DCT

1:22-cv-01309

Softex LLC v. Dell Technologies

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:22-cv-01309, W.D. Tex., 12/14/2022
  • Venue Allegations: Plaintiff alleges venue is proper in the Western District of Texas because Defendants maintain a regular and established place of business in the district and have committed acts of infringement within the district.
  • Core Dispute: Plaintiff alleges that Defendant’s computers and devices, which utilize security software such as Microsoft's "Find My Device" and "Absolute Persistence," infringe seven patents related to persistent, low-level electronic device security and tracking technology.
  • Technical Context: The technology involves embedding security software in difficult-to-erase portions of a computer's memory, such as the BIOS or hidden/protected partitions, to enable tracking, data protection, and recovery even after theft and attempts to wipe the device.
  • Key Procedural History: The complaint notes that the original patent assignee, Softex, Inc., developed a product called "TheftGuard" in the early 2000s and that a third party announced its intent to install this technology on OEM BIOSs in 2003. Softex, Inc. assigned the Asserted Patents to the current plaintiff, Softex LLC, on August 5, 2022.

Case Timeline

Date Event
2003-05-XX Phoenix and Absolute issue press release regarding TheftGuard technology
2003-08-23 Earliest Priority Date for all Asserted Patents
2009-09-15 ’837 Patent Issued
2012-03-06 ’710 Patent Issued
2012-03-20 ’410 Patent Issued
2012-03-27 ’892 Patent Issued
2012-10-16 ’603 Patent Issued
2013-08-13 ’649 Patent Issued
2013-08-20 ’235 Patent Issued
2022-08-05 Asserted Patents assigned from Softex, Inc. to Softex LLC
2022-12-14 Complaint Filed

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

U.S. Patent No. 7,590,837

  • Patent Identification: U.S. Patent No. 7,590,837, “Electronic Device Security and Tracking System and Method,” issued September 15, 2009 (the "’837 Patent").
  • The Invention Explained:
    • Problem Addressed: The patent describes prior art theft prevention as either physical (e.g., attachments, alarms) or software-based. It notes these methods "do not always prevent theft, are costly and once the electronic device is stolen, do not allow tracking or recovery" because software on viewable parts of a hard drive is easily erased by thieves (’837 Patent, col. 1:22-30; Compl. ¶24).
    • The Patented Solution: The invention proposes a persistent security system with three main components: an application component (in the OS), a non-viewable component (e.g., on a hidden hard drive partition), and a Basic Input/Output System (BIOS) component. The BIOS component, stored in a secure non-volatile area, checks the integrity of the other two components every time the device boots up and can restore them if they have been tampered with, ensuring the security software survives attempts to remove it (’837 Patent, col. 17:62-18:8; Compl. ¶25).
    • Technical Importance: This approach moves key security functions from the vulnerable operating system layer to the more fundamental and difficult-to-alter BIOS (firmware) layer, creating a durable anti-theft mechanism (Compl. ¶20, ¶25).
  • Key Claims at a Glance:
    • The complaint asserts at least independent claim 1 (Compl. ¶73).
    • Claim 1 of the ’837 Patent recites an electronic device security and tracking system comprising:
      • An application component to execute in an OS environment, configured to send location information to a server and determine if the device is 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 with a secure area.
      • A BIOS security component stored in the secure area, configured to check the integrity of the application component during boot.
      • The BIOS component is further configured to restore the application component upon a negative integrity check and prevent the OS from booting if the device is reported stolen.
    • The complaint generally alleges infringement of "one or more claims" (Compl. ¶74).

U.S. Patent No. 8,506,649

  • Patent Identification: U.S. Patent No. 8,506,649, “Electronic Device Security and Tracking System and Method,” issued August 13, 2013 (the "’649 Patent").
  • The Invention Explained:
    • Problem Addressed: The patent addresses the same general problem of ineffective traditional theft prevention for electronic devices, where software components on "viewable components of hard drives, were easily tampered with by thieves" (’649 Patent, col. 18:34-37; Compl. ¶30).
    • The Patented Solution: The invention is a mobile electronic device with a security application that utilizes code residing at least partially in a "system area" of memory that "cannot be modified by the user." Upon receiving a notification from a security service that the device has been reported lost, the application disables at least one user function while still allowing communication with the service, and automatically causes user data to be copied to a server (’649 Patent, col. 2:16-37, col. 3:44-50; Compl. ¶31). Figure 45 illustrates this architecture with a changeable area and a non-changeable system area (’649 Patent, Fig. 45).
    • Technical Importance: This solution provides a persistent method for securing a mobile device and recovering its data, even after it is reported stolen, by placing the security agent in a protected, non-user-modifiable memory area (Compl. ¶31).
  • Key Claims at a Glance:
    • The complaint asserts at least independent claim 1 (Compl. ¶78).
    • Claim 1 of the ’649 Patent recites a mobile electronic device comprising a processor and non-transitory machine-readable storage medium, with a security application operable to perform operations including:
      • Causing the device to periodically communicate with a security service.
      • Accepting a notification from the service that the device has been reported lost or disabling has been requested.
      • In response, automatically disabling at least one user function while still allowing communication with the security service.
      • Automatically causing at least some user data to be copied to a server.
      • The security application utilizes code residing at least partially in a "system area" that "cannot be modified by the user" and receives the notification via this system area.
    • The complaint generally alleges infringement of "one or more claims" (Compl. ¶79).

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 (the "’235 Patent").
  • Technology Synopsis: This patent relates to systems and methods for embedding a security application into a BIOS ROM image. The invention provides a persistent security framework where a BIOS component checks the integrity of non-viewable and application-level components at every boot-up, restoring them if they have been tampered with to prevent circumvention (Compl. ¶36-37).
  • Asserted Claims: At least independent claim 8 is asserted (Compl. ¶82).
  • Accused Features: The complaint accuses Dell products incorporating "Absolute Functionality" of infringing the ’235 Patent (Compl. ¶82).

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 (the "’892 Patent").
  • Technology Synopsis: This patent describes a security system with interacting non-viewable, application, 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, while the BIOS component checks both the non-viewable and application components and can automatically restore the application component's integrity (Compl. ¶42-43, ¶44).
  • Asserted Claims: At least independent claim 12 is asserted (Compl. ¶87).
  • Accused Features: The complaint accuses Dell products incorporating "Absolute Functionality" of infringing the ’892 Patent (Compl. ¶87).

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 (the "’410 Patent").
  • Technology Synopsis: This patent pertains to device security using a hidden partition in memory containing a non-viewable component. The system automatically determines if the hidden partition is valid, and if so, loads the non-viewable component. This component then determines if the main application component loaded correctly during the last power-up and restores it from a backup if it did not (Compl. ¶47-49).
  • Asserted Claims: At least independent claim 8 is asserted (Compl. ¶92).
  • Accused Features: The complaint accuses Dell products incorporating "Absolute Functionality" of infringing the ’410 Patent (Compl. ¶92).

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 (the "’603 Patent").
  • Technology Synopsis: This patent describes an electronic device where an application component ascertains if the device has been reported stolen and determines if it is operating correctly. If it is, it provides information to a BIOS component, and during a subsequent boot process, the device is prevented from completing the boot if the BIOS component does not find this information (Compl. ¶53-55).
  • Asserted Claims: At least independent claim 18 is asserted (Compl. ¶97).
  • Accused Features: The complaint accuses Dell products incorporating "Absolute Functionality" of infringing the ’603 Patent (Compl. ¶97).

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 (the "’710 Patent").
  • Technology Synopsis: This patent is directed to a persistent security system that includes the ability to remotely wipe data from a compromised device. The system uses a combination of non-viewable, application, and BIOS components to maintain integrity, and is also operable to present an option on a separate device to confirm that the non-volatile storage of the stolen device should be erased (Compl. ¶59, ¶61-62).
  • Asserted Claims: At least independent claim 2 is asserted (Compl. ¶102).
  • Accused Features: The complaint accuses Dell products incorporating "Absolute Functionality" of infringing the ’710 Patent (Compl. ¶102).

III. The Accused Instrumentality

  • Product Identification: The "Accused Products" are identified as a wide range of Dell computers and devices, including desktops, notebooks, and tablets from product lines such as Optiplex, Precision, Inspiron, Latitude, XPS, and Alienware (Compl. ¶8, pp. 4-7). The infringement allegations are directed at two specific software functionalities utilized by these devices: "Windows Functionality" and "Absolute Functionality" (Compl. ¶6).
  • Functionality and Market Context:
    • Windows Functionality: This refers to Microsoft's "Find My Device" feature included in Windows 10 and 11 on Dell computers (Compl. ¶65). It allows a device owner to log into a Microsoft account from a separate device to track the location of a lost or stolen computer, lock it, or send messages to it. The complaint alleges this service causes the device to periodically communicate with Microsoft's security servers (Compl. ¶66, ¶41).
    • Absolute Functionality: This refers to software such as Absolute Home & Office and Computrace Persistence, which Dell offers to customers as a "persistent security solution that can track and recover stolen devices" (Compl. ¶6, ¶67). The complaint alleges that a key component, Computrace, is "embedded in the firmware" of Dell devices at the factory and is designed to "self-heal," or automatically reinstall itself if it is removed (Compl. ¶68, ¶70). The complaint includes an infographic illustrating that the Absolute Persistence technology is embedded in the BIOS or firmware at the factory, is activated by the user, and cannot be deleted (Compl. p. 43). This functionality allows a user to locate, lock, and remotely delete files from a device via a server-based console (Compl. ¶69).

IV. Analysis of Infringement Allegations

'837 Patent 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 and operable to communicate with a server system; Dell's Accused Products are electronic devices with an OS that communicate with servers for Absolute Functionality. ¶8, ¶69 col. 35:45-49
an application component to execute within an OS environment wherein said application component is configured to cause the electronic device to send, to the server system, a message that contains location information for the electronic device, and wherein said application component is configured to determine whether the electronic device has been reported stolen, based on information received from the server system; The Absolute Home & Office application runs on the OS, allows a user to view a device's location on a map (implying location is sent to a server), and interacts with the server to manage the device's status. ¶69 col. 35:50-60
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 is "embedded in the firmware" and continuously monitors the status of the Absolute agent, automatically reinstalling it if it is missing or damaged, thereby acting as a validator. ¶68, ¶70 col. 35:61-65
a non-volatile storage device comprising a secure area; and a basic input/output security (BIOS) component stored in the secure area, the BIOS security component configured to check the integrity of the application component during a boot process for the electronic device. The Absolute Persistence component is "built into the BIOS or firmware," which resides in a secure area of non-volatile storage. This component survives re-imaging or hard drive replacement, and its persistence mechanism checks and ensures the presence of the security agent. ¶70 col. 35:66-36:4
  • Identified Points of Contention:
    • Scope Questions: A central question may be whether the accused "firmware" that embeds the Absolute component is coextensive with the "basic input/output security (BIOS) component" as recited in the claim. The defense may argue that modern UEFI firmware architectures are distinct from the BIOS systems contemplated by the patent.
    • Technical Questions: The complaint alleges that Absolute's "self-heal" capability meets the claim requirement of the BIOS "check[ing] the integrity of the application component." A key factual question will be what technical evidence demonstrates that this integrity check is performed by the BIOS/firmware component during the boot process, as opposed to being performed by another persistent agent.

'649 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A mobile electronic device, comprising: one or more non-transitory machine-readable storage mediums; and a security application operable to perform operations comprising: causing the mobile electronic device to periodically communicate with the security service; Dell's laptops and tablets are mobile electronic devices. Both Windows Find My Device and Absolute Functionality cause the device to periodically communicate with a security service to report location and status. ¶8, ¶41, ¶68 col. 35:51-57
accepting a notification at the mobile electronic device from the security service, wherein the notification comprises a message indicating that the owner of the mobile electronic device has reported a loss or requested disabling of the mobile electronic device; A Dell device with either functionality enabled can accept a notification from the respective service indicating the owner has requested disabling or locking. ¶41, ¶69 col. 35:58-64
in response to receiving the notification, automatically disabling at least one user function of the mobile electronic device while still allowing the mobile electronic device to communicate with the security service; When locked via Find My Device or Absolute, the device becomes disabled for the user but can still communicate its location to the security service. ¶41, ¶69 col. 36:1-6
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 that for Find My Device, an owner can view device details from their account, which is information sent to the server. Absolute allows for remote file deletion, which implies access to user data. ¶41, ¶69 col. 36:7-10
wherein the security application utilizes code residing at least partially in the system area, wherein the system area and at least some of the code residing in the system area cannot be modified by the user. For Absolute, the code resides in the firmware, which cannot be modified by the user. For Find My Device, the complaint alleges it resides in a system area segregated from the user and not thwartable by wiping the system. ¶42, ¶68, ¶70 col. 36:20-25
  • Identified Points of Contention:
    • Scope Questions: The definition of "system area ... that cannot be modified by the user" will be a critical point of construction. For Absolute, the question may be whether firmware is a "system area" in the context of the claim. For Windows Find My Device, the dispute may focus on whether OS-level protections that prevent a typical user from modifying a component meet the "cannot be modified" limitation.
    • Technical Questions: A factual dispute may arise over whether the accused products "automatically" cause user data to be copied upon receiving a loss notification. The complaint alleges an owner can view details, but it may be argued that this is distinct from an automatic data copy operation as claimed.

V. Key Claim Terms for Construction

’837 Patent

  • The Term: "a basic input/output security (BIOS) component stored in the secure area, the BIOS security component configured to check the integrity of the application component"
  • Context and Importance: This term is the core of the claimed invention's persistence mechanism. The dispute will likely center on whether the accused Absolute "firmware" component performs the specific functions of a "BIOS component" and whether its "self-healing" constitutes "check[ing] the integrity" as required by the claim.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification states the system "comprises a BIOS component that ensures that the application and non-viewable components are not removed or bypassed in any way" (’837 Patent, col. 2:56-59), which may support a functional definition not limited to a specific type of BIOS.
    • Evidence for a Narrower Interpretation: The detailed description explains that "[e]very time the electronic device boots up, the BIOS component 4410 will check the integrity of the ESTSM non-viewable component 4415 and application component 4405 programs and files, and restore the original programs and files, if they have been tampered with" (’837 Patent, col. 18:4-8). This language, tied to a specific figure and action (checking and restoring files at boot), may support a narrower construction.

’649 Patent

  • The Term: "system area... that cannot be modified by the user"
  • Context and Importance: This term is central to the persistence aspect of the invention on mobile devices. Its construction will determine whether the accused software, which resides in firmware (Absolute) or in a protected part of the OS (Windows), falls within the scope of the claim. Practitioners may focus on this term because the level of "un-modifiability" will be a key factual and legal question.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The summary describes the invention as including "non-viewable components" that may reside in a "protected area of the memory" (’649 Patent, col. 3:48-52), suggesting the term could cover various forms of protected storage.
    • Evidence for a Narrower Interpretation: Figure 45 explicitly depicts a "SYSTEM AREA (NON-CHANGEABLE TO NORMAL USER)" as distinct from a "CHANGEABLE AREA (ACTS LIKE FILE SYSTEM)" within the device's flash memory (’649 Patent, Fig. 45). This depiction could be used to argue that the "system area" must be a fundamentally different type of memory partition, not merely one with different user permissions.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges active inducement of infringement against Dell for all asserted patents. The basis for this allegation is that Dell provides "functionality, instructions, user manuals and other documentation and other assistance" that encourage customers to activate and use the accused Absolute and Windows functionalities (Compl. ¶74, ¶79, ¶84, ¶89, ¶94, ¶99, ¶104).
  • Willful Infringement: The complaint alleges Dell had knowledge of the Asserted Patents "at least as early as the filing of this Complaint" (Compl. ¶9). The prayer for relief requests a judgment that Defendants' infringement is willful, suggesting a claim for post-suit willfulness (Compl. p. 51, ¶B).

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

  • A core issue will be one of definitional scope: Can the patent claims, which describe security components within a "BIOS" or in a "system area that cannot be modified by the user," be construed to cover the modern UEFI firmware and protected OS partitions in which the accused "Absolute Persistence" and "Microsoft Find My Device" technologies operate? The evolution of computer architecture from the patents' 2003 priority date to the present will be central to this question.
  • A key evidentiary question will be one of functional operation: What is the precise technical mechanism by which the accused products achieve their "persistence" or "self-healing"? The case will likely require a deep technical analysis to determine if these mechanisms perform the specific functions of "check[ing] the integrity" and "restor[ing]" an application from the BIOS/firmware as claimed in the '837 patent family, or "automatically causing... user data to be copied" as claimed in the '649 patent.
  • A third question relates to the accused Windows Functionality: Does creating segregated user and administrator areas within an operating system, where a standard user cannot remove a security feature, satisfy the claim limitation of a "system area that cannot be modified by the user"? This raises the question of whether "user" in the claim language means any user, including an administrator with sufficient privileges, or only the "normal user" as depicted in patent figures.