DCT

3:20-cv-08103

MasterObjects Inc v. Amazon.com Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:20-cv-3478, S.D.N.Y., 05/05/2020
  • Venue Allegations: Plaintiff alleges venue is proper in the Southern District of New York because Defendant Amazon has committed acts of infringement in the district and maintains regular and established places of business there, including multiple offices in Manhattan.
  • Core Dispute: Plaintiff alleges that Defendant’s predictive search functionality, as implemented on its e-commerce website and mobile applications, infringes four patents related to asynchronous client-server communication for search-as-you-type technology.
  • Technical Context: The technology at issue is predictive search, which provides users with real-time suggestions and results as they type characters into a search field, a function of significant importance for navigating large e-commerce platforms.
  • Key Procedural History: The complaint notes that the lead patent, U.S. Patent No. 8,539,024, was subject to an inter partes review (IPR) proceeding where the Patent Trial and Appeal Board (PTAB) confirmed the patentability of all challenged claims. The complaint also references prior litigation filed in 2011 against Amazon involving a related patent.

Case Timeline

Date Event
2001-08-20 Earliest Priority Date for ’024, ’628, and ’866 Patents
2007-07-25 Earliest Priority Date for ’073 Patent
2011-03-07 Prior litigation (Amazon I) filed against Amazon
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 Inter Partes Review Certificate issues for ’024 Patent
2019-08-27 U.S. Patent No. 10,394,866 Issues
2019-12-06 Petitions to Correct Priority filed for ’073 and ’866 Patents
2020-02-25 Petitions to Correct Priority for ’073 and ’866 Patents granted
2020-05-05 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"

  • Patent Identification: U.S. Patent No. 8,539,024, “System and Method for Asynchronous Client Server Session Communication,” issued September 17, 2013 (Compl. ¶¶18, 20).
  • The Invention Explained:
    • Problem Addressed: The patent addresses the technical problem of the traditional, slow "request-response loop" in internet search, where a user had to type a full query, submit it, and wait for an entire webpage to reload with results, a process described as frustrating and inefficient (Compl. ¶12).
    • The Patented Solution: The invention provides a system that breaks this loop by establishing asynchronous communication between a client and a server (Compl. ¶14). As a user types, a "client object" sends a series of "query messages" that represent the "lengthening string of characters" to a server system, which asynchronously receives these messages and sends back results without requiring a full page reload or blocking further user input (’866 Patent, col. 1:40-50; Compl. ¶62).
    • Technical Importance: This approach significantly reduces latency and improves the timeliness and efficiency of search results by allowing the client and server to communicate simultaneously (Compl. ¶17).
  • Key Claims at a Glance:
    • The complaint asserts independent claim 1 (Compl. ¶61).
    • Claim 1 is directed to a system comprising:
      • A server system configured to asynchronously receive and respond to query messages from a client object.
      • A client object that sends query messages representing a lengthening string of characters as a user provides input.
      • The server system using the input from said query messages to query available data and send back return messages with results.
      • The client object, upon receiving a return message, testing the usability of the results by checking that the return message corresponds to the latest query.
      • If usability is established, the client object displaying at least some of the result data.
    • The complaint does not explicitly reserve the right to assert dependent claims for the ’024 Patent.

U.S. Patent No. 9,760,628 - "System and Method for Asynchronous Client Server Session Communication"

  • Patent Identification: U.S. Patent No. 9,760,628, “System and Method for Asynchronous Client Server Session Communication,” issued September 12, 2017 (Compl. ¶¶18, 24).
  • The Invention Explained:
    • Problem Addressed: As a continuation of the ’024 Patent, the ’628 Patent addresses the same inefficiency of the synchronous "request-response loop" in prior art search systems (Compl. ¶¶12, 27).
    • The Patented Solution: The invention is embodied in a non-transient computer readable medium containing instructions for a client object. These instructions cause the client object to send multiple query messages corresponding to a lengthening string of characters as a user modifies the input, and to asynchronously receive return messages. The instructions also include checking the usability of the results using a "latest version of the input" before displaying them to the user (Compl. ¶68). The underlying technical architecture involves a session-based, multi-tier client-server system (’866 Patent, Abstract).
    • Technical Importance: This method improves the functionality of the computer system by enabling more accurate and timely results while bypassing the slow request-response process of prior systems (Compl. ¶17).
  • Key Claims at a Glance:
    • The complaint asserts independent claim 25 (Compl. ¶67).
    • Claim 25 is directed to a non-transient computer readable medium with instructions to implement:
      • A client object adapted to receive a lengthening string of characters from a user.
      • The client object sending multiple query messages corresponding to multiple versions of the input to a server system while the user modifies the input.
      • The client object asynchronously receiving return messages with results in response to the multiple versions of the input.
      • Upon receiving a return message, the client object checking the usability of the results using a latest version of the input to determine whether to display at least some of the results.
    • The complaint does not explicitly reserve the right to assert dependent claims for the ’628 Patent.

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"

  • Patent Identification: 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 (Compl. ¶¶18, 25).
  • Technology Synopsis: The patent describes a method to overcome the limitations of the traditional "Request-Response Loop" in web-based interactions (’073 Patent, col. 2:15-28). The patented solution involves a client computer detecting user input into a search field and, while the user is still typing, automatically sending a string representing the incomplete query to a server system, which matches the string against a cache of prior queries and asynchronously returns results to the client without loading a new web page (’073 Patent, col. 2:31-50, Claim 1).
  • Asserted Claims: Claim 1 (Compl. ¶73).
  • Accused Features: The complaint accuses Amazon's predictive search of infringing by detecting user input, sending incomplete search queries to Amazon's servers, matching those queries against a cache, and asynchronously receiving and displaying results while the user is still typing in the search field (Compl. ¶¶40-51, 73).

U.S. Patent No. 10,394,866 - "System and Method for Asynchronous Client Server Session Communication"

  • Patent Identification: U.S. Patent No. 10,394,866, “System and Method for Asynchronous Client Server Session Communication,” issued August 27, 2019 (Compl. ¶¶18, 26).
  • Technology Synopsis: This patent, from the same family as the ’024 and ’628 patents, describes a session-based, bi-directional system for asynchronous search (’866 Patent, Abstract). The method involves detecting the modification of a search query on a client computer, sending a request with the incomplete query to a server, matching the query string against a cache of previously retrieved results, and asynchronously sending a message back to the client containing at least a portion of the matching data for display (’866 Patent, Claim 1).
  • Asserted Claims: Claim 1 (Compl. ¶79).
  • Accused Features: The complaint alleges that Amazon's predictive search infringes by detecting user modification of the search bar, sending request messages with the incomplete query over a network, matching the query against a cache, and asynchronously sending and displaying search results on the client computer (Compl. ¶¶40-51, 79).

III. The Accused Instrumentality

  • Product Identification: The accused instrumentalities are "Amazon Predictive Search" and "Amazon Applications," which include the predictive search functionality on Amazon's desktop and mobile websites (e.g., Amazon.com) and its applications for iOS and Android platforms (Compl. ¶¶30, 52-53).
  • Functionality and Market Context: The accused functionality provides users with "instant suggestions and a comprehensive set of search results" as soon as the user makes the "first keystroke" (Compl. ¶37). The complaint provides network traffic analysis purporting to show that as a user types a query (e.g., "ro"), the client sends an HTTP GET request containing the lengthening string to Amazon's servers (Compl. ¶¶41-42). This functionality is demonstrated in a screenshot of network traffic showing a request with the parameter "prefix" set to "ro" (Compl. p. 13). The servers then asynchronously receive and respond to the query, returning results in a JSON format that are displayed to the user without a full page reload (Compl. ¶¶43, 48). The complaint alleges this predictive search is critical to Amazon's business, with almost 90% of product views resulting from its use (Compl. ¶31).

IV. Analysis of Infringement Allegations

U.S. Patent No. 8,539,024 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a server system...which is configured to receive query messages from a client object, the server system asynchronously receiving and responding to the query messages from the client object over a network; Amazon's server system allegedly receives HTTP GET requests containing query messages from the client and asynchronously returns JSON responses over the Internet (Compl. p. 14). ¶43, ¶45 col. 2:15-32
the client object that, while a user is providing input comprising a lengthening string of characters, sends query messages to the server system; The client-side functionality of Amazon's website and apps sends HTTP GET requests with a "prefix" parameter representing the user's lengthening search string as each character is typed (Compl. p. 13). ¶41, ¶42, ¶44 col. 22:5-12
wherein the server system, while receiving said query messages, uses the input to query data available to the server system and send return messages to the client object containing results in response to the input; Amazon's servers allegedly use the input string to query information from its product catalog and a cache of previous customer search behavior to generate and send responsive results. ¶45, ¶51 col. 26:15-32
wherein, upon receiving a return message...the client object tests the usability of the results...by checking that the return message corresponds to the latest query... The client side allegedly tests the usability of the results by checking that the "prefix" value in the server's response corresponds to the original query string associated with that response. ¶46 col. 24:1-12
and if usability is established, the client object displays or returns at least some result data to the user. If the usability check passes, the client side displays the search suggestions and results to the user, as shown in a screenshot of the user interface (Compl. p. 14). ¶48, ¶49 col. 24:10-12

U.S. Patent No. 9,760,628 Infringement Allegations

Claim Element (from Independent Claim 25) Alleged Infringing Functionality Complaint Citation Patent Citation
a client object adapted to receive input comprising a lengthening string of characters from a user... Amazon's client-side software on its websites and apps receives character-by-character input from a user in its search field. ¶41 col. 22:5-12
the client object sending multiple query messages corresponding to multiple versions of said input to a server system while a user modifies the input... As a user types and modifies the query (e.g., from "ro" to "rox"), the client sends multiple, distinct HTTP GET requests to Amazon's servers (Compl. pp. 13, 15). ¶41, ¶44 col. 19:1-12
the client object asynchronously receiving return messages with results in response to the multiple versions of the input; The client allegedly receives JSON-formatted return messages from the server in response to the different versions of the input string, without blocking the user interface. ¶43, ¶45 col. 2:15-32
wherein upon receiving one of the return messages, the client object checks the usability of the results...using a latest version of the input to determine whether to display... The client allegedly checks that the "prefix" value in a received response corresponds to the current or latest query string to ensure the results are not stale before displaying them. ¶46 col. 24:1-12
  • Identified Points of Contention:
    • Scope Questions: A central dispute may concern the meaning of "tests the usability of the results... by checking that the return message corresponds to the latest query." The complaint alleges Amazon's practice of checking a "prefix" value in the server response meets this limitation. The question for the court will be whether this specific implementation falls within the scope of the claim language, which was noted as a specific feature that allowed the ’024 Patent's claims to be deemed patentable in a prior IPR proceeding (Compl. ¶22).
    • Technical Questions: The complaint's infringement theory relies on an interpretation of network traffic. A technical question will be whether the evidence from this external analysis accurately reflects the internal operations of Amazon's client and server software. For example, does the client-side code perform a "check" as claimed, or is the display of results simply a direct consequence of the last-received server response, raising questions about whether the "usability test" limitation is met as alleged.

V. Key Claim Terms for Construction

  • The Term: "tests the usability of the results" (from '024 Patent, Claim 1)
  • Context and Importance: This term appears to be critical, as the complaint highlights that the PTAB found the independent claims of the ’024 Patent patentable because they recite specific "usability test[s]" (Compl. ¶22). The entire infringement case may depend on whether Amazon's alleged actions meet the court's construction of this term.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim itself provides its own definition: "by checking that the return message corresponds to the latest query" (’024 Patent, Claim 1, quoted in Compl. ¶62). Plaintiff may argue that any client-side action that verifies a server response is for the most recent query string before displaying it—such as checking a "prefix" value—satisfies this functional language. The specification describes the problem of stale results from a previous, shorter query appearing after a user has already typed more characters, and this test is the solution (’866 Patent, col. 9:39-51).
    • Evidence for a Narrower Interpretation: A defendant could argue that the term "usability" implies more than a simple string match of a query prefix. They might contend it requires a more substantive check on the content or format of the results themselves, although the claim language "by checking that..." may limit the viability of this argument. The specification's discussion of this feature may provide additional context for a narrower reading (’866 Patent, col. 24:1-12).

VI. Other Allegations

  • Indirect Infringement: The complaint does not plead specific facts to support claims of indirect infringement, such as inducement or contributory infringement. The allegations focus on Amazon's direct infringement through its own actions of making, using, and selling the accused systems (Compl. ¶¶61, 67, 73, 79).
  • Willful Infringement: The complaint alleges willful infringement based on both pre- and post-suit knowledge (Compl. ¶¶63, 69, 75, 81). The basis for pre-suit knowledge is a prior lawsuit filed against Amazon on March 7, 2011, involving a related parent patent (the ’326 Patent), which allegedly put Amazon on notice of its infringement (Compl. ¶57). The complaint characterizes post-suit conduct as "especially egregious" because Amazon is aware that the ’024 Patent survived an inter partes review (Compl. ¶63).

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

  • A core issue will be one of claim construction: how will the court construe the phrase "tests the usability of the results... by checking that the return message corresponds to the latest query"? The patentability of the ’024 Patent was confirmed in an IPR based on this limitation, and the outcome of the case may turn on whether Amazon's alleged practice of checking a "prefix" value in server responses falls within the court's interpretation of that language.
  • A key evidentiary question will be one of technical proof: the complaint presents a compelling infringement narrative based on externally observable network traffic. Will discovery of Amazon's source code and internal system architecture confirm this narrative, or will it reveal a technical implementation that diverges from the specific steps required by the asserted claims, particularly regarding the "usability test"?