Express Mobile Inc v. Perficient Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Express Mobile, Inc. (Delaware)
  • Defendant: Perficient, Inc. (Delaware)
  • Plaintiff’s Counsel: Law Offices of Seth Wiener; Devlin Law Firm LLC
• Case Identification: 8:19-cv-01175, C.D. Cal., 06/12/2019
• Venue Allegations: Plaintiff alleges venue is proper because Defendant maintains a regular and established place of business within the Central District of California and has committed acts of infringement in the district.
• Core Dispute: Plaintiff alleges that Defendant’s website building tools and services, which utilize platforms such as Drupal and Magento, infringe two patents related to browser-based, database-driven website generation technology.
• Technical Context: The technology concerns systems and methods that allow users to create complex, dynamic websites through a browser-based interface without needing deep programming knowledge, a foundational technology in the content management system (CMS) market.
• Key Procedural History: The complaint notes that the asserted patents have previously survived challenges to their validity under 35 U.S.C. § 101. In cases in the Eastern District of Texas and the Northern District of California, courts denied motions asserting the patents claimed ineligible abstract subject matter. However, patent office documents provided with the complaint show significant post-filing developments: an ex parte reexamination of U.S. Patent No. 7,594,168 confirmed the patentability of the asserted claims, while separate ex parte reexamination and inter partes review proceedings resulted in the cancellation of independent claim 1 of U.S. Patent No. 6,546,397, a key claim asserted in this complaint.

Case Timeline

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 tools as requiring substantial knowledge of markup and scripting languages (e.g., HTML, JavaScript), making them inaccessible to many users and resulting in websites that are computationally slow and difficult to adapt to different screen sizes ('397 Patent, col. 1:10-44).
• The Patented Solution: The invention proposes a browser-based authoring tool where a user can visually design a website by selecting elements and settings. These choices are not directly written into static code but are stored as data in a structured object database ('397 Patent, Fig. 2). A separate "run time engine" is then used by an end-user's browser to read this database and dynamically generate the website, separating the site's design logic from its content ('397 Patent, col. 2:2-9).
• Technical Importance: This architecture aimed to democratize web design by abstracting the coding process and improve website performance and flexibility by generating pages dynamically from a database rather than serving pre-written, static files ('397 Patent, col. 1:50-57).

Key Claims at a Glance

• The complaint asserts independent claims 1 and 37 ('Compl. ¶21).
• Independent Claim 1 (Method) includes the key steps of:
  • Presenting a user-selectable panel of settings through a browser.
  • Having at least one setting correspond to a command for a "virtual machine."
  • Storing information representing the selected settings in a database.
  • Generating a website by retrieving that information.
  • Building web pages and a "run time file" that uses the stored information to generate "virtual machine commands" for display.
• Independent Claim 37 (Apparatus) includes the key components of:
  • An interface, operable through a browser, for building a website by controlling elements via a settings menu.
  • An "internal database" to store settings information.
  • A "build tool" to construct web pages using an "external database" and "run time files."
  • The run time files use information from the external database to generate "virtual machine commands."
• The complaint reserves the right to assert numerous dependent claims ('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 '168 Patent, a continuation of the '397 Patent application, also addresses the limitations of conventional web development, which is described as cumbersome and reliant on specialized programming skills ('168 Patent, col. 1:21-48).
• The Patented Solution: This patent focuses on a system for assembling a website from discrete "objects" (e.g., buttons, images) and associated "styles" (e.g., transformations, timelines). A server-side "build engine" accepts user input to define these object-style associations, which are then stored in a "multidimensional array" database ('168 Patent, Abstract). The system is designed so that a web browser with a runtime engine can generate the final website by extracting and interpreting this object and style data ('168 Patent, col. 2:58-68).
• Technical Importance: The invention refines the database-driven approach by structuring the website as a collection of modular objects and styles, enabling more complex, dynamic, and animated web pages to be created through a simplified user interface ('168 Patent, col. 2:28-32).

Key Claims at a Glance

• The complaint asserts independent claim 1 ('Compl. ¶100).
• Independent Claim 1 (System) includes the key components of:
  • A server with a "build engine."
  • The website comprising web pages with objects (e.g., a button or image object).
  • The server accepting user input to associate a style with an object, where the style can include "transformations and time lines."
  • A requirement that each web page is "defined entirely by the objects and the style associated with the object."
  • Producing a "database with a multidimensional array" containing the objects.
  • A web browser with a "runtime engine" configured to generate the website from the database.
• The complaint reserves the right to assert dependent claims 2-6 ('Compl. ¶99).

III. The Accused Instrumentality

Product Identification

The complaint identifies the "Accused Instrumentalities" as website building tools used or provided by Defendant, specifically naming the content management systems "Drupal and/or Magento" ('Compl. ¶¶ 21, 99).

Functionality and Market Context

• The complaint alleges that these are browser-based authoring tools that provide a user interface, or "dashboard," to build websites ('Compl. ¶25, ¶32). A user can add elements, select properties like layout and text color, and upload images through a WYSIWYG (What You See Is What You Get) editor ('Compl. ¶25).
• These user-selected settings and content are allegedly stored in a database ('Compl. ¶26, ¶33). The system is alleged to use this stored data, in combination with runtime files like PHP scripts and JavaScript, to generate the final HTML that is rendered in an end-user's browser ('Compl. ¶27, ¶34).
• The complaint portrays Defendant as a significant commercial entity that utilizes these tools to build and host websites for its customers, thereby generating revenue ('Compl. ¶22).

IV. Analysis of Infringement Allegations

'397 Patent Infringement Allegations

Identified Points of Contention

• Scope Questions: A central dispute may arise over the meaning of "virtual machine." The complaint alleges that modern browser engines (e.g., JavaScript engines) are "virtual machines" within the meaning of the patent ('Compl. ¶24), a characterization that Defendant may challenge as overly broad, arguing for a narrower definition tied to technologies like the Java Virtual Machine explicitly discussed in the patent specification.
• Technical Questions: The allegation that generated HTML code "represents virtual machine commands" raises a technical question ('Compl. ¶27). The court may need to determine if standard HTML interpreted by a browser is functionally equivalent to the "commands" generated by the "run time engine" described in the patent, or if the patent requires a more specific type of executable code generation.

'168 Patent Infringement Allegations

Identified Points of Contention

• Scope Questions: The limitation that each web page be "defined entirely by the objects and the style" is a significant potential point of contention. Defendant may argue that complex platforms like Drupal and Magento use server-side configurations, core template files, or other architectural elements that also define the web page, meaning the page is not defined "entirely" by the claimed objects and styles. The complaint references a screenshot from a Drupal issues page to illustrate the concept of field capabilities reflecting a database structure, evidence Plaintiff may use to support its data-driven theory ('Compl. ¶40).
• Technical Questions: The case may turn on whether the accused systems' database architecture, which uses technologies like JSON, is technically equivalent to the "database with a multidimensional array" recited in the claim and described in the specification.

V. Key Claim Terms for Construction

Term ('397 Patent): "virtual machine"

• Context and Importance: This term is fundamental to the infringement theory for the '397 Patent. Plaintiff's case depends on this term being construed broadly enough to read on the standard HTML and JavaScript rendering engines found in all modern web browsers.
• Intrinsic Evidence for a Broader Interpretation: The complaint alleges that this interpretation is supported by technical dictionaries and articles ('Compl. ¶24). The patent itself is for a "browser based" tool, which may suggest the inventors contemplated the browser's own components as part of the system.
• Intrinsic Evidence for a Narrower Interpretation: The specification repeatedly discusses Java, including "JAVA Applet," "CAB/JAR files," and a "run time engine" that is packaged and uploaded to a user's site, distinct from the browser itself ('397 Patent, col. 2:5-9, col. 6:50-58). This could support an argument that "virtual machine" was intended to mean a Java-specific environment like a JVM, not a generic browser engine.

Term ('168 Patent): "defined entirely by the objects and the style"

• Context and Importance: The word "entirely" creates a high bar for infringement. The viability of the infringement claim against complex, multi-component systems like Drupal and Magento hinges on whether this limitation can be met.
• Intrinsic Evidence for a Broader Interpretation (Plaintiff's potential argument): Practitioners may argue this term was intended to distinguish the invention's dynamic, data-driven approach from prior art static HTML pages, and should be interpreted to mean the user-facing content and presentation are controlled by the database, even if some underlying template structure exists.
• Intrinsic Evidence for a Narrower Interpretation (Defendant's potential argument): The plain meaning of "entirely" suggests exclusivity. The patent discloses an "HTML Shell File" that is created and uploaded alongside the database ('168 Patent, col. 2:24-27). Defendant could argue this shell file is a defining part of the web page that is not an "object" or "style," thus demonstrating that even the patent's own embodiment is not "entirely" defined by objects and styles.

VI. Other Allegations

Indirect Infringement

The complaint alleges both induced and contributory infringement. The inducement allegations are based on Defendant's alleged actions of providing instruction materials, training, and services regarding the accused tools with specific intent to cause infringement ('Compl. ¶84, ¶119). The contributory infringement allegations are based on the assertion that the accused tools are a material component for practicing the patents and are not staple articles of commerce suitable for substantial non-infringing use ('Compl. ¶85, ¶120).

Willful Infringement

Willfulness is alleged based on Defendant's knowledge of the patents and infringement, dating from "at least as early as the filing of this Complaint" ('Compl. ¶86-87, ¶121-122). The complaint also ambiguously alleges pre-suit knowledge based on a prior "notice," though no date or details of this notice are provided ('Compl. ¶84, ¶119).

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

1. Claim Viability and Scope: A threshold issue for the '397 Patent is the cancellation of its lead asserted independent claim (Claim 1) in post-filing patent office proceedings. This may substantially narrow or eliminate the infringement case for that patent, shifting focus to the viability of the remaining asserted claims. For the '168 Patent, whose claims were confirmed in reexamination, the dispute will center on claim scope.
2. Definitional Dispute: The outcome will likely depend heavily on claim construction. A core issue will be one of definitional scope: can the term "virtual machine" ('397 Patent), rooted in a specification that heavily features Java technology, be construed broadly to cover the general-purpose HTML and JavaScript engines of modern web browsers?
3. Technical and Evidentiary Match: A key evidentiary question will be one of architectural equivalence: do the accused Drupal and Magento platforms, as actually implemented, meet the strict limitations of the '168 Patent? Specifically, can a web page generated by these complex systems be considered "defined entirely by" objects and styles stored in a "multidimensional array database," or does their underlying architecture introduce other defining elements that place them outside the claim's scope?