DCT

6:22-cv-00284

Desktopsites Inc v. VMware Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 6:22-cv-00284, W.D. Tex., 03/16/2022
  • Venue Allegations: Plaintiff alleges venue is proper because Defendant resides in the district or has committed acts of infringement and maintains a regular and established place of business in the district.
  • Core Dispute: Plaintiff alleges that Defendant’s VMware Horizon product line for remote application and desktop access infringes three patents related to systems and methods for launching resources in a computer network.
  • Technical Context: The technology relates to remote computing and virtual desktop infrastructure (VDI), which enables users to access applications and data stored on central servers from local client devices, creating a seamless experience between local and remote resources.
  • Key Procedural History: The complaint alleges that Defendant was made aware of the patents-in-suit during licensing or acquisition discussions in 2014. Plaintiff further alleges sending a notice letter with exemplary claim charts to Defendant on September 23, 2020, followed by communications in which Defendant denied infringement.

Case Timeline

Date Event
2004-12-02 Earliest Priority Date (’822, ’961, ’182 Patents)
2008-01-01 Accused Product line launched (as "VMware View")
2011-03-22 '822 Patent Issued
2012-11-06 '961 Patent Issued
2013-02-01 Accused Product line launched (as "Horizon")
2014-05-20 '182 Patent Issued
2014-01-01 Defendant allegedly became aware of Asserted Patents
2014-12-01 Accused Product ("HORIZON FLEX") first use in commerce
2020-09-23 Plaintiff sent notice letter to Defendant
2022-03-16 Complaint Filed

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

U.S. Patent No. 7,912,822 - “System and Method for Launching a Resource in a Network,” Issued March 22, 2011

The Invention Explained

  • Problem Addressed: The patent’s background section describes the technical and logistical challenges organizations face in providing remote and mobile employees with secure and efficient access to business-critical applications and data, noting deficiencies in prior art solutions like traditional terminal services and Virtual Private Networks (VPNs) ('822 Patent, col. 1:18-2:12).
  • The Patented Solution: The invention provides a system that integrates remote resources into a user's local client environment. It generates an icon on the client device that corresponds to a file or application stored on a server; when the user activates the icon, the system automatically accesses the remote resource, making it appear to the user as if it were running locally ('822 Patent, Abstract; col. 3:7-15). The system is designed to allow a user to choose whether to search for an application instance on the client first or the server first and includes a failover mechanism if the server-side resource is inaccessible ('822 Patent, col. 25:24-39).
  • Technical Importance: This approach sought to simplify remote access by creating a seamless user experience that blended network resources with the local desktop, thereby reducing the complexity and usability issues associated with conventional remote access tools (Compl. ¶10).

Key Claims at a Glance

  • The complaint asserts at least independent claim 1 (Compl. ¶32).
  • Essential elements of claim 1 include:
    • An access system with a client and server, an application, and a file used by the application.
    • An authentication module for the client to authenticate with the server.
    • An access module that provides secure access to the application using a "secure gateway tunnel" with "Remote Desktop Protocol (RDP) commands."
    • A first module to generate icons for the file and the application on the client's GUI.
    • A second module to monitor for activation of the file's icon and, upon activation, initiate the application on either the client or the server.
    • A failover provision to initiate access on the client if an attempt to access the application on the server fails because the server is not accessible.
  • The complaint reserves the right to assert additional claims (Compl. ¶35).

U.S. Patent No. 8,306,961 - “System and Method for Launching a Resource in a Network,” Issued November 6, 2012

The Invention Explained

  • Problem Addressed: The patent addresses the same general problem as its parent '822 Patent: providing seamless and efficient access to networked resources for remote users ('961 Patent, col. 1:18-2:12).
  • The Patented Solution: As a continuation of the '822 Patent, this invention refines the user interface aspect of the remote access system. The claims describe a system that not only generates an icon for a remote resource but specifically requires the icon to provide a "graphic representation of a source of the instance of the resource reflecting whether the resource is located at the client or at the server" ('961 Patent, col. 26:1-5). This visual cue is intended to inform the user about the location of the application or file they are about to launch ('961 Patent, Fig. 21).
  • Technical Importance: The invention aims to improve user experience in a hybrid computing environment by providing clear visual indicators that distinguish between local and remote applications, reducing potential user confusion (Compl. ¶9).

Key Claims at a Glance

  • The complaint asserts at least independent claim 1 (Compl. ¶42).
  • Essential elements of claim 1 include:
    • An access system for a client connected to a server.
    • A memory module containing data mapping icon files to application files on the server.
    • A first module that uses the mapping data to generate an icon on the client's display.
    • The icon provides a "graphic representation of a source... reflecting whether the resource is located at the client or at the server."
    • The module monitors for icon activation and initiates the resource on either the client or the server.
    • A failover provision to access the resource on the client if an attempt to access it on the server fails.
  • The complaint reserves the right to assert additional claims (Compl. ¶45).

U.S. Patent No. 8,732,182 - “System and Method for Launching a Resource in a Network,” Issued May 20, 2014

  • Patent Identification: U.S. Patent No. 8,732,182, "System and Method for Launching a Resource in a Network," Issued May 20, 2014.
  • Technology Synopsis: As a continuation-in-part of the application leading to the '822 Patent, this patent extends the core remote access technology into virtualized environments. It claims a system including a "virtual machine module" to create and manage virtual machines and their templates, providing access to applications and user profiles within a virtual desktop infrastructure ('182 Patent, Abstract). The system also specifies using Microsoft Group Policy Objects (GPOs) and Active Directory (AD) for authentication and policy enforcement ('182 Patent, col. 41:55-62).
  • Asserted Claims: At least independent claim 1 is asserted (Compl. ¶52).
  • Accused Features: The complaint alleges that the VMware Horizon product line is a virtual desktop and application platform that inherently operates within a virtualized environment, provides access to remote resources, and integrates with enterprise authentication systems like Active Directory (Compl. ¶15-16).

III. The Accused Instrumentality

Product Identification

  • The accused instrumentality is VMware’s “Horizon” product line, which includes “Horizon 7 Editions,” “Horizon Air,” and “Horizon FLEX,” as well as earlier versions called “VMware View” (Compl. ¶17).

Functionality and Market Context

  • The complaint describes Horizon as software for securely delivering and managing end-user computing, including data and applications, across various devices (Compl. ¶16).
  • Functionally, it is alleged to support the Remote Desktop Protocol (RDP) for transmitting graphical interfaces for remote desktops and applications (Compl. ¶15, ¶22). The complaint includes a screenshot from VMware’s technical documentation that lists "Microsoft RDP" as a supported remote display protocol (Compl. ¶22, p. 7).
  • The system allegedly generates icons for files and applications, allowing a user to launch a file using either a published remote application or a local one (Compl. ¶15). The complaint includes a screenshot from a video allegedly showing the VMware Horizon client launching a "Remote Desktop Connection" window (Compl. ¶26, p. 10).
  • Plaintiff alleges that Horizon enables users to choose whether to launch a file with a remote application first and provides for failover to a local application if the remote application fails (Compl. ¶15).

IV. Analysis of Infringement Allegations

The complaint references claim-chart exhibits that are not provided with the filing. Therefore, the infringement allegations are summarized in prose based on the complaint's narrative.

  • '822 Patent Infringement Allegations: The complaint alleges that the Horizon product infringes claim 1 of the '822 Patent by being an "access system" that provides authenticated client-server access to applications and files (Compl. ¶15, ¶32). A central point of the infringement allegation is the claim element requiring a "secure gateway tunnel... using Remote Desktop Protocol (RDP) commands." The complaint dedicates significant space to rebutting VMware’s alleged pre-suit contention that Horizon does not support RDP for remote applications (Compl. ¶22). It presents screenshots from VMware’s documentation and administrator interface allegedly showing that RDP is a configurable protocol option for accessing remote applications and desktops (Compl. ¶24, p. 8). The complaint further alleges that Horizon generates icons for files and applications and initiates the application on the server to access the file upon activation, meeting other limitations of claim 1 (Compl. ¶15).

  • '961 Patent Infringement Allegations: The infringement theory for the '961 Patent largely mirrors that for the '822 Patent, focusing on Horizon as a remote access system that initiates server-based resources from a client GUI (Compl. ¶42). However, claim 1 of the '961 Patent additionally requires that the generated icon provides a "graphic representation of a source... reflecting whether the resource is located at the client or at the server." The complaint alleges that Horizon "generates a first icon associated with a file and a second icon associated with an application" (Compl. ¶15) but does not contain specific factual allegations that these icons visually distinguish between local and remote resources.

Identified Points of Contention

  • Technical Question: A primary factual dispute will likely concern the extent to which the Accused Product "us[es] Remote Desktop Protocol (RDP) commands" as required by claim 1 of the '822 Patent. The complaint's focus on this issue, including documentary evidence, suggests the parties may disagree on whether offering RDP as a configurable option alongside proprietary protocols like Blast Extreme and PCoIP meets the claim limitation (Compl. ¶22).
  • Evidentiary Question: For the '961 Patent, a key question for discovery will be what evidence exists that the icons generated by the Horizon product provide the claimed "graphic representation" that visually distinguishes between local and remote resources. The complaint does not currently provide specific facts to support this claim element.
  • Scope Question: The '822 and '961 Patents both include a failover limitation requiring the system to initiate access on the client "after attempting to access said application on said server, if said server is not accessible." The interpretation of what constitutes an "attempt" and what it means for the server to be "not accessible" within the Horizon architecture may be a point for claim construction and factual dispute.

V. Key Claim Terms for Construction

  • Term: "using Remote Desktop Protocol (RDP) commands" (’822 Patent, Claim 1)

    • Context and Importance: This term is central to the infringement dispute for the '822 Patent. Plaintiff has presented extensive evidence to show Horizon's support for RDP, suggesting Defendant’s non-infringement position may hinge on a narrow interpretation of what it means to "use" RDP commands (Compl. ¶¶19, 22).
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The patent specification introduces RDP as an example protocol for server-based applications ('822 Patent, col. 8:3-4, "terminal services RDP applications"). A party might argue that the claim term "using" is broad and covers any system that makes RDP available as a functional protocol for accessing remote resources, even if it is not the sole or default protocol.
      • Evidence for a Narrower Interpretation: A party might argue that the context of "secure gateway tunnel" implies that RDP must be the protocol integral to the tunnel itself, not merely an optional display protocol selected by an administrator. The patent's description of a "TcpTunnel ISAPI plug-in" for RDP connections could be cited to argue for a specific architectural implementation ('822 Patent, col. 12:41-44).

  • Term: "graphic representation... reflecting whether the resource is located at the client or at the server" (’961 Patent, Claim 1)

    • Context and Importance: This term is the key novel element in claim 1 of the '961 Patent. Infringement will turn on whether any visual feature of the icons generated by Horizon meets this functional requirement. Practitioners may focus on this term because the complaint lacks specific factual allegations on this point.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The claim language is functional, not structural, and does not limit the form of the "graphic representation." A party could argue that any visual cue, including a small badge, a tooltip, or a different icon color, would satisfy the limitation. The specification provides an example of a subscript "K" ('961 Patent, Fig. 21, item 2112A) but does not state this is the only possible embodiment.
      • Evidence for a Narrower Interpretation: A party could argue that the term "reflecting" requires a clear and unambiguous visual indicator, pointing to the specific example of the "K" subscript in Figure 21 as evidence of the level of clarity the patent contemplates ('961 Patent, col. 7:31-36). They might contend that subtle or transient indicators do not sufficiently "reflect" the source location.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges that Defendant induces infringement by providing the Horizon product to its customers along with an "installation portal," "installation and operation support," and documentation that instructs users how to configure and use the allegedly infringing features, such as enabling RDP (Compl. ¶34, ¶44, ¶54, ¶¶24-25).
  • Willful Infringement: Willfulness is alleged based on both pre-suit and post-suit knowledge. The complaint alleges pre-suit knowledge dating back to 2014, when the Asserted Patents were "explicitly disclosed" to Defendant during business discussions (Compl. ¶18, ¶36). It further alleges post-suit knowledge based on a notice letter with claim charts sent in September 2020 (Compl. ¶19, ¶46, ¶56).

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

  • A core issue will be one of technical operation: does VMware's Horizon product "use" the Remote Desktop Protocol (RDP) in a manner that satisfies the claims, or is its support for RDP merely optional and incidental in a way that falls outside the claim scope? The case may depend on evidence regarding how RDP is integrated and employed within the Horizon architecture.
  • A key evidentiary question will be one of functional performance: do the icons generated by the Horizon product perform the function of providing a "graphic representation... reflecting whether the resource is located at the client or at the server" as required by the '961 patent? The resolution of this issue will likely depend on evidence developed during discovery regarding the specific appearance and behavior of icons in the accused system.