Softex LLC v. Absolute Software Corp

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Softex LLC (Delaware)
  • Defendant: Absolute Software Corp. (British Columbia, Canada) and Absolute Software, Inc. (Washington)
  • Plaintiff’s Counsel: McKool Smith, P.C.
• Case Identification: 1:22-cv-01308, W.D. Tex., 12/14/2022
• Venue Allegations: Venue is alleged to be proper in the Western District of Texas based on Defendant Absolute Software, Inc.’s regular and established place of business in Austin, Texas, where it allegedly employs personnel who design, test, market, and sell the accused products.
• Core Dispute: Plaintiff alleges that Defendants’ device security products, which feature "Persistence Technology," infringe seven patents related to creating tamper-resistant security software by embedding components in a device's firmware or non-viewable storage areas.
• Technical Context: The technology at issue involves persistent, firmware-level security software designed to survive attempts to disable it, such as reformatting a hard drive, thereby enabling the tracking, recovery, and data protection of stolen electronic devices.
• Key Procedural History: The complaint details a nearly two-decade history between the parties, alleging that Defendant was aware of the technology and associated patent applications as early as 2004. This history includes licensing discussions, due diligence performed by Defendant in 2008 for a potential acquisition of the patent owner, and a subsequent white-labeling agreement, all of which form the basis for Plaintiff's allegations of willful infringement.

Case Timeline

Date	Event
2003-06-XX	Softex representative contacts Absolute to discuss licensing technology.
2003-08-23	Earliest Priority Date for all seven patents-in-suit.
2004-01-XX	Absolute announces its "Computrace" software will be installed in Phoenix BIOS.
2004-02-17	Softex's counsel allegedly notifies Absolute of the provisional patent application.
2006-08-15	Softex's counsel allegedly notifies Absolute of the converted utility patent application.
2008-02-XX	Absolute allegedly completes due diligence on Softex's IP portfolio for a potential acquisition.
2009-09-15	U.S. Patent No. 7,590,837 issues.
2009-09-15	Softex allegedly emails Absolute a copy of the newly issued ’837 Patent.
2012-03-06	U.S. Patent No. 8,128,710 issues.
2012-03-20	U.S. Patent No. 8,137,410 issues.
2012-03-27	U.S. Patent No. 8,145,892 issues.
2012-10-16	U.S. Patent No. 8,287,603 issues.
2013-08-13	U.S. Patent No. 8,506,649 issues.
2013-08-20	U.S. Patent No. 8,516,235 issues.
2022-12-14	Complaint filed.

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

U.S. Patent No. 7,590,837 - “Electronic Device Security and Tracking System and Method”

The Invention Explained

• Problem Addressed: The patent’s background section describes the ineffectiveness of then-current device security methods. Physical attachments and password protection do not allow for tracking or recovery once a device is stolen, and traditional software-based solutions are easily circumvented because they are stored on viewable portions of hard drives that can be reformatted or replaced. (Compl. ¶38; ’837 Patent, col. 1:19-30, 18:34-37).
• The Patented Solution: The patent discloses a resilient, multi-part security system. The architecture consists of an application component running in the operating system, a "non-viewable" component stored in a hidden area of the device (like a protected hard drive partition), and a Basic Input/Output System (BIOS) component embedded in the device’s firmware. At boot-up, the BIOS component checks the integrity of the other two components and can restore them from a backup if they have been tampered with, creating a persistent security agent that is difficult for a thief to remove. (’837 Patent, col. 17:62-18:8).
• Technical Importance: This architectural approach aimed to create a truly persistent security solution that could survive common tampering methods, thereby increasing the likelihood of recovering stolen devices and protecting their data. (Compl. ¶38).

Key Claims at a Glance

• The complaint asserts at least independent Claim 1. (Compl. ¶84).
• The essential elements of Claim 1 of the ’837 Patent include:
  • An electronic device operable to support an operating system (OS) environment.
  • An application component to execute within the OS, configured to send location information to a server and determine if the device has been reported stolen.
  • A non-viewable security component comprising a validator module to determine if the application component is present and has been tampered with.
  • A non-volatile storage device comprising a secure area.
  • A basic input/output security (BIOS) component stored in the secure area.
  • The BIOS component is configured to check the integrity of the application component during a boot process, and to determine if the non-viewable component has been tampered with.
  • The BIOS component is further configured to automatically restore the integrity of the application component in response to a negative integrity check.
  • The BIOS component is also configured to prevent the device from booting the OS in response to a notification that the device has been reported stolen.

U.S. Patent No. 8,506,649 - “Electronic Device Security and Tracking System and Method”

The Invention Explained

• Problem Addressed: The patent addresses the same core problem as the ’837 Patent—the vulnerability of software-based theft prevention systems to tampering—but frames it more broadly for mobile electronic devices. (Compl. ¶44; ’649 Patent, col. 1:24-37).
• The Patented Solution: The invention is a mobile electronic device with a security application that utilizes code stored at least partially in a "system area" of memory that "cannot be modified by the user." This application periodically communicates with a remote security service. If the service sends a "device-loss notification," the application can automatically disable at least one user function while maintaining communication with the service, and can also automatically copy user data from the device to a server for recovery. (’649 Patent, col. 19:8-44, 34:15-37).
• Technical Importance: This technology adapted the concept of persistent security for the architecture of mobile devices and introduced the feature of remotely triggering a data backup after a device is reported stolen. (Compl. ¶¶45, 47).

Key Claims at a Glance

• The complaint asserts at least independent Claim 1. (Compl. ¶91).
• The essential elements of Claim 1 of the ’649 Patent include:
  • A mobile electronic device comprising a processor and non-transitory machine-readable storage medium.
  • A security application operable to perform operations including:
  • Causing the device to periodically communicate with a security service.
  • Accepting a notification from the service indicating the owner has reported a loss.
  • In response to the notification, automatically disabling at least one user function of the device while still allowing communication with the security service.
  • Automatically causing at least some user data to be copied from the device to a server.
  • The security application utilizes code residing at least partially in a system area that cannot be modified by the user.
  • The security application receives the notification from a server via the system area.

Multi-Patent Capsule: U.S. Patent No. 8,516,235

• Patent Identification: U.S. Patent No. 8,516,235, “Basic Input/Output System Read Only Memory Image Integration System and Method,” issued August 20, 2013. (Compl. ¶49).
• Technology Synopsis: This patent focuses on integrating a security and tracking application into a BIOS ROM image. The technology describes a system where a BIOS component checks the integrity of both a non-viewable security component and a user-level application component, and automatically restores the application component if it has been compromised. (Compl. ¶¶51-52).
• Asserted Claims: At least independent Claim 8. (Compl. ¶98).
• Accused Features: The accused features are the "Absolute Home & Office" products containing "Absolute Persistence Technology," which is allegedly embedded in the device firmware to provide a persistent, self-healing security agent. (Compl. ¶¶78-79).

Multi-Patent Capsule: U.S. Patent No. 8,145,892

• Patent Identification: U.S. Patent No. 8,145,892, “Providing an Electronic Device Security and Tracking System and Method,” issued March 27, 2012. (Compl. ¶55).
• Technology Synopsis: This patent describes a three-part security system (application, non-viewable, and BIOS components). After a security service is activated, the non-viewable component is operable to check if the application component has been tampered with, and the BIOS component is operable to check the integrity of both other components and automatically restore the application if an integrity check fails. (Compl. ¶¶57, 58).
• Asserted Claims: At least independent Claim 12. (Compl. ¶105).
• Accused Features: The accused features are the "Absolute Home & Office" products containing "Absolute Persistence Technology," which is allegedly embedded in the device firmware to provide a persistent, self-healing security agent. (Compl. ¶¶78-79).

Multi-Patent Capsule: U.S. Patent No. 8,137,410

• Patent Identification: U.S. Patent No. 8,137,410, “Electronic Device Disabling System and Method,” issued March 20, 2012. (Compl. ¶60).
• Technology Synopsis: This patent pertains to a system for device disabling using a hidden partition. The system first determines if the hidden partition is valid and, if so, loads a non-viewable component from it. That component, in turn, determines if the main application component loaded correctly during power-up and, if not, restores it from a backup fileset. (Compl. ¶¶62-63).
• Asserted Claims: At least independent Claim 8. (Compl. ¶112).
• Accused Features: The accused features are the "Absolute Home & Office" products containing "Absolute Persistence Technology," which is allegedly embedded in the device firmware to provide a persistent, self-healing security agent. (Compl. ¶¶78-79).

Multi-Patent Capsule: U.S. Patent No. 8,287,603

• Patent Identification: U.S. Patent No. 8,287,603, “Electronic Device With Protection From Unauthorized Utilization,” issued October 16, 2012. (Compl. ¶66).
• Technology Synopsis: This patent describes a system where an application component ascertains whether the device is stolen and determines if it is operating correctly. This status information is provided to a BIOS component, which will then prevent the device from completing a subsequent boot process if it does not find the information indicating correct operation. (Compl. ¶¶68-69).
• Asserted Claims: At least independent Claim 18. (Compl. ¶119).
• Accused Features: The accused features are the "Absolute Home & Office" products containing "Absolute Persistence Technology," which is allegedly embedded in the device firmware to provide a persistent, self-healing security agent. (Compl. ¶¶78-79).

Multi-Patent Capsule: U.S. Patent No. 8,128,710

• Patent Identification: U.S. Patent No. 8,128,710, “Electronic Device Security System and Method,” issued March 6, 2012. (Compl. ¶72).
• Technology Synopsis: This patent describes a persistent security system with an added remote data wipe capability. In addition to the integrity-checking functions of the BIOS and non-viewable components, the system is operable to present an option on a separate device (e.g., a user's phone or another computer) to confirm data erasure, and upon confirmation, cause the stolen device to erase its non-volatile storage. (Compl. ¶¶74-75).
• Asserted Claims: At least independent Claim 2. (Compl. ¶126).
• Accused Features: The accused features are the "Absolute Home & Office" products containing "Absolute Persistence Technology," which allegedly provide for remote data deletion. (Compl. ¶80).

III. The Accused Instrumentality

Product Identification

The accused products are Defendants' security software offerings, including "Absolute Home & Office," and products previously or concurrently marketed as "Absolute Computrace Persistence," "Absolute LoJack," "LoJack for Laptops," and "Computrace." (Compl. ¶¶7, 78).

Functionality and Market Context

The accused products are marketed as a "persistent security solution that can track and recover stolen devices." (Compl. ¶78). A core component, referred to as "Computrace" or "Absolute Persistence Technology," is allegedly "embedded in the firmware" of computers and other devices during the manufacturing process. (Compl. ¶79). Once activated, this firmware component allegedly enables the software to "self-heal" if it is removed or damaged. (Compl. ¶79). The system provides users with remote capabilities, including viewing a device's location, locking the device, and deleting files. (Compl. ¶80). The complaint includes a marketing graphic illustrating this functionality, which describes the technology as "Undeletable Security" that is "Built into the BIOS or firmware" and "cannot be deleted." (Compl. ¶81). Plaintiff alleges this technology is embedded in devices from "every major PC manufacturer." (Compl. ¶19).

IV. Analysis of Infringement Allegations

Since the complaint does not attach the referenced claim chart exhibits, the following tables summarize the infringement allegations based on the narrative descriptions in the complaint.

7,590,837 Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
an electronic device operable to support an operating system (OS) environment	The accused products are installed and operate on computers and tablets.	¶79	col. 35:46-49
an application component to execute within an OS environment... configured to cause the electronic device to send... a message that contains location information... and... to determine whether the electronic device has been reported stolen	The Absolute agent is installed in the OS, and the service allows a user to view a device's location on a map and remotely lock or delete files, which relies on determining the device's stolen status.	¶80	col. 35:50-58
a non-viewable security component in the electronic device comprising a validator module capable of determining whether the application component is present and... has been tampered with	The "Absolute Persistence" component self-heals the software if it is removed or damaged, which suggests a non-viewable component that monitors and validates the OS-level application.	¶79	col. 35:59-65
a non-volatile storage device comprising a secure area, [and] a basic input/output security (BIOS) component stored in the secure area	The "Absolute Persistence" component is "Built into the BIOS or firmware during the manufacturing process," which resides in a secure, non-volatile area of the device.	¶81	col. 35:66-36:3
the BIOS security component configured to check the integrity of the application component during a boot process	The "self-heal" functionality, which survives re-imaging or hard drive replacement, suggests an integrity check originating from the firmware/BIOS at boot.	¶79	col. 36:4-7
automatically cause the electronic device to restore the integrity of the application component in response to a negative integrity check	The accused products "will self-heal our software onto the device if we are removed," which is alleged to be an automatic restoration process.	¶79	col. 36:9-12
prevent the electronic device from booting the OS in response to receiving a notification that the electronic device has been reported stolen	The accused service allows a user to "remotely lock a device," which may be implemented by preventing the OS from booting.	¶80	col. 36:13-16

• Identified Points of Contention:
  • Technical Questions: A primary question will be whether the accused "self-heal" functionality operates via the specific mechanisms claimed. For example, what evidence demonstrates that the firmware component performs an "integrity check" on the "application component" and "restores" it, as opposed to simply re-installing a fresh copy from a stored image?
  • Scope Questions: The analysis may focus on whether the accused "Absolute Persistence" agent meets the definition of both a "non-viewable security component" and a "BIOS security component" as distinct but cooperative elements. The defense may argue its technology is a single, integrated firmware component that does not map onto the claim's multi-part structure.

8,506,649 Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
a mobile electronic device	The accused software is installed on computers and tablets.	¶81	col. 36:1-2
a security application operable to perform operations	The "Absolute Home & Office" software provides security services.	¶78	col. 36:4-6
causing the mobile electronic device to periodically communicate with the security service	The "Persistence" technology provides a "continuous, tamper-proof connection between devices, data, and the cloud-based Absolute console."	¶81 (p. 42)	col. 37:19-21
accepting a notification... indicating that the owner... has reported a loss	The service allows a user to remotely lock or delete files, which requires the device to accept a notification of its stolen status from Absolute's servers.	¶80	col. 37:22-26
automatically disabling at least one user function	The service allows a user to "remotely lock a device."	¶80	col. 37:27-31
automatically causing at least some user data to be copied from the mobile electronic device to at least one of the servers	The complaint alleges the service allows a user to "remotely delete some or all files from a device," but does not explicitly allege a data-copying or backup feature.	¶80	col. 37:32-35
the security application utilizes code residing at least partially in the system area that cannot be modified by the user	The technology is described as "Undeletable Security" that is "Built into the BIOS or firmware," which is an area not typically modifiable by the user.	¶81	col. 37:36-42

• Identified Points of Contention:
  • Technical Questions: A key factual question is whether the accused product performs the claimed step of "automatically causing at least some user data to be copied." The complaint focuses on location tracking, remote lock, and remote delete functions (Compl. ¶80), raising the question of whether the data copying limitation is met.
  • Scope Questions: The dispute may turn on whether the device firmware, which can sometimes be updated or "flashed," qualifies as a "system area that cannot be modified by the user" within the meaning of the patent.

V. Key Claim Terms for Construction

• The Term: "non-viewable security component" (from the ’837 Patent)

• Context and Importance: This term is foundational to the patent's claim of persistence. The infringement case depends on mapping this element to the accused "self-healing" agent. Practitioners may focus on this term because its definition will determine whether a software component merely hidden from a standard file explorer meets the claim, or if a more robust, hardware-level sequestration is required.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The specification suggests the component may reside in "hidden partitions on the hard disk drive" which are "inaccessible to the OS environment," potentially supporting a construction that includes any area outside the standard operating system. (’837 Patent, col. 2:50-53).
  • Evidence for a Narrower Interpretation: The specification also specifically identifies the "Host Protected Area (HPA) of the HDD," a specific hardware feature, as an embodiment. This could support an argument that "non-viewable" implies a hardware-defined secure area, not just a hidden software partition. (’837 Patent, col. 2:54-56).

• The Term: "BIOS security component" (from the ’837 Patent)

• Context and Importance: This component is the patent's mechanism for tamper-resistance. The dispute will likely center on the precise functions this component must perform. Whether the accused firmware agent performs the claimed "integrity check" and "restoration" will be a critical issue.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The summary of the invention describes the BIOS component's function more generally as ensuring the "ESTSM application cannot be removed or bypassed." (’837 Patent, col. 2:63-65).
  • Evidence for a Narrower Interpretation: The detailed description is more specific, stating that the BIOS component will "check the integrity of the ESTSM non-viewable component and application component programs and files, and restore the original programs and files, if they have been tampered with." (’837 Patent, col. 17:64-18:8). This language may support a narrower construction requiring specific file-level integrity checks rather than a simple re-installation.

VI. Other Allegations

• Indirect Infringement: The complaint alleges inducement of infringement, stating that Defendants encourage and instruct customers, manufacturers, and distributors to activate and use the pre-installed accused software, thereby causing direct infringement by end-users. (Compl. ¶¶19, 86, 93).
• Willful Infringement: The complaint asserts willful infringement based on extensive allegations of pre-suit knowledge. It alleges Defendants were aware of the parent provisional application in February 2004, the utility application in August 2006, conducted due diligence on the entire patent portfolio by February 2008, and received a copy of the granted ’837 patent in September 2009. (Compl. ¶¶9, 83, 87).

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

• A core issue will be one of technical mechanism: Does the accused "self-heal" feature of Absolute's Persistence technology operate via the specific multi-component architecture claimed in the patents—requiring distinct actions from separate "BIOS," "non-viewable," and "application" components—or does it function as a monolithic firmware agent that does not map onto the claimed elements?
• A second key issue will be one of evidentiary proof: What evidence does the complaint provide that the accused product performs every claimed step, particularly the ’649 Patent’s requirement of "automatically causing at least some user data to be copied" to a server, a function distinct from the alleged remote data deletion?
• Finally, a central question will be one of intent: Given the detailed, decades-long history of interaction alleged in the complaint, the court will have to resolve the factual dispute over whether Defendants' alleged infringement was willful, which could expose them to enhanced damages.