Case 2:19-cv-00219-JRG Document 1 Filed 06/12/19 Page 1 of 14 PageID #: 1
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`UNILOC 2017 LLC
`
` Plaintiff,
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`v.
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`KASPERSKY LAB, INC.,
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` Defendants.
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`CIVIL ACTION NO. 2:19-cv-00219
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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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`Plaintiff Uniloc 2017 LLC (together “Uniloc”), as and for their complaint against
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`defendants, Kaspersky Lab, Inc. (“Kaspersky”), allege as follows:
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`2.
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`Uniloc is a Delaware limited liability company having places of business at 620
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`THE PARTIES
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`Newport Center Drive, Newport Beach, California 92660 and 102 N. College Avenue, Suite 303,
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`Tyler, Texas 75702.
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`3.
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`4.
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`Uniloc holds all substantial rights, title and interest in and to the asserted patent.
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`Upon information and belief, Kaspersky Lab is a Massachusetts corporation with
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`its principal place of business at 500Unicorn Park, 3rd Floor, Woburn, MA 01801 and offers its
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`products and/or services, including those accused herein of infringement, for purchase or download
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`to customers and/or potential customers located in Texas and in the judicial Eastern District of
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`Texas.
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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
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`States, 35 U.S.C. § 271 et seq. This Court has subject matter jurisdiction pursuant to 28 U.S.C. §§
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`1
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`Case 2:19-cv-00219-JRG Document 1 Filed 06/12/19 Page 2 of 14 PageID #: 2
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`1331, 1338(a) and 1367.
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`6.
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`Venue is proper in this Court pursuant to 28 U.S.C. §§ 1391 and 1400(b). Kaspersky
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`is registered to do business in Texas, has transacted business in this District, and has committed
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`acts of direct and indirect infringement in this District.
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`7.
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`Kaspersky 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 business in this State and judicial district,
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`including: (A) at least part of its past infringing activities, (B) regularly doing or soliciting business
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`in Texas and/or (C) engaging in persistent conduct and/or deriving substantial revenue from goods
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`and services provided to customers in Texas.
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`COUNT I
`(INFRINGEMENT OF U.S. PATENT NO. 6,324,578)
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`Uniloc incorporates by reference the preceding paragraphs.
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`U.S. Patent No. 6,324,578 (“the ‘578 Patent”), entitled METHODS, SYSTEMS
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`8.
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`9.
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`AND COMPUTER PROGRAM PRODUCTS FOR MANAGEMENT OF CONFIGURABLE
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`APPLICATION PROGRAMS ON A NETWORK that issued on November 27, 2001. A true and
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`correct copy of the ‘578 Patent is attached as Exhibit A hereto.
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`10.
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`Pursuant to 35 U.S.C. § 282, the ’578 Patent is presumed valid. The ’578 Patent
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`describes inventive features that are not well-understood, routine, and conventional.
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`11.
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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,
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`General Electric, Hewlett Packard, Cisco, SAP, and Siemens.
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`12.
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`Upon information and belief, the following describes, at least in part, how certain
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`aspects of a representative sample of Kaspersky’s software licensing and delivery system work:
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`2
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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
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`aspects of a representative sample of Kaspersky’s software licensing and delivery system work:
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`Source: https://blog.kaspersky.com/my-kaspersky-tip-of-the-week/7131/
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`3
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`14.
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`Upon information and belief, the following describes, at least in part, how certain
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`aspects of a representative sample of Kaspersky’s software licensing and delivery system work:
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`15.
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`Upon information and belief, the following describes, at least in part, how certain
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`aspects of a representative sample of Kaspersky’s software licensing and delivery system work:
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`4
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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
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`aspects of a representative sample of Kaspersky’s software licensing and delivery system work:
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`5
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`17.
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`Upon information and belief, the following describes, at least in part, how certain
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`aspects of a representative sample of Kaspersky’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
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`aspects of a representative sample of Kaspersky’s software licensing and delivery system work:
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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
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`aspects of a representative sample of Kaspersky’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
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`aspects of a representative sample of Kaspersky’s software licensing and delivery system work:
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`7
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`Case 2:19-cv-00219-JRG Document 1 Filed 06/12/19 Page 8 of 14 PageID #: 8
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`21.
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`Kaspersky has directly infringed, and continues to directly infringe one or more
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`
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`claims of the ‘578 Patent, including at least claim 1, in this judicial district and elsewhere in Texas,
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`literally and/or under the doctrine of equivalents, by or through making, using, importing, offering
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`for sale and/or selling its software licensing and delivery 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 having a plurality of configurable preferences and authorized users on a
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`network, distributing an application launcher program to a user, the user obtaining a set of
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`configurable preferences, obtaining an administrator set of configurable preferences and executing
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`the application program using the user and administrator sets of configurable preferences
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`responsive to a request from a user.
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`22.
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`In addition, should Kaspersky’s software licensing and delivery system be found to
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`not literally infringe one or more claims of the ‘578 Patent, Kaspersky’s products would
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`nevertheless infringe one or more claims of the ‘578 Patent under the doctrine of equivalents. More
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`specifically, the accused software/system performs substantially the same function (making
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`computer games available for digital download/management), in substantially the same way (via a
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`client/server environment), to yield substantially the same result (distributing application programs
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`to a target on-demand server on a network). Kaspersky would thus be liable for direct infringement
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`under the doctrine of equivalents.
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`23.
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`Kaspersky has indirectly infringed and continues to indirectly infringe one or more
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`claims of the ‘578 Patent, including at least Claim 1, in this judicial district and elsewhere in Texas,
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`by actively inducing the using, offering for sale, or selling of the Kaspersky software licensing and
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`delivery system. Kaspersky’s customers and/or agents who operate on behalf of Kaspersky and
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`who use the Kaspersky software licensing and delivery system in accordance with Kaspersky’s
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`8
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`Case 2:19-cv-00219-JRG Document 1 Filed 06/12/19 Page 9 of 14 PageID #: 9
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`instructions directly infringe the foregoing claims of the ‘578 Patent, in violation of 35 U.S.C. §
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`271. Kaspersky intentionally instructs its customers and/or agents to infringe through training
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`videos, demonstrations, brochures, and installation and user guides for the software and system.
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`24.
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`Kaspersky is thereby liable for infringement of the ‘578 Patent under 35 U.S.C. §
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`271(b).
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`25.
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`Kaspersky has indirectly infringed and continues to indirectly infringe one or more
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`claims of the ‘578 Patent, including at least Claim 1, in this judicial district and elsewhere in Texas,
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`by, among other things, contributing to the direct infringement by others including customers
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`and/or agents using the Kaspersky software licensing and delivery system, by making, offering to
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`sell, and selling a component of a patented machine, manufacture, or combination, or an apparatus
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`for use in practicing a patented process, constituting a material part of the invention, knowing the
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`same to be especially made or especially adapted for use in infringing the ‘578 Patent and not a
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`staple article or commodity of commerce suitable for substantial non-infringing use.
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`26.
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`For example, the Kaspersky software is a component of a patented machine,
`
`manufacture, or combination, or an apparatus for use in practicing a patented process. Furthermore,
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`the Kaspersky software licensing and delivery system is a material part of the claimed inventions
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`and is not a staple article or commodity of commerce suitable for substantial non-infringing use.
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`Kaspersky is, therefore, liable for infringement under 35 U.S.C. § 271(c).
`
`27.
`
`Kaspersky will have been on notice of the ‘578 Patent since, at the latest, the service
`
`of the complaint upon it in Uniloc USA, Inc. et al v. Kaspersky America, Inc., Case No. 2:16-cv-
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`871 in the Eastern District of Texas. By the time of trial, Kaspersky 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 claims of the ‘578 Patent.
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`9
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`28.
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`Kaspersky may have infringed the ‘578 Patent through other software utilizing the
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`same or reasonably similar functionality, including other versions of its software licensing and
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`delivery system. Uniloc reserves the right to discover and pursue all such additional infringing
`
`software.
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`
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`COUNT II
`(INFRINGEMENT OF U.S. PATENT NO. 7,069,293)
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`29.
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`Uniloc incorporates the paragraphs above by reference.
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`30.
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`U.S. Patent No. 7,069,293 (“the ‘293 Patent”), entitled METHODS, SYSTEMS
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`AND COMPUTER PROGRAM PRODUCTS FOR DISTRIBUTION OF APPLICATION
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`PROGRAMS TO A TARGET STATION ON A NETWORK that issued on June 27, 2006. A true
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`and correct copy of the ‘293 Patent is attached as Exhibit B hereto.
`
`31.
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`Pursuant to 35 U.S.C. § 282, the ’293 Patent is presumed valid. The ’293 Patent
`
`describes inventive features that are not well-understood, routine, and conventional.
`
`32.
`
`The ‘293 Patent has been referenced by over eighty other patent applications/patents
`
`including patents applications/patents by Cisco, AT&T, Microsoft, AOL, SAP, and Samsung.
`
`33.
`
`Kaspersky has directly infringed, and continues to directly infringe one or more
`
`claims of the ‘293 Patent, including at least Claim 1, in this judicial district and elsewhere in Texas,
`
`literally and/or under the doctrine of equivalents, by or through making, using, importing, offering
`
`for sale and/or selling its software licensing and delivery system during the pendency of the ‘293
`
`Patent which software and associated backend server architecture inter alia allow for providing an
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`application program for distribution to a network server, specifying source and target directories
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`for the program to be distributed, preparing a file packet associated with the program including a
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`segment configured to initiate registration and distributing the file packet to the target on-demand
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`10
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`server to make the program available for use by a client user.
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`34.
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`In addition, should Kaspersky’s software licensing and delivery system be found to
`
`not literally infringe one or more claims of the ‘293 Patent, Kaspersky would nevertheless infringe
`
`one or more claims of the ‘293 Patent under the doctrine of equivalents. More specifically, the
`
`accused software licensing and delivery system performs substantially the same function
`
`(distributing application programs to a target on-demand server on a network), in substantially the
`
`same way (via a client/server environment to target on-demand users), to yield substantially the
`
`same result (making application programs available for use by target on-demand users). Kaspersky
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`would thus be liable for direct infringement under the doctrine of equivalents.
`
`35.
`
`Kaspersky has indirectly infringed and continues to indirectly infringe one or more
`
`claims of the ‘293 Patent, including at least Claim 1, in this judicial district and elsewhere in Texas,
`
`by actively inducing the using, offering for sale, or selling of the Kaspersky software licensing and
`
`delivery system. Kaspersky’s customers and/or agents who operate on behalf of Kaspersky who
`
`use the Kaspersky software licensing and delivery system in accordance with Kaspersky’s
`
`instructions directly infringe the foregoing claims of the ‘293 Patent, in violation of 35 U.S.C. §
`
`271. Kaspersky intentionally instructs its customers and/or agents to infringe through training
`
`videos, demonstrations, brochures, and installation and user guides for the software and system.
`
`36.
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`Kaspersky is thereby liable for infringement of the ‘293 Patent under 35 U.S.C. §
`
`271(b).
`
`37.
`
`Kaspersky has indirectly infringed and continues to indirectly infringe one or more
`
`claims of the ‘293 Patent, including at least Claim 1, in this judicial district and elsewhere in Texas,
`
`by, among other things, contributing to the direct infringement by others including customers
`
`and/or agents using the Kaspersky software licensing and delivery system, by making, offering to
`
`
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`11
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`Case 2:19-cv-00219-JRG Document 1 Filed 06/12/19 Page 12 of 14 PageID #: 12
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`sell, and selling a component of a patented machine, manufacture, or combination, or an apparatus
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`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.
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`38.
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`For example, the Kaspersky software is a component of a patented machine,
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`manufacture, or combination, or an apparatus for use in practicing a patented process. Furthermore,
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`the Kaspersky software licensing and delivery system is a material part of the claimed inventions
`
`and is not a staple article or commodity of commerce suitable for substantial non-infringing use.
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`Kaspersky is, therefore, liable for infringement under 35 U.S.C. § 271(c).
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`39.
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`Kaspersky will have been on notice of the ‘293 Patent since, at the latest, the service
`
`of the complaint upon it in Uniloc USA, Inc. et al v. Kaspersky Lab, Inc., Case No. 2:16-cv-871 in
`
`the Eastern District of Texas. By the time of trial, Kaspersky 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 claims of the ‘293 Patent.
`
`40.
`
`Kaspersky may have infringed the ‘293 Patent through other software utilizing the
`
`same or reasonably similar functionality, including other versions of its software licensing and
`
`delivery system. Uniloc reserves the right to discover and pursue all such additional infringing
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`software.
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`PRAYER FOR RELIEF
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`Uniloc requests that the Court enter judgment against Kaspersky as follows:
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`(A)
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`that Kaspersky has infringed the ‘578 Patent and the ‘293 Patent;
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`(B)
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`awarding Uniloc its damages suffered as a result of Kaspersky’ infringement of
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`the ‘578 Patent and the ‘293 Patent pursuant to 35 U.S.C. § 284;
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`12
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`Case 2:19-cv-00219-JRG Document 1 Filed 06/12/19 Page 13 of 14 PageID #: 13
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`(C)
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`enjoining Kaspersky, 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
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`from infringing the ‘578 Patent and the ‘293 Patent pursuant to 35 U.S.C. § 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.
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`38.
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`13
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`Case 2:19-cv-00219-JRG Document 1 Filed 06/12/19 Page 14 of 14 PageID #: 14
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`Dated:
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`June 12, 2019
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`Respectfully submitted,
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`
`
`/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
`Jeff Huang
`
`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
`Jeff@EtheridgeLaw.com
`
`Counsel for Plaintiff Uniloc 2017 LLC
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`14
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