DCT
3:20-cv-08103
MasterObjects Inc v. Amazon.com Inc
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: MasterObjects, Inc. (Delaware / P.P.O.B. Netherlands)
- Defendant: Amazon.com, Inc. (Delaware / P.P.O.B. Washington)
- Plaintiff’s Counsel: Hosie Rice LLP
- Case Identification: 5:20-cv-08103, N.D. Cal., 03/31/2022
- Venue Allegations: The action was transferred to the Northern District of California at Defendant's request, with Defendant consenting to personal jurisdiction and venue in the district.
- Core Dispute: Plaintiff alleges that Defendant’s predictive search functionality, used on its e-commerce website and mobile applications, infringes four patents related to asynchronous client-server communication for providing real-time search results.
- Technical Context: The technology at issue is "as-you-type" or "instant" search, which improves user experience by eliminating the traditional "request-response loop" and is a critical feature for large-scale e-commerce platforms.
- Key Procedural History: The complaint details a significant history between the parties and the patents-in-suit. This includes a prior lawsuit filed by Plaintiff against Defendant in 2011 involving a related patent. Additionally, U.S. Patent No. 8,539,024 survived an inter partes review (IPR) proceeding where the Patent Trial and Appeal Board (PTAB) found all challenged independent claims patentable. An IPR petition against U.S. Patent No. 10,311,073 was denied institution by the PTAB. The complaint also alleges that Defendant was aware of the patented technology due to its own patent prosecution efforts, during which Plaintiff's patents were cited as prior art.
Case Timeline
| Date | Event |
|---|---|
| 2001-08-20 | Earliest Priority Date for all Patents-in-Suit ('529 Patent filing date) |
| 2011-01-01 | Plaintiff alleges Defendant has known of its patent portfolio since at least 2011 |
| 2013-09-17 | U.S. Patent No. 8,539,024 Issues |
| 2017-09-12 | U.S. Patent No. 9,760,628 Issues |
| 2019-06-04 | U.S. Patent No. 10,311,073 Issues |
| 2019-06-11 | IPR Certificate issued confirming patentability of '024 Patent claims |
| 2019-08-27 | U.S. Patent No. 10,394,866 Issues |
| 2020-05-04 | Original Complaint Filed |
| 2021-01-11 | PTAB denies institution of IPR against '073 Patent |
| 2022-03-31 | Second Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,539,024 - “System and Method for Asynchronous Client Server Session Communication”
- Issued: September 17, 2013
The Invention Explained
- Problem Addressed: The patent addresses the technical problem of the slow and inefficient "request-response loop" inherent in early Internet search technology, where a user had to fully enter a query, submit it, and wait for a complete page reload to see results (Compl. ¶6).
- The Patented Solution: The invention proposes a client-server system that uses asynchronous communication to break this loop. As a user types characters into a search field (incremental input), the client sends this partial input to the server, which in turn asynchronously sends back matching information without requiring a full page reload, thereby providing immediate feedback (Compl. ¶9; ’073 Patent, col. 2:31-43). This allows for a dynamic and responsive search experience.
- Technical Importance: This approach improves the functioning of the computer system by reducing latency and enhancing the timeliness and accuracy of search results for the user (Compl. ¶11).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶124).
- Essential elements of independent claim 1 include:
- A server system configured to receive query messages from a client object as a user provides input comprising a lengthening string of characters.
- The query messages represent the lengthening string as additional characters are input.
- In response, the server sends return messages to the client containing results that correspond to the lengthening string.
- The server system is further configured to test a usability of the results in the return message by checking that the return message corresponds to a latest query.
- If usability is established, the results are provided to the user.
- The complaint also asserts dependent claims 3, 5, 7, 8, 9, 10, 11, 17, 18, 19, 21, 23, 27, 28, 29, 32, 35, 36, and 37 (Compl. ¶124).
U.S. Patent No. 9,760,628 - “System and Method for Asynchronous Client Server Session Communication”
- Issued: September 12, 2017
The Invention Explained
- Problem Addressed: As a continuation of the '024 Patent, this patent addresses the same technical problem of the inefficient "request-response loop" in web search (Compl. ¶6, 22).
- The Patented Solution: The invention is also directed to an asynchronous client-server communication system that provides real-time search suggestions as a user types (Compl. ¶8-9). This patent's claims specify a particular method for ensuring the displayed results are relevant to the user's most recent input.
- Technical Importance: The technology aims to improve computer system functionality by enabling faster and more efficient retrieval of relevant search results (Compl. ¶11).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶129).
- Essential elements of independent claim 1 include:
- A server system configured to receive a query message from a client object.
- The server sends one or more return messages to the client object with corresponding results.
- The server system is further configured to test a usability of the results in the return message by matching an ID associated with the input sent to the server system with an ID maintained on the client object.
- If usability is established, the results are provided to the user.
- The complaint also asserts dependent claims 4, 6, 13, 14, 15, 19, 21, 22, 24, 25, and 26 (Compl. ¶129).
U.S. Patent No. 10,311,073 - “System and Method for Asynchronous Retrieval of Information From a Server to a Client Based On Incremental User Input”
- Issued: June 4, 2019
Technology Synopsis
This patent, related to the other patents-in-suit, describes a system for asynchronously retrieving information from a server based on incremental user input (Compl. ¶12, 22). The technology is designed to provide immediate feedback to a user by circumventing the traditional request-response loop of web applications (’073 Patent, col. 2:31-43).
Asserted Claims
Independent claims 1 and 3 are asserted (Compl. ¶134).
Accused Features
The complaint alleges that Amazon's "Predictive Search" and "Amazon Applications" infringe the ’073 Patent (Compl. ¶134).
U.S. Patent No. 10,394,866 - “System and Method for Asynchronous Client Server Session Communication”
- Issued: August 27, 2019
Technology Synopsis
As a continuation in the same family, this patent describes a system and method for asynchronous communication between a client and server to provide a session-based, real-time search and retrieval experience (Compl. ¶12, 22). The invention allows the server to analyze a lengthening character string from the client and return increasingly appropriate information as the user types (’866 Patent, Abstract).
Asserted Claims
Independent claim 1 is asserted (Compl. ¶139).
Accused Features
The complaint alleges that Amazon's "Predictive Search" and "Amazon Applications" infringe the ’866 Patent (Compl. ¶139).
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are "Amazon Predictive Search" and "Amazon Applications" (collectively, the "Accused Instrumentalities") (Compl. ¶34-36). This includes the predictive search feature on Amazon.com (desktop and mobile websites) and in the Amazon applications for iOS and Android mobile platforms (Compl. ¶34-35).
Functionality and Market Context
The accused functionality provides users with "instant suggestions and a comprehensive set of search results" as soon as they start typing a query into the search bar (Compl. ¶32). The complaint provides a screenshot of the Amazon.com search bar on a mobile device, which is the user interface for the accused functionality (Compl. p. 9). The complaint alleges this predictive search feature is critical to Amazon's business, with its dedicated search technology entity known as "A9" handling "hundreds of millions of customer searches daily" (Compl. ¶26, 30).
IV. Analysis of Infringement Allegations
The complaint does not include a claim chart exhibit, but it references infringement contentions served on the defendant and outlines its infringement theory in the body of the complaint. The following tables summarize the core allegations for the lead patents based on the complaint's narrative.
'8,539,024 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A server system... configured to: receive query messages from a client object, the query messages being sent... while a user is providing input comprising a lengthening string of characters... | Amazon's server system, operated by its A9 entity, is configured to receive character-by-character input from a user's browser or mobile application as they type into the search bar. | ¶30-34 | ’073 Patent, col. 6:25-34 |
| ...whereby the query messages represent the lengthening string of characters as additional characters are being input... | The complaint alleges that as a user types, the evolving input string constitutes the "lengthening string" sent to Amazon's servers. | ¶14, 33 | ’073 Patent, col. 5:25-34 |
| ...send one or more return messages to the client object, the one or more return messages containing one or more results that correspond to the lengthening string... | Amazon's servers send back predictive search results and suggestions that are displayed to the user in a drop-down list. | ¶32-33 | ’073 Patent, col. 4:44-50 |
| test a usability of the results in the return message by checking that the return message corresponds to a latest query... | The complaint alleges that Amazon's system necessarily performs this function to provide relevant, real-time results, and points to Amazon's discovery responses denying this element as a central point of dispute. | ¶82 | ’073 Patent, col. 9:1-20 |
'9,760,628 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A server system... configured to: receive a query message from a client object...; send one or more return messages to the client object... | Amazon's server system receives user input from the search bar in its applications and on its websites and returns predictive suggestions. | ¶32-34 | ’073 Patent, col. 6:25-34 |
| test a usability of the results in the return message by matching an ID associated with the input sent to the server system with an ID maintained on the client object... | The complaint identifies this "usability limitation" as one of Amazon's primary non-infringement arguments and alleges that Amazon's system performs this functionality. | ¶82 | ’073 Patent, col. 5:25-34 |
| ...and if usability is established, providing the results to the user... | The accused Amazon systems display the predictive search suggestions to the user. | ¶32-33 | ’073 Patent, col. 4:44-50 |
Identified Points of Contention
- Technical Questions: A primary technical dispute will likely center on the "usability test" limitations present in the asserted claims. The complaint highlights that Amazon's "two best non-infringement arguments are related to two claim limitations" it calls "the usability limitation and the caching limitation" (Compl. ¶82). The case may turn on what evidence demonstrates whether the Accused Instrumentalities perform the specific function of checking that a "return message corresponds to a latest query" (as required by the ’024 Patent) or "matching an ID" between client and server (as required by the ’628 Patent).
- Scope Questions: Another point of contention relates to the scope of "query messages." The complaint notes that Amazon has advanced a construction that "each query consists of only the changes to the input string that were not sent in any previous consecutive query" and argues it does not infringe because it does not send such queries (Compl. ¶86). This raises the question of whether the claim term can be limited to "only the changes" or if it covers sending the entire lengthening string.
V. Key Claim Terms for Construction
The Term: "test a usability of the results"
(and its specific implementations in various claims, e.g., "by checking that the return message corresponds to a latest query")
- Context and Importance: This term is central to the dispute, as the complaint identifies it as the basis for Amazon's primary non-infringement defense (Compl. ¶82). The definition will determine whether the inherent logic of providing timely search results is sufficient to meet the claim element, or if a specific, discrete software step is required.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent specification describes the overall goal as providing "immediate feedback based on text-based user input" to solve the "Request-Response Loop" problem, which may suggest that any mechanism achieving this goal performs a "usability test" in principle (’073 Patent, col. 2:31-36).
- Evidence for a Narrower Interpretation: The claim language recites specific methods for performing the test, such as "checking that the return message corresponds to a latest query" ('024 Patent, Claim 1) or "matching an ID" ('628 Patent, Claim 1). Defendant may argue that these specific recitations limit the claim scope to only those explicit implementations.
The Term: "query message"
- Context and Importance: Practitioners may focus on this term because Defendant's non-infringement position depends on construing it narrowly to mean "only the changes" to an input string, a construction Plaintiff alleges has been rejected by the PTAB in a prior proceeding involving the '024 Patent (Compl. ¶86, 88).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The complaint notes that in the eBay IPR, the PTAB found that "[n]othing in the terms 'query,' 'message,' or 'query message' indicates sending only changes" and gave the term its "ordinary and customary meaning" (Compl. ¶88). Claim 1 of the '024 Patent itself states "the query messages represent the lengthening string," which may support an interpretation that the full string is contemplated.
- Evidence for a Narrower Interpretation: A defendant could point to specification language describing efficiency gains by transmitting only changes. The specification of the related '073 Patent notes that the client "transmits changes to the QuestObjects server as they occur, or delayed and coalesced if they occur in quick succession," which could be argued to support a narrower construction focused on efficiency (’073 Patent, col. 6:29-32).
VI. Other Allegations
- Indirect Infringement: The complaint does not plead separate counts for indirect infringement.
- Willful Infringement: The complaint makes extensive allegations of willful infringement based on both pre-suit and post-suit conduct. Pre-suit willfulness is alleged based on Defendant's alleged knowledge of the patent family from a 2011 lawsuit on a related patent, numerous instances of Plaintiff's patents being cited during Defendant's own patent prosecution, and Defendant's participation in IPR proceedings involving the patents-in-suit (Compl. ¶40-76). Post-suit willfulness is alleged based on Defendant's continued infringement after receiving notice via the original complaint and subsequent infringement contentions (Compl. ¶77-81).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim construction and function: how will the court define the "usability test" limitations, and does the accused Amazon system perform a function that meets that definition? The dispute will likely focus on whether the claims require a specific, discrete software process for verifying result timeliness, or if that function can be inherent in any system that successfully delivers "as-you-type" search results.
- A second key question will be one of evidentiary proof: what technical evidence will emerge to demonstrate precisely how the accused Amazon search system operates? The complaint alleges infringement based on the observable functionality, but the outcome will depend on whether the underlying technical implementation aligns with the specific requirements of the asserted claims.
- Finally, a central question for damages will be willfulness: given the extensive history alleged in the complaint—including prior litigation, patent office proceedings involving both parties, and IPRs that confirmed the patentability of certain claims—can Plaintiff establish that Defendant's alleged infringement was willful, potentially justifying an award of enhanced damages?