DCT
3:20-cv-08491
Express Mobile Inc v. Bookingcom BV
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Express Mobile, Inc. (Delaware)
- Defendant: Booking Holdings, Inc. (Delaware), Booking.com B.V. (Netherlands), Priceline.com LLC (Delaware), Agoda Company Pte. Ltd. (Singapore), and OpenTable, Inc. (Delaware)
- Plaintiff’s Counsel: King & Spalding LLP
- Case Identification: 3:20-cv-08491, N.D. Cal., 11/30/2020
- Venue Allegations: Plaintiff alleges venue is proper in the Northern District of California because Defendants maintain regular and established places of business within the district, have committed acts of infringement in the district, and have purposefully transacted business in the district.
- Core Dispute: Plaintiff alleges that Defendants’ online travel and restaurant reservation websites and mobile applications infringe five patents related to browser-based website generation tools and systems for authoring and distributing applications for mobile devices.
- Technical Context: The patents address foundational technologies for web and mobile application development, specifically methods for creating device-independent applications that can be interpreted by device-specific software.
- Key Procedural History: The complaint notes that some of the asserted patents were previously litigated against Facebook. U.S. Patent No. 6,546,397, the earliest patent in the asserted family, has been subject to both ex parte reexamination and inter partes review proceedings, which resulted in the cancellation of claim 1, the sole independent claim asserted from that patent in this complaint. The patentability of the claims of U.S. Patent No. 7,594,168 asserted in this complaint was confirmed in a separate ex parte reexamination.
Case Timeline
| Date | Event |
|---|---|
| 1999-12-02 | Priority Date for ’397 and ’168 Patents |
| 2003-04-08 | U.S. Patent No. 6,546,397 Issues |
| 2008-04-07 | Priority Date for ’755, ’287, and ’044 Patents |
| 2009-09-22 | U.S. Patent No. 7,594,168 Issues |
| 2015-06-23 | U.S. Patent No. 9,063,755 Issues |
| 2016-10-18 | U.S. Patent No. 9,471,287 Issues |
| 2018-03-27 | U.S. Patent No. 9,928,044 Issues |
| 2020-11-30 | Complaint Filed |
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’s background section describes conventional web-building tools of the time as operating outside of a web browser, which made creating and deploying websites a multi-step, cumbersome process involving separate code generation, file uploading, and browser interpretation (Compl. ¶ 24; ’397 Patent, col. 1:12-32).
- The Patented Solution: The invention proposes a browser-based "build tool" that provides a "what you see is what you get" (WYSIWYG) interface, allowing a user to design a website directly within the browser. This tool generates a "run time file" containing a customized "run time engine" and an associated database. When a user accesses the site, the browser calls the run time engine, which in turn reads the database to execute and display the entire website (Compl. ¶ 25; ’397 Patent, col. 2:1-12, Fig. 2).
- Technical Importance: This approach aimed to streamline web development by integrating the design and execution environments, departing from the traditional offline-tool paradigm (Compl. ¶ 24; ’397 Patent, col. 1:52-67).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶ 39).
- Essential elements of claim 1 include:
- A method for allowing a user to have a browser and a virtual machine capable of generating displays.
- Presenting a viewable menu of a user selectable panel of settings to describe elements on a web page.
- Accepting one or more of said user selectable settings in said panel as inputs.
- Generating a display in accordance with one or more user selected settings.
- Storing information representative of one or more user selected settings in a database.
- Generating a website from at least a portion of said database and at least one run time file, where said 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 one or more web pages.
- The complaint reserves the right to assert other claims, including dependent claims (Compl. ¶ 45).
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: As a continuation of the application leading to the ’397 Patent, this patent addresses the same technical problem: the inefficiency and limitations of conventional, non-browser-based website construction tools that require separate steps for HTML/script generation and interpretation (Compl. ¶ 47; ’168 Patent, col. 1:19-57).
- The Patented Solution: The invention claims a system for assembling a website, comprising a "build engine" that allows a user to define objects and associate styles with them. This process produces a database that a web browser can access with a "runtime engine" to generate the website. The system is designed to create a WYSIWYG authoring environment directly within the browser (Compl. ¶ 47; ’168 Patent, Abstract; col. 2:40-57).
- Technical Importance: The technology sought to simplify the web creation process by providing a browser-native tool that could generate dynamic, feature-rich websites without requiring deep coding knowledge or external software (Compl. ¶ 47; ’168 Patent, col. 2:58-68).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶ 48).
- Essential elements of claim 1 include:
- A system for assembling a website comprising a build engine configured to:
- Accept user input to create the website comprising a plurality of objects.
- Associate a style with objects wherein each object page at least one object is at least one image and wherein the at least one object is associated with a style that includes values for the at least one object.
- Produce a database comprising the objects that comprise the website including style data defining for each object, the object style that is part of, and provide the database to a server accessible to a web browser.
- 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 complaint reserves the right to assert additional claims (Compl. ¶ 53).
U.S. Patent No. 9,063,755 - "Systems and Methods for Presenting Information on Mobile Devices"
- Issued: June 23, 2015
- Technology Synopsis: The patent addresses the challenge of programming for a wide variety of mobile devices by disclosing a system that separates device-dependent and device-independent code. An authoring tool produces a device-independent "Application," which is then interpreted on a mobile device by a device-dependent "Player" specific to that device's platform (Compl. ¶ 56; ’755 Patent, Abstract).
- Asserted Claims: Independent claim 1 is asserted (Compl. ¶ 57).
- Accused Features: The complaint alleges that Defendants' mobile applications and websites utilize a similar architecture, comprising a device-specific Player (e.g., the native iOS or Android app) that interprets and displays device-independent Application content (e.g., reservation data, user interface layouts) (Compl. ¶ 58).
U.S. Patent No. 9,471,287 - "Systems and Methods for Integrating Widgets on Mobile Devices"
- Issued: October 18, 2016
- Technology Synopsis: This patent expands on the Player/Application architecture of the ’755 Patent, with a focus on integrating "widgets" into mobile applications. The system allows an authoring tool to create applications that can incorporate and display widgets, which are then rendered on the mobile device by the Player (Compl. ¶ 64; ’287 Patent, Abstract).
- Asserted Claims: Independent claim 1 is asserted (Compl. ¶ 65).
- Accused Features: The complaint accuses Defendants' mobile platforms of infringing by providing widgets (e.g., for search, booking, or account management) within their applications using the allegedly infringing Player/Application architecture (Compl. ¶ 66).
U.S. Patent No. 9,928,044 - "Systems and Methods for Programming Mobile Devices"
- Issued: March 27, 2018
- Technology Synopsis: This patent also describes a system for authoring and deploying mobile applications using a device-dependent "Player" and a device-independent "Application." It focuses on the generation of code by an authoring tool where UI objects are associated with symbolic names corresponding to web service components, which are then used by the Player to render content (Compl. ¶ 72; ’044 Patent, Abstract; claim 1).
- Asserted Claims: Independent claim 1 is asserted (Compl. ¶ 73).
- Accused Features: The complaint alleges Defendants' mobile platforms infringe by using an authoring tool to generate applications that are deployed to user devices and executed via a device-specific Player interpreting device-independent content (Compl. ¶ 74).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are the websites and mobile applications operated by Defendants, including Booking.com, Priceline.com, Agoda.com, and OpenTable.com (Compl. ¶ 2).
Functionality and Market Context
- The accused platforms provide online travel agency and restaurant reservation services, allowing users to search, compare, and book flights, hotels, rental cars, and dining reservations (Compl. ¶¶ 2-3). Plaintiff alleges these services are made available through web browsers and dedicated applications for mobile operating systems like iOS and Android. Figure 2 of the complaint provides a screenshot of the Priceline.com website, which Plaintiff uses to illustrate the accused user-selectable panel of settings (Compl. p. 16, Fig. 2). For the mobile-focused patents, Figure 6 of the complaint displays the Priceline application on a mobile device, which Plaintiff alleges is an execution of the accused device-dependent Player and device-independent Application (Compl. p. 24, Fig. 6). The complaint alleges these platforms are of significant commercial importance to the Defendants (Compl. ¶ 3).
IV. Analysis of Infringement Allegations
’397 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a method for allowing a user to have a browser and a virtual machine... for generating displays | Defendants' websites operate on user devices with browsers that contain virtual machines (e.g., JavaScript engines) for displaying content. | ¶41 | col. 65:42-45 |
| presenting a viewable menu of a user selectable panel of settings to describe elements on a web page | Defendants' websites present user interfaces with selectable options (e.g., drop-down menus, text fields for travel details) for users to define their requests. | ¶41 | col. 65:46-49 |
| accepting one or more of said user selectable settings in said panel as inputs | The websites accept user selections, such as departure city, destination, and dates, as inputs. | ¶41 | col. 65:50-52 |
| storing information representative of one or more user selected settings in a database | Defendants' systems allegedly use a "build tool" that stores user-selected settings and other website elements in a database. | ¶41 | col. 65:56-58 |
| generating a website from at least a portion of said database and at least one run time file... to generate virtual machine commands | The complaint alleges Defendants' systems generate their websites using information from a database and a "run time file," which is executed by the user's browser to display the content. | ¶41 | col. 65:59-66:2 |
’168 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A system for assembling a web site comprising a build engine configured to: | Defendants operate a system with an alleged "build engine" (e.g., their backend infrastructure) for creating their websites. | ¶50 | col. 64:48-49 |
| accept user input to create the web site comprising a plurality of objects | The alleged build engine accepts input to create websites composed of various objects (text, images, buttons). | ¶50 | col. 64:50-51 |
| associate a style with objects... | The alleged build engine associates styles (e.g., fonts, colors, layouts) with the objects on the web pages. | ¶50 | col. 64:52-57 |
| produce a database comprising the objects that comprise the web site including style data... | The alleged build engine produces a database containing the objects and associated styles for the websites. | ¶50 | col. 64:58-62 |
| wherein the database is produced such that a web browser with access to a runtime engine is configured to generate the website... | The database is allegedly used by a "runtime engine" in the user's browser to generate and display the website. | ¶50 | col. 65:1-6 |
Identified Points of Contention
- Scope Questions: A primary question will be whether the Defendants' modern, server-centric web application architecture falls within the scope of the patents' "browser-based build tool" and "run time engine" claims. The patents describe a system where the creation tool itself is browser-based, which may present a scope mismatch with Defendants' alleged backend, server-side content management systems.
- Technical Questions: A key factual dispute may arise over whether the collection of JavaScript, HTML, CSS, and data files sent from Defendants' servers to a user's browser constitutes the specific, packaged "run time file" and "database" as contemplated by the patents. The complaint does not provide specific evidence of how Defendants' systems technically generate and package website files, instead mapping the claim terms onto the general functionality of the accused websites.
V. Key Claim Terms for Construction
The Term: "build tool" (’397 Patent) / "build engine" (’168 Patent)
- Context and Importance: These terms are central to the claimed invention, representing the apparatus or method for creating the website. The case's outcome may depend on whether these terms can be construed broadly to cover Defendants' server-side infrastructure for generating web pages, or if they are limited to the user-facing, browser-based WYSIWYG editor explicitly described in the specification.
- Evidence for a Broader Interpretation: The specification states the "build tool 350 includes plural individual tools that are created and initialized" for building a website, which might support an argument that the term covers a distributed collection of software components, not just a single, monolithic editor (e.g., ’397 Patent, col. 6:8-10).
- Evidence for a Narrower Interpretation: The summary of the invention and detailed figures consistently describe a "Browser Based build engine" and depict a user interacting with a WYSIWYG interface directly inside a browser window. This suggests the "build tool/engine" is a specific type of client-side, user-facing application, not a general-purpose backend system (e.g., ’397 Patent, col. 2:1-4; Fig. 37).
The Term: "run time file" (’397 Patent)
- Context and Importance: This is the output of the "build tool" and what is ultimately executed by the browser. The infringement analysis will turn on what components of the accused websites (e.g., HTML documents, JavaScript libraries, data objects) can be collectively or individually identified as this "run time file."
- Evidence for a Broader Interpretation: The patent abstract describes the build tools as being "operable to construct a single run time file and an associated database," which could be argued to cover the set of all assets (code and data) sent from a server to render a web page.
- Evidence for a Narrower Interpretation: The specification details the creation of "customized and optimized run time engine" source code which is then compiled and packaged into specific formats like "CAB/JAR files" along with the database. This suggests the "run time file" is a specific, pre-packaged, executable file, not a loose collection of web assets delivered over HTTP (e.g., ’397 Patent, col. 8:15-33; col. 7:15-22).
VI. Other Allegations
Indirect Infringement
- The complaint alleges induced infringement, stating that Defendants provide their platforms and services with the knowledge and intent that end-users will directly infringe the patents by using them as intended (Compl. ¶¶ 44, 52, 60, 68, 76). The allegations are based on the act of making the accused services available to the public.
Willful Infringement
- The willfulness allegation is based on alleged pre-suit knowledge. The complaint asserts that Defendants knew or should have known about the patents-in-suit due to prior litigation involving the same patent family against Facebook, a major technology company, which Plaintiff claims would have been known in the industry (Compl. ¶ 36).
VII. Analyst’s Conclusion: Key Questions for the Case
- Architectural Equivalence: A core issue will be one of technical mapping: can the specific architecture described in the early-2000s era patents—a browser-based WYSIWYG "build tool" that generates a discrete "run time file" for execution—be shown to read on the Defendants' modern, distributed, server-side platforms that dynamically generate and stream web and mobile content to users?
- Definitional Scope: The dispute will likely focus on claim construction, particularly whether the term "build tool" is limited to the user-facing editor depicted in the patents or can be broadly construed to encompass any backend system that assembles a web page.
- Threshold Validity: For the lead ’397 Patent, a dispositive question will be one of enforceability: can Plaintiff maintain a suit for infringement of claim 1, which is asserted in the complaint but has been cancelled in post-grant administrative proceedings at the U.S. Patent and Trademark Office?