Skip to main content

Patent owned by bloatware company and used to make millions invalidated

microsoft maintains right protect overseas data law enforcement lawsuit judge copyright patent infringement
Image used with permission by copyright holder
For those unfamiliar with the Uniloc USA, Inc. v. Microsoft Corp. patent lawsuit, it goes like this. A company called Uniloc, a developer of “try and buy” software (essentially bloatware) that is found in magazines and built in to new PCs, presumably found that its business model wasn’t quite as effective as it had hoped.

So the company decided to sue over 75 companies for infringement of a vague patent (the ‘216 patent) that it filed in 1996. The patent consisted of a trial-based software registration system demanding an activation code issued by the company in order for the user to fully access it. As a result, the software user would somehow manage to avoid piracy.

Recommended Videos

Unfortunately, many companies were using this system at the time. Sure, Uniloc had it patented, but it wasn’t a particularly unique proposition to begin with. Microsoft was one of the multitude of companies Uniloc sued, and Microsoft nearly lost $388 million in 2009 in the action Uniloc brought against it. The verdict, however, was overturned five months later and then revisited in 2010 when both parties decided to settle for an unknown amount.

Please enable Javascript to view this content

A large number of efforts have been made, dating back to 2002, to try and invalidate Uniloc’s patent, but for whatever reason, every single one of them was rejected, until a group of notable companies formed an alliance against Uniloc founder Ric Richardson. The companies, consisting of Sega, Ubisoft, Kofax, Cambium Learning Group, and Perfect World Entertainment, decided to attack Richardson’s method of patent filing rather than the legalities of the patent itself.

After Richardson initially filed the patent in Australia, it took a year for him to repeat the process in the United States, which in turn gave the ‘216 patent an extra year’s worth of priority. That extra year, however, was exactly when the same software registration system began to emerge from other companies. What’s more, Uniloc’s U.S. patent was allegedly even more vague than what was filed in Australia.

The U.S. Patent Office did finally decide to invalidate the patent based on this information alone. Uniloc, however, still has the opportunity to appeal the decision if it so chooses.

An email from Uniloc president and IP counsel Sean Burdick offered their responsive view on the matter in an email:

The PTAB decision is inconsistent with two prior rulings by the Federal Circuit, and with the opinions of seven patent examiners who previously upheld the validity of the ‘216 patent in multiple reexaminations. Ultimately the PTAB gave undue credibility to a lone expert opinion that was authored by petitioners’ counsel. Congratulations to Erise IP for pulling wool over the eyes of the Patent Office.

Uniloc’s opponents would contend that the firm was exploiting patent laws for financial gain, and that, at least pending appeal, it can no longer do so.

Gabe Carey
Former Digital Trends Contributor
A freelancer for Digital Trends, Gabe Carey has been covering the intersection of video games and technology since he was 16…
Google now has its own way of making Android phones and Windows more compatible
The Your Phone app on an Android phone.

If you own an Android phone and a Windows PC, you'll soon have one more way to use both devices together to get more done. Rolling out later this year to Windows is a Fast Pair feature for Android phones.

Google's announcement at CES 2022 comes alongside a number of improvements on how Android devices can connect to your larger ecosystem of tech products.

Read more
The latest Windows 11 build makes notifications more useful and less annoying
Laptop sitting on a desk showing Windows 11's built-in Microsoft Teams experience.

Despite the ability to test Windows 11 in the Windows Insider program, the operating system is still not final, which is why Microsoft just delivered the fourth major Windows 11 build. New in this latest release are some tweaks to the Notification Center, background activity app notifications, updates to the Microsoft Store, and even more rounded corners.

For most people, the biggest noticeable change sits in the Notification Center. Now, it is possible to quickly access Focus Assist settings directly from Notification Center, so you can quickly silence your app notifications.

Read more
Windows 7 has been dead for a year, but 100 million PCs still use it
Windows 7 Laptop

 

Despite the end of support for Windows 7, with the operating system no longer getting security updates from Microsoft, millions of people are still holding onto it heading into the end of the year and the start of 2021.

Read more