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`Case 2:16-cv-00871-RWS Document 1 Filed 08/07/16 Page 1 of 15 PageID #: 1
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`UNILOC USA, INC. and
`UNILOC LUXEMBOURG, S.A.,
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`Plaintiffs,
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`v.
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`KASPERSKY LAB, INC.
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`Defendant.
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`§
`§
`§
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`§
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`Civil Action No. 2:16-cv-871
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`PATENT CASE
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`JURY TRIAL DEMANDED
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`ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT
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`1.
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`Plaintiffs, Uniloc USA, Inc. and Uniloc Luxembourg, S.A. (together “Uniloc”), as and for
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`their complaint against defendant, Kaspersky Lab, Inc. (“Defendant”), allege as follows:
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`
`
`THE PARTIES
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`2.
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`Uniloc USA, Inc. (“Uniloc USA”) is a Texas corporation having a principal place of
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`business at Legacy Town Center I, Suite 380, 7160 Dallas Parkway, Plano Texas 75024. Uniloc also
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`maintains a place of business at 102 N. College, Suite 603, Tyler, Texas 75702.
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`3.
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`Uniloc Luxembourg S.A. (“Uniloc Luxembourg”) is a Luxembourg public limited liability
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`company having a principal place of business at 15, Rue Edward Steichen, 4th Floor, L-2540, Luxembourg
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`(R.C.S. Luxembourg B159161). Uniloc Luxembourg owns a number of patents in the field of application
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`management in a computer network.
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`4.
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`Upon information and belief, Kaspersky Lab, Inc. is a Massachusetts corporation having a
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`place of business at 500 Unicorn Park, 3rd Floor, Woburn, Massachusetts 01801 and offering its products
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`and/or services, including those accused herein of infringement, for purchase or download to customers
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`1
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`Case 2:16-cv-00871-RWS Document 1 Filed 08/07/16 Page 2 of 15 PageID #: 2
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`and/or potential customers located in Texas and in the judicial Eastern District of Texas. Kaspersky Lab,
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`Inc. may be served with process through its registered agent: Angelo Gentile, 500 Unicorn Park Dr.,
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`Woburn, MA 01801.
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`
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`JURISDICTION AND VENUE
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`5.
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`Uniloc brings this action for patent infringement under the patent laws of the United States,
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`35 U.S.C. § 271 et seq. This Court has subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331, 1338(a)
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`and 1367.
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`6.
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`Venue is proper in this judicial district pursuant to 28 U.S.C. §§ 1391(c) and 1400(b). Upon
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`information and belief, Defendant is deemed to reside in this judicial district, has committed acts of
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`infringement in this judicial district, and/or has purposely transacted business involving the accused
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`products in this judicial district, including sales to one or more customers in Texas.
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`7.
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`Defendant is subject to this Court’s jurisdiction pursuant to due process and/or the Texas
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`Long Arm Statute due at least to its substantial business in this State and judicial district, including: (A)
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`at least part of its past infringing activities, (B) regularly doing or soliciting business in Texas and/or (C)
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`engaging in persistent conduct and/or deriving substantial revenue from goods and services provided to
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`customers in Texas.
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`COUNT I
`(INFRINGEMENT OF U.S. PATENT NO. 6,510,466)
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`Uniloc incorporates by reference the preceding paragraphs.
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`Uniloc Luxembourg is the owner, by assignment, of U.S. Patent No. 6,510,466 (“the ‘466
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`8.
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`9.
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`Patent”), entitled METHODS, SYSTEMS AND COMPUTER PROGRAM PRODUCTS FOR
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`CENTRALIZED MANAGEMENT OF APPLICATION PROGRAMS ON A NETWORK that issued on
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`January 21, 2003. A true and correct copy of the ‘466 Patent is attached as Exhibit A hereto.
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`2
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`Case 2:16-cv-00871-RWS Document 1 Filed 08/07/16 Page 3 of 15 PageID #: 3
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`10.
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`Uniloc USA is the exclusive licensee of the ‘466 Patent with ownership of all substantial
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`rights therein, including the right to grant sublicenses, to exclude others, and to enforce, sue and recover
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`past damages for the infringement thereof.
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`11.
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`The ‘466 Patent has been referenced by over four hundred other patent applications/patents
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`including patents applications/patents by IBM, HP, Network Associates, Microsoft, Fujitsu, Alcatel, SAP,
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`AT&T, Citrix, Sharp, Computer Associates, Oracle, Google, and Intel.
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`12.
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`Upon information and belief, the following describes, at least in part, how certain aspects
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`of a representative sample of Defendant’s software licensing and delivery system work:
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`Source: https://my.kaspersky.com
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`13.
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`Upon information and belief, the following describes, at least in part, how certain aspects
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`of a representative sample of Defendant’s software licensing and delivery system work:
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`3
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`Case 2:16-cv-00871-RWS Document 1 Filed 08/07/16 Page 4 of 15 PageID #: 4
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`Source: https://blog.kaspersky.com/my-kaspersky-tip-of-the-week/7131/
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`14.
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`Upon information and belief, the following describes, at least in part, how certain aspects
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`of a representative sample of Defendant’s software licensing and delivery system work:
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`4
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`Case 2:16-cv-00871-RWS Document 1 Filed 08/07/16 Page 5 of 15 PageID #: 5
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`15.
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`Upon information and belief, the following describes, at least in part, how certain aspects
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`of a representative sample of Defendant’s software licensing and delivery system work:
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`5
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`Case 2:16-cv-00871-RWS Document 1 Filed 08/07/16 Page 6 of 15 PageID #: 6
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`Source: https://youtu.be/HuJDh7gauQI
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`16.
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`Upon information and belief, the following describes, at least in part, how certain aspects
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`of a representative sample of Defendant’s software licensing and delivery system work:
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`6
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`Case 2:16-cv-00871-RWS Document 1 Filed 08/07/16 Page 7 of 15 PageID #: 7
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`17.
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`Upon information and belief, the following describes, at least in part, how certain aspects
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`of a representative sample of Defendant’s software licensing and delivery system work:
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`18.
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`Upon information and belief, the following describes, at least in part, how certain aspects
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`of a representative sample of Defendant’s software licensing and delivery system work:
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`7
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`Case 2:16-cv-00871-RWS Document 1 Filed 08/07/16 Page 8 of 15 PageID #: 8
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`Source: https://my.kaspersky.com/mac/forms
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`19.
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`Upon information and belief, the following describes, at least in part, how certain aspects
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`of a representative sample of Defendant’s software licensing and delivery system work:
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`20.
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`Upon information and belief, the following describes, at least in part, how certain aspects
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`of a representative sample of Defendant’s software licensing and delivery system work:
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`8
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`Case 2:16-cv-00871-RWS Document 1 Filed 08/07/16 Page 9 of 15 PageID #: 9
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`21.
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`Defendant has directly infringed, and continues to directly infringe one or more claims of
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`the ‘466 Patent in this judicial district and elsewhere in Texas, including at least Claims 1, 2, 7, 8, 15, 17,
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`22, and 23, literally and/or under the doctrine of equivalents, by or through making, using, importing,
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`offering for sale and/or selling its software licensing and delivery system during the pendency of the ‘466
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`Patent which software and associated backend server architecture inter alia allows for installing application
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`programs on a server, receiving a login request, establishing a user desktop, receiving a selection of one
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`or more programs displayed in the user desktop and providing a program for execution.
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`22.
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`In addition, should Defendant’s software licensing and delivery system be found to not
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`literally infringe the asserted claims of the ‘466 Patent, Defendant’s accused products would nevertheless
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`infringe the asserted claims of the ‘466 Patent. More specifically, the accused Defendant software delivery
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`system performs substantially the same function (making computer games/software available for digital
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`download/management), in substantially the same way (via a client/server environment), to yield
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`substantially the same result (providing authorized games/software to a client for execution). Defendant
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`would thus be liable for direct infringement under the doctrine of equivalents.
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`9
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`Case 2:16-cv-00871-RWS Document 1 Filed 08/07/16 Page 10 of 15 PageID #: 10
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`23.
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`Defendant may have infringed the ‘466 Patent through other software utilizing the same or
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`reasonably similar functionality, including other versions of its software licensing and delivery system.
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`Uniloc reserves the right to discover and pursue all such additional infringing software.
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`24.
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`Uniloc has been damaged, reparably and irreparably, by Defendant’s infringement of the
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`‘466 Patent and such damage will continue unless and until Defendant is enjoined.
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`COUNT II
`(INFRINGEMENT OF U.S. PATENT NO. 6,728,766)
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`
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`25.
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`Uniloc incorporates the paragraphs above by reference.
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`26.
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`Uniloc Luxembourg is the owner, by assignment, of U.S. Patent No. 6,728,766 (“the ‘766
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`Patent”) entitled METHODS, SYSTEMS AND COMPUTER PROGRAM PRODUCTS FOR LICENSE
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`USE MANAGEMENT ON A NETWORK that issued on April 27, 2004. A true and correct copy of the
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`‘766 Patent is attached as Exhibit B hereto.
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`27.
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`Uniloc USA is the exclusive licensee of the ‘766 Patent with ownership of all substantial
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`rights therein, including the right to grant sublicenses, to exclude others, and to enforce, sue and recover
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`past damages for the infringement thereof.
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`28.
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`The ‘466 Patent has been referenced by over fifty other patent applications/patents
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`including patents applications/patents by IBM, Microsoft, Netapp, Time Warner Cable, Fujitsu, AT&T,
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`Toshiba, and Computer Associates.
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`29.
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`Defendant has directly infringed, and continues to directly infringe one or more claims of
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`the ‘766 Patent in this judicial district and elsewhere in Texas, including at least Claims 1, 3, 7, 9, 13, and
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`15, literally and/or under the doctrine of equivalents, by or through making, using, importing, offering for
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`sale and/or selling its software licensing and delivery system during the pendency of the ‘766 Patent which
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`software and associated backend server architecture inter alia allow for maintaining user policy based
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`10
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`Case 2:16-cv-00871-RWS Document 1 Filed 08/07/16 Page 11 of 15 PageID #: 11
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`license management information for application programs at a server, receiving a request for a license at
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`the server, determining license availability based on the policy information, and providing an indication
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`of availability or unavailability.
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`30.
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`In addition, should Defendant’s software licensing and delivery system be found to not
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`literally infringe the asserted claims of the ‘766 Patent, Defendant’s accused products would nevertheless
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`infringe the asserted claims of the ‘766 Patent. More specifically, the accused software delivery system
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`performs substantially the same function (making computer games/software available for digital
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`download/management), in substantially the same way (via a client/server environment), to yield
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`substantially the same result (providing authorized games/software to a client for execution). Defendant
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`would thus be liable for direct infringement under the doctrine of equivalents.
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`31.
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`Defendant may have infringed the ‘766 Patent through other software utilizing the same or
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`reasonably similar functionality, including other versions of its software licensing and delivery system.
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`Uniloc reserves the right to discover and pursue all such additional infringing software.
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`32.
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`Uniloc has been damaged, reparably and irreparably, by Defendant’s infringement of the
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`‘766 Patent and such damage will continue unless and until Defendant is enjoined.
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`COUNT III
`(INFRINGEMENT OF U.S. PATENT NO. 6,324,578)
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`
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`33.
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`Uniloc incorporates the paragraphs above by reference.
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`34.
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`Uniloc Luxembourg is the owner, by assignment, of U.S. Patent No. 6,324,578 (“the ‘578
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`Patent”), entitled METHODS, SYSTEMS AND COMPUTER PROGRAM PRODUCTS FOR
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`MANAGEMENT OF CONFIGURABLE APPLICATION PROGRAMS ON A NETWORK that issued
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`on November 27, 2001. A true and correct copy of the ‘578 Patent is attached as Exhibit C hereto.
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`35.
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`Uniloc USA is the exclusive licensee of the ‘578 Patent with ownership of all substantial
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`11
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`Case 2:16-cv-00871-RWS Document 1 Filed 08/07/16 Page 12 of 15 PageID #: 12
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`rights therein, including the right to grant sublicenses, to exclude others, and to enforce, sue and recover
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`past damages for the infringement thereof.
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`36.
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`The ‘578 Patent has been referenced by over one-hundred forty other patent
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`applications/patents including patents applications/patents by IBM, Microsoft, Lucent, Netscape, General
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`Electric, Hewlett Packard, Cisco, SAP, and Siemens.
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`37.
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`Defendant has directly infringed, and continues to directly infringe one or more claims of
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`the ‘578 Patent in this judicial district and elsewhere in Texas, including at least Claims 1, 6-8, 10-17, 22-
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`24, 26-32, 37-39, and 41-46 literally and/or under the doctrine of equivalents, by or through making, using,
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`importing, offering for sale and/or selling its software licensing and delivery system during the pendency
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`of the ‘578 Patent which software and associated backend server architecture inter alia allows for installing
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`application programs having a plurality of configurable preferences and authorized users on a network,
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`distributing an application launcher program to a user, the user obtaining a set of configurable preferences,
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`obtaining an administrator set of configurable preferences and executing the application program using
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`the user and administrator sets of configurable preferences responsive to a request from a user.
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`38.
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`In addition, should Defendant’s software licensing and delivery system be found to not
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`literally infringe the asserted claims of the ‘578 Patent, Defendant’s accused products would nevertheless
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`infringe the asserted claims of the ‘578 Patent. More specifically, the accused software/system performs
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`substantially the same function (making computer games available for digital download/management), in
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`substantially the same way (via a client/server environment), to yield substantially the same result
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`(distributing application programs to a target on-demand server on a network). Defendant would thus be
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`liable for direct infringement under the doctrine of equivalents.
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`39.
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`Defendant may have infringed the ‘578 Patent through other software utilizing the same or
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`reasonably similar functionality, including other versions of its software licensing and delivery system.
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`12
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`Case 2:16-cv-00871-RWS Document 1 Filed 08/07/16 Page 13 of 15 PageID #: 13
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`Uniloc reserves the right to discover and pursue all such additional infringing software.
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`40.
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`Uniloc has been damaged, reparably and irreparably, by Defendant’s infringement of the
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`‘578 Patent and such damage will continue unless and until Defendant is enjoined.
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`COUNT IV
`(INFRINGEMENT OF U.S. PATENT NO. 7,069,293)
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`41.
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`Uniloc incorporates the paragraphs above by reference.
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`42.
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`Uniloc Luxembourg is the owner, by assignment, of U.S. Patent No. 7,069,293 (“the ‘293
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`Patent”), entitled METHODS, SYSTEMS AND COMPUTER PROGRAM PRODUCTS FOR
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`DISTRIBUTION OF APPLICATION PROGRAMS TO A TARGET STATION ON A NETWORK that
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`issued on June 27, 2006. A true and correct copy of the ‘293 Patent is attached as Exhibit D hereto.
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`43.
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`Uniloc USA is the exclusive licensee of the ‘293 Patent with ownership of all substantial
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`rights therein, including the right to grant sublicenses, to exclude others, and to enforce, sue and recover
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`past damages for the infringement thereof.
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`44.
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`The ‘293 Patent has been referenced by over eighty other patent applications/patents
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`including patents applications/patents by Cisco, AT&T, Microsoft, AOL, SAP, and Samsung.
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`45.
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`Defendant has directly infringed, and continues to directly infringe one or more claims of
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`the ‘293 Patent in this judicial district and elsewhere in Texas, including at least Claims 1, 12, and 17
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`literally and/or under the doctrine of equivalents, by or through making, using, importing, offering for sale
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`and/or selling its software licensing and delivery system during the pendency of the ‘293 Patent which
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`software and associated backend server architecture inter alia allow for providing an application program
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`for distribution to a network server, specifying source and target directories for the program to be
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`distributed, preparing a file packet associated with the program including a segment configured to initiate
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`registration and distributing the file packet to the target on-demand server to make the program available
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`13
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`Case 2:16-cv-00871-RWS Document 1 Filed 08/07/16 Page 14 of 15 PageID #: 14
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`for use by a client user.
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`46.
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`In addition, should Defendant’s software licensing and delivery system be found to not
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`literally infringe the asserted claims of the ‘293 Patent, Defendant’s accused products would nevertheless
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`infringe the asserted claims of the ‘293 Patent. More specifically, the accused software distribution and
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`management system performs substantially the same function (distributing application programs to a target
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`on-demand server on a network), in substantially the same way (via a client/server environment to target
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`on-demand users), to yield substantially the same result (making application programs available for use
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`by target on-demand users). Defendant would thus be liable for direct infringement under the doctrine of
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`equivalents.
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`47.
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`Defendant may have infringed the ‘293 Patent through other software utilizing the same or
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`reasonably similar functionality, including other versions of its software licensing and delivery system.
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`Uniloc reserves the right to discover and pursue all such additional infringing software.
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`48.
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`Uniloc has been damaged, reparably and irreparably, by Defendant’s infringement of the
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`‘293 Patent and such damage will continue unless and until Defendant is enjoined.
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`
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`Uniloc requests that the Court enter judgment against Defendant as follows:
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`PRAYER FOR RELIEF
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`(A)
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`that Defendant has infringed the ‘466 Patent, the ‘766 Patent, the ‘578 Patent, and the
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`‘293 Patent;
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`(B)
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`awarding Uniloc its damages suffered as a result of Defendant’s infringement of the
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`‘466 Patent, the ‘766 Patent, the ‘578 Patent, and the ‘293 Patent pursuant to 35 U.S.C. § 284;
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`(C)
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`enjoining Defendant, its officers, directors, agents, servants, affiliates, employees,
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`divisions, branches, subsidiaries and parents, and all others acting in concert or privity with it from
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`infringing the ‘466 Patent, the ‘766 Patent, the ‘578 Patent, and the ‘293 Patent pursuant to 35 U.S.C. §
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`14
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`Case 2:16-cv-00871-RWS Document 1 Filed 08/07/16 Page 15 of 15 PageID #: 15
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`283;
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`awarding Uniloc its costs, attorneys’ fees, expenses and interest, and
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`granting Uniloc such other and further relief as the Court may deem just and
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`(D)
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`(E)
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`proper.
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`DEMAND FOR JURY TRIAL
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`Uniloc hereby demands trial by jury on all issues so triable pursuant to Fed. R. Civ. P. 38.
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`Dated: August 7, 2016
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`Respectfully submitted,
`
`/s/ James L. Etheridge
`
`James L. Etheridge
`Texas State Bar No. 24059147
`Ryan S. Loveless
`Texas State Bar No. 24036997
`Brett A. Mangrum
`Texas State Bar No. 24065671
`Travis L. Richins
`Texas State Bar No. 24061296
`ETHERIDGE LAW GROUP, PLLC
`2600 E. Southlake Blvd., Suite 120 / 324
`Southlake, Texas 76092
`Telephone: (817) 470-7249
`Facsimile: (817) 887-5950
`Jim@EtheridgeLaw.com
`Ryan@EtheridgeLaw.com
`Brett@EtheridgeLaw.com
`Travis@EtheridgeLaw.com
`
`Counsel for Plaintiffs Uniloc USA, Inc. and Uniloc
`Luxembourg S.A.
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`15
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