Case 2:16-cv-01316-RWS Document 1 Filed 11/29/16 Page 1 of 29 PageID #: 1
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`§
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`Civil Action No. 2:16-cv-1316
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`PATENT CASE
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`JURY TRIAL DEMANDED
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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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`PAYCHEX, INC.,
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`Defendant.
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`ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT
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`Plaintiffs, Uniloc USA, Inc. and Uniloc Luxembourg, S.A. (together “Uniloc”), as and
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`for their complaint against defendant, Paychex, Inc. (“Paychex”), allege as follows:
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`THE PARTIES
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`1.
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`Uniloc USA, Inc. (“Uniloc USA”) is a Texas corporation having a principal place
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`of business at Legacy Town Center I, Suite 380, 7160 Dallas Parkway, Plano Texas 75024.
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`Uniloc also maintains a place of business at 102 N. College, Suite 603, Tyler, Texas 75702.
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`2.
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`Uniloc Luxembourg S.A. (“Uniloc Luxembourg”) is a Luxembourg public limited
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`liability company having a principal place of business at 15, Rue Edward Steichen, 4th Floor, L-
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`2540, Luxembourg (R.C.S. Luxembourg B159161).
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`3.
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`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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`1
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`

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`Case 2:16-cv-01316-RWS Document 1 Filed 11/29/16 Page 2 of 29 PageID #: 2
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`4.
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`Upon information and belief, Paychex is a Delaware corporation having a
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`principal place of business in Rochester, New York and regular places of business in Austin,
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`Dallas, Irving, Houston and San Antonio, Texas. Upon information and belief, Paychex offers
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`its payroll processing and related products and services, including those accused herein of
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`infringement, to customers and/or potential customers located in Texas and in the judicial
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`Eastern District of Texas. Paychex may be served with process through its registered agent in
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`Texas: CT Corporation System, 1999 Bryan Street, Suite 900, Dallas, Texas 75201-3140.
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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
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`United States, 35 U.S.C. § 271 et seq. This Court has subject matter jurisdiction pursuant to 28
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`U.S.C. §§ 1331, 1338(a) 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
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`1400(b). Upon information and belief, Paychex is deemed to reside in this judicial district, has
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`committed acts of infringement in this judicial district, and/or has purposely transacted business
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`involving the accused products in Texas and this judicial district.
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`7.
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`Paychex is subject to this Court’s jurisdiction pursuant to due process and/or the
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`Texas Long Arm Statute due at least to its substantial presence and business in this State and
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`judicial district, including: (A) at least part of its past infringing activities, (B) regularly doing
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`and/or soliciting business in Austin, Dallas, Irving, Houston and San Antonio, Texas and/or (C)
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`engaging in persistent conduct and/or deriving substantial revenue from goods and services
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`provided to customers in Texas.
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`COUNT I
`(INFRINGEMENT OF U.S. PATENT NO. 6,324,578)
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`8.
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`Uniloc incorporates paragraphs 1-7 above by reference.
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`2
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`

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`Case 2:16-cv-01316-RWS Document 1 Filed 11/29/16 Page 3 of 29 PageID #: 3
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`9.
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`Uniloc Luxembourg is the owner, by assignment, of U.S. Patent No. 6,324,578
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`(“the ’578 Patent”), entitled METHODS, SYSTEMS AND COMPUTER PROGRAM
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`PRODUCTS FOR MANAGEMENT OF CONFIGURABLE APPLICATION PROGRAMS ON
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`A NETWORK that issued on November 27, 2001. A true and correct copy of the ’578 Patent is
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`attached as Exhibit A hereto.
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`10.
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`Uniloc USA is the exclusive licensee of the ’578 Patent with ownership of all
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`substantial rights therein, including the right to grant sublicenses, to exclude others, and to
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`enforce, sue and recover past damages for the infringement thereof.
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`11.
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`Upon information and belief, the following image shows the Paychex platform as
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`offering a plurality of services:
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`12.
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`Upon information and belief, the following image from the Paychex portal
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`identifies services offered by Paychex:
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`3
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`

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`13.
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`Upon information and belief, the following image shows the web user interface
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`that identifies several Flex applications offered by Paychex:
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`14.
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`Upon information and belief, the following image shows that the Flex app may be
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`downloaded to mobile devices from sites such as Google Play and iTunes:
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`4
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`15.
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`Upon information and belief, the following image shows the mobile device
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`interface that identifies several Flex applications offered by Paychex:
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`16.
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`Upon information and belief, the following image shows a login screen for users
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`of the MyPaychex software:
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`5
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`

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`17.
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`Upon information and belief, the following image shows that the Flex software
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`products can be accessed on mobile devices:
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`18.
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`Upon information and belie, the following image shows a screen that appears
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`when a user of the MyPaychex software enters a username or password that is not authentic:
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`6
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`19.
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`Upon information and belief, the following image may appear when the number
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`of users exceeds the number of authorized users of the Flex software:
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`20.
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`Upon information and belief, the following image may appear when the number
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`of users exceeds the number of authorized users of the Flex software:
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`21.
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`Upon information and belief, the following image illustrates the interface that
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`opens when a user logs in to the Flex mobile application identifying products that the user is
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`authorized to use:
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`7
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`Case 2:16-cv-01316-RWS Document 1 Filed 11/29/16 Page 8 of 29 PageID #: 8
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`22.
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`Upon information and belief, the following image from the Paychex portal
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`identifies the Flex software product:
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`Upon information and belief, the following image shows the user interface when
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`23.
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`the user selects Payroll:
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`8
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`24.
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`Upon information and belief, the following image from the Paychex portal
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`displays an instance of the Flex software product:
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`25.
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`Upon information and belief, the following image from the Paychex portal shows
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`that Flex software product uses target on-demand servers, such as h7:
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`9
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`26.
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`Upon information and belief, the following image from the Paychex portal shows
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`that Flex software product uses target on-demand servers, such as h7:
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`27.
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`Upon information and belief, the following image from the Paychex portal shows
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`that Flex software system uses a Reliable Data Center:
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`10
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`Case 2:16-cv-01316-RWS Document 1 Filed 11/29/16 Page 11 of 29 PageID #: 11
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`28.
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`Upon information and belief, the following image from the Paychex portal shows
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`a screen through which a user of the Flex software product provides information in order to
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`receive software from the server:
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`29.
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`Upon information and belief, the following image shows at the user desktop
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`interface having a plurality of display regions that the user is licensed to use “Time and
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`Attendance”:
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`11
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`

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`30.
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`Upon information and belief, the following image shows at the user desktop
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`interface having a plurality of display regions that the user is not licensed to use “Time and
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`Attendance”:
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`31.
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`Upon information and belief, the following image shows a notice that informs the
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`user that he/she is not licensed to use the Retirement application:
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`12
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`32.
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`Upon information and belief, the following image how that the users’
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`administrator may control access to features of the Flex software:
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`33.
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`Upon information and belief, the following image shows that the user can
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`configure the Flex dashboard:
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`34.
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`Upon information and belief, the following image shows that users can edit their
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`information using the Flex product:
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`13
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`35.
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`Upon information and belief, the following image shows that users can edit their
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`information using the Flex software:
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`36.
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`Upon information and belief, the following image shows that users can punch in
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`their time using the Time software:
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`14
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`Case 2:16-cv-01316-RWS Document 1 Filed 11/29/16 Page 15 of 29 PageID #: 15
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`37.
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`Upon information and belief, the following image shows that users can enter
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`payroll data using the Flex software:
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`38.
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`Upon information and belief, the following image shows that the administrator
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`can switch between employer and employee views using the Flex software:
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`39.
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`Upon information and belief, the following image shows that the administrator
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`may decide what the user sees using the Flex software:
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`15
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`40.
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`Upon information and belief, the following image shows that the administrator
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`may edit employees’ input:
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`41.
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`Paychex has directly infringed, and continues to directly infringe one or more
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`claims of the ’578 Patent in this judicial district and elsewhere in Texas, including at least claims
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`1-5, 7-8, 10-21, 23-24, 26-36, 38-39 and 41-46 literally and/or under the doctrine of equivalents,
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`by or through making, using, importing, offering for sale and/or selling the Paychex Flex (f/k/a
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`Paychex Online) software distribution and management system during the pendency of the ’578
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`Patent which software and associated backend server architecture inter alia allows for installing
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`application programs such as Flex and MyPaychex having a plurality of configurable preferences
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`and authorized users on a server coupled to a network, distributing an application launcher
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`16
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`program to a client, obtaining a user set of the configurable preferences, obtaining an
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`administrator set of configurable preferences and executing the application program using the
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`user and administrator sets of configurable preferences responsive to a request from a user.
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`42.
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`In addition, should the Paychex software distribution and management system be
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`found to not literally infringe the asserted claims of the ’578 Patent, the product would
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`nevertheless infringe the asserted claims of the ’578 Patent. More specifically, the accused
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`software/system performs substantially the same function (obtaining user and administrator sets
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`of configurable preferences), in substantially the same way (via a user and administrator), to
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`yield substantially the same result (executing an application program using the configurable
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`preferences in response to a request from a user on a network). Paychex would thus be liable for
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`direct infringement under the doctrine of equivalents.
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`43.
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`Paychex has indirectly infringed and continues to indirectly infringe at least
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`claims 1-5, 7-8, 10-21, 23-24, 26-36, 38-39 and 41-46 of the ’578 Patent in this judicial district
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`and elsewhere in the United States by, among other things, actively inducing the using, offering
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`for sale, selling, or importing the Paychex software distribution and management system.
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`Paychex’s customers who use the Paychex software distribution and management system in
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`accordance with Paychex’s instructions directly infringe one or more of the foregoing claims of
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`the ’578 Patent in violation of 35 U.S.C. § 271. As set forth inter alia above, Paychex directly
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`and/or indirectly intentionally instructs its customers to infringe through training videos,
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`demonstrations, brochures, installation and/or user guides for the Flex and MyPaychex software
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`and system, such as those located at one or more of the following:
`
`•
`
`•
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`www.paychex.com
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`www.paychexflex,com
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`17
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`

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`Case 2:16-cv-01316-RWS Document 1 Filed 11/29/16 Page 18 of 29 PageID #: 18
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`•
`
`•
`
`•
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`•
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`•
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`•
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`https://staticpaychexinc.com
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`www.myapps.paychex.com
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`https://paychex.centralservers.com
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`https://itunes.com/us/app/paychex
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`https://play.google.com/store/apps
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`www.youtube.com
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`Paychex is thereby liable for infringement of the ’578 Patent under 35 U.S.C. § 271(b).
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`44.
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`Paychex has indirectly infringed and continues to indirectly infringe at least
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`claims 1-5, 7-8, 10-21, 23-24, 26-36, 38-39 and 41-46 of the ’578 Patent in this judicial district
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`and elsewhere in the United States by, among other things, contributing to the direct
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`infringement by others including, without limitation customers using the Paychex software
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`distribution and management system, by making, offering to sell, selling and/or importing into
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`the United States, a component of a patented machine, manufacture or combination, or an
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`apparatus for use in practicing a patented process, constituting a material part of the invention,
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`knowing the same to be especially made or especially adapted for use in infringing the ’578
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`Patent and not a staple article or commodity of commerce suitable for substantial non-infringing
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`use.
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`45.
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`For example, the Paychex software is a component of a patented machine,
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`manufacture, or combination, or an apparatus for use in practicing a patent process.
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`Furthermore, the Paychex software distribution and management system is a material part of the
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`claimed inventions and upon information and belief is not a staple article or commodity of
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`commerce suitable for substantial non-infringing use. Paychex is, therefore, liable for
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`infringement under 35 U.S.C. § 271(c).
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`18
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`46.
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`Paychex will have been on notice of the ’578 Patent since, at the latest, the service
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`of this complaint upon Paychex. By the time of trial, Paychex will have known and intended
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`(since receiving such notice) that its continued actions would actively induce, and contribute to,
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`the infringement of one or more of claims 1-5, 7-8, 10-21, 23-24, 26-36, 38-39 and 41-46 of the
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`’578 Patent.
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`47.
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`Paychex may have infringed the ’578 Patent through other software utilizing the
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`same or reasonably similar functionality, including other versions of the Paychex software
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`distribution and management system. Uniloc reserves the right to discover and pursue all such
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`additional infringing software.
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`48.
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`Uniloc has been damaged, reparably and irreparably, by Paychex’s infringement
`
`of the ’578 Patent and such damage will continue unless and until Paychex is enjoined.
`
`COUNT II
`(INFRINGEMENT OF U.S. PATENT NO. 7,069,293)
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`Uniloc incorporates paragraphs 1-48 above by reference.
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`Uniloc Luxembourg is the owner, by assignment, of U.S. Patent No. 7,069,293
`
`
`
`49.
`
`50.
`
`(“the ’293 Patent”), entitled METHODS, SYSTEMS AND COMPUTER PROGRAM
`
`PRODUCTS FOR DISTRIBUTION OF APPLICATION PROGRAMS TO A TARGET
`
`STATION ON A NETWORK that issued on June 27, 2006. A true and correct copy of the ’293
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`Patent is attached as Exhibit B hereto.
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`51.
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`Uniloc USA is the exclusive licensee of the ’293 Patent with ownership of all
`
`substantial rights therein, including the right to grant sublicenses, to exclude others, and to
`
`enforce, sue and recover past damages for the infringement thereof.
`
`52.
`
`Paychex has directly infringed, and continues to directly infringe one or more
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`claims of the ’293 Patent in this judicial district and elsewhere in Texas, including at least claims
`
`19
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`

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`Case 2:16-cv-01316-RWS Document 1 Filed 11/29/16 Page 20 of 29 PageID #: 20
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`1, 12 and 17 literally and/or under the doctrine of equivalents, by or through making, using,
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`importing, offering for sale and/or selling the Paychex Flex (f/k/a Paychex Online) software
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`distribution and management system during the pendency of the ’293 Patent which software and
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`associated backend server architecture inter alia allow for providing an application program for
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`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
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`to initiate registration operations for the application program at a target on-demand server and
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`distributing the file packet to the target on-demand server to make the program available for use
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`by a client user.
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`53.
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`In addition, should the Paychex software distribution and management system be
`
`found to not literally infringe the asserted claims of the ’293 Patent, the product would
`
`nevertheless infringe the asserted claims of the ’293 Patent. More specifically, the accused
`
`Paychex software distribution and management system performs substantially the same function
`
`(distributing an application program to a target on-demand server on a network), in substantially
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`the same way (via initiation of registration operations for the application program at the target
`
`on-demand server), to yield substantially the same result (making the application program
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`available for use by a user at a client). Paychex would thus be liable for direct infringement
`
`under the doctrine of equivalents.
`
`54.
`
`Paychex has indirectly infringed and continues to indirectly infringe at least
`
`claims 1, 12 and 17 of the ’293 Patent in this judicial district and elsewhere in the United States
`
`by, among other things, actively inducing the using, offering for sale, selling, or importing the
`
`Paychex software distribution and management system. Paychex’s customers who use the
`
`Paychex software distribution and management system in accordance with Paychex’s
`
`20
`
`

`

`Case 2:16-cv-01316-RWS Document 1 Filed 11/29/16 Page 21 of 29 PageID #: 21
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`instructions directly infringe one or more of the foregoing claims of the ’293 Patent in violation
`
`of 35 U.S.C. § 271. As set forth inter alia above, Paychex directly and/or indirectly intentionally
`
`instructs its customers to infringe through training videos, demonstrations, brochures, installation
`
`and/or user guides for the Flex software and system, such as those located at the following:
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`www.paychex.com
`
`www.paychexflex,com
`
`https://staticpaychexinc.com
`
`www.myapps.paychex.com
`
`https://paychex.centralservers.com
`
`https://itunes.com/us/app/paychex
`
`https://play.google.com/store/apps
`
`www.youtube.com
`
`Paychex is thereby liable for infringement of the ’293 Patent under 35 U.S.C. § 271(b).
`
`55.
`
`Paychex has indirectly infringed and continues to indirectly infringe at least
`
`claims 1, 12 and 17 of the ’293 Patent in this judicial district and elsewhere in the United States
`
`by, among other things, contributing to the direct infringement by others including, without
`
`limitation customers using the Paychex software distribution and management system, by
`
`making, offering to sell, selling and/or importing into the United States, a component of a
`
`patented machine, manufacture or combination, or an apparatus for use in practicing a patented
`
`process, constituting a material part of the invention, knowing the same to be especially made or
`
`especially adapted for use in infringing the ’293 Patent and not a staple article or commodity of
`
`commerce suitable for substantial non-infringing use.
`
`21
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`

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`Case 2:16-cv-01316-RWS Document 1 Filed 11/29/16 Page 22 of 29 PageID #: 22
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`56.
`
`For example, the Paychex software is a component of a patented machine,
`
`manufacture, or combination, or an apparatus for use in practicing a patent process.
`
`Furthermore, the Paychex software distribution and management system is a material part of the
`
`claimed inventions and upon information and belief is not a staple article or commodity of
`
`commerce suitable for substantial non-infringing use. Paychex is, therefore, liable for
`
`infringement under 35 U.S.C. § 271(c).
`
`57.
`
`Paychex will have been on notice of the ’293 Patent since, at the latest, the service
`
`of this complaint upon Paychex. By the time of trial, Paychex will have known and intended
`
`(since receiving such notice) that its continued actions would actively induce, and contribute to,
`
`the infringement of one or more of claims 1, 12 and 17 of the ’293 Patent.
`
`58.
`
`Paychex may have infringed the ’293 Patent through other software utilizing the
`
`same or reasonably similar functionality, including other versions of the Paychex software
`
`distribution and management system. Uniloc reserves the right to discover and pursue all such
`
`additional infringing software.
`
`59.
`
`Uniloc has been damaged, reparably and irreparably, by Paychex’s infringement
`
`of the ’293 Patent and such damage will continue unless and until Paychex is enjoined.
`
`COUNT III
`(INFRINGEMENT OF U.S. PATENT NO. 6,510,466)
`
`Uniloc incorporates paragraphs 1-59 above by reference.
`
`Uniloc Luxembourg is the owner, by assignment, of U.S. Patent No. 6,510,466
`
`60.
`
`61.
`
`(“the ’466 Patent”), entitled METHODS, SYSTEMS AND COMPUTER PROGRAM
`
`PRODUCTS FOR CENTRALIZED MANAGEMENT OF APPLICATION PROGRAMS ON A
`
`NETWORK that issued on January 21, 2003. A true and correct copy of the ’466 Patent is
`
`attached as Exhibit C hereto.
`
`22
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`

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`62.
`
`Uniloc USA is the exclusive licensee of the ’466 Patent with ownership of all
`
`substantial rights therein, including the right to grant sublicenses, to exclude others, and to
`
`enforce, sue and recover past damages for the infringement thereof.
`
`63.
`
`Paychex has directly infringed, and continues to directly infringe one or more
`
`claims of the ’466 Patent in this judicial district and elsewhere in Texas, including at least claims
`
`1-5, 7-8, 15-20, 22-23, 30-33 and 35-36, literally and/or under the doctrine of equivalents, by or
`
`through making, using, importing, offering for sale and/or selling its Paychex Flex software
`
`distribution and management system during the pendency of the ’466 Patent which software and
`
`associated backend server architecture inter alia allows for installing application programs on a
`
`server, receiving a login request, establishing a user desktop interface, receiving a selection of
`
`one of the programs displayed in the user desktop interface and providing an instance of the
`
`selected program for execution.
`
`64.
`
`In addition, should the Paychex software distribution and management system be
`
`found to not literally infringe the asserted claims of the ’466 Patent, the product would
`
`nevertheless infringe the asserted claims of the ’466 Patent. More specifically, the accused
`
`Paychex software distribution and management system performs substantially the same function
`
`(selection of an application program), in substantially the same way (via an established user
`
`desktop interface), to yield substantially the same result (providing the program for execution).
`
`Paychex would thus be liable for direct infringement under the doctrine of equivalents.
`
`65.
`
`Paychex has indirectly infringed and continues to indirectly infringe at least
`
`claims 1-5, 7-8, 15-20, 22-23, 30-33 and 35-36 of the ’466 Patent in this judicial district and
`
`elsewhere in the United States by, among other things, actively inducing the using, offering for
`
`sale, selling, or importing the Paychex software distribution and management system. Paychex’s
`
`23
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`

`

`Case 2:16-cv-01316-RWS Document 1 Filed 11/29/16 Page 24 of 29 PageID #: 24
`
`customers who use the Paychex software distribution and management system in accordance
`
`with Paychex’s instructions directly infringe one or more of the foregoing claims of the ’466
`
`Patent in violation of 35 U.S.C. § 271. As set forth inter alia above, Paychex directly and/or
`
`indirectly
`
`intentionally
`
`instructs
`
`its customers
`
`to
`
`infringe
`
`through
`
`training videos,
`
`demonstrations, brochures, installation and/or user guides for the Flex software and system, such
`
`as those located at the following:
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`www.paychex.com
`
`www.paychexflex,com
`
`https://staticpaychexinc.com
`
`www.myapps.paychex.com
`
`https://paychex.centralservers.com
`
`https://itunes.com/us/app/paychex
`
`https://play.google.com/store/apps
`
`www.youtube.com
`
`Paychex is thereby liable for infringement of the ’466 Patent under 35 U.S.C. § 271(b).
`
`66.
`
`Paychex has indirectly infringed and continues to indirectly infringe at least
`
`claims 1-5, 7-8, 15-20, 22-23, 30-33 and 35-36 of the ’466 Patent in this judicial district and
`
`elsewhere in the United States by, among other things, contributing to the direct infringement by
`
`others including, without limitation customers using the Paychex software distribution and
`
`management system, by making, offering to sell, selling and/or importing into the United States,
`
`a component of a patented machine, manufacture or combination, or an apparatus for use in
`
`practicing a patented process, constituting a material part of the invention, knowing the same to
`
`24
`
`

`

`Case 2:16-cv-01316-RWS Document 1 Filed 11/29/16 Page 25 of 29 PageID #: 25
`
`be especially made or especially adapted for use in infringing the ’466 Patent and not a staple
`
`article or commodity of commerce suitable for substantial non-infringing use.
`
`67.
`
`For example, the Paychex software is a component of a patented machine,
`
`manufacture, or combination, or an apparatus for use in practicing a patent process.
`
`Furthermore, the Paychex software distribution and management system is a material part of the
`
`claimed inventions and upon information and belief is not a staple article or commodity of
`
`commerce suitable for substantial non-infringing use. Paychex is, therefore, liable for
`
`infringement under 35 U.S.C. § 271(c).
`
`68.
`
`Paychex will have been on notice of the ’466 Patent since, at the latest, the service
`
`of this complaint upon Paychex. By the time of trial, Paychex will have known and intended
`
`(since receiving such notice) that its continued actions would actively induce, and contribute to,
`
`the infringement of one or more of claims 1-5, 7-8, 15-20, 22-23, 30-33 and 35-36 of the ’466
`
`Patent.
`
`69.
`
`Paychex may have infringed the ’466 Patent through other software utilizing the
`
`same or reasonably similar functionality, including other versions of the Paychex software
`
`distribution and management system. Uniloc reserves the right to discover and pursue all such
`
`additional infringing software.
`
`70.
`
`Uniloc has been damaged, reparably and irreparably, by Paychex’s infringement
`
`of the ’466 Patent and such damage will continue unless and until Paychex is enjoined.
`
`COUNT IV
`(INFRINGEMENT OF U.S. PATENT NO. 6,728,766)
`
`Uniloc incorporates paragraphs 1-70 above by reference.
`
`Uniloc Luxembourg is the owner, by assignment, of U.S. Patent No. 6,728,766
`
`71.
`
`72.
`
`(“the ’766 Patent”), entitled METHODS, SYSTEMS AND COMPUTER PROGRAM
`
`25
`
`

`

`Case 2:16-cv-01316-RWS Document 1 Filed 11/29/16 Page 26 of 29 PageID #: 26
`
`PRODUCTS FOR LICENSE USE MANAGEMENT ON A NETWORK that issued on April 27,
`
`2004. A true and correct copy of the ’766 Patent is attached as Exhibit D hereto.
`
`73.
`
`Uniloc USA is the exclusive licensee of the ’766 Patent with ownership of all
`
`substantial rights therein, including the right to grant sublicenses, to exclude others, and to
`
`enforce, sue and recover past damages for the infringement thereof.
`
`74.
`
`Paychex has directly infringed, and continues to directly infringe one or more
`
`claims of the ’766 Patent in this judicial district and elsewhere in Texas, including at least claims
`
`1-3, 5-6, 11, 13-15 and 17 literally and/or under the doctrine of equivalents, by or through
`
`making, using, importing, offering for sale and/or selling its Paychex Flex software distribution
`
`and management system during the pendency of the ’766 Patent which software and associated
`
`backend server architecture inter alia allow for maintaining user policy based license
`
`management information for application programs at a server, receiving a request for a license at
`
`the server, determining license availability based on the policy information, and providing an
`
`indication of availability or unavailability.
`
`75.
`
`In addition, should the Paychex software distribution and management system be
`
`found to not literally infringe the asserted claims of the ’766 Patent, the product would
`
`nevertheless infringe the asserted claims of the ’766 Patent. More specifically, the accused
`
`Paychex software distribution and management system performs substantially the same function
`
`(managing licenses for authorized computer software based on user policy information), in
`
`substantially the same way (via a client/server environment), to yield substantially the same
`
`result (providing authorized software to a client). Paychex would thus be liable for direct
`
`infringement under the doctrine of equivalents.
`
`26
`
`

`

`Case 2:16-cv-01316-RWS Document 1 Filed 11/29/16 Page 27 of 29 PageID #: 27
`
`76.
`
`Paychex has indirectly infringed and continues to indirectly infringe at least
`
`claims 1-3, 5-6, 14, and 16-17 of the ’766 Patent in this judicial district and elsewhere in the
`
`United States by, among other things, actively inducing the using, offering for sale, selling, or
`
`importing the Paychex software distribution and management system. Paychex’s customers who
`
`use the Paychex software distribution and management system in accordance with Paychex’s
`
`instructions directly infringe one or more of the foregoing claims of the ’766 Patent in violation
`
`of 35 U.S.C. § 271. As set forth inter alia above, Paychex directly and/or indirectly intentionally
`
`instructs its customers to infringe through training videos, demonstrations, brochures, installation
`
`and/or user guides for the Flex software and system, such as those located at the following:
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`www.paychex.com
`
`www.paychexflex,com
`
`https://staticpaychexinc.com
`
`www.myapps.paychex.com
`
`https://paychex.centralservers.com
`
`https://itunes.com/us/app/paychex
`
`https://play.google.com/store/apps
`
`www.youtube.com
`
`Paychex is thereby liable for infringement of the ’766 Patent under 35 U.S.C. § 271(b).
`
`77.
`
`Paychex has indirectly infringed and continues to indirectly infringe at least
`
`claims 1-3, 5-6, 14, and 16-17 of the ’766 Patent in this judicial district and elsewhere in the
`
`United States by, among other things, contributing to the direct infringement by others including,
`
`without limitation customers using the Paychex software distribution and management system,
`
`by making, offering to sell, selling and/or importing into the United States, a component of a
`
`27
`
`

`

`Case 2:16-cv-01316-RWS Document 1 Filed 11/29/16 Page 28 of 29 PageID #: 28
`
`patented machine, manufacture or combination, or an apparatus for use in practicing a patented
`
`process, constituting a material part of the invention, knowing the same to be especially made or
`
`especially adapted for use in infringing the ’766 Patent and not a staple article or commodity of
`
`commerce suitable for substantial non-infringing use.
`
`78.
`
`For example, the Paychex software is a component of a patented machine,
`
`manufacture, or combination, or an apparatus for use in practicing a patent process.
`
`Furthermore, the Paychex software distribution and management system is a material part of the
`
`claimed inventions and upon information and belief is not a staple article or commodity of
`
`commerce suitable for substantial non-infringing use. Paychex is, therefore, liable for
`
`infringement under 35 U.S.C. § 271(c).
`
`79.
`
`Paychex will have been on notice of the ’766 Patent since, at the latest, the service
`
`of this complaint upon Paychex. By the time of trial, Paychex will have known and intended
`
`(since receiving such notice) that its continued actions would actively induce, and contribute to,
`
`the infringement of one or more of claims 1-3, 5-6