DCT
2:19-cv-02296
IBM Corp v. Expedia Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: International Business Machines Corporation (New York)
- Defendant: Expedia, Inc. (Washington); Hotels.com L.P. (Texas); Hotwire, Inc. (Delaware); and Orbitz, LLC (Delaware)
- Plaintiff’s Counsel: Desmarais LLP; Osborn Maledon, P.A.
- Case Identification: 2:19-cv-02296, D. Ariz., 04/09/2019
- Venue Allegations: Plaintiff alleges venue is proper in the District of Arizona because Defendants conduct business in the state and maintain regular and established places of business, including servers and data centers in Chandler and Phoenix, which are used to operate the accused websites and mobile applications.
- Core Dispute: Plaintiff alleges that Defendants’ online travel reservation websites and mobile applications infringe patents related to web server data tracking, contextual search interfaces, and portal page organization.
- Technical Context: The technologies at issue relate to foundational e-commerce functionalities, including web analytics, user interface design for complex searches, and the dynamic presentation of information on web portals.
- Key Procedural History: The complaint alleges that Plaintiff first notified Defendants of infringement in October 2011 and sent a specific letter regarding the ’440 patent on October 1, 2015. It also references prior litigation between the parties in the District of Delaware. Subsequent to the filing of this complaint, a third party filed an Inter Partes Review (IPR) against the ’234 patent, resulting in the cancellation of asserted claim 1 and other claims, while finding several dependent claims patentable.
Case Timeline
| Date | Event |
|---|---|
| 2000-08-18 | ’440 Patent Priority Date |
| 2001-02-07 | ’193 Patent Priority Date |
| 2004-08-17 | ’193 Patent Issue Date |
| 2005-07-01 | ’234 Patent Priority Date |
| 2007-05-08 | ’440 Patent Original Issue Date (No. 7,216,149) |
| 2008-01-17 | Building permit issued for Expedia cabinet/rack install in Chandler |
| 2009-06-02 | ’234 Patent Issue Date |
| 2010-07-13 | ’440 Patent Reissue Date |
| 2011-10-01 | Plaintiff first informed Defendants of alleged infringement |
| 2015-10-01 | Plaintiff sent letter to Expedia regarding ’440 patent infringement |
| 2016-12-20 | Contractor posts on Instagram about work for Expedia in Chandler |
| 2019-04-09 | Complaint Filing Date |
| 2021-11-05 | IPR filed against ’234 Patent (IPR2022-00133) |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Reissue Patent No. RE41,440 - "Gathering Enriched Web Server Activity Data of Cached Web Content"
- Patent Identification: U.S. Reissue Patent No. RE41,440, "Gathering Enriched Web Server Activity Data of Cached Web Content," issued July 13, 2010.
- The Invention Explained:
- Problem Addressed: The patent describes a problem created by web caching, where content is stored locally or on intermediate servers to speed up delivery. While efficient, this practice prevents website owners from accurately tracking user activity, as many requests are fulfilled by a cache instead of the origin server, leading to a loss of valuable analytics data (Compl. ¶¶22-23).
- The Patented Solution: The invention proposes embedding a request for a non-cacheable, single-pixel image (a clear GIF) into the web page's code. Because it is non-cacheable, a request for this image is always sent to the origin server, even if all other page content is served from a cache. This request acts as a "surrogate" and is appended with a string of "enriched" data (e.g., a CGI string) that provides the origin server with detailed activity information, allowing for accurate tracking despite the use of caching (’440 Patent, Abstract; col. 4:55-65; Compl. ¶23).
- Technical Importance: This method provided a way to reconcile the benefits of faster page loads through caching with the business need for accurate web traffic analytics, a critical capability for the growing digital economy (Compl. ¶23).
- Key Claims at a Glance:
- The complaint asserts at least independent claim 1 (Compl. ¶72).
- Essential elements of claim 1 include:
- Presenting a system for obtaining enriched activity data where requested information is cached.
- The system comprises a server network element that generates and stores information files.
- An information file includes an "uncacheable single pixel Graphics Image Format (GIF) request."
- Upon interpretation by a client, the GIF request is transmitted to the server, which "reads and stores enriched data contained therein."
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 6,778,193 - "Customer Self Service Iconic Interface for Portal Entry and Search Specification"
- Patent Identification: U.S. Patent No. 6,778,193, "Customer Self Service Iconic Interface for Portal Entry and Search Specification," issued August 17, 2004.
- The Invention Explained:
- Problem Addressed: The patent notes that conventional graphical user interfaces (GUIs) for search systems were inefficient. They failed to provide an effective way for users to supply the broad range of contextual information (e.g., their situation, preferences) needed to obtain highly relevant search results without cumbersome data entry (’193 Patent, col. 1:19-48; Compl. ¶24).
- The Patented Solution: The patent describes a GUI structured into multiple "visual workspaces." A first workspace allows a user to define their search query and select a high-level "user context" (e.g., "relocating business professional"), which represents a pre-packaged set of situational attributes. A second workspace displays the search results. A third workspace allows the user to fine-tune specific context attributes and resource selection criteria to refine the search. The invention facilitates navigation between these workspaces to improve the query and results iteratively (’193 Patent, Abstract; col. 3:9-15; Compl. ¶25).
- Technical Importance: The invention aimed to make complex, multi-variable searches (like travel planning) more efficient and accurate by abstracting a user's situation into selectable "contexts," thereby improving the relevance of search results with less user effort (Compl. ¶25).
- Key Claims at a Glance:
- The complaint asserts at least independent claim 1 (Compl. ¶85).
- Essential elements of claim 1 include:
- Providing a GUI for a customer self-service system.
- A "first visual workspace" with a query entry field and "one or more selectable graphical user context elements."
- A "second visual workspace for visualizing the set of resources" and indicating a degree of fit.
- A "third visual workspace for enabling said user to select and modify context attribute values" and specify resource selection parameters.
- A "mechanism enabling said user to navigate among said first, second and third visual workspaces."
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 7,543,234 - "Stacking Portlets in Portal Pages"
- Patent Identification: U.S. Patent No. 7,543,234, "Stacking Portlets in Portal Pages," issued June 2, 2009.
- Technology Synopsis: The patent addresses the problem of portal pages becoming "overcrowded and disorganized" as more content modules ("portlets") are added (Compl. ¶26). The invention provides a method to group and display subsets of these portlets in "stacks" based on common characteristics (e.g., content type, user preferences), with a control allowing the user to select which stack is currently visible, thereby managing screen clutter (Compl. ¶27).
- Asserted Claims: At least independent claim 1 (Compl. ¶100).
- Accused Features: The complaint alleges that the search results pages on Defendants' websites, which group individual results (portlets) into selectable categories like "featured results," "price," and "guest rating," infringe the ’234 patent (Compl. ¶¶100-104).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are the online travel reservation websites, including "www.expedia.com", "www.travelocity.com", "www.hotels.com", "www.hotwire.com", and "www.orbitz.com", as well as their associated mobile applications for iOS and Android operating systems (Compl. ¶29).
Functionality and Market Context
- The accused products function as comprehensive online travel agencies, allowing users to search for, compare, and book services such as flights, hotels, rental cars, and vacation packages (Compl. ¶¶23, 85). The complaint alleges these platforms are supported by a physical infrastructure that includes server cabinets and racks located in data centers within the District of Arizona (Compl. ¶¶38, 40). A screenshot of a 2008 building permit is provided as evidence of an "Expedia - suite c106 c4.01 cabinet and rack install" at the Chandler Data Center (Compl. at 12). The complaint alleges that the Expedia Group is a major market participant, with gross bookings of nearly $100 billion in 2018 (Compl. ¶90).
IV. Analysis of Infringement Allegations
RE41,440 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a server network element including server software and a database for generating and storing a plurality of information files | A server network element with software and a database that generates and stores web pages and other files for the Expedia web site. | ¶72b | col. 4:1-5 |
| the information file... further including an uncacheable single pixel Graphics Image Format (GIF) request | The web page code includes a request for a single pixel GIF (e.g., "1x1.gif") with a "no-cache, no-store" cache-control header, making it uncacheable. | ¶72b | col. 4:6-10 |
| wherein upon interpreting the information file, the single pixel GIF request is transmitted from the requesting element... to the server network element | When a user's browser processes the web page, it transmits a request for the "1x1.gif" file to the Expedia server. | ¶72c | col. 4:55-59 |
| which reads and stores enriched data contained therein | The Expedia server receives the GIF request and reads and stores the enriched data contained in it, such as data about the user session. | ¶72c | col. 4:60-65 |
- Identified Points of Contention:
- Technical Question: A central factual question will be what constitutes the "enriched data" and whether it is truly "contained therein" the GIF request. The complaint alleges it is, but modern analytics systems often use associated JavaScript to pass parameters rather than embedding them directly in the image URL. The evidence will need to show that the accused system's technical implementation matches the specific mechanism described in the patent.
- Scope Question: Does the claim term "uncacheable single pixel Graphics Image Format (GIF) request" read on modern tracking pixels that may not technically be GIFs or may achieve their uncacheable nature through methods other than just cache-control headers?
6,778,193 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a first visual workspace... comprising... one or more selectable graphical user context elements, each element representing a context associated with the current user state | The initial search/query screen on the accused websites, which includes selectable icons for search types (e.g., "Flights," "Hotels," "Cars") that allegedly represent the user's context. | ¶85b | col. 12:1-10 |
| a second visual workspace for visualizing... the set of resources that the customer self service system has determined to match the user's query | The search results screen that displays the list of flights, hotels, etc., that match the user's query, with the sort order indicating the degree of fit. | ¶85c | col. 12:11-16 |
| a third visual workspace for enabling said user to select and modify context attribute values to enable increased specificity | The "Change search" window or similar filtering/sorting options that allow a user to modify parameters like number of travelers, dates, or seating class. | ¶85d | col. 12:17-25 |
| a mechanism enabling said user to navigate among said first, second and third visual workspaces | The "Search" button on the initial query screen and the "Change search" or other filtering links on the results page that allow the user to move between query, refinement, and results views. | ¶85e | col. 12:26-32 |
- Identified Points of Contention:
- Scope Question: A primary issue will be whether simple search category selectors (e.g., icons for "Flights" or "Hotels") meet the definition of a "graphical user context element." The defense may argue these are merely category filters, whereas the patent specification describes richer, multi-faceted "user contexts" like "Relocating Business Professional" or "Single Mom w/Kids" that embody a user's entire situation (’193 Patent, Fig. 3).
- Technical Question: Does the accused user interface, which may be a fluid, single-page application, actually comprise three distinct "visual workspaces" as claimed, or does it represent a single, integrated interface that evolves dynamically? The mapping of claim elements to separate "screens" or "windows" in the complaint will be a point of factual and legal dispute.
V. Key Claim Terms for Construction
For the ’440 Patent:
- The Term: "enriched data contained therein" (Claim 1)
- Context and Importance: This term is critical because infringement hinges on how the tracking data is associated with the beacon request. The precise technical implementation of modern analytics pixels will be compared against this language. Practitioners may focus on this term to determine if data passed via associated scripts, rather than being part of the image URL itself, falls within the claim's scope.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The abstract states the server "reads and stores enriched data contained therein," which could be argued to functionally encompass any data packet logically associated with and transmitted at the time of the GIF request.
- Evidence for a Narrower Interpretation: The specification describes appending a "Common Gateway Interface (CGI) string of data" to the GIF request, which suggests the data is part of the URL string itself ('440 Patent, col. 4:55-60). This could support an interpretation requiring the data to be physically part of the HTTP GET request line for the image.
For the ’193 Patent:
- The Term: "graphical user context element" (Claim 1)
- Context and Importance: The viability of the infringement allegation depends on whether the accused websites' search category icons (e.g., for "Flights," "Hotels") meet this definition. The case may turn on whether a "user context" must be a rich, multi-attribute persona or if it can be a single-purpose state.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Claim 1 itself defines the element as "representing a context associated with the current user state." An interpretation could be advanced that selecting a "Hotel" icon represents the user's current state of needing lodging.
- Evidence for a Narrower Interpretation: The specification's detailed examples and figures depict much richer contexts, such as "Relocating Business Professional" or "Single Mom w/Kids," which are associated with numerous distinct attributes like mode of commute, housing style, etc. (’193 Patent, Fig. 3). This suggests a "user context" is more than a simple search category.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendants induce infringement of the ’193 patent by encouraging and instructing customers to use the accused websites and applications in an infringing manner, citing the availability of customer support pages (Compl. ¶¶90-91). It further alleges contributory infringement by providing a GUI that allegedly has no substantial non-infringing uses (Compl. ¶92). Similar general allegations are made for all patents-in-suit (Compl. ¶¶69, 97).
- Willful Infringement: The complaint alleges willfulness based on pre-suit knowledge. It claims IBM began notifying Defendants of infringement in October 2011 and sent a letter specifically identifying the ’440 patent on October 1, 2015 (Compl. ¶¶30, 79). The complaint alleges Defendants knew or should have known their actions constituted an unjustifiably high risk of infringement (Compl. ¶79).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of definitional scope: can a simple search category icon, such as "Flights" or "Hotels," on the accused websites be construed as the "graphical user context element" contemplated by the ’193 patent, which the specification illustrates with richer, multi-faceted user personas like "Relocating Business Professional"?
- A key evidentiary question will concern technical implementation: does the accused analytics system's tracking pixel request itself "contain" the "enriched data" as required by the ’440 patent's claims, or is the data transmitted via a separate or parallel mechanism that falls outside the literal scope of the claim language?
- A threshold procedural question for the ’234 patent will be the impact of the post-filing IPR proceeding. With asserted independent claim 1 now cancelled, the viability of this count will depend on whether Plaintiff can sustain its infringement allegations under one or more of the surviving dependent claims.