DCT
2:19-cv-05155
Express Mobile Inc v. Possible Worldwide LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Express Mobile, Inc. (Delaware)
- Defendant: Advantage AMP, Inc. d/b/a AMP Agency (Delaware)
- Plaintiff’s Counsel: Law Offices of Seth Wiener; Devlin Law Firm LLC
- Case Identification: 2:19-cv-05155, C.D. Cal., 06/13/2019
- Venue Allegations: Plaintiff alleges venue is proper because Defendant has a regular and established place of business in the district and has committed acts of infringement there.
- Core Dispute: Plaintiff alleges that Defendant’s use of website building platforms, such as Drupal, Magento, and WordPress, to create websites for its customers infringes four patents related to browser-based website generation and systems for programming mobile devices.
- Technical Context: The patents relate to technologies for creating and deploying websites and mobile applications, a foundational element of modern digital marketing and commerce.
- Key Procedural History: The complaint notes that U.S. Patent Nos. 6,546,397 and 7,594,168 previously survived patent eligibility challenges under 35 U.S.C. § 101. A Magistrate Judge in the Eastern District of Texas found the claims "appear to address a problem particular to the internet," and a Judge in the Northern District of California denied motions to dismiss, drawing a comparison to the patents upheld in Enfish, LLC v. Microsoft Corp.
Case Timeline
| Date | Event |
|---|---|
| 1999-12-02 | Priority Date for ’397 and ’168 Patents |
| 2003-04-08 | ’397 Patent Issued |
| 2008-04-07 | 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 |
| 2019-06-13 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,546,397
- Patent Identification: U.S. Patent No. 6,546,397, titled "Browser Based Web Site Generation Tool and Run Time Engine", issued April 8, 2003 (the "’397 Patent").
The Invention Explained
- Problem Addressed: The patent’s background section describes conventional website construction tools as being based on HTML, JavaScript, and scripting languages that are often cumbersome, slow, and not well-suited for creating complex, dynamic web applications (Compl. ¶11; ’397 Patent, col. 1:11-30).
- The Patented Solution: The invention is a browser-based system for designing and building a website. It employs a "build tool" and a "run time engine." A user interacts with a browser-based interface to select and configure website elements; this information is stored in a database. A run-time engine then uses the information stored in that database to generate the final website for display in a user's browser, separating the design process from the final code generation (’397 Patent, Abstract; col. 6:3-13).
- Technical Importance: This approach aimed to simplify website creation by abstracting away the underlying code, allowing for more dynamic generation of web pages based on stored user preferences rather than static HTML files (Compl. ¶11).
Key Claims at a Glance
- The complaint asserts independent claims 1, 2, and 37 (Compl. ¶21).
- Claim 1 (Method):
- Presenting a user-selectable panel of settings through a browser.
- The settings correspond to commands for a virtual machine.
- Generating a display based on selected settings.
- Storing information 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" that uses the stored information to generate "virtual machine commands" for display.
- Claim 2 (Apparatus):
- An interface to present a settings menu.
- A browser to generate a display from selected settings.
- A database for storing the settings information.
- A "build tool" with a "run time file" that uses the stored information to generate commands for a virtual machine to display a web page.
- Claim 37 (Apparatus):
- An interface operable through a browser for building a website by presenting and accepting settings.
- An internal database for storing information about the settings.
- A "build tool" to construct web pages using an external database and run time files, where the run time files use the external database information to generate virtual machine commands.
- 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
- Patent Identification: U.S. Patent No. 7,594,168, titled "Browser Based Web Site Generation Tool and Run Time Engine", issued September 22, 2009 (the "’168 Patent").
The Invention Explained
- Problem Addressed: As a continuation of the ’397 Patent, the ’168 Patent addresses the same technical challenges of simplifying and improving dynamic website creation (Compl. ¶92; ’168 Patent, col. 1:22-27).
- The Patented Solution: The ’168 Patent describes a system for assembling a website composed of objects (e.g., buttons, images) and associated styles (e.g., transformations, time lines). A server-side "build engine" accepts user input to define these object-style associations and produces a "multidimensional array" database containing this information. A "runtime engine" then accesses this database to generate the website for a user's browser (’168 Patent, Abstract; col. 6:9-19).
- Technical Importance: This system provides a structured, object-oriented approach to website assembly, allowing for complex styles and transformations to be defined and stored in a database for dynamic generation (Compl. ¶100).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶99).
- Claim 1 (System):
- A server with a build engine.
- A website comprising 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 defining transformations and time lines.
- The system produces a database with a multidimensional array comprising the objects and their defined styles.
- The database is provided to a server accessible to a web browser.
- A browser with access to a runtime engine is configured to generate the website from the object and style data in the database.
- The complaint also asserts dependent claims 2-6 (Compl. ¶99).
Multi-Patent Capsules
Patent Identification: U.S. Patent No. 9,471,287, "Systems and Methods for Integrating Widgets on Mobile Devices", issued October 18, 2016 (the "’287 Patent").
Technology Synopsis: The patent addresses technical problems in generating content for mobile devices (Compl. ¶125). It describes a system using a device-independent "Application" and a device-dependent "Player" to render content. An authoring tool defines user interface ("UI") objects that correspond to web components (e.g., widgets from a web service), and the system generates code for the Player to display these objects on the device (’287 Patent, Abstract; Compl. ¶131).
Asserted Claims: Independent claims 1 (system) and 15 (method), along with several dependent claims (Compl. ¶131).
Accused Features: The WordPress platform is alleged to be the claimed system. The complaint alleges its server, WYSIWYG editor, and MySQL database function as the claimed computer memory, registry, and authoring tool for generating code to provide content on a display (Compl. ¶¶133-135).
Patent Identification: U.S. Patent No. 9,928,044, "Systems and Methods for Programming Mobile Devices", issued March 27, 2018 (the "’044 Patent").
Technology Synopsis: This patent, related to the ’287 Patent, also describes a system for generating content on a display (Compl. ¶198). The system includes a computer memory storing symbolic names for web components and an authoring tool. The authoring tool defines UI objects, associates them with web components, stores this information in a database, and builds an "Application" from web page views that a "Player" can use to generate the display (’044 Patent, Abstract; Compl. ¶205).
Asserted Claims: Independent claims 1 (system) and 15 (method), along with several dependent claims (Compl. ¶204).
Accused Features: The WordPress platform is accused of infringing. Its server, MySQL database, and WYSIWYG editor are alleged to operate as the claimed system that stores symbolic names, defines UI objects, and builds an Application from web page views for display on a device (Compl. ¶¶206-208).
III. The Accused Instrumentality
- Product Identification: The website building tools used and/or provided by Defendant, identified as Drupal, Magento, and WordPress (the "Accused Instrumentalities") (Compl. ¶21, ¶99).
- Functionality and Market Context:
- The complaint alleges these are browser-based website and web page authoring tools (Compl. ¶21). A user interacts with a "website-builder tool," sometimes called a "dashboard," through a browser to add and style elements on a web page (Compl. ¶25, ¶32).
- User selections, such as text color, layout, and image filenames, are stored in a database (Compl. ¶26, ¶33). The Accused Instrumentalities then use this stored information to build the web pages that constitute the final website (Compl. ¶26).
- The complaint alleges that at runtime, files such as PHP and HTML template files retrieve information from the database to generate the final HTML page rendered by the browser (Compl. ¶27, ¶34).
- The complaint includes a table showing data allegedly extracted from a WordPress "wp_options" database, including values for the website's URL and title (Compl. ¶134). Another table presents HTML allegedly from a WordPress "wp_posts" table, showing content that includes specific color styling (Compl. ¶134).
- Defendant is alleged to be a for-profit organization that utilizes these tools in building and/or hosting websites for its customers (Compl. ¶22).
IV. Analysis of Infringement Allegations
’397 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a method... comprising: presenting, through a browser on a computer, a user selectable panel of settings describing elements on one or more web pages... | The Accused Instrumentalities present a "website-builder tool" or "dashboard" through a browser, allowing users to select and add elements. | ¶25 | col. 6:4-10 |
| wherein at least one of said user selectable settings in said panel corresponds to commands to said virtual machine; | Modern internet browsers are alleged to include virtual machines, and user selections in the tools correspond to commands for those virtual machines. | ¶23, ¶24 | col. 66:10-14 |
| storing information representative of one or more of said user selected settings in a database; | The Accused Instrumentalities store user selections for layout, text color, image filenames, and other settings in a database. | ¶26 | col. 66:15-18 |
| generating a website at least in part by retrieving said information stored in said database; and | The Accused Instrumentalities build one or more web pages by retrieving the user's stored settings from the database. | ¶26 | col. 66:19-22 |
| building one or more web pages... and 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 use runtime files (e.g., PHP, JavaScript) to access the database and generate HTML, which the complaint alleges constitutes "virtual machine commands" for the browser's rendering engine. | ¶27, ¶28 | col. 66:23-28 |
’168 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a system for assembling a website comprising a server with a build engine... | The Accused Instrumentalities are server-based platforms (e.g., WordPress) that function as a system for assembling a website. | ¶100 | col. 64:57-59 |
| the website comprising web pages with a plurality of objects, at least one of said objects being one of a button object or an image object... | The websites created by the Accused Instrumentalities contain objects such as buttons and images. | ¶100 | col. 64:60-63 |
| the server accepting user input to associate a style with at least one of said plurality of objects... | The Accused Instrumentalities allow a user to select a theme or style for an object, such as a title on a specific page, which is then saved. | ¶103 | col. 64:64-66 |
| produce a database with a multidimensional array comprising the objects that comprise the web site... | The JSON strings used by the Accused Instrumentalities are alleged to reflect the implementation of a multidimensional array structured database. | ¶102 | col. 65:1-3 |
| provide the database to a server accessible to web browser... | The database containing the website data is produced on a server that is accessible to web browsers for rendering the site. | ¶100 | col. 65:4-5 |
| 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 browser and associated runtime files (e.g., HTML, CSS) are alleged to constitute a runtime engine that generates the website by extracting data from the database. | ¶101, ¶104 | col. 65:6-9 |
- Identified Points of Contention:
- Scope Questions: A central dispute for the ’397 Patent may be whether the term "virtual machine" can be construed to read on a standard web browser's rendering engine, as the complaint alleges (Compl. ¶24). For the ’168 Patent, a question may arise as to whether the data structures used by the accused platforms, such as those represented by JSON strings, meet the claim limitation of a "multidimensional array structured database" (Compl. ¶102).
- Technical Questions: What evidence does the complaint provide that the accused open-source platforms (Drupal, Magento, WordPress) function as the specific "build engine" and "run time engine" architecture described in the patents? The allegations rely heavily on publicly available documentation and general descriptions of how these platforms operate, which may be contested.
V. Key Claim Terms for Construction
The Term: "virtual machine" (’397 Patent, Claim 1)
Context and Importance: The infringement theory for the ’397 Patent hinges on construing a modern web browser's rendering engine (which processes HTML and executes JavaScript) as a "virtual machine." The viability of this theory depends entirely on whether this term, from a patent with a 1999 priority date, can encompass this modern technology.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent specification does not appear to provide an explicit, limiting definition of "virtual machine." The claims require it to be a target for "commands... for the display of at least a portion of... web pages," a function a browser engine performs (Compl. ¶23).
- Evidence for a Narrower Interpretation: The specification makes numerous references to "JAVA" and "JavaScript" (e.g., ’397 Patent, col. 2:50-65). A defendant may argue that in the context of the patent, "virtual machine" was intended to mean a Java Virtual Machine (JVM) or a similar sandboxed runtime environment, not the browser's core HTML/CSS rendering pipeline.
The Term: "build tool" (’397 Patent, Claim 2) / "build engine" (’168 Patent, Claim 1)
Context and Importance: Both patents claim a "build tool" or "build engine" as a core component of the system. The complaint maps this term to the entirety of platforms like WordPress. The dispute will likely focus on whether these platforms are merely a collection of conventional web server tools or if they constitute the specific, integrated "build tool/engine" described in the patents.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent describes the "build tool" as comprising components like an interface, a database, and an engine (’397 Patent, Fig. 3a), which broadly align with the components of a modern CMS.
- Evidence for a Narrower Interpretation: The patent describes a specific architecture where the build tool itself "creates an object database" and generates a "customized and optimized run time engine" (’397 Patent, Fig. 2). A defendant may argue that general-purpose platforms like WordPress, which use standard components like MySQL and PHP, do not perform these specific claimed functions of creating a custom engine.
VI. Other Allegations
- Indirect Infringement: The complaint does not contain a separate count for indirect infringement but includes allegations that may support such a claim. It alleges that Defendant's business model involves providing the Accused Instrumentalities to its customers to build and host websites, which may suggest a basis for an inducement theory (Compl. ¶22).
- Willful Infringement: Willfulness is alleged based on Defendant’s knowledge of the patents and their infringement "at least as early as the filing of this Complaint" (Compl. ¶86, ¶119, ¶192, ¶259). This suggests the claim is based on alleged post-suit knowledge.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can claim terms from patents filed around the turn of the century, such as "virtual machine" and "multidimensional array," be construed to cover ubiquitous, modern web technologies like browser rendering engines and JSON data structures, which have evolved significantly since the patents' priority dates?
- A second key question will be one of architectural mapping: does the functionality of general-purpose, open-source content management systems like WordPress correspond to the specific, integrated architecture of a "build tool," "run time engine," "Player," and "Application" as claimed in the patents, or is there a fundamental mismatch between the patented systems and the accused platforms?
- Finally, a persistent legal question will be one of patent eligibility: although two of the patents-in-suit have previously survived § 101 challenges at the pleading stage, the court will need to consider whether the claims, which are directed to the process of creating and displaying digital content, are patent-eligible under the current legal framework.