DCT

2:23-cv-00326

FrameTech LLC v. IBM Corp

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Key Events
Complaint
complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:23-cv-00326, E.D. Tex., 07/13/2023
  • Venue Allegations: Plaintiff alleges venue is proper because Defendant maintains an established place of business in the Eastern District of Texas and has committed acts of patent infringement in the district.
  • Core Dispute: Plaintiff alleges that Defendant’s unspecified mainframe computer products and services infringe patents related to methods and systems for automating the installation and configuration of mainframe computer operating systems.
  • Technical Context: The technology at issue addresses the historically complex, time-consuming, and skill-intensive process of upgrading mainframe operating systems by automating the discovery of existing system settings and their application to a new installation.
  • Key Procedural History: The complaint notes that U.S. Patent No. 8,042,107 is a divisional of the application that resulted in U.S. Patent No. 7,194,737, indicating they share a common specification. No other prior litigation or administrative proceedings are mentioned.

Case Timeline

Date Event
2002-10-02 Priority Date for ’737 Patent and ’107 Patent
2007-03-20 Issue Date for U.S. Patent No. 7,194,737
2011-10-18 Issue Date for U.S. Patent No. 8,042,107
2023-07-13 Complaint Filed

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

U.S. Patent No. 7,194,737 - “System and method for expediting and automating mainframe computer setup,” Issued March 20, 2007

The Invention Explained

  • Problem Addressed: The patent describes the installation and maintenance of mainframe computer operating systems as an "arduous task" that is "considerably complex and time-consuming," typically requiring several days of work by a "skilled mainframe computer systems programmer" (’737 Patent, col. 1:31-44). The patent further notes that the pool of such skilled programmers is aging and shrinking, making efficient and automated solutions more critical (’737 Patent, col. 2:1-12).
  • The Patented Solution: The invention proposes a system where a client computer (e.g., a desktop PC) connects to a mainframe to automate the upgrade process. The system first performs a "discovery" process to gather detailed profile information about the mainframe's existing hardware and software configuration (’737 Patent, col. 2:30-38; Fig. 3). It then uses this information to generate, transfer, and automatically customize a new "base operating system," thereby preparing the mainframe for an Initial Program Load (IPL) with significantly less manual intervention (’737 Patent, Abstract).
  • Technical Importance: This automated approach was designed to reduce the time, cost, and specialized skill level required for mainframe system upgrades, addressing a growing problem of programmer scarcity in the enterprise computing market (’737 Patent, col. 2:12-18).

Key Claims at a Glance

  • The complaint asserts "one or more claims" without specifying them (Compl. ¶12). Independent claims 1 (method) and 11 (system) are representative.
  • Independent Claim 1 (Method):
    • Automatically receiving source profile information representing an existing hardware and software configuration on a mainframe.
    • Using a client computer to generate a base operating system.
    • Transferring the base operating system from the client to the mainframe.
    • Using the client computer to automatically customize the base operating system to incorporate elements from the source profile information.
  • Independent Claim 11 (System):
    • A "source profile information receiving module" to receive the existing configuration.
    • A "base operating system transfer module" to transmit a base OS from a client to the mainframe.
    • A "customizing module" to modify the base OS using the received configuration information.
  • The complaint does not explicitly reserve the right to assert dependent claims but refers generally to "one or more claims" of the patent (Compl. ¶12).

U.S. Patent No. 8,042,107 - “System and method for expediting and automating mainframe computer setup,” Issued October 18, 2011

The Invention Explained

  • Problem Addressed: As a divisional of the application for the ’737 Patent, the ’107 Patent shares an identical specification and thus addresses the same technical problems described above.
  • The Patented Solution: The solution is substantively the same as that described for the ’737 Patent, involving the automated discovery, transfer, and customization of a mainframe operating system from a client computer (’107 Patent, col. 1:20-43).
  • Technical Importance: The technical importance is identical to that of the parent ’737 Patent.

Key Claims at a Glance

  • The complaint asserts "one or more claims" without specifying them (Compl. ¶21). Independent claims 1 (method) and 5 (system) are representative.
  • Independent Claim 1 (Method): This claim recites a more detailed, multi-stage process than Claim 1 of the ’737 Patent, including the steps of:
    • Performing "system discovery" to determine existing components.
    • Storing the discovered information in a database.
    • Transferring OS components to the mainframe.
    • Combining and customizing the components.
    • Performing a first initial program load (IPL).
    • Receiving a selection of at least one optional product.
    • Installing the optional product.
    • Performing a second initial program load.
  • Independent Claim 5 (System):
    • A "system discovery module" to determine and store existing component information.
    • An "upgrade installation module" configured to combine components, perform a first IPL, receive a selection for an optional product, install it, and enable a second IPL.
  • The complaint does not explicitly reserve the right to assert dependent claims but refers generally to "one or more claims" of the patent (Compl. ¶21).

III. The Accused Instrumentality

  • Product Identification: The complaint does not identify any specific IBM products, methods, or services by name. It refers to the accused instrumentalities generally as "the Defendant products identified in the charts incorporated into this Count below (among the 'Exemplary Defendant Products')" (Compl. ¶12, ¶21). However, these charts (Exhibits 3 and 4) were not attached to the publicly filed complaint.
  • Functionality and Market Context: The complaint does not provide sufficient detail for analysis of the functionality or market context of any specific accused instrumentality. It makes only the conclusory allegation that the "Exemplary Defendant Products practice the technology claimed" by the patents-in-suit (Compl. ¶17, ¶26).

No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint states that Exhibits 3 and 4 contain claim charts comparing the asserted claims to the "Exemplary Defendant Products" (Compl. ¶17, ¶26). As these exhibits were not included with the complaint, a detailed element-by-element analysis is not possible. The infringement theory is therefore summarized in prose based on the complaint's narrative allegations.

  • ’737 Patent Infringement Allegations: The complaint alleges that IBM directly infringes the ’737 Patent by making, using, selling, or offering products that "practice the technology claimed" (Compl. ¶12, ¶17). The narrative theory suggests that IBM's accused products perform the automated process of discovering an existing mainframe configuration and using that information to install and customize an operating system, thereby satisfying all elements of the asserted claims (Compl. ¶17).
  • ’107 Patent Infringement Allegations: The complaint alleges that IBM's products directly infringe the ’107 Patent through a similar, but more detailed, automated process (Compl. ¶21). The infringement theory for this patent appears to track the more specific steps of its claims, including an initial installation and IPL, followed by the installation of optional products and a second IPL (Compl. ¶26).
  • Identified Points of Contention:
    • Pleading Sufficiency: A primary legal question is whether the complaint's allegations, which lack any identification of the accused products and rely on unattached exhibits, meet the plausibility pleading standard required by federal court rules. The defendant may argue the allegations are too conclusory to provide fair notice.
    • Factual Mismatch (’107 Patent): The specificity of the '107 Patent's claims, particularly the requirement for a two-stage IPL process separated by the installation of an "optional product," creates a high bar for proof. A key point of contention will be whether any of IBM's processes factually align with this precise, sequential method.
    • Technical Mismatch (’737 Patent): A central technical question will be the degree of automation in any accused process. The dispute may focus on whether IBM's tools "automatically customize" the system as claimed, or if they merely assist a human programmer who retains significant control and performs key configuration steps manually.

V. Key Claim Terms for Construction

  • For the ’737 Patent:
    • The Term: "automatically customize" (Claim 1)
    • Context and Importance: The scope of infringement will heavily depend on the level of automation required by this term. Practitioners may focus on this term because IBM could argue its processes are merely "automated assistants" that still require substantial human intervention, whereas FrameTech may argue that any significant reduction in manual steps meets the definition.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification describes the invention as automating a series of "directives typically required of a skilled mainframe computer systems programmer," suggesting a broad replacement of manual tasks (’737 Patent, Abstract).
      • Evidence for a Narrower Interpretation: The detailed flowcharts in Figures 4A-5C depict a highly specific, step-by-step process. A party could argue these embodiments define the specific meaning and bounds of what it means to "automatically customize."
  • For the ’107 Patent:
    • The Term: "optional product" (Claim 1)
    • Context and Importance: This term is critical to the structure of Claim 1, which requires installing such a product between a first and second IPL. Its definition will determine what kind of software installation can satisfy this limitation.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification states the invention "can be used to install extremely complex mainframe software applications, for example, WEBSPHERE MQ products," suggesting "optional product" could refer to a wide range of add-on software (’107 Patent, col. 3:53-57).
      • Evidence for a Narrower Interpretation: The specification lists specific examples of "optional products," including "DB2, a WEBSPHERE MQ application and TIVOLI" (’107 Patent, col. 13:10-14). A party could argue the term is limited to substantial, standalone applications of this type, rather than minor patches or utilities.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges induced infringement, stating that IBM knowingly encourages infringement by "distribut[ing] product literature and website materials inducing end users and others to use its products in the customary and intended manner that infringes" the patents (Compl. ¶15, ¶24).
  • Willful Infringement: The complaint asserts that the service of the complaint itself constitutes "actual knowledge" of infringement and that any continued infringement by IBM is therefore willful (Compl. ¶14, ¶23). No allegations of pre-suit knowledge are made.

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

  • A threshold procedural issue will be one of pleading sufficiency: can the complaint survive a motion to dismiss when it fails to identify a single accused product by name and relies on conclusory allegations and unattached exhibits?
  • A central evidentiary challenge will be one of factual correlation: assuming the case proceeds, can FrameTech produce evidence showing that IBM's real-world mainframe installation and upgrade procedures map directly onto the specific, multi-step sequences recited in the asserted claims, especially the two-IPL process of the ’107 Patent?
  • A key legal issue will be one of claim construction: the dispute will likely turn on the scope of foundational terms such as "automatically customize" and "optional product," which will determine whether IBM's processes fall inside or outside the boundaries of the patent claims.