DCT

2:24-cv-00198

Taasera Licensing LLC v. Joya Systems LLC

Key Events
Complaint
complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:24-cv-00198, E.D. Tex., 03/19/2024
  • Venue Allegations: Venue is alleged to be proper as Defendant is subject to personal jurisdiction in the district and engaged in alleged wrongful conduct, including directing a demand letter to an entity within the district.
  • Core Dispute: Plaintiff seeks a declaratory judgment that Defendant has no inventorship or ownership rights in a portfolio of patents Plaintiff acquired, and further alleges tortious interference with business relationships under Texas law.
  • Technical Context: The patents relate to the field of cybersecurity, specifically methods for attesting to the security and integrity of software applications and calculating security risks in computer networks.
  • Key Procedural History: The dispute arises from an October 2013 consulting agreement between Defendant and Taasera, Inc. (Plaintiff's predecessor-in-interest). Defendant allegedly obtained a default judgment against Taasera, Inc. for non-payment. Plaintiff, who acquired the patents from Taasera, Inc. in 2021, alleges the inventions were conceived before the 2013 agreement.

Case Timeline

Date Event
2011-02-17 Priority Date for U.S. Patent No. 8,327,441
2012-05-01 Priority Date for U.S. Patent Nos. 8,776,180; 8,850,588; 8,990,948; 9,027,125; 9,092,616
2013-10-01 Joya and Taasera, Inc. allegedly entered into a services agreement (approximate date)
2021-01-01 Plaintiff Taasera Licensing LLC purchased a group of patents from Taasera, Inc. (approximate date)
2024-03-04 Defendant Joya served a demand letter on Plaintiff Taasera Licensing
2024-03-19 Complaint Filing Date

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

U.S. Patent No. 8,327,441 - "System and Method for Application Attestation"

  • Issued: December 4, 2012

The Invention Explained

  • Problem Addressed: The patent addresses the trend of cloud computing and data center virtualization where enterprise software and IT infrastructure are provided by third parties, creating a need to verify the integrity and security of applications running in these environments (Compl. ¶3; ’441 Patent, col. 1:13-24).
  • The Patented Solution: The invention provides a system where a "runtime monitor" on a target platform examines the execution context of an application. This information is sent to an external "attestation service" which generates an "application artifact" and "application statements" that represent the application's level of trustworthiness in near real-time. These statements can then be used by identity providers or network enforcers to control user access to the application based on its verified security posture ('441 Patent, Abstract; Fig. 1).
  • Technical Importance: The technology aimed to provide dynamic, context-aware security controls for applications in virtualized environments, moving beyond static, topology-based security rules ('441 Patent, col. 2:40-49).

Key Claims at a Glance

The complaint does not assert any specific claims for infringement, as this is a declaratory judgment action regarding inventorship and ownership. The independent claims of the ’441 Patent provide context for the technology at issue.

  • Independent Claim 1 (Method):
    • Receiving, by an attestation server, a runtime execution context and a security context for an application.
    • Generating a report indicating security risks based on the received contexts.
    • Sending the report as an attestation result.
  • Independent Claim 14 (Apparatus):
    • A processing unit for receiving a runtime execution context and security context, generating a security risk report, and sending the report.
    • A memory for storing the report.
  • Independent Claim 22 (Apparatus):
    • A processing unit at a computing platform for generating a runtime execution context, sending it to an attestation service, receiving an application artifact for tracking changes, and updating the context.
    • A memory for storing the artifact.

U.S. Patent No. 8,776,180 - "Systems and Methods for Using Reputation Scores in Network Services and Transactions to Calculate Security Risks to Computer Systems and Platforms"

  • Issued: July 8, 2024

The Invention Explained

  • Problem Addressed: The patent identifies a need for systems that can provide runtime "operational integrity attestation" for both application security and user reputation, particularly in cloud-based environments where threats can be posed by both internal and external users (’180 Patent, col. 3:1-12).
  • The Patented Solution: The invention describes a security orchestration service that generates "runtime operational integrity profiles" to identify the level of threat or trustworthiness of subjects (e.g., devices, users, applications) in near real-time. The system calculates security risks by determining "subject reputation scores" based on a "calculus of risk" derived from various attributes and external information systems (’180 Patent, Abstract; col. 5:1-10).
  • Technical Importance: The technology aimed to create a more holistic security model by incorporating a subject's "risk posture" or reputation score into access control decisions, moving beyond simple credential verification (’180 Patent, col. 3:42-49).

Key Claims at a Glance

The complaint does not assert any specific claims for infringement. The independent claims of the ’180 Patent provide context for the technology at issue.

  • Independent Claim 1 (System):
    • A hardware processor.
    • A reputation broker configured to process a query for a reputation score and dispatch a request to a trust orchestrator.
    • The trust orchestrator is configured to initiate queries to information management systems, analyze responses, receive a hierarchical reputation score based on a calculus of risk, and send it to the broker.
  • Independent Claim 21 (Method):
    • Receiving a query for a reputation score.
    • Dispatching a request to generate a just-in-time reputation score.
    • Processing the request by initiating queries, analyzing responses, generating a score, and sending the score to a reputation broker.
    • Sending a reputation token to a service provider.

U.S. Patent No. 8,850,517 - "Runtime Risk Detection Based on User, Application, and System Action Sequence Correlation"

  • Issued: September 30, 2014

Technology Synopsis

The patent describes a method for assessing runtime risk by monitoring sequences of user, application, and system actions. It stores rules identifying specific action sequences and uses assessment policies to identify runtime risks and predict threats based on observed sequences, ultimately generating a behavior score for the application or device (’517 Patent, Abstract).

Asserted Claims

The complaint does not assert any specific claims for infringement.

U.S. Patent No. 8,850,588 - "Systems and Methods for Providing Mobile Security Based on Dynamic Attestation"

  • Issued: September 30, 2014

Technology Synopsis

This patent focuses on providing security for mobile devices through dynamic attestation. It discloses a method for scoring the trustworthiness of a mobile device based on the reputation of its associated users and the device itself. The system generates integrity alerts for execution anomalies and calculates risks to determine a "calculus of risk" for the device (’588 Patent, Abstract).

Asserted Claims

The complaint does not assert any specific claims for infringement.

U.S. Patent No. 8,990,948 - "Systems and Methods for Orchestrating Runtime Operational Integrity"

  • Issued: March 24, 2015

Technology Synopsis

The technology involves a security orchestration service that uses a graphical user interface (GUI) to manage the operational integrity of a computing platform. The system presents a data center-level dashboard, receives runtime integrity metrics, displays risk indicators, and provides remediation controls for infected systems (’948 Patent, Abstract).

Asserted Claims

The complaint does not assert any specific claims for infringement.

U.S. Patent No. 9,027,125 - "Systems and Methods for Network Flow Remediation Based on Risk Correlation"

  • Issued: May 5, 2015

Technology Synopsis

This patent describes a system for network flow remediation based on risk correlation. It uses a trust orchestrator and endpoint agents to perform a "calculus of risk" on a global security context. The system sends system warnings and endpoint threat intelligence and includes a remediation engine to receive directives to control the device or network flow (’125 Patent, Abstract).

Asserted Claims

The complaint does not assert any specific claims for infringement.

U.S. Patent No. 9,092,616 - "Systems and Methods for Threat Identification and Remediation"

  • Issued: July 28, 2015

Technology Synopsis

The invention provides a system for threat identification and remediation based on intelligence correlation and monitoring. A method provides runtime operational integrity by receiving a dynamic context with endpoint events and network endpoint assessments. A trust orchestrator correlates these events to generate an integrity profile for the system (’616 Patent, Abstract).

Asserted Claims

The complaint does not assert any specific claims for infringement.

No probative visual evidence provided in complaint.

III. Other Allegations

  • Tortious Interference with Prospective Business Relationships: Plaintiff alleges that Defendant is aware of Plaintiff's licensing activities and has "purposefully and intentionally created a cloud on clear title to these patent assets" by sending the demand letter (Compl. ¶¶37, 38). This conduct is alleged to interfere with Plaintiff's ability to license the patents, resulting in damages of not less than $10 million (Compl. ¶¶38, 39).
  • Declaratory Judgment of No Inventorship/Ownership: Plaintiff seeks a court judgment declaring that Defendant Joya and its employees are not proper inventors of the patents-in-suit and have no ownership rights to them (Compl. ¶¶30, 34; Prayer for Relief ¶¶ a, b). This is based on the allegation that the inventions were conceived before the October 2013 contract between Joya and Taasera, Inc., and that the contract itself assigns all work product to the customer (Compl. ¶¶20, 32).

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

  • A key factual question will be one of timing: does evidence show that the inventions claimed in the patents-in-suit were conceived prior to the October 2013 consulting agreement between Defendant and Taasera, Inc., as Plaintiff alleges, or did Defendant contribute to conception or reduction to practice during the contract period?
  • A central legal issue will be one of contractual interpretation: does the consulting agreement's clause stating that work product is the "Customer's exclusive property" operate as an automatic assignment of any IP rights to Taasera, Inc., or could Defendant retain equitable ownership or inventorship rights, particularly in the alleged event of non-payment?
  • A third issue concerns the state law claim: can Plaintiff demonstrate that Defendant's demand letter, which asserts ownership rights, constitutes a tortious interference with Plaintiff's business relationships, or will it be considered a legitimate action to protect perceived intellectual property rights?