server" in the ’293 patent.
• A key evidentiary question will be whether the factual record supports the infringement allegations. Specifically, what evidence will show that Kaspersky’s system implements the distinct "administrator set" of preferences required by the ’578 patent, or that its software distribution method meets the specific steps of preparing and distributing a file packet with a "registration segment" as claimed by the ’293 patent?