DCT
2:19-cv-05091
Express Mobile Inc v. Add2Net Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Express Mobile, Inc. (Delaware)
- Defendant: ADD2NET, INC. d/b/a LUNARPAGES (California)
- Plaintiff’s Counsel: Law Offices of Seth Wiener; Devlin Law Firm LLC
- Case Identification: 2:19-cv-05091, C.D. Cal., 06/12/2019
- Venue Allegations: Venue is alleged to be proper as Defendant is incorporated in California, has committed alleged acts of infringement in the district, and maintains a regular and established place of business within the district.
- Core Dispute: Plaintiff alleges that Defendant’s website building tools and services, including platforms such as Drupal, Joomla, Magento, and Wordpress, infringe four patents related to browser-based website generation and content integration for mobile devices.
- Technical Context: The technology at issue concerns systems and methods for creating websites and mobile applications, a foundational component of modern web hosting and digital content services.
- Key Procedural History: The complaint notes that U.S. Patent Nos. 6,546,397 and 7,594,168 previously survived challenges to patent-eligible subject matter under 35 U.S.C. § 101 in other districts. Specifically, a Magistrate Judge in the Eastern District of Texas recommended denying a motion for judgment on the pleadings of invalidity, and a District Judge in the Northern District of California denied motions to dismiss on the same grounds, drawing a comparison to the patent-eligible claims in Enfish, LLC v. Microsoft Corp.
Case Timeline
| Date | Event |
|---|---|
| 1999-12-02 | Earliest Priority Date for ’397 and ’168 Patents |
| 2003-04-08 | ’397 Patent Issued |
| 2008-04-07 | Earliest Priority Date for ’287 and ’044 Patents |
| 2009-09-22 | ’168 Patent Issued |
| 2016-10-18 | ’287 Patent Issued |
| 2018-03-27 | ’044 Patent Issued |
| 2019-06-12 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,546,397 - "Browser Based Web Site Generation Tool and Run Time Engine"
- Issued: April 8, 2003
The Invention Explained
- Problem Addressed: The patent describes conventional website building as a complex process requiring skilled programming in languages like HTML and JavaScript, which were not designed for creating sophisticated applications and offered limited capabilities for dynamic, real-time visual editing. (’397 Patent, col. 1:11-40).
- The Patented Solution: The invention proposes a browser-based build tool that allows a user to create a website through a visual, WYSIWYG-style interface. This system separates the design and content choices made by the user from the final website code by storing those choices as data in a database. A "run time engine" then reads this database to generate the final website for display in a browser, enabling users to create websites without extensive programming knowledge. (’397 Patent, Abstract; Fig. 2; col. 6:2-24).
- Technical Importance: This approach aimed to democratize web development by replacing complex coding with a visual, database-driven process, making it possible for non-programmers to create dynamic and interactive websites. (Compl. ¶11).
Key Claims at a Glance
- The complaint asserts independent claims 1, 2, and 37. (Compl. ¶21). The analysis focuses on claim 1 as a representative method claim.
- Essential elements of independent claim 1 include:
- A method for producing websites on a computer having a browser and a virtual machine.
- Presenting a user-selectable panel of settings to describe website elements through the browser.
- Having at least one setting correspond to a command for the virtual machine.
- Generating a display in accordance with user-selected settings.
- Storing information representative of the selected settings in a database.
- Generating a website by retrieving the stored information.
- Building web pages and at least one run time file, where the run time file uses the stored information to generate virtual machine commands for displaying the web pages. (’397 Patent, col. 65:58-col. 66:12).
- The complaint also asserts dependent claims 3-6, 8-11, 14-15, 17, 20, 24-25, and 35. (Compl. ¶21).
U.S. Patent No. 7,594,168 - "Browser Based Web Site Generation Tool and Run Time Engine"
- Issued: September 22, 2009
The Invention Explained
- Problem Addressed: The patent addresses the same technical challenges as the parent ’397 Patent, namely the complexity and static nature of conventional web page authoring tools that rely on direct HTML and script coding. (’168 Patent, col. 1:20-56).
- The Patented Solution: The ’168 Patent claims a system for assembling a website, comprising a server with a build engine. The system accepts user input to associate "styles" (which can include transformations and timelines) with website "objects" (such as buttons or images). The entire web page is defined by these objects and their associated styles, which are stored in a multidimensional database. A runtime engine then uses the data from this database to generate the final website. (’168 Patent, Abstract; col. 2:58-col. 3:5).
- Technical Importance: This system provides a structured, object-oriented framework for web design, allowing for the creation of complex, dynamic websites with animations and transformations defined and managed through a centralized, database-driven architecture. (Compl. ¶¶94, 96).
Key Claims at a Glance
- The complaint asserts independent claim 1. (Compl. ¶101).
- Essential elements of independent claim 1 include:
- A system with a server and a build engine for assembling a website.
- The website has web pages with objects (e.g., a button or image object).
- The server accepts user input to associate a style with an object, where the style includes values for transformations and timelines.
- The web page is defined entirely by the objects and their associated styles.
- The system produces a database with a multidimensional array containing object data (style, number, page location).
- The database is provided to a server accessible to a web browser with a runtime engine that generates the website from the database. (’168 Patent, col. 64:44-col. 65:5).
- The complaint also asserts dependent claims 2-6. (Compl. ¶101).
U.S. Patent No. 9,471,287 - "Systems and Methods for Integrating Widgets on Mobile Devices"
- Issued: October 18, 2016
- Technology Synopsis: This patent describes a system for generating and delivering content to mobile devices. It discloses an authoring tool and a registry of web components (e.g., widgets), and it separates device-independent code (an "Application") from device-dependent code (a "Player") to enable content creation that can function across a variety of different devices. (Compl. ¶129).
- Asserted Claims: Independent claims 1 and 15, and dependent claims 2-5, 11, 12, 16-19, 25, and 26 are asserted. (Compl. ¶135).
- Accused Features: The complaint alleges that platforms like WordPress infringe by using a registry (e.g., a MySQL database) to store definitions of web components, an authoring tool (e.g., a WYSIWYG editor) to define UI objects, and a system that separates device-independent and device-dependent code to generate content for display. (Compl. ¶¶136-137).
U.S. Patent No. 9,928,044 - "Systems and Methods for Programming Mobile Devices"
- Issued: March 27, 2018
- Technology Synopsis: This patent, related to the ’287 Patent, claims a system for generating code to display content on a device. The system comprises a computer memory storing symbolic names for web components, an authoring tool to define UI objects corresponding to those components, and a process to store information about the UI objects in a database and then build an "Application" from that database using a "Player." (Compl. ¶¶204, 211).
- Asserted Claims: Independent claims 1 and 15, and dependent claims 2-5, 11, 12, 16-19, 25, and 26 are asserted. (Compl. ¶210).
- Accused Features: WordPress is accused of infringing by using its MySQL database to store symbolic names for web components, its WYSIWYG editor as an authoring tool to create UI objects and store their settings in the database, and then building and executing an application using a runtime player. (Compl. ¶¶212-215).
III. The Accused Instrumentality
Product Identification
- The "Accused Instrumentalities" are identified as the website building tools used and/or provided by Defendant, including Drupal, Joomla, Magento, and WordPress. (Compl. ¶¶21, 101, 135, 210).
Functionality and Market Context
- The accused products are browser-based authoring tools that enable users to produce websites through a visual interface, such as a WYSIWYG editor or dashboard. (Compl. ¶25).
- User selections for website elements and their properties (e.g., text color, alignment) are stored in a server-side database. (Compl. ¶26).
- At runtime, these platforms retrieve the stored data to generate files (e.g., PHP, HTML, CSS, JavaScript) that are executed by a browser to render the final website. (Compl. ¶27).
- The complaint alleges that Defendant offers these website building tools as an inducement to attract customers for its hosting and other services. (Compl. ¶5).
IV. Analysis of Infringement Allegations
U.S. Patent No. 6,546,397 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a method for producing websites on and for a computer having a browser and a virtual machine... | The Accused Instrumentalities enable website production on users' computers, which have browsers that include virtual machines, such as JavaScript engines. | ¶¶23, 24 | col. 65:58-60 |
| presenting, through a browser, a user selectable panel of settings to describe elements on one or more of said web pages... | The Accused Instrumentalities initiate presentation of a website-builder tool or dashboard through a user's browser, allowing navigation and selection of element properties. | ¶25 | col. 66:1-4 |
| storing information representative of said one or more user selected settings in a database... | User-selected settings, such as text color, layout, and image filenames, are stored in a database. The complaint provides a table showing data from a WordPress wp_options table as an example. |
¶26, ¶138 | col. 66:7-8 |
| building...at least one run time file, where at least one run time file utilizes information stored in said database to generate virtual machine commands for the display of at least a portion of said one or more web pages. | The Accused Instrumentalities build runtime files (e.g., PHP, JavaScript) which use database information to generate HTML, which is then read by the browser's engine (a virtual machine) to render the page. | ¶¶27, 28 | col. 66:9-12 |
- Identified Points of Contention:
- Scope Questions: A central question may be whether the term "virtual machine," as used in a patent from the era of Java applets, can be construed to encompass modern browser-based JavaScript engines as the complaint alleges.
- Technical Questions: What is the specific mechanism by which the accused tools' "run time file" generates "virtual machine commands"? The complaint alleges this occurs when server-side code (e.g., PHP) generates HTML that is then interpreted by the browser's engine. (Compl. ¶¶27-28). The defense may argue this is an indirect, multi-step process that does not meet the claim limitation of a run time file itself generating the commands.
U.S. Patent No. 7,594,168 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A system for assembling a web site comprising a server with a build engine... | The accused platforms are described as server-based systems that build websites for customers. | ¶102 | col. 64:45-46 |
| the server configured to accept user input to associate a style with at least one of said plurality of objects, where at least one of said plurality of objects is at least one of a button object and an image object and wherein said style includes values defining transformations and time lines... | The accused tools allegedly allow users to associate styles with objects like buttons and images, and use CSS libraries to define transformations and timelines for those objects. | ¶102, ¶112 | col. 64:49-54 |
| produce a database with a multidimensional array comprising the objects that comprise the web site... | The complaint alleges that the JSON strings used by the accused tools to format elements originate from the database and reflect a multidimensional array structure. | ¶104 | col. 64:57-59 |
| wherein the database is produced such that a web browser with access to a runtime engine is configured to generate the website from the objects and style data extracted from the provided database. | The accused platforms generate runtime files like HTML and CSS from the database, which are then used by the browser's runtime engine to render the website. | ¶103, ¶106 | col. 65:1-5 |
- Identified Points of Contention:
- Scope Questions: Does a standard relational database (like MySQL, commonly used with WordPress) that can be queried to produce data in a multidimensional format like JSON meet the claim limitation of being "a database with a multidimensional array"?
- Technical Questions: What evidence does the complaint provide that the accused website is defined "entirely" by the objects and associated styles, as required by the claim? Open-source platforms like WordPress often rely on a theme architecture that may include structural code separate from the object and style data stored in the database.
V. Key Claim Terms for Construction
The Term: "virtual machine" (’397 Patent, Claim 1)
- Context and Importance: The plaintiff’s infringement theory for the ’397 Patent relies on equating modern browser JavaScript engines with the claimed "virtual machine." The defendant may argue that the patent’s specification, with its focus on Java applets, limits this term to a Java Virtual Machine (JVM), which has a different architecture and purpose than a JavaScript engine. The construction of this term is therefore critical to determining infringement.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term itself is not explicitly limited to Java in the claim language. The complaint cites general-purpose definitions to argue that a JavaScript engine, which executes code in a sandboxed environment, fits the broader technical meaning of a virtual machine. (Compl. ¶24).
- Evidence for a Narrower Interpretation: The patent specification repeatedly discusses the invention in the context of "JAVA Applet[s]," "JAVA engine," and "JAVA Wrapper," technologies that operate within a JVM. (’397 Patent, col. 2:62-65; col. 9:12-25). This context may be used to argue the inventors contemplated a narrower meaning tied to the Java ecosystem.
The Term: "a database with a multidimensional array" (’168 Patent, Claim 1)
- Context and Importance: This term is central to Claim 1 of the ’168 Patent. The complaint alleges this limitation is met because the accused tools use JSON strings, which reflect a multidimensional structure, that originate from the database. (Compl. ¶104). Practitioners may focus on whether the structure of the data output (JSON) is sufficient to characterize the structure of the database itself (often a relational database like MySQL).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states the invention includes a "multi-dimensional array structured database, that, in addition to storing the numeric and string data found in conventional databases, also stores multi-dimensional arrays of various multimedia objects." (’168 Patent, col. 2:8-12). This could support a view that any database configured to store and organize data in such a way meets the limitation.
- Evidence for a Narrower Interpretation: The patent's figures depict the "Build Engine's Multi-dimensional Array Structured Data Base" as a distinct architectural component (358). (’168 Patent, Fig. 3a). This could support an argument that the claim requires a specific type of database structure, not merely a conventional relational database that can be queried to produce array-like data structures.
VI. Other Allegations
Indirect Infringement
- The complaint alleges both induced and contributory infringement for all asserted patents. Inducement is based on allegations that Defendant provides instruction materials, training, and services regarding the accused tools, such as a WordPress wiki page, with the specific intent to cause infringement. (Compl. ¶¶86, 121, 196, 265). Contributory infringement is alleged on the basis that the tools are especially made or adapted for infringement and are not staple articles of commerce suitable for substantial non-infringing use. (Compl. ¶¶87, 122, 197, 266).
Willful Infringement
- Willfulness is alleged for all patents based on Defendant having been made aware of the patents and their alleged infringement "at least as early as the filing of this Complaint." (Compl. ¶¶88-89, 123-124, 198-199, 267-268). For the '397 and '168 patents, the complaint also alleges pre-suit knowledge based on notice received by "Lunarpages," though the date of notice is not specified. (Compl. ¶¶86, 121).
VII. Analyst’s Conclusion: Key Questions for the Case
This case presents several central questions for the court that will likely define the dispute:
- A core issue will be one of technological translation: Can claim terms drafted in the context of the web technologies of the late 1990s and early 2000s (e.g., "virtual machine" in the context of Java Applets) be construed to cover the functionally different, though conceptually similar, web technologies of today (e.g., browser-based JavaScript engines)?
- A key evidentiary question will be one of architectural proof: Does evidence of a system's data output format (e.g., multidimensional JSON strings) suffice to prove the structure of the underlying system itself (e.g., "a database with a multidimensional array"), particularly when the underlying system may be a conventional relational database?
- A fundamental question of infringement liability will be whether providing and supporting open-source platforms as part of a commercial hosting service constitutes direct or indirect infringement of patents claiming integrated systems and methods for website creation.