DCT
2:22-cv-01545
Datanet LLC v. Microsoft Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Datanet LLC (Nevada)
- Defendant: Microsoft Corporation (Washington)
- Plaintiff’s Counsel: Byrnes Keller Cromwell LLP
- Case Identification: 2:22-cv-01545, W.D. Wash., 10/31/2022
- Venue Allegations: Venue is based on Defendant Microsoft maintaining its corporate headquarters and a significant business presence in Redmond, Washington, within the district.
- Core Dispute: Plaintiff alleges that Defendant’s Microsoft OneDrive cloud storage service infringes three patents related to real-time file archiving, management, and restoration.
- Technical Context: The patents address technology in the field of cloud storage and data backup, a critical market for both consumer and enterprise users, focusing on methods to ensure continuous data protection with minimal performance impact.
- Key Procedural History: The patents-in-suit originated with IPCI, Inc. for a product called "AccuSafe" that was never commercialized, and were assigned to Plaintiff Datanet in 2018. The '348 Patent is a continuation of the '478 Patent, and the '850 Patent is a continuation of the '348 Patent, creating a direct family lineage. The '478 and '850 patents were granted extended terms.
Case Timeline
| Date | Event |
|---|---|
| 2000-09-21 | '478 Patent Priority Date |
| 2007-08-01 | OneDrive and OneDrive for Business Launched |
| 2013-06-24 | '348 Patent Filed |
| 2013-06-25 | '478 Patent Issued |
| 2015-12-15 | '850 Patent Filed |
| 2015-12-22 | '348 Patent Issued |
| 2018-09-20 | Patent Portfolio Assigned to Datanet |
| 2020-03-10 | '850 Patent Issued |
| 2022-10-31 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,473,478 - "Automatic Real-Time File Management Method and Apparatus," Issued June 25, 2013
The Invention Explained
- Problem Addressed: The patent identifies the shortcomings of then-existing data backup methods like manual, scheduled, and mirroring systems. These approaches were described as often confusing for users, failing to capture all file changes made between backups, and being ineffective if the backup storage medium was unavailable ('478 Patent, col. 1:16 - col. 2:55; Compl. ¶25).
- The Patented Solution: The invention discloses an automated, "real-time" file management system that captures an "archive file" at the moment a change to an "operating file" is initiated (e.g., open, save) ('478 Patent, col. 4:5-14). This captured file is first stored in a temporary location (e.g., an input buffer), and a database is updated to track its location. A "smart data management" component then manages the migration of the file to a permanent storage device, a process that can be deferred if the permanent storage is offline, thereby preventing data loss and minimizing the impact on system performance ('478 Patent, Fig. 1; col. 4:21-44).
- Technical Importance: The technology aimed to provide continuous, near-instantaneous data protection that was transparent to the user and resilient to intermittent network connectivity, a key challenge for early networked and cloud backup solutions ('478 Patent, col. 2:56-67).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 6 (Compl. ¶61).
- Independent Claim 1 is a method claim comprising the essential elements of:
- Detecting an instruction from an operating system to perform an operation on a file.
- Creating an archive file and storing it in a "temporary first storage location."
- Updating a database to track the file's location in the temporary storage.
- Searching the temporary location for the file in response to a "first event."
- Moving the file to an "intermediate storage location" and updating the database.
- Moving the file from the intermediate location to a "second storage location" (permanent storage) in response to a "second event" and again updating the database.
- The complaint reserves the right to assert other claims, including dependent claims 2, 3, 5, 8, 9, 10, and 11 (Compl. ¶61).
U.S. Patent No. 9,218,348 - "Automatic Real-Time File Management Method and Apparatus," Issued December 22, 2015
The Invention Explained
- Problem Addressed: As a continuation of the '478 Patent, the '348 Patent addresses the same fundamental problem: the risk of data loss and the operational complexity associated with traditional backup systems ('348 Patent, col. 1:13 - col. 2:65).
- The Patented Solution: The invention describes a method where a "resident program" detects a file operation instruction. In response, it creates an archive file in a temporary location. Upon a "first event," the system identifies the presence of the archive file, and upon a "second event," it transmits the file to an intermediate or permanent storage location. This two-event system decouples the initial, time-critical file capture from the potentially slower transmission to final storage ('348 Patent, Abstract; col. 7:36-col. 8:5).
- Technical Importance: This approach refines the concept of asynchronous backup, providing a technical framework for capturing file changes immediately while intelligently managing the data transfer to remote or networked storage based on system or network availability ('348 Patent, col. 2:58-65).
Key Claims at a Glance
- The complaint asserts independent claims 15 and 29 (Compl. ¶85).
- Independent Claim 15 is a method claim comprising the essential elements of:
- Detecting an instruction by a "resident program" to perform an operation on a file.
- Creating an archive file and storing it in a temporary location.
- Identifying the presence of the archive file in the temporary location responsive to a "first event."
- Transmitting the archive file to a "second storage location" (intermediate or permanent) responsive to a "second event," where the first and second events are different.
- The complaint reserves the right to assert other claims, including dependent claims 1, 3-6, 8, 10-20, and 23-31 (Compl. ¶85).
Multi-Patent Capsule: U.S. Patent No. 10,585,850
- Patent Identification: U.S. Patent No. 10,585,850, "Automatic Real-Time File Management Method and Apparatus," Issued March 10, 2020 (Compl. ¶102).
- Technology Synopsis: This patent, a continuation of the '348 Patent, shifts focus from archiving to restoration. It describes a method for restoring a file by presenting a user with a "collection of one or more previous versions" stored remotely. The method allows a user to select and "preview" a version before committing to a full restore, thereby saving time and network bandwidth by avoiding the restoration of an unwanted version ('850 Patent, Abstract; Compl. ¶¶32-33).
- Asserted Claims: The complaint asserts independent claim 10 (Compl. ¶¶107-108).
- Accused Features: The allegations target the "Version History" feature of OneDrive, which the complaint states allows users to view a list of previous file versions, preview them, and restore a selected version to their local computer (Compl. ¶108).
III. The Accused Instrumentality
Product Identification
- Microsoft OneDrive and OneDrive for Business (collectively "OneDrive") (Compl. ¶35).
Functionality and Market Context
- OneDrive is a file hosting, synchronization, and backup service that automatically synchronizes file changes between a user's local device and Microsoft's cloud servers (Compl. ¶¶36, 62). The complaint alleges that when a file in a local OneDrive folder is changed, the service creates a copy in a "temporary storage staging buffer (change to send queue)" before transmitting it to the cloud (Compl. ¶62). The complaint provides a screenshot of a disk I/O monitor, allegedly showing OneDrive updating local database files such as
auto_upload.dbto track file states (Compl. ¶62, p. 12). - A key accused feature is "Version History," which stores previous versions of files for up to thirty days and allows users to preview and restore them (Compl. ¶¶43, 46, 52). The complaint includes screenshots of the Version History interface, showing options to "Restore" or "Open File" for previous versions (Compl. ¶108, p. 24).
- The service is alleged to have significant market penetration, being bundled with Microsoft Windows and integrated with Microsoft Office, and providing backup capabilities to millions of users (Compl. ¶¶37, 38, 47).
IV. Analysis of Infringement Allegations
'478 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| detecting an instruction by an operating system to perform an operation on an operating file; | OneDrive monitors for file changes and detects instructions to change/save a file via the Windows notification service. | ¶62 | col. 4:5-10 |
| creating an archive file from the operating file and storing the archive file in a temporary first storage location temporally proximate to the operation... | Upon detecting a change, OneDrive creates an archive file and saves it in a "change to send" queue, which serves as the temporary storage location. | ¶62 | col. 4:21-24 |
| searching the first temporary storage location for the archive file responsive to the occurrence of a first event; | In response to a first event (e.g., file creation, timer message), the "change to send queue" is searched to identify archive files and determine their size/type before sending to the cloud server. | ¶62 | col. 5:46-54 |
| moving the archive file to a second storage location responsive to a second event, the second storage location being a permanent storage location; | In response to a second event (e.g., server ready signal), archived files are transmitted from the user's computer (temporary storage) to the OneDrive cloud server (permanent storage). | ¶62 | col. 5:34-44 |
| after storing the archive file in the first temporary storage location, updating a database to indicate that the archive file is located in the first temporary storage location; | OneDrive updates a database (e.g., <cid>.dat, auto_upload.db) to indicate the archive file is in the "change to send" queue. The complaint includes a visual of database file access. |
¶62 | col. 4:15-20 |
| moving the archive file from the first temporary storage location to an intermediate storage location; | OneDrive moves the archive file from the "change to send queue" to an "output buffer, or a local cache, an external cache, or an intermediary server" before moving it to the final destination. | ¶62 | col. 4:33-36 |
- Identified Points of Contention:
- Architectural Questions: The infringement theory relies on mapping OneDrive's architecture to the patent's specific three-tiered storage model ("temporary", "intermediate", "permanent"). A key question is whether components like a "change to send queue," a "local cache," and the "cloud server" function as the distinct storage locations required by the claim, or if this represents an attempt to read limitations onto a more streamlined architecture.
- Scope Questions: Does the "windows notification service" informing the OneDrive application of a file change constitute "detecting an instruction by an operating system," as the claim requires? A court may need to determine if the instruction originates from the OS itself or from the user-level application in a way that falls outside the claim's scope.
'348 Patent Infringement Allegations
| Claim Element (from Independent Claim 15) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| (a) the step of detecting an instruction by a resident program in a computing device for performing an operation on an operating file; | OneDrive monitors file changes and detects an instruction to save a modified file. The Windows notification service is alleged to provide the instruction to start the backup. | ¶86 | col. 7:36-41 |
| (b) the step of creating an archive file from the operating file and storing the archive file in a temporary storage location... | In response to the instruction, OneDrive creates an archive file from the operating file and saves it to a "change to send" queue. | ¶86 | col. 7:42-49 |
| (c) the step of identifying presence of the archive file in the temporary storage location responsive to the occurrence of a first event; | Once in the queue (a "first event"), the archive files are identified and searched to determine their size/type before being sent to the cloud. | ¶86 | col. 8:1-5 |
| (d) the step of transmitting the archive file to a second storage location responsive to a second event, the second storage location being an intermediate or a permanent storage location... | Responding to a second, different event (e.g., server ready), the archive file is transmitted from the queue to the OneDrive cloud server. | ¶86 | col. 8:6-14 |
- Identified Points of Contention:
- Technical Questions: The claim requires two "different" events to trigger identification and transmission. The complaint's theory suggests the first event is the file arriving in the queue and the second is a signal from the server. The case may turn on whether these are distinct triggering events in OneDrive's actual operation as required by the claim.
- Scope Questions: As with the '478 Patent, a central issue will be whether the OneDrive sync client, acting on OS notifications, qualifies as a "resident program" in the manner described and claimed by the patent.
V. Key Claim Terms for Construction
For the '478 and '348 Patents:
- The Term: "temporary first storage location"
- Context and Importance: This term is foundational to the infringement read, as the Plaintiff identifies it as a "temporary storage staging buffer (change to send queue)" (Compl. ¶62). The viability of the infringement case depends on whether OneDrive's architecture includes a distinct location that meets this claim's definition, separate from the final permanent storage.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification defines "Storage Location" very broadly as "any storage device, or a buffer, folder, directory or designated area on a storage device" ('478 Patent, col. 3:26-28). This language may support arguing that any transient holding area, like a software queue, qualifies.
- Evidence for a Narrower Interpretation: The patent figures depict "input buffer 20" as a discrete block, separate from "output buffer(s) 25" and "storage device 35" ('478 Patent, Fig. 1). This could support a narrower construction requiring a more formally defined and distinct hardware or software buffer, not merely a transient state in a data transmission process.
For the '348 Patent:
- The Term: "resident program"
- Context and Importance: Claim 15 of the '348 Patent requires the file operation instruction to be detected "by a resident program." Plaintiff's infringement theory implicates the OneDrive sync application and the Windows notification system (Compl. ¶86). Practitioners may focus on this term because its definition will determine whether a user-space application like OneDrive falls within the claim's scope.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent defines the term as "an operating system (OS) or other program that has control over file operations such as 'read', 'write', 'save', etc." ('348 Patent, col. 3:49-52). This broad definition could be argued to encompass a sync client that intercepts or acts upon file operations.
- Evidence for a Narrower Interpretation: The specification separately defines a "User Program" as application software installed by the user ('348 Patent, col. 3:53-58). A defendant may argue that the OneDrive client is a "User Program" and therefore distinct from a "resident program," which could be construed more narrowly to mean a lower-level system service or driver.
VI. Other Allegations
- Indirect Infringement: The complaint alleges active inducement for all three patents. The basis for this allegation is that Microsoft provides instructions, technical support, and user manuals that "caused, urged, encouraged, aided and abetted" customers to use OneDrive's infringing functionalities, such as file synchronization and version restoration (Compl. ¶¶72, 94, 116).
- Willful Infringement: The complaint alleges that Microsoft's infringement is "knowing, intentional and willful" (Compl. ¶¶74, 96, 118). The specific factual basis provided for this knowledge is "at least the filing and service of this Complaint," which primarily supports a claim for post-suit willfulness (Compl. ¶¶70, 92, 114).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of architectural mapping: Does the operational architecture of Microsoft OneDrive, particularly its use of sync queues, caches, and cloud storage, align with the specific, multi-stage storage hierarchy ("temporary," "intermediate," "permanent") and database-updating steps recited in the '478 and '348 patents, or is there a fundamental mismatch?
- A central legal question will be one of claim scope: Can the term "resident program" ('348 Patent) be construed to cover a user-level application like the OneDrive sync client, or does the patent’s distinction between a "resident program" and a "user program" place the accused software outside the claim's reach?
- A key evidentiary question for the '850 patent will be one of functional precision: Does OneDrive's "Version History" feature, including its "Open File" option, perform the specific function of "presenting a presentable representation" for a preview that is distinct from the "restorable representation" for a full restore, as required by the multi-step process of claim 10?