DCT

2:23-cv-00057

Authentixx LLC v. Umb Financial Corp

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:23-cv-00057, E.D. Tex., 02/15/2023
  • Venue Allegations: Venue is alleged to be proper based on Defendant maintaining an established place of business within the Eastern District of Texas and committing alleged acts of infringement in the district.
  • Core Dispute: Plaintiff alleges that Defendant’s unidentified products and services infringe patents related to methods for authenticating electronic content, such as web pages.
  • Technical Context: The technology addresses the risk of online fraud, such as phishing, by providing systems to verify that electronic content originates from its purported source.
  • Key Procedural History: U.S. Patent No. 7,631,191, one of two patents-in-suit, was the subject of an Inter Partes Review (IPR2014-00475), which concluded with a certificate issued on February 23, 2018, cancelling all asserted claims (1-23 and 25-32). The assertion of a patent with no remaining valid claims raises a significant threshold question regarding the viability of the infringement count related to it. U.S. Patent No. 10,355,863 was issued subject to a terminal disclaimer.

Case Timeline

Date Event
1999-09-09 Priority Date for ’863 and ’191 Patents
2009-12-08 U.S. Patent No. 7,631,191 Issues
2018-02-23 IPR Certificate Cancels All Claims of U.S. Patent No. 7,631,191
2019-07-16 U.S. Patent No. 10,355,863 Issues
2023-02-15 Complaint Filed

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

U.S. Patent No. 10,355,863 - "System and method for authenticating electronic content"

  • Patent Identification: U.S. Patent No. 10,355,863, "System and method for authenticating electronic content," issued July 16, 2019. (Compl. ¶9).

The Invention Explained

  • Problem Addressed: The patent describes the problem of consumers lacking confidence in the authenticity of web pages and emails, as fraudsters can easily copy corporate logos and use misleading URLs to conduct identity theft. (’863 Patent, col. 1:24-53). Existing security protocols like HTTPS were seen as insufficient to address this user-level verification problem. (’863 Patent, col. 1:63-2:5).
  • The Patented Solution: The invention proposes a system where an "authenticity marker" is embedded into electronic content. When a user requests a web page, an authentication server intercepts the content, inserts an "authenticity key," and returns it to the user. A client-side component, such as a browser plug-in, verifies this key and displays a pre-configured, user-defined "authenticity stamp" to signal that the content is genuine. (’863 Patent, Abstract; col. 2:12-30). This stamp can be a visual icon, a fractal image, or dynamic personal data known only to the user and the authentic source. (’863 Patent, col. 2:31-61).
  • Technical Importance: The technology aimed to create a user-centric, visually verifiable layer of security to combat spoofing and phishing attacks that exploit user trust in visual branding. (’863 Patent, col. 1:40-44).

Key Claims at a Glance

  • The complaint does not identify specific asserted claims, instead incorporating by reference "Exemplary '863 Patent Claims" from an unprovided exhibit. (Compl. ¶12, ¶14). The analysis below is based on independent claim 1.
  • Independent Claim 1: A method for authenticating a web page comprising the steps of:
    • storing at least one authenticity stamp in a preferences file located in a file location accessible by one or more designated servers;
    • creating, by the designated servers, an authenticity key with information to locate the preferences file;
    • receiving a request from a client computer for the web page;
    • creating formatted data corresponding to the web page;
    • receiving a request for the authenticity key;
    • sending the formatted data to the client computer;
    • providing the authenticity key for manipulation to determine the file location of the preferences file;
    • manipulating the key to determine the file location;
    • locating and retrieving the authenticity stamp from the preferences file; and
    • enabling the authenticity stamp to be displayed with the formatted data on the client computer.

U.S. Patent No. 7,631,191 - "System and method for authenticating a web page"

  • Patent Identification: U.S. Patent No. 7,631,191, "System and method for authenticating a web page," issued December 8, 2009. (Compl. ¶10).

The Invention Explained

  • Problem Addressed: The patent addresses the risk of users being deceived by fraudulent web pages that appear authentic by copying legitimate icons and using similar, but fake, URLs. (’191 Patent, col. 1:20-41).
  • The Patented Solution: The invention describes a method where a user's request for a web page is processed by a server that inserts an "authenticity key" into the page content. This modified page is then sent to the user, whose computer uses local software (e.g., a browser plug-in) to verify the key. If the verification is successful, a user-defined "authenticity stamp" is displayed, confirming the page's genuineness to the user. (’191 Patent, Abstract; col. 2:50-68).
  • Technical Importance: This approach provides a client-side, user-configurable method for authenticating web content, operating independently of the security of the communication channel itself. (’191 Patent, col. 1:42-51).

Key Claims at a Glance

  • The complaint asserts infringement of "Exemplary '191 Patent Claims" identified in an unprovided exhibit. (Compl. ¶18, ¶23).
  • Critically, an Inter Partes Review Certificate (IPR2014-00475) issued for the ’191 Patent on February 23, 2018, documents that claims 1-23 and 25-32 were cancelled. As there are no remaining claims, the patent appears to be unenforceable.
  • For context, the original independent claim 1 recited:
    • A method comprising: transforming, at an authentication host computer, received data by inserting an authenticity key to create formatted data; and returning the formatted data to enable the authenticity key to be retrieved and to locate a preferences file, wherein an authenticity stamp is retrieved from the preferences file.

III. The Accused Instrumentality

Product Identification

  • The complaint does not identify any specific accused products or services. It refers generally to "Exemplary Defendant Products" that are detailed in Exhibits 3 and 4. (Compl. ¶¶12, 18). These exhibits were not included with the publicly filed complaint.

Functionality and Market Context

  • The complaint does not provide sufficient detail for analysis of the accused instrumentality's specific functionality or its market context. No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint’s infringement allegations are conclusory and rely entirely on claim chart exhibits that were not provided with the public filing. (Compl. ¶¶14-15, ¶¶23-24). The complaint states that these charts compare the exemplary claims to the exemplary products and that the products "satisfy all elements" of the claims. (Compl. ¶14, ¶23). Without these charts or a narrative infringement theory in the complaint body, a detailed analysis of the infringement allegations is not possible.

  • Identified Points of Contention:
    • '863 Patent: A central point of contention will likely be factual. The infringement analysis will question whether the accused system performs the highly specific, multi-step client-server process recited in claim 1. This includes discrete steps such as creating an "authenticity key with information to locate the preferences file," receiving a separate request for that key, and using the key to locate a "preferences file" on the client side.
    • '191 Patent: The primary and dispositive point of contention is patent validity. Given that all claims of the ’191 Patent were cancelled in a prior IPR, the defendant may challenge whether Plaintiff has stated a claim for which relief can be granted, potentially through a motion to dismiss.

V. Key Claim Terms for Construction

'863 Patent

  • The Term: "preferences file"

    • Context and Importance: This term is critical because it defines the storage mechanism for the user-configured "authenticity stamp." The claim requires this file to be located through a complex interaction involving an "authenticity key" provided by the server. The construction of this term will determine whether modern browser storage mechanisms (e.g., cookies, local storage) meet this limitation.
    • Intrinsic Evidence for a Broader Interpretation: The term itself is generic and could be argued to cover any file or data store containing user preferences.
    • Intrinsic Evidence for a Narrower Interpretation: The specification describes this file as being stored in a "random directory to help obscure the location" and in a location "not readily known to the plug-in." (’863 Patent, col. 6:39-43; col. 12:1-3). This language suggests a specific implementation focused on security-through-obscurity, which could support a narrower construction that excludes standardized, easily accessible browser storage.

  • The Term: "authenticity stamp"

    • Context and Importance: This is the user-facing indicator of authenticity, and its definition is central to the invention's purpose. Whether a generic browser security icon (e.g., a padlock) meets this limitation will be a key question.
    • Intrinsic Evidence for a Broader Interpretation: The specification states that a user can "configure the stamp to be graphics only, text only or a combination thereof" and can specify its location, color, and other attributes, including audio. (’863 Patent, col. 4:18-26). This supports a broad reading covering various forms of notification.
    • Intrinsic Evidence for a Narrower Interpretation: The patent’s figures depict specific, stylized embodiments, such as a diamond-shaped "JOE'S SEAL OF APPROVAL" (Fig. 2) or an "A-OKAY" text overlay on an image (Fig. 3). A party could argue the term requires a distinct, user-customized graphical element, not a generic, uniform security indicator provided by a browser.

'191 Patent

As all claims of the ’191 Patent have been cancelled, claim construction for this patent is not a relevant issue for the case.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges induced infringement of the ’191 Patent. The alleged basis is Defendant’s sale of the accused products along with the distribution of "product literature and website materials" that instruct end users on how to use the products in an infringing manner. (Compl. ¶¶21-22).
  • Willful Infringement: The complaint does not use the term "willful," but it alleges the factual predicate for post-suit willfulness with respect to the ’191 Patent. It asserts that the filing of the complaint provides Defendant with "actual knowledge of infringement" and that any continued infringement is therefore knowing and intentional. (Compl. ¶¶20-22).

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

  1. Patent Enforceability: The primary threshold question is whether the infringement claim for the ’191 Patent can proceed. Given the public record of the IPR certificate cancelling all of the patent’s claims, a court will have to address why this patent is being asserted at all.
  2. Factual Proof of Infringement: For the ’863 Patent, the case will likely turn on a key evidentiary question: can the plaintiff demonstrate that the defendant's system architecture performs the specific, multi-part client-server data exchange recited in the asserted claims, particularly the steps related to the creation and use of an "authenticity key" to locate a "preferences file"?
  3. Definitional Scope: A central legal question for the ’863 Patent will be claim construction. Can claim terms rooted in the context of a 20-year-old client-side plug-in architecture, such as "authenticity stamp" and "preferences file", be construed broadly enough to read on the integrated security features of modern web platforms, or are they limited to the specific security-through-obscurity embodiments described in the patent?