DCT

2:17-cv-05463

Product Association Tech LLC v. Clique Media Group

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:17-cv-05463, E.D. Tex., 04/05/2017
  • Venue Allegations: Venue is alleged on the basis that Defendant is deemed to reside in the district and has committed acts of infringement there.
  • Core Dispute: Plaintiff alleges that Defendant’s online shopping portals infringe a patent related to using universal product codes to link users from an e-commerce platform to detailed product information on a separate internet resource.
  • Technical Context: The technology provides a method for an e-commerce website to use a product's unique code to generate a hyperlink that redirects a user to an authoritative source of product information, such as a manufacturer's webpage.
  • Key Procedural History: The patent-in-suit is a continuation-in-part of an earlier application that issued as U.S. Patent No. 5,913,210 and is subject to a terminal disclaimer. A terminal disclaimer can limit the enforceable term of a patent and may be relevant to its validity and enforceability.

Case Timeline

Date Event
1998-03-27 '738 Patent Priority Date
2000-11-28 '738 Patent Issue Date
2017-02-22 Accused product operation observed on Defendant's websites
2017-04-05 Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

  • Patent Identification: U.S. Patent No. 6,154,738, "Methods and Apparatus for Disseminating Product Information via the Internet Using Universal Product Codes," issued November 28, 2000.

The Invention Explained

  • Problem Addressed: In the early commercial internet, product information from manufacturers was often available online, but it was difficult for consumers and resellers to locate, particularly when the specific URL for a manufacturer's website was unknown (’738 Patent, col. 1:40-53).
  • The Patented Solution: The invention describes a "cross-referencing resource" (e.g., a central server or database) that acts as an intermediary. An e-commerce website can create a hyperlink containing a product's "universal product code." When a user clicks this link, a request is sent to the cross-referencing resource, which looks up the code in its database to find the corresponding Internet address for detailed product information. It then returns a "redirection message" that sends the user's browser to the correct destination, typically a manufacturer's server, to view the detailed information (’738 Patent, Abstract; col. 2:36-44).
  • Technical Importance: The system creates a standardized method for linking from disparate retail sites to a centralized, authoritative source of product information, streamlining the user experience and improving data accuracy in e-commerce (’738 Patent, col. 2:5-11).

Key Claims at a Glance

  • The complaint asserts independent Claim 1 (’Compl. ¶13).
  • Claim 1 requires a method comprising the following essential steps:
    • Establishing a cross-referencing resource with a database linking universal product codes to Internet addresses.
    • Transmitting a web page with a hyperlink that includes a universal product code for a selected product.
    • A user's web browser receiving and displaying the web page.
    • The browser, upon activation of the hyperlink, sending a first request message containing the product code to the cross-referencing resource.
    • The cross-referencing resource processing the request, using its database to find the corresponding Internet address, and returning a redirection message to the browser.
    • The browser automatically responding to the redirection message by sending a second request to that particular Internet address.
    • A web server at that address responding by returning product information.
    • The browser automatically displaying that product information to the user.
  • The complaint alleges infringement of "one or more claims, including at least Claim 1," reserving the right to assert other claims (’Compl. ¶13).

III. The Accused Instrumentality

Product Identification

  • The accused instrumentalities are online shopping portal systems, including shop.byrdie.com, shop.mydomaine.com, and shop.whowhatwear.com (collectively, "the Products") (’Compl. ¶14).

Functionality and Market Context

  • The complaint alleges the Products are e-commerce platforms that disseminate product information online (’Compl. ¶15). They are alleged to operate by using a database that cross-references a "product code" with an "Internet address for a destination site" that contains information about the corresponding product. The complaint provides examples of these cross-references, such as associating product code "774584" with a URL for a product on net-a-porter.com (’Compl. ¶16). A screenshot from the BYRDIE portal shows a grid of perfume products, with one item highlighted by a box labeled "Hyperlink" to illustrate the accused functionality (’Compl. p. 5).

IV. Analysis of Infringement Allegations

'738 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
establishing a cross-referencing resource connected to the Internet which includes a database containing a plurality of cross-references, each of said cross-references specifying the correspondence between a group of one or more universal product code values and the Internet address of a source of information... The Products are alleged to utilize a "cross-referencing resource" in the form of a database that associates a product code with an Internet address for a destination site containing product information. ¶16 col. 2:16-25
transmitting via the Internet a Web page containing at least one hyperlink including a reference to separately stored information, said reference including a particular universal product code value that uniquely designates a selected product... The Products are alleged to transmit a web page displaying products, where each product has a hyperlink that includes a reference to a product code designating the selected item. A screenshot of a WHO WHAT WEAR page shows multiple jackets, with one hyperlink explicitly annotated as a "Reference to separately stored information" (’Compl. p. 6). ¶18 col. 2:12-16
...employing a Web browser to respond to the activation of said hyperlink...by transmitting a first request message to said cross-referencing resource, said first request message containing at least a portion of said particular universal product code value... When a user clicks a hyperlink, the browser allegedly transmits a "first request message" to the cross-referencing resource (the shopping portal's database), which contains the product code. ¶19 col. 2:16-22
processing said first request message at said cross-referencing resource by referring to said database to identify the particular Internet address which corresponds to said particular universal product code value and returning a redirection message to said Web browser... The cross-referencing resource allegedly processes the first request by using the database to find the Internet address corresponding to the product code and returns a "redirection message" containing that address to the browser. ¶20 col. 2:36-44
employing said Web browser to automatically respond to said redirection message by transmitting a second request message to said particular Internet address... The browser allegedly responds to the redirection message by sending a "second request message" to the identified destination address. ¶21 col. 2:42-44
employing a Web server...to respond to said second request message by returning product information...and employing said Web browser program to automatically display said product information...to said user. A server at the destination site allegedly responds to the second request by providing product information, which the browser then displays. A screenshot of a net-a-porter.com product page displays detailed "Product Information" for a perfume, allegedly provided in response to the redirected request (’Compl. p. 8). ¶22 col. 33:64-34:10
  • Identified Points of Contention:
    • Scope Questions: A primary issue may be whether the "product code" values allegedly used by Defendant (e.g., "774584," "580991") fall within the patent’s definition of "universal product codes." The complaint itself raises this issue by quoting the patent's definition, which includes not only UPCs and EANs but also "any other multi-industry or single industry standard product designation system" (’Compl. ¶17; ’738 Patent, col. 4:46-57). The dispute may turn on whether the codes used by Defendant's affiliate network qualify as such a "standard product designation system."
    • Technical Questions: The complaint alleges the system returns a "redirection message" (’Compl. ¶20). The patent's specification describes this with reference to a specific technical implementation (an HTTP 302 redirect) (’738 Patent, col. 15:55-64). A key factual question will be what technical mechanism the accused Products actually use to transfer the user to the destination site and whether that mechanism meets the "redirection message" limitation as it is construed by the court.

V. Key Claim Terms for Construction

  • The Term: "universal product codes"

    • Context and Importance: The applicability of the patent to the accused systems hinges on this term. The infringement case depends on whether the product identifiers used in Defendant's affiliate linking system are "universal product codes" under the patent's definition.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The patent explicitly defines the term to include "any other multi-industry or single industry standard product designation system" (’738 Patent, col. 4:55-57). Plaintiff may argue this language is intentionally broad to cover any coding system that becomes a de facto standard within a given industry, such as an e-commerce or affiliate marketing ecosystem.
      • Evidence for a Narrower Interpretation: The definition's specific examples are "Universal Product Codes ('U.P.C.s')" and "the EAN codes," which are formal, globally unique identifiers managed by specific standards bodies (’738 Patent, col. 4:50-55). A defendant could argue that the "any other" clause is limited to similarly formal, inter-enterprise standards, not proprietary or network-specific identifiers.

  • The Term: "redirection message"

    • Context and Importance: This term defines the core technical mechanism of the claimed invention. Whether the accused systems infringe will depend on if their method of sending a user to a third-party retail site constitutes a "redirection message." Practitioners may focus on this term because modern web technologies offer multiple ways to achieve this result (e.g., server-side HTTP redirects, client-side JavaScript redirects), and not all may fall within the claim's scope.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The claim language itself is functional, requiring only "returning a redirection message to said Web browser which contains said particular Internet address" (’738 Patent, col. 34:1-3). This could be interpreted to encompass any data sent to the browser that causes it to automatically request a new URL.
      • Evidence for a Narrower Interpretation: The detailed description provides a specific example of the redirection mechanism, stating the server returns a response with a "Location response-header field" and a "status code 302," which corresponds to a standard HTTP redirect (’738 Patent, col. 15:55-64). A defendant may argue this disclosure limits the claim to server-side HTTP-level redirection.

VI. Other Allegations

The complaint does not contain specific counts or factual allegations to support either indirect infringement or willful infringement.

VII. Analyst’s Conclusion: Key Questions for the Case

  • A core issue will be one of definitional scope: can the term "universal product codes", which is defined in the patent with examples of globally standardized UPCs and EANs, be construed broadly enough to cover the product identifiers allegedly used within Defendant’s e-commerce and affiliate marketing network?
  • A key evidentiary question will be one of technical mechanism: does the accused linking system—which directs a user from a portal to a third-party retail site—operate by returning a "redirection message" as required by Claim 1, or is there a fundamental mismatch in the underlying technical operation compared to what the patent claims?