Ubisoft Inc v. Uniloc Luxembourg SA

1. Case Identification

• Case #: IPR2017-01827
• Patent #: 7,069,293
• Filed: July 21, 2017
• Petitioner(s): Ubisoft Entertainment S.A. and Square Enix
• Patent Owner(s): Uniloc USA, Inc. and Uniloc Luxembourg S.A.
• Challenged Claims: 1, 12, and 17

2. Patent Overview

• Title: Application Program Distribution System
• Brief Description: The ’293 patent discloses a system for the centralized control and distribution of software in a computer network. The system uses a network management server to prepare and distribute application programs as "file packets" to target on-demand servers, where they are registered and made available to authorized client users.

3. Grounds for Unpatentability

Ground 1: Claims 1, 12, and 17 are anticipated by TME Cookbook under 35 U.S.C. §102(b).

• Prior Art Relied Upon: The TME 10 Deployment Cookbook (TME Cookbook), a publicly available IBM manual dated April 1997.
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the TME Cookbook, which describes the Tivoli Management Environment (TME) for software distribution, discloses every element of the challenged claims. Independent method claim 1 and independent system claim 12 are mapped element-for-element, and product claim 17 is treated as coextensive with the system claim.
    • Providing/Specifying Programs: Petitioner asserted that the TME Cookbook teaches providing an application program (e.g., MS Office) to a central network management server (a "TMR Server") by installing it from a CD or disk. The TME software’s graphical user interface ("File Package Properties") is then used to specify the source directory of the application and the target directory on a remote managed node ("on-demand server").
    • Preparing the File Packet: The petition contended that the TME Cookbook describes preparing a "file package" or "file package block" that contains all application files for distribution, not just pointers.
    • Registration Operations: Crucially, Petitioner argued the TME Cookbook teaches including a "segment configured to initiate registration operations." This is met by the TME Cookbook’s feature allowing an administrator to set a "User ID or User Name" parameter within the file package. This parameter designates which specific users are authorized to access the distributed files on the target server, thereby performing a registration function. Further, the use of "After Distribution" scripts to create program icons on the target machine was argued to be part of making the application registered and available.
    • Distributing and Making Available: Petitioner claimed the TME Cookbook explicitly describes distributing the file package from the central TMR Server to a target managed node. Upon receipt, an "After Distribution" script can execute to make the application available for use by a user at a client (e.g., by creating a program icon), thereby completing the distribution and availability process as claimed.
  • Key Aspects: The core of the petition's argument focused on demonstrating that the TME Cookbook's user-permissioning parameters and post-distribution scripts meet the "segment configured to initiate registration operations" limitation. This was a direct response to a perceived deficiency in a previously denied IPR against the same patent.

4. Key Claim Construction Positions

• Petitioner argued that several terms in means-plus-function claims 12 and 17 required specific construction based on the ’293 patent’s specification. These constructions were central to mapping the TME Cookbook to the claims.
• "means for preparing a file packet ... including a segment configured to initiate registration operations for the application program at the target on-demand server" (Claim 12):
  • Petitioner asserted the stated function is preparing a file packet with a segment for registration.
  • The corresponding structure was identified as a server or software programmed to (1) create a file package definition, (2) add a command script if specified, and (3) save the definition.
  • Critically, Petitioner argued that the function of "registration operations" must include maintaining a list of authorized users for application programs, as described in the specification and dependent claims 4 and 5. This construction was vital for arguing that the TME Cookbook’s user-permissioning features met the limitation.
• "means for distributing the file packet to the target on demand server to make the application program available for use by a user at a client" (Claim 12):
  • Petitioner identified the function as distributing the packet and making the application available.
  • The corresponding structure was identified as a server programmed to perform the distribution task, and a recipient on-demand server programmed to process any "after distribution" programs and execute registration operations to make the application available to the client. This linked the distribution to the final step of availability at the client endpoint.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1, 12, and 17 of the ’293 patent as unpatentable.