Case 8:19-cv-01150-JLS-ADS Document 26-3 Filed 09/19/19 Page 1 of 4 Page ID #:148
`Case 8:19-cv-01150-JLS-ADS Document 26-3 Filed 09/19/19 Page 1 of 4 Page ID #: 148
`
`EXHIBIT 1
`
`EXHIBIT 1
`
`
`
`
`
`
`
`
`
`
`
`

`

`Case 8:19-cv-01150-JLS-ADS Document 26-3 Filed 09/19/19 Page 2 of 4 Page ID #:149
`
`
`
`
`September 5, 2019
`
`VIA E-MAIL (AJACOBS@PRINCELOBEL.COM)
`
`Aaron S. Jacobs
`PRINCE LOBEL TYE LLP
`One International Place
`Suite 3700
`Boston, MA 02110
`
`
`
`Paul E. Torchia
`Direct: +1 212.351.3953
`Fax: +1 212.351.6352
`PTorchia@gibsondunn.com
`
`
`
`Re: UNILOC 2017 LLC, v. INFOR, INC. 8:19-cv-01150-JLS-ADS (C.D. CAL.)
`
`Dear Aaron:
`
`I write to address Uniloc’s allegations that Infor infringes the 578 and 293 patents in the
`above-captioned case. As you know, Uniloc recently secured a decision from the Federal
`Circuit reversing a prior judgment that the 578 and 293 patents were directed to ineligible
`subject matter. Uniloc USA, Inc. v. ADP, LLC, 772 F. App’x 890 (Fed. Cir. 2019). Uniloc
`did so only by asserting that these patents were not directed to abstract software concepts, but
`rather to certain specific technologies used to centrally manage and distribute customized
`software over a network. Id. at 896-899. The Federal Circuit accepted those assertions and
`recited these requirements of the patents in its opinion. Id.
`
`In the complaint, Uniloc has not even alleged that Infor uses these required technologies.
`Indeed, as discussed below, in the rare situation where Uniloc actually identifies claim
`elements, the allegations show that Infor’s accused Workforce Management product does not
`even remotely resemble the claimed invention, as articulated by the Federal Circuit.
`Elsewhere, Uniloc ignores claim elements entirely. Both failings, under controlling law,
`compel that the case be dismissed. See, e.g., N. Star Innovations Inc. v. Kingston Tech. Co.,
`Inc., 2018 WL 3155258, at *5 (C.D. Cal. May 7, 2018); Bell Atl. Corp. v. Twombly, 550 U.S.
`544, 555 (2007); Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009).
`
`A. The 578 Patent
`
`The specification and claims of the 578 patent are directed to a system for delivering
`customized, configurable applications to client devices over a network. As the Federal
`Circuit expressly held, at Uniloc’s behest, representative claim 1 of the 578 patent is directed
`to a system that “that allows for on-demand installation of two-tier customized applications”
`based on both a “user set” and an “administrator set” of a “plurality of configurable
`preferences.” Uniloc USA, 772 F. App’x at 898. As the Court explained, “[t]he positioning
`of these components on the application server together with the application launcher on the
`client computer allows customization by both the administrator and the user in such a way as
`the installation can proceed on-demand with both sets of preferences.” Id. at 899.
`
`
`
`
`
`

`

`Case 8:19-cv-01150-JLS-ADS Document 26-3 Filed 09/19/19 Page 3 of 4 Page ID #:150
`
`
`
`
`
`September 5, 2019
`Page 2
`
`
`There is no allegation in the complaint that Infor’s Workforce Management product works
`anything like this. Indeed, as the complaint makes clear, Workforce Management is not a
`platform for distributing software of any kind, let alone “two-tier customized applications.”
`Rather, Workforce Management is a web-based human resources solution that allows
`businesses to better manage their workforces, for example, by enabling employees to request
`certain shifts or time off, and employers to review and approve those requests. Complaint at
`¶¶ 10-11.
`
`Uniloc’s own allegations show that the accused products do not remotely resemble the 578
`patent, and do not use the core required technologies that the Federal Circuit recited in its
`decision. The alleged “configurable preferences” that Uniloc identifies in the complaint are
`not alleged to be configurable preferences of the application itself, or to relate to the
`customization or installation of the application. Indeed, the “user preferences” that Uniloc
`identifies in the complaint are alleged “preferences” for certain work schedules. Id. at ¶ 9.
`Similarly, the alleged “administrator preferences” are actions taken by employers to approve
`or deny employee requests, or establish workplace rules. Id. at ¶¶ 10-12. Nowhere does
`Uniloc ever allege—because it cannot—that these purported “preferences” are used to allow
`“installation [to] proceed on-demand with both sets of preferences,” as required by the
`Federal Circuit. On this basis alone, the complaint must be dismissed.
`
`Uniloc has also failed to address entire elements of the claims. For example, Uniloc has not
`even alleged what technology in the accused products purportedly satisfies the requirement
`for “distributing an application launcher program associated with the application program to
`a client coupled to the network.” Again, this element is not only required by all of the
`claims, but it was emphasized by the Federal Circuit in its decision. Uniloc’s inability to
`provide any factual basis for asserting that this element is satisfied is fatal.
`
`B. The 293 Patent
`
`The specification and claims of the 293 patent are directed to a system for centralized
`management and distribution of applications to clients from an “on demand server” coupled
`to a “centralized network management server.” As the Federal Circuit expressly held, at
`Uniloc’s behest, the claims of the 293 patent are directed to particular use of this topology,
`whereby “a file packet” is sent from the centralized network management server to the on
`demand server, and used to “enable the further functionality of initiating on-demand
`registration of the application.” Uniloc USA, 772 F. App’x at 897. According the Court,
`“[t]his is the clear ‘focus’ of the claims and the asserted advance described in the
`specification.” Id.
`
`Nowhere in the complaint are there any allegations about where any of these required
`technologies, emphasized by the Federal Circuit, are to be found in the accused product.
`
`

`

`Case 8:19-cv-01150-JLS-ADS Document 26-3 Filed 09/19/19 Page 4 of 4 Page ID #:151
`
`
`
`
`
`September 5, 2019
`Page 3
`
`
`Nowhere does Uniloc even state what in the accused products constitutes the alleged network
`management server, the on demand server, or the file packet. Nor does Uniloc identify what
`allegedly performs the step of initiating on-demand registration of the application.
`
`Indeed, Uniloc does little more in the Complaint than assert that “[t]he following image
`shows that a user has requested a program from Infor and that Infor has called the Workforce
`Management software from a source directory and delivered the software to a target
`directory at the user’s device.” Complaint at ¶ 25. That statement, which is not supported by
`the document, would establish nothing even if taken as true. But apart from that statement,
`Uniloc provides nothing more than a listing of the claim elements and a bare assertion that
`they are satisfied, without any supporting allegations of fact. Id. at ¶ 26. That is plainly
`insufficient as a matter of law.
`
`*
`
`*
`
`*
`
`We believe that Uniloc’s pleading cannot be cured by amendment and request that Uniloc
`dismiss the case with prejudice. Please understand that in light of the circumstances above,
`and in light of the fact that this is the fifth time Uniloc has sued Infor (and the third time on
`these patents), Infor will seek all appropriate remedies if it is forced to expend additional
`resources in this case.
`
`In the event Uniloc insists on maintaining this case, we ask that Uniloc promptly respond to
`this letter in writing, and provide a time to meet and confer no later than Thursday,
`September 12, in accordance with Local Rule 7-3 and ¶ 9(a) of Judge Staton’s standing
`order, as we intend to file an appropriate motion to dismiss.
`
`Sincerely,
`
`/s Paul E. Torchia
`
`Paul E. Torchia
`
`
`
`
`