DCT
2:17-cv-01183
Uniloc USA Inc v. Big Fish Games Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Uniloc USA, Inc. (Texas) and Uniloc Luxembourg, S.A. (Luxembourg)
- Defendant: Big Fish Games, Inc. (Washington)
- Plaintiff’s Counsel: Prince Lobel Tye LLP; Nelson Bumgardner PC
- Case Identification: 2:17-cv-00172, E.D. Tex., 03/06/2017
- Venue Allegations: Plaintiff alleges venue is proper as Defendant is deemed to reside in the district, has committed acts of infringement there, and has purposefully transacted business in Texas.
- Core Dispute: Plaintiff alleges that Defendant’s online game distribution portal and associated services infringe patents related to remote software maintenance and pausable data transfer operations.
- Technical Context: The technology concerns client-server architectures for the delivery and management of digital content, a foundational element of the online gaming and software distribution industries.
- Key Procedural History: Subsequent to the filing of this complaint, U.S. Patent No. 6,564,229 was subject to an Inter Partes Review (IPR2017-02148). The resulting IPR certificate, issued April 16, 2021, cancelled claims 1-5 and 7-9. The complaint asserts cancelled claims 1-5 and 7, which raises questions about the viability of those specific infringement contentions. Claims 10-19 were confirmed as patentable.
Case Timeline
| Date | Event |
|---|---|
| 1994-12-28 | U.S. Patent No. 6,110,228 Priority Date |
| 2000-06-08 | U.S. Patent No. 6,564,229 Priority Date |
| 2000-08-29 | U.S. Patent No. 6,110,228 Issue Date |
| 2003-05-13 | U.S. Patent No. 6,564,229 Issue Date |
| 2017-03-06 | Complaint Filing Date |
| 2017-09-27 | IPR Filed for U.S. Patent No. 6,564,229 |
| 2021-04-16 | IPR Certificate Issued for U.S. Patent No. 6,564,229 |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,110,228 - “METHOD AND APPARATUS FOR SOFTWARE MAINTENANCE AT REMOTE NODES,” issued August 29, 2000
The Invention Explained
- Problem Addressed: The patent’s background section describes the lack of a common, efficient method for applying software updates ("fixes") to programs running on remote computers ("nodes") within a distributed network, particularly when dealing with different operating systems and complex update dependencies (’228 Patent, col. 2:5-47).
- The Patented Solution: The invention proposes a centralized "service facility" where all program source code resides. A customer at a remote node uses a common interface to send a service request to this central facility. The facility performs the necessary "service research" to identify and apply the correct fixes, then returns the updated, executable program code back to the customer over the network ('228 Patent, Abstract; Fig. 2).
- Technical Importance: This architecture centralized the complex task of software maintenance, aiming to improve reliability and efficiency by removing the burden of managing update sequences from remote users or administrators ('228 Patent, col. 3:5-10).
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claims 6-7, 10, 18, 26, 29, and 67 (Compl. ¶16).
- Independent Claim 1 recites a method with the key steps of:
- interactively receiving a request for a computer program service from a customer at a remote location interface;
- providing the request to a service facility at a central computer site;
- determining the components of the requested service at the central site; and
- providing the results of the service back to the customer.
- The complaint reserves the right to pursue other claims (Compl. ¶22).
U.S. Patent No. 6,564,229 - “SYSTEM AND METHOD FOR PAUSING AND RESUMING MOVE/COPY OPERATIONS,” issued May 13, 2003
The Invention Explained
- Problem Addressed: The patent describes how large file copy operations can consume substantial system resources, causing other applications to slow down or stall. Canceling such an operation is inefficient, as all progress is lost and the entire file must be re-copied later (’229 Patent, col. 1:49–col. 2:8).
- The Patented Solution: The invention provides a user interface with a "pause" function for a file copy operation. When paused, the system saves the operation's state—specifically, an index pointing to the next block of data to be copied—to a file. This allows the user to resume the operation at a later time, even after a system restart, from the exact point where it left off, thereby preserving the work already completed ('229 Patent, Abstract; Fig. 2).
- Technical Importance: This solution provides users with greater control over system resources, allowing them to flexibly manage large, time-consuming data transfers without losing progress, which is particularly relevant for downloading large files over a network ('229 Patent, col. 8:58–65).
Key Claims at a Glance
- The complaint asserts claims 1-7, 10-13, and 16 (Compl. ¶34). As noted in Section I, an IPR proceeding has since cancelled claims 1-5 and 7-9.
- The asserted independent claims were 1 (method) and 10 (system). Claim 1 has been cancelled.
- Independent Claim 10 (Survives IPR) recites a computer system with essential elements including:
- one or more processors and nonvolatile storage devices;
- a data file at a first location;
- a "copy tool" that includes "means for reading" a portion of the data file, "means for writing" it to a new file, "means for pausing" the tool in response to a user request, and "means for resuming" the tool.
- The complaint reserves the right to pursue other claims (Compl. ¶40).
III. The Accused Instrumentality
Product Identification
- The "Big Fish Games portal" software, its application, and its "associated backend server architecture" (Compl. ¶16, 34).
Functionality and Market Context
- The accused instrumentality is a digital distribution platform that allows users to download, manage, and update a large catalog of games for various operating systems, including PC, Mac, and Android (Compl. ¶11, 27). Key accused functionalities include a system for checking for and installing game updates delivered from Defendant's servers, and a feature that allows users to pause and resume large game downloads (Compl. ¶16, 34). A screenshot provided in the complaint shows an interface for requesting game updates (Compl. ¶11).
IV. Analysis of Infringement Allegations
'228 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| interactively receiving a request for a computer program service from a customer at a remote location interface | The Big Fish Games portal provides a user interface with options such as "Check for Updates" and "Install Updates," which allow a user to request a software update service. | ¶11-14 | col. 26:11-19 |
| providing the received request for service over the computer network to a service facility at the central computer site | The user's request for an update is transmitted from the user's computer (the remote location) to the Defendant's backend servers (the central site). | ¶16 | col. 26:20-24 |
| determining the components of the requested service at the central computer site | The backend server architecture allegedly determines the service requested, such as providing an upgrade in response to a user's request. | ¶16 | col. 26:25-27 |
| providing the results of the requested service over the computer network back to the customer | The system provides the software upgrade to the user in response to the request received from the remote user location. | ¶16 | col. 26:28-32 |
Identified Points of Contention
- Scope Questions: A primary question for the court may be whether the term "service facility," as described in the patent in the context of enterprise software maintenance and "service research" ('228 Patent, col. 2:10-23), can be construed to read on a consumer-facing game distribution server that delivers pre-packaged updates.
- Technical Questions: The complaint alleges that the accused system "determin[es] the service requested" (Compl. ¶16). It remains a question of fact whether this functionality is equivalent to the patent's more complex "determining the components of the requested service," which the specification links to resolving update dependencies ('228 Patent, col. 2:10-23).
'229 Patent Infringement Allegations
| Claim Element (from Independent Claim 10) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a copy tool, the copy tool including: | The Big Fish Games portal software functions as a copy tool by managing the download of game files from a server to a user's computer. | ¶34 | col. 10:57 |
| means for reading a first portion of the data file; | The system downloads a first portion of a game file from the server. | ¶34 | col. 10:58-59 |
| means for writing the first portion to a new file... at a second location; | The downloaded portion of the game file is written to the user's computer. A screenshot shows a game download in progress (Compl. ¶30). | ¶29, 34 | col. 10:60-62 |
| means for pausing the copy tool in response to a user request from a user interface... | The user interface includes a "Pause" button, allowing the user to pause the download. A screenshot shows the user interface reporting "Download paused" for a game download (Compl. ¶31). | ¶31, 34 | col. 10:63-67 |
| means for resuming the copy tool in response to a user request; | The user interface provides a "resume" button to continue the download. A subsequent screenshot shows the same paused download with an active "resume" button available to the user (Compl. ¶32). | ¶32, 34 | col. 11:1-2 |
| means for reading a second data portion... and writing the second data portion... | After the user resumes, a second portion of the game is downloaded and written to the file on the user's computer. | ¶34 | col. 11:3-7 |
Identified Points of Contention
- Scope Questions: As claim 10 uses "means-plus-function" language, its scope is limited to the structures disclosed in the specification and their equivalents. The infringement analysis will likely focus on whether the accused downloader's pause/resume mechanism is structurally equivalent to the "index file" embodiment described in the '229 patent, which stores specific data points like the next block number, file names, and block size ('229 Patent, col. 4:40-56).
- Technical Questions: The complaint provides visual evidence of a pause/resume feature but does not offer details on its underlying technical implementation. A key factual question will be what evidence demonstrates that the accused product's pause function operates by creating and referencing a state-saving data structure equivalent to the "index file" disclosed in the patent.
V. Key Claim Terms for Construction
'228 Patent
- The Term: "service facility at the central computer site" (Claim 1)
- Context and Importance: This term is central to defining the claimed architecture. Its construction will determine whether the patent applies narrowly to enterprise-level maintenance systems or broadly to any client-server software delivery system.
- Intrinsic Evidence for a Broader Interpretation: The claim language itself is not explicitly limited to an enterprise context and could be read to cover any centralized server providing a software service.
- Intrinsic Evidence for a Narrower Interpretation: The specification repeatedly refers to the user as a "system programmer" and discusses tasks like "service research" in the context of specific IBM mainframe operating systems like "VM/ESA," which may support an interpretation limited to a more sophisticated, enterprise-level environment ('228 Patent, col. 2:2, 5:60-63).
'229 Patent
- The Term: "means for pausing the copy tool" (Claim 10)
- Context and Importance: This is a means-plus-function limitation governed by 35 U.S.C. § 112(f). The infringement analysis will depend entirely on the corresponding structure disclosed in the patent. Practitioners may focus on this term because the survival of the infringement case for the '229 patent rests on proving the accused product contains an equivalent to the structure disclosed for this function.
- Evidence for a Broader Interpretation (i.e., Range of Equivalents): A party might argue that any mechanism that saves the state of a download (e.g., the last byte transferred) to allow for a precise restart performs the same function in substantially the same way to achieve the same result.
- Evidence for a Narrower Interpretation (i.e., The Disclosed Structure): The specification explicitly discloses a specific structure for performing the pause function: creating an "index file" that stores the "source file name, target file name, block size, and next block number" ('229 Patent, Abstract; col. 4:40-56). This specific disclosure could be used to argue for a narrow construction limited to systems that create and use a data structure with these specific elements or their close equivalents.
VI. Other Allegations
Indirect Infringement
For both the '228 and '229 patents, the complaint alleges inducement, stating that Defendant instructs its customers on how to use the infringing functionalities through materials like training videos and user guides available on its websites (Compl. ¶18, 36). It also pleads contributory infringement, alleging the Big Fish Games portal software is a material component of the patented inventions, is especially adapted for infringement, and is not a staple article of commerce with substantial non-infringing uses (Compl. ¶19, 37).
Willful Infringement
The complaint alleges that Defendant will be on notice of the patents-in-suit at least upon service of the complaint, and that any continued infringement thereafter would be willful (Compl. ¶21, 39).
VII. Analyst’s Conclusion: Key Questions for the Case
- Architectural Scope: A core issue for the '228 patent will be one of definitional scope: can the term "service facility," rooted in the patent's context of enterprise software maintenance and "service research," be construed to cover a mass-market, consumer-facing game distribution portal?
- Structural Equivalence: For the '229 patent, a key evidentiary question will be one of structural equivalence under 35 U.S.C. § 112(f): does the accused product's pause/resume feature operate using a technical mechanism that is structurally equivalent to the specific "index file" embodiment disclosed in the patent's specification?
- Impact of IPR: The post-filing cancellation of the '229 patent's asserted independent method claim (Claim 1) raises a significant procedural and substantive question: how does this cancellation impact the scope and potential damages of the case, forcing Plaintiff to rely solely on the surviving "means-plus-function" system claim (Claim 10)?