DCT

3:20-cv-08321

Express Mobile Inc v. Oath Holdings Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 3:20-cv-08321, N.D. Cal., 11/25/2020
  • Venue Allegations: Plaintiff alleges venue is proper in the Northern District of California because Defendant maintains a regular and established place of business in Sunnyvale, California.
  • Core Dispute: Plaintiff alleges that Defendant’s website customization services, "My Yahoo!" and "Yahoo! Small Business," infringe five patents related to browser-based website generation tools and methods for presenting dynamic content on various devices.
  • Technical Context: The technology concerns systems that allow users to create and modify webpages through graphical interfaces, separating design settings from the final web code to improve efficiency and enable cross-device compatibility.
  • Key Procedural History: The complaint alleges that Defendant was provided with notice of its infringement of U.S. Patent Nos. 6,546,397 and 7,594,168 on December 20, 2018, and of U.S. Patent Nos. 9,063,755, 9,471,287, and 9,928,044 on November 24, 2020.

Case Timeline

Date Event
1999-12-02 Priority Date for U.S. Patent No. 6,546,397
1999-12-02 Priority Date for U.S. Patent No. 7,594,168
2003-04-08 Issue Date for U.S. Patent No. 6,546,397
2008-04-07 Priority Date for U.S. Patent No. 9,063,755
2008-04-07 Priority Date for U.S. Patent No. 9,471,287
2008-04-07 Priority Date for U.S. Patent No. 9,928,044
2009-09-22 Issue Date for U.S. Patent No. 7,594,168
2015-06-23 Issue Date for U.S. Patent No. 9,063,755
2016-10-18 Issue Date for U.S. Patent No. 9,471,287
2018-03-27 Issue Date for U.S. Patent No. 9,928,044
2018-12-20 Alleged Notice of Infringement for ’397 & ’168 Patents
2020-11-24 Alleged Notice of Infringement for ’755, ’287, & ’044 Patents
2020-11-25 Complaint Filing Date

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"

  • Patent Identification: U.S. Patent No. 6,546,397, entitled “Browser Based Web Site Generation Tool and Run Time Engine,” issued April 8, 2003 (Compl. ¶14).
  • The Invention Explained:
    • Problem Addressed: The patent addresses the inefficiencies of prior-art website creation, where webpages were coded directly in languages like HTML, stored as individual files, could not be viewed in their final form during editing, and were slow to load for end-users (Compl. ¶¶ 15-16).
    • The Patented Solution: The invention proposes a browser-based tool where a webpage is defined not as a collection of code, but as a group of user-selected objects and settings stored in a database. A "run time engine" then uses this database to generate the webpage's HTML code "on the fly" when a user accesses it, allowing for a WYSIWYG ("What You See Is What You Get") editing environment and optimization for different devices (Compl. ¶17; ’397 Patent, Abstract, col. 2:33-42, Fig. 2).
    • Technical Importance: This approach is alleged to provide substantial improvements in computer performance through faster loading speeds and more efficient storage of webpage data (Compl. ¶20).
  • Key Claims at a Glance:
    • The complaint asserts independent claim 1 (Compl. ¶25).
    • The essential elements of Claim 1 are:
      • Presenting a viewable menu with a user-selectable panel of settings describing website elements, where at least one setting corresponds to a command for a virtual machine.
      • Generating a display substantially contemporaneously with the user's selection of settings.
      • Storing information representative of the selected settings in a database.
      • Generating a website by retrieving the stored information from the database.
      • Building one or more webpages using the database information and at least one "run time file," which uses the stored information to generate virtual machine commands to display the webpage.
    • The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 7,594,168 - "Browser Based Web Site Generation Tool and Run Time Engine"

  • Patent Identification: U.S. Patent No. 7,594,168, entitled “Browser Based Web Site Generation Tool and Run Time Engine,” issued September 22, 2009 (Compl. ¶57).
  • The Invention Explained:
    • Problem Addressed: The patent addresses flaws in conventional website creation, which required storing each page as a separate HTML/CSS/JavaScript file, wasting computer resources, and slowing down the editing and loading processes (Compl. ¶59).
    • The Patented Solution: The invention describes a system comprising a server with a "build engine." The engine accepts user input to create webpages composed of objects (e.g., buttons, images), associates user-selected styles with those objects (including transformations and timelines), and produces a database containing a "multidimensional array" of this object and style data. This database is then used by a run-time engine in a web browser to generate the final website (Compl. ¶¶ 60, 68; ’168 Patent, Fig. 3a).
    • Technical Importance: The invention is alleged to offer significant improvements in computer performance by enabling faster loading, more efficient data storage, and easier webpage modification (Compl. ¶62).
  • Key Claims at a Glance:
    • The complaint asserts independent claim 1 (Compl. ¶67).
    • The essential elements of Claim 1 are:
      • A system for assembling a website comprising a server with a build engine.
      • The build engine is configured to accept user input to create a website comprising objects, including at least one button or image object.
      • The build engine is configured to accept user input to associate a style (which includes values for transformations and timelines) with the objects.
      • The build engine is configured to produce a database with a multidimensional array that defines each object's style, number, and webpage location.
      • The build engine is configured to provide the database to a server accessible to a web browser.
      • The database is produced so that a web browser with a run-time engine can generate the website from the data in the database.
    • The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 9,063,755 - "Systems and Methods for Presenting Information on Mobile Devices"

  • Patent Identification: U.S. Patent No. 9,063,755, entitled “Systems and Methods for Presenting Information on Mobile Devices,” issued June 23, 2015 (Compl. ¶80).
  • Technology Synopsis: The patent addresses the technical problem of generating and distributing dynamic content to a proliferation of different mobile devices. The solution involves a method where a device accepts device-dependent code (a "Player") and device-independent code (an "Application") over a network; the device-independent code includes "symbolic names" that correspond to web components from a web service, allowing content to be rendered correctly across various devices (Compl. ¶¶ 81-83, 92).
  • Asserted Claims: Independent claim 23 (Compl. ¶¶ 91, 101).
  • Accused Features: The My Yahoo! and Yahoo! Small Business services are accused of practicing the claimed method by sending device-dependent code (HTML/CSS/JS) and device-independent code containing symbolic names for web components (e.g., widgets, buttons) to a user's browser to render content (Compl. ¶¶ 93, 102).

U.S. Patent No. 9,471,287 - "Systems and Methods for Integrating Widgets on Mobile Devices"

  • Patent Identification: U.S. Patent No. 9,471,287, entitled “Systems and Methods for Integrating Widgets on Mobile Devices,” issued October 18, 2016 (Compl. ¶112).
  • Technology Synopsis: This patent also aims to solve problems of distributing dynamic content to diverse mobile devices. The invention describes a method using a device-dependent "Player" and a device-independent "Application" that is produced by an authoring tool. The method involves defining a UI object corresponding to a web component from a registry, selecting a "symbolic name" for that component, and producing the Application, which, when executed by the Player, interacts with a web service to display content (Compl. ¶¶ 113-114, 124).
  • Asserted Claims: Independent claim 15 (Compl. ¶¶ 123, 138).
  • Accused Features: My Yahoo! and Yahoo! Small Business are accused of using a registry of symbolic names (for widgets, columns, etc.), an authoring tool to define UI objects, and producing a device-dependent Player (HTML/CSS/JS) and a device-independent Application to display content from a web service (Compl. ¶¶ 125-130, 139-144).

U.S. Patent No. 9,928,044 - "Systems and Methods for Programming Mobile Devices"

  • Patent Identification: U.S. Patent No. 9,928,044, entitled “Systems and Methods for Programming Mobile Devices,” issued March 27, 2018 (Compl. ¶153).
  • Technology Synopsis: The patent describes a method for displaying content on a device that has a "Player" and non-volatile computer memory. The memory stores symbolic names for web components. The method involves defining a UI object, associating it with a symbolic name, storing related settings in a database, and using the Player to build an "Application" from the database to generate the display. The system facilitates interaction between the device and a web service using the symbolic names (Compl. ¶¶ 154-156, 165).
  • Asserted Claims: Independent claim 15 (Compl. ¶¶ 164, 178).
  • Accused Features: My Yahoo! and Yahoo! Small Business are accused of using non-volatile memory to store symbolic names for web components, an authoring tool to define UI objects, and a database to store settings, which are then used by a Player and Application to render content (Compl. ¶¶ 166-170, 179-184).

III. The Accused Instrumentality

Product Identification

  • The accused instrumentalities are Defendant’s "My Yahoo!" service and "Yahoo! Small Business" service (Compl. ¶¶ 11-12).

Functionality and Market Context

  • The complaint describes "My Yahoo!" as a service offering customized portal pages where users can select web content, layouts, tabs, and themes through menus (Compl. ¶¶ 7-10, 28-30). "Yahoo! Small Business" is described as a service that allows users to create and customize websites and e-commerce stores by using a menu of settings to control elements like buttons, headers, and forms, with a preview that updates as selections are made (Compl. ¶¶ 2-4, 44-45).
  • The complaint alleges that Defendant advertises Yahoo! Small Business as an "easy-to-use, drag-and-drop, website building tool" that allows users to "[c]reate a wow-worthy website in minutes" with "no coding required" (Compl. ¶¶ 52-53).

IV. Analysis of Infringement Allegations

No probative visual evidence provided in complaint.

U.S. Patent No. 6,546,397 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
(a) presenting a viewable menu having a user-selectable panel of settings describing elements on a website... The accused services present viewable menus with settings that allow users to specify elements (e.g., news clippings, tabs) and design features (e.g., background, columns, font size) for a portal page or website. ¶28-30, 44-45 col. 6:13-26
...where at least one of said user-selectable settings in said panel corresponds to commands to said virtual machine; The user-selectable settings are alleged to correspond to commands to a virtual machine, which are generated as JavaScript Object Notation ("JSON") code. ¶33, 48 col. 66:10-12
(b) generating a display in accordance with one or more user-selected settings substantially contemporaneously with the selection thereof; The accused services allegedly generate and update the webpage or portal page display in accordance with the user's selected settings as they are changed. ¶31, 46 col. 2:33-35
(c) storing information representative of said one or more user-selected settings in a database; The accused services allegedly store all user-selected settings in a database. ¶32, 47 col. 6:3-6
(d) generating a website at least in part by retrieving said information representative of said one or more user-selected settings stored in said database; The accused services’ web servers allegedly retrieve the user-selectable settings from the database to generate the website or portal page. ¶34, 49 col. 8:10-23
(e) building one or more webpages to generate said website from at least a portion of said database and at least one run time file, where said one run time file uses information stored in said database to generate virtual machine commands for the display of at least a portion of said one or more webpages. The accused services allegedly use "run time files" (containing HTML and JavaScript) that communicate with the web server to retrieve the stored settings and generate virtual machine commands (as JSON code). The web browser's virtual machine then executes the code to generate the webpage. ¶33-34, 48-49 col. 8:24-34
  • Identified Points of Contention:
    • Scope Questions: A central question may be whether the term "virtual machine" as used in the patent, which was filed in 1999 and describes a Java-based environment, can be construed to read on a modern web browser's JavaScript engine executing JSON, as the complaint alleges (Compl. ¶34; ’397 Patent, col. 1:49-55).
    • Technical Questions: The analysis may focus on what constitutes the claimed "run time file." The complaint identifies this as "one or more run time files containing HTML and JavaScript code" (Compl. ¶33). It raises the question of whether this refers to standard client-side scripting or a distinct, inventive component as contemplated by the patent.

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 website comprising: a server comprising a build engine configured to: accept user input to create a website... Yahoo! Small Business is alleged to be a system for assembling a website that includes a server with a build engine that accepts user input to create webpages with objects. ¶69 col. 63:64-64:2
...wherein each webpage comprises at least one button object or at least one image object... The service allegedly allows users to add objects, including images and buttons. ¶69 col. 64:17-19
...accept user input to associate a style with objects...wherein the...style...includes values defining transformations and timelines... The service's editor tool allegedly allows users to associate styles with objects, including styles that define transformations and animations. ¶69 col. 64:14-24
...produce a database with a multidimensional array comprising the objects that comprise the website including data defining, for each object, the object style, an object number, and an indication of the webpage that each object is part of... Yahoo! Small Business allegedly uses a database with a multidimensional array to store data defining object style, a numerical ID, and webpage indication, which it encodes in JSON format. ¶70 col. 64:29-34
...provide the database to a server accessible to web browser; wherein the database is produced such that a web browser with access to a run time engine is configured to generate the website from the objects and style data extracted from the provided database. The web server allegedly sends run time files to the user's browser, which then communicate with the server to retrieve the encoded settings from the database and generate the webpage. ¶70-71 col. 64:35-65:5
  • Identified Points of Contention:
    • Scope Questions: A likely point of contention is the scope of the term "multidimensional array." The complaint alleges the accused system uses such an array and then states it encodes information in "JSON format" (Compl. ¶70). This raises the question of whether a JSON data structure constitutes a "multidimensional array" as the term is used in the patent.
    • Technical Questions: The infringement analysis may turn on the specific functions and location of the accused "build engine." The claim requires a "server comprising a build engine," and the complaint alleges the existence of a "Yahoo! Small Business build engine" (Compl. ¶69). The evidence will need to show how the accused server-side and client-side components map to the claimed system architecture.

V. Key Claim Terms for Construction

  • For the ’397 Patent:

    • The Term: "virtual machine"
    • Context and Importance: This term is critical because the complaint's infringement theory relies on equating a modern web browser's JavaScript engine with the claimed "virtual machine" (Compl. ¶¶ 33-34). The patent was filed in an era where this term often implied a Java Virtual Machine (JVM). The construction of this term may determine whether the patent's scope extends to current web technologies.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The claim language itself is broad, reciting "a virtual machine capable of generating displays" without specifying a particular technology like Java ('397 Patent, col. 66:11-12). This may support an interpretation covering any software environment that executes code to produce a visual output.
      • Evidence for a Narrower Interpretation: The specification frequently references Java technology, such as "JAVA applet," "JAVA engine," and "Java Virtual machine," which could be cited to argue that a person of ordinary skill in the art at the time would have understood the term to be limited to a Java-based environment ('397 Patent, col. 1:53-54, col. 35:36-37).

  • For the ’168 Patent:

    • The Term: "multidimensional array"
    • Context and Importance: Claim 1 requires the build engine to "produce a database with a multidimensional array" ('168 Patent, col. 64:29-30). The complaint alleges Yahoo! Small Business uses such an array and then specifies that it "encodes the information selected by the user in JSON format" (Compl. ¶70). The case may depend on whether a JSON object, with its key-value structure, falls within the scope of "multidimensional array."
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The patent does not appear to provide an explicit definition for the term, which may support giving it a broader, plain-and-ordinary meaning that could encompass various structured data formats, including JSON, that organize data across more than one dimension.
      • Evidence for a Narrower Interpretation: A defendant may point to the detailed descriptions of the data structures in the parent '397 patent to argue for a more constrained definition. For example, the '397 patent describes four-dimensional arrays with specific loop structures for storing data like Boolean records, integer records, and string records, which could be argued as distinct from the structure of a JSON object ('397 Patent, col. 42:1-68).

VI. Other Allegations

  • Indirect Infringement: The complaint alleges inducement to infringe for all five patents. The allegations are based on Defendant having actual knowledge of the patents from specific notice dates and subsequently encouraging infringement by advertising its services as easy-to-use website building tools and providing user instructions on how to use the allegedly infringing features (Compl. ¶¶ 36, 51-53, 73-75, 96, 132, 146, 172, 186).
  • Willful Infringement: Willfulness is alleged for all five patents based on Defendant’s alleged continuation of infringing activities after receiving actual notice of the patents and the alleged infringement (Compl. ¶¶ 38, 54, 77, 97, 109, 134, 150, 174, 190).

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

  • A core issue will be one of technological translation: can claim terms rooted in the technological context of the late 1990s and early 2000s, such as "virtual machine" and "multidimensional array," be construed to cover modern, standardized web technologies like browser-based JavaScript engines and JSON data structures, as the complaint alleges?
  • A key evidentiary question will be one of architectural mapping: does the accused client-server architecture, which uses client-side scripts to communicate with a web server, perform the functions of the claimed "build engine," "run time file," and "database" in the manner described by the patents, or is there a fundamental mismatch in the location and operation of these components?
  • The case may also present a question of inventiveness versus convention: do the accused features, which the complaint alleges map to the patent claims, represent the specific technological solutions disclosed in the patents, or do they reflect the routine and conventional evolution of web development practices that fall outside the patents' scope?