DCT
1:22-cv-01311
Softex LLC v. HP Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Softex LLC (Delaware)
- Defendant: HP Inc. (Delaware)
- Plaintiff’s Counsel: McKool Smith, P.C.
- Case Identification: 1:22-cv-01311, W.D. Tex., 12/14/2022
- Venue Allegations: Plaintiff alleges venue is proper in the Western District of Texas because HP maintains a regular and established place of business in the district, specifically an office in Austin, and has allegedly committed acts of patent infringement within the district.
- Core Dispute: Plaintiff alleges that Defendant’s computers, which include either Microsoft’s "Find My Device" feature or Absolute Software’s "Absolute Persistence" technology, infringe seven patents related to persistent, low-level electronic device security and tracking systems.
- Technical Context: The technology involves anti-theft and device recovery software designed to be persistent and tamper-resistant by integrating with a computer's low-level firmware (BIOS) or protected memory areas.
- Key Procedural History: The complaint states that the original assignee, Softex, Inc., developed a persistent theft detection technology called "TheftGuard" in the early 2000s and that a May 2003 press release announced an intent to install this technology on OEM BIOSs. The asserted patents were assigned from Softex, Inc. to Plaintiff Softex LLC on August 5, 2022.
Case Timeline
| Date | Event |
|---|---|
| 2003-05-01 | Phoenix and Absolute issue press release regarding TheftGuard technology |
| 2003-08-23 | Earliest Priority Date for all Asserted Patents |
| 2009-09-15 | U.S. Patent No. 7,590,837 Issues |
| 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 |
| 2022-08-05 | Asserted Patents assigned to Softex LLC |
| 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”
- Issued: September 15, 2009
The Invention Explained
- Problem Addressed: The patent’s background section describes prior art theft prevention methods—such as physical attachments, password protection, and motion sensors—as costly and ineffective, noting they "do not allow tracking or recovery" once a device is stolen (’837 Patent, col. 1:22-30). It further identifies that traditional software-based solutions stored on "viewable components of hard drives, were easily tampered with by thieves" (Compl. ¶25).
- The Patented Solution: The invention is a multi-part security system designed to be persistent. It comprises an "application component" (which runs in the main operating system), a "non-viewable component," and a "Basic Input/Output System (BIOS) component" (’837 Patent, col. 2:12-17). The BIOS component resides in a secure, non-volatile area of the system and is configured to check the integrity of the other two components every time the device boots up, restoring them from a backup if they have been tampered with or deleted (’837 Patent, col. 17:64-18:8).
- Technical Importance: This architectural approach sought to create a security agent that could survive attacks like reformatting the hard drive or reinstalling the operating system, which would defeat conventional security software (Compl. ¶28).
Key Claims at a Glance
- The complaint asserts at least independent Claim 1 (Compl. ¶73).
- Claim 1 of the ’837 Patent includes these essential elements:
- An electronic device and tracking system with an application component, a non-viewable security component, a non-volatile storage device, and a BIOS security component.
- The application component executes in an OS environment and is configured to send location information to a server system and determine if the device is stolen based on information from the server.
- The non-viewable component includes a validator module to determine if the application component is present and has been tampered with.
- The non-volatile storage device comprises a secure area.
- The BIOS security component is stored in the secure area and is configured to check the integrity of the application component during a boot process.
U.S. Patent No. 8,506,649 - “Electronic Device Security and Tracking System and Method”
- Issued: August 13, 2013
The Invention Explained
- Problem Addressed: The patent addresses the vulnerability of software-based security systems for mobile electronic devices, noting that components stored on "viewable components of hard drives, were easily tampered with by thieves" (’649 Patent, col. 18:34-37). It also notes the limitations of physical security measures which, once defeated, offer no method for tracking or data recovery (’649 Patent, col. 1:24-32).
- The Patented Solution: The patent describes a security application for a mobile device that utilizes code residing at least partially in a "system area" of memory that "cannot be modified by the user" (’649 Patent, Claim 1; Fig. 45). Upon receiving a notification from a security service that the device has been reported lost, the application automatically disables at least one user function while still permitting the device to communicate with the service and allowing for at least some user data to be copied to a server (’649 Patent, col. 2:16-37).
- Technical Importance: The invention provided a mechanism to remotely secure a mobile device and its data post-theft, ensuring persistence by locating key code in a non-user-modifiable memory area (Compl. ¶34).
Key Claims at a Glance
- The complaint asserts at least independent Claim 1 (Compl. ¶78).
- Claim 1 of the ’649 Patent includes these essential elements:
- A mobile electronic device with a processor and non-transitory machine-readable storage medium.
- A security application operable to cause the device to periodically communicate with a security service.
- The application is operable to accept a notification from the service indicating the device has been reported lost or a disable has been requested.
- In response to the notification, the application automatically disables at least one user function while still allowing the device to communicate with the service.
- The application automatically causes at least some user data to be copied from the device to at least one server.
- The security application utilizes code residing at least partially in a "system area" of non-volatile memory that "cannot be modified by the user."
U.S. Patent No. 8,516,235 - “Basic Input/Output System Read Only Memory Image Integration System and Method”
- Patent Identification: U.S. Patent No. 8,516,235, issued August 20, 2013 (Compl. ¶36).
- Technology Synopsis: The patent describes a persistent security system architecture comprising a non-viewable component, an application component, and a BIOS component. The system is designed so that the BIOS component checks the integrity of the other components during the boot process and can automatically restore the application component if it detects tampering (Compl. ¶¶38-39).
- Asserted Claims: At least independent Claim 8 (Compl. ¶83).
- Accused Features: The "Absolute Functionality" embedded in HP devices (Compl. ¶83).
U.S. Patent No. 8,145,892 - “Providing an Electronic Device Security and Tracking System and Method”
- Patent Identification: U.S. Patent No. 8,145,892, issued March 27, 2012 (Compl. ¶42).
- Technology Synopsis: This patent also describes a three-part security system (non-viewable, application, BIOS). After the security service is activated, the non-viewable component determines if the application component has been tampered with, and the BIOS component checks the integrity of both other components during boot, automatically restoring the application component if a negative integrity check occurs (Compl. ¶¶44, 45).
- Asserted Claims: At least independent Claim 12 (Compl. ¶88).
- Accused Features: The "Absolute Functionality" embedded in HP devices (Compl. ¶88).
U.S. Patent No. 8,137,410 - “Electronic Device Disabling System and Method”
- Patent Identification: U.S. Patent No. 8,137,410, issued March 20, 2012 (Compl. ¶47).
- Technology Synopsis: This patent describes a security apparatus that uses a hidden partition in the device's memory. The system automatically determines if the hidden partition is valid and, if so, loads a non-viewable component from it. This component then determines if the main application component loaded correctly during the last power-up and restores it from a backup if necessary (Compl. ¶¶49-50).
- Asserted Claims: At least independent Claim 8 (Compl. ¶93).
- Accused Features: The "Absolute Functionality" embedded in HP devices (Compl. ¶93).
U.S. Patent No. 8,287,603 - “Electronic Device With Protection From Unauthorized Utilization”
- Patent Identification: U.S. Patent No. 8,287,603, issued October 16, 2012 (Compl. ¶53).
- Technology Synopsis: The patent describes a device where an application component is configured to determine if it is operating correctly and then provide that information to a BIOS component. During a subsequent boot process, the BIOS component can prevent the boot from completing if it does not find the stored information indicating correct operation (Compl. ¶¶55-56).
- Asserted Claims: At least independent Claim 18 (Compl. ¶98).
- Accused Features: The "Absolute Functionality" embedded in HP devices (Compl. ¶98).
U.S. Patent No. 8,128,710 - “Electronic Device Security System and Method”
- Patent Identification: U.S. Patent No. 8,128,710, issued March 6, 2012 (Compl. ¶59).
- Technology Synopsis: This patent describes a system with the persistent BIOS-based architecture that also includes functionality for remote data wiping. After receiving a report that the device is stolen and receiving confirmation from another device (e.g., the owner's phone or another computer), the system causes the electronic device to erase its non-volatile storage (Compl. ¶¶61-62).
- Asserted Claims: At least independent Claim 2 (Compl. ¶103).
- Accused Features: The "Absolute Functionality" embedded in HP devices (Compl. ¶103).
III. The Accused Instrumentality
- Product Identification: The complaint identifies two categories of accused functionalities on HP computers: (1) "Windows Functionality," specifically Microsoft’s “Find My Device” feature included with Windows 10 and Windows 11 operating systems; and (2) "Absolute Functionality," which includes products such as Absolute Home & Office, Absolute Computrace Persistence, and LoJack for Laptops (Compl. ¶7). A multi-page list of accused HP computer models is provided (Compl. ¶9, pp. 3-6).
- Functionality and Market Context:
- Windows Functionality: This is a standard feature of Microsoft Windows that, when enabled by a user, allows the user to log into a Microsoft web portal from another device to locate, lock, or display a message on their lost or stolen HP computer. The service relies on communication between the HP device and Microsoft's servers (Compl. ¶¶66-67).
- Absolute Functionality: This technology is described as a "persistent security solution" that is "embedded in the firmware" of HP devices during the manufacturing process (Compl. ¶¶8, 69). Once a user activates the service, a software agent is installed that can "self-heal" or reinstall itself if it is removed or damaged. This persistence is alleged to survive OS reinstalls, hard drive re-imaging, and even complete hard drive replacement (Compl. ¶¶69, 71). The complaint includes a marketing graphic for Absolute Persistence that illustrates this "Undeletable Security" process (Compl. p. 42). This functionality allows a user or administrator to track, lock, and delete data from a device via a "cloud-based Absolute console" (Compl. ¶70; p. 42).
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 security and tracking system comprising: an application component... | The Accused Products contain Absolute Functionality, which includes an "Absolute agent" that is installed on the device. | ¶71 | col. 2:13-14 |
| wherein said application component is configured to cause the electronic device to send, to the server system, a message that contains location information... | The Absolute agent, once activated, "initiates a call to the Absolute Monitoring Center" and establishes a "continuous, tamper-proof connection between devices, data, and the cloud-based Absolute console." | p. 42 | col. 35:54-58 |
| 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... | Absolute's "Persistence" technology is described as being embedded in the firmware and able to detect if the "Absolute agent is missing or damaged," triggering an automatic reinstallation. | p. 42 | col. 35:59-65 |
| a non-volatile storage device comprising a secure area... | The Absolute technology is described as being "Built into the BIOS or firmware," which resides on secure, non-volatile memory on the motherboard. | p. 42 | col. 13:58-60 |
| 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 "embedded in the firmware of computers... at the factory" and is designed to survive "if the device is re-imaged, the hard drive is replaced, or the firmware is flashed," suggesting it operates at the BIOS level to ensure the agent's integrity. | ¶69; p. 42 | col. 36:1-6 |
’649 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a security application operable to perform operations comprising: causing the mobile electronic device to periodically communicate with the security service... | The "Find My Device" feature, when enabled, "causes the mobile electronic device to periodically communicate with the security service when in a state other than being powered off" and "periodically send its location to the security service." | ¶40 | col. 17:1-4 |
| 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... | An HP device with "Find My Device" enabled can "accept a notification from the service comprising a message indicating that the owner of the device has requested disabling ('locking') the device." | ¶40 | col. 17:5-9 |
| 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... | The mobile device is "locked ('disabled') in response to receiving the message. But the device can still communicate with the Find My software, e.g., by continuing to share its location." | ¶40 | col. 17:10-15 |
| automatically causing at least some user data to be copied from the mobile electronic device to at least one of the servers... | An owner can "view device details and location from the owner's Microsoft user account," which is information sent from the device to the server. | ¶40 | col. 17:16-20 |
| wherein the security application utilizes code residing at least partially in the system area of the non-volatile memory that cannot be modified by the user... | The complaint alleges that "Microsoft Find My Device is not changeable by a user and therefore resides at least partially in the system area" and that Microsoft "provides a system area that cannot be accessed by the user" to prevent device locking from being thwarted. | ¶41 | col. 3:47-49 |
Identified Points of Contention
- Scope Questions: A central question for infringement by "Windows Functionality" may be the scope of the term "system area that cannot be modified by the user" from the ’649 Patent. The dispute may focus on whether a standard, permission-restricted portion of a general-purpose operating system like Windows meets this limitation, or if the claim requires a more deeply embedded, hardware-isolated memory partition.
- Technical Questions: For the allegations against "Absolute Functionality," a key technical question will be how the firmware-embedded component functions. The complaint alleges persistence and self-healing, but the case may turn on what evidence is presented to show that this component performs the specific claimed steps of "checking integrity" of the application component "during a boot process," as required by the ’837 Patent, versus other potential methods of ensuring software persistence.
V. Key Claim Terms for Construction
The Term: "BIOS security component" (’837 Patent, Claim 1)
- Context and Importance: This term is foundational to the patent's core novelty of creating a persistent, tamper-proof system. Its construction will determine whether the accused Absolute technology, described as "embedded in the firmware," performs the specific functions required by the claim at the BIOS level, or if it operates in a way that falls outside this definition.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification suggests the component's function is primary, stating it "ensures that the application component cannot be tampered with, bypassed or removed" (’837 Patent, col. 17:62-64). This functional language may support a construction that is not tied to a single, specific BIOS implementation.
- Evidence for a Narrower Interpretation: The patent states the component "consists of a small piece of code that resides in the system BIOS ROM image located in a secure non-volatile area" and that it acts "every time the electronic device boots up" (’837 Patent, col. 17:64-67). This language could support a narrower construction requiring the code to be part of the actual BIOS ROM image that executes during the Power-On Self-Test (POST).
The Term: "system area that cannot be modified by the user" (’649 Patent, Claim 1)
- Context and Importance: This term is critical for the infringement theory against Microsoft's "Find My Device." The viability of this infringement allegation may depend entirely on whether a feature of a commercial OS can be considered to reside in such an area. Practitioners may focus on this term because it appears to be a primary point of non-obviousness over prior art security applications.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The complaint alleges Microsoft provides a "system area that cannot be accessed by the user" by "segregating access" (Compl. ¶41), suggesting that standard OS file permissions could satisfy the limitation. The patent's Figure 45 describes the area as "non-changeable to normal user," which could be interpreted to mean a user without administrative privileges or specialized knowledge.
- Evidence for a Narrower Interpretation: The specification, when describing a similar architecture, contrasts a "changeable area (acts like file system)" with a "system area (non-changeable to normal user)" (’649 Patent, Fig. 45). This distinction suggests the "system area" is structurally different from a standard file system, potentially supporting a narrower interpretation that excludes portions of the main OS partition, even if access-restricted.
VI. Other Allegations
- Indirect Infringement: The complaint alleges active inducement of infringement against HP for all asserted patents. The basis for these allegations includes HP's role in providing instructions, user manuals, and marketing materials that allegedly "facilitate, direct, or encourage" customers to activate and use both the "Windows Functionality" and the "Absolute Functionality" (Compl. ¶¶18, 75, 80).
- Willful Infringement: The complaint alleges HP had knowledge of the asserted patents "at least as early as the filing of this Complaint" (Compl. ¶10). The prayer for relief requests a judgment of willful infringement and enhanced damages, suggesting a theory based on post-suit knowledge and continued infringement (Compl. p. 50).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: Can the term "system area that cannot be modified by the user," as described in the ’649 patent, be construed to cover a permission-restricted area within a standard commercial operating system like Microsoft Windows, or does the patent’s context require a more robustly protected, firmware-level partition?
- A key evidentiary question will be one of technical proof: What evidence will be required to demonstrate that the accused "Absolute Functionality" performs the specific, multi-step integrity-checking and restoration functions during the device boot process as claimed in the ’837 patent and its relatives, as opposed to achieving persistence through alternative software self-healing mechanisms?
- A third central question may concern damages apportionment: Given that two distinct technologies from two different software vendors (Microsoft and Absolute) are accused of infringing overlapping patents on the same hardware platform (HP computers), a significant challenge may be delineating the scope of infringement and apportioning the appropriate royalty base for each accused functionality.