Is the Strategy behind Apple's smaller iPhone SE Paying Off?
Apple Wins a Design Patent for Next-Gen Apple Store Shelving for Apple Watch Sport Bands

Uniloc Files a Four Count Lawsuit against Apple over Messages App



Uniloc Corporation is a computer security and copy protection software company founded in Australia in 1992 that develops 'try and buy' software distributed via magazines and preinstalled on new computers. Uniloc is now suing Apple.


The Uniloc technology was based on a patent granted to the Australian inventor Ric Richardson who is also a principal in the Uniloc Company. The original patent application was dated late 1992 in Australia and granted in the USA in 1996 and covers a technology popularly known as product activation, try and buy software and machine locking. Uniloc sued Microsoft in 2003 and the battle went back in the courts for years. Even though Microsoft eventually settled with Uniloc for an undisclosed amount, the US Patent Trial and Appeal Board (PTAB) ruled that US patent 5,490, 216 (the '216 patent) had all of its claims invalidated.


According to an Ars Technica report published this past March, "The PTAB case against Uniloc's patent was filed by Sega of America, Ubisoft, Cambium Learning Group, and Perfect World Entertainment. The board found that every claim in Uniloc's patent was anticipated or rendered obvious by an earlier patent.


The '216 patent, which has been called an anti-piracy or "software activation" patent, expired in 2013 but was still used in lawsuits through 2014. Even after a patent expires, a patent owner can sue for up to six years of back damages.


The report further noted that Uniloc had sued about 75 companies with their '216 patent and further noted that about one-third settled out of court. That kind of legal action earned Uniloc a reputation of being a patent troll. But the original patent was actually owned by the company's founder which makes it hard to say that he's a typical troll.


However, the circumstances have changed. Now Uniloc has decided to focus on Apple and the four patents used in this case aren't from Uniloc originally, they were acquired. Two of the patents originated from Ayalogic (now defunct) and another pair from Empire IP (a recognized patent troll). Acquiring patents just for the sake of suing a company spells patent troll to many and justifyingly so.


Four Counts of Infringement over Apple's Messages App


The four patents that Apple allegedly infringed include the following: 7,535,890; 8,995,433; 8,724,622 and 8,243,723. All four patents oddly carry the same title of "System and method for instant VoIP messaging."


At one point in the complaint before the court, Uniloc states that "In addition, should Apple's Messages app system be found to not literally infringe the asserted claims of the '890 Patent, Apple's Messages app system would nevertheless infringe the asserted claims of the '890 Patent. More specifically, the accused Apple Messages app system performs substantially the same function (instant voice messaging), in substantially the same way (via a client/server environment), to yield substantially the same result (delivering voice messages to available intended recipients). Apple would thus be liable for direct infringement under the doctrine of equivalents."


Although specific patent claim numbers are listed in two of the four patents that Apple has allegedly infringed, the basic argument presented in the paragraph above is identical in all of the four counts against Apple with just the patent numbers changing.


The patent infringement case presented in today's report was filed in the Texas Eastern District Court. The Presiding Judge in this case is noted as being Judge Rodney Gilstrap.


2AF 88
 10. 2  PA - Notice Bar

Patently Apple presents only a brief summary of certain legal cases/ lawsuits which are part of the public record for journalistic news purposes. Readers are cautioned that Patently Apple does not offer a legal opinion on the merit of the case. A lawyer should be consulted for any further details or analysis. About Comments: Patently Apple reserves the right to post, dismiss or edit comments. See our Legal Archives for other patent infringement cases.






The comments to this entry are closed.