DCT
3:21-cv-01145
Express Mobile Inc v. Dropbox Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Express Mobile, Inc. (Delaware)
- Defendant: Dropbox, Inc. (Delaware)
- Plaintiff’s Counsel: Gross & Klein LLP; Mololamken LLP
- Case Identification: 3:21-cv-01145, N.D. Cal., 02/16/2021
- Venue Allegations: Venue is alleged to be proper in the Northern District of California because Defendant Dropbox, Inc. maintains at least one regular and established place of business in the district.
- Core Dispute: Plaintiff alleges that Defendant’s "Paper" collaborative document service infringes four patents related to browser-based website generation and methods for presenting dynamic content on various devices.
- Technical Context: The technology at issue concerns systems that separate the design and content settings of a webpage from the underlying code, enabling visual, database-driven website creation and cross-platform application deployment.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendant with notice of each of the patents-in-suit prior to filing the lawsuit, forming the basis for allegations of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 1999-12-02 | ’397 Patent Priority Date |
| 2003-04-08 | ’397 Patent Issue Date |
| 2008-04-07 | ’755, ’287, and ’044 Patents Priority Date |
| 2012-11-14 | Plaintiff provides notice of ’397 Patent to Defendant |
| 2015-06-23 | ’755 Patent Issue Date |
| 2016-10-18 | ’287 Patent Issue Date |
| 2018-02-21 | Date of YouTube video cited as evidence of infringement |
| 2018-03-27 | ’044 Patent Issue Date |
| 2019-12-19 | Plaintiff provides notice of ’755, ’287, and ’044 Patents to Defendant |
| 2021-02-16 | 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," issued April 8, 2003
The Invention Explained
- Problem Addressed: The patent’s background section and the complaint describe prior art website creation as cumbersome and inefficient, requiring webpages to be stored as separate, large code files that were slow to download and render (Compl. ¶¶ 9, 17). This process also typically lacked a true "What You See Is What You Get" (WYSIWYG) editing environment, meaning creators could not view a page during the creation process as it would appear to an end-user (’397 Patent, col. 1:55-59; Compl. ¶17).
- The Patented Solution: The invention proposes a system where a webpage is defined not by static code files, but as a collection of user-selected settings and objects stored in a database (Compl. ¶10). A browser-based "build tool" allows a user to define these settings, and a "run time engine" later uses the information in the database to generate the webpage’s code "on the fly" in the end-user's browser, allowing for a WYSIWYG experience and optimization for different devices (’397 Patent, Abstract; Compl. ¶18).
- Technical Importance: This database-driven, on-the-fly generation approach was intended to improve website loading speeds, make data storage more efficient, and simplify the editing process by separating design parameters from presentation code (Compl. ¶¶ 10, 21).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶26).
- Essential elements of Claim 1 include:
- (a) Presenting a viewable menu in a browser with a user-selectable panel of settings, where at least one setting corresponds to a command for a "virtual machine."
- (b) Generating a display substantially contemporaneously with the user's selection of a setting.
- (c) Storing information representing the selected setting(s) in a database.
- (d) Generating a website by retrieving that stored information from the database.
- (e) Building one or more webpages using the database information and a "run time file," which in turn uses the database information to generate "virtual machine commands" for the display. (Compl. ¶27).
U.S. Patent No. 9,063,755 - "Systems and Methods for Presenting Information on Mobile Devices," issued June 23, 2015
The Invention Explained
- Problem Addressed: The complaint and patent background describe the proliferation of mobile devices as creating a technical problem for developers, as programming content and applications for each individual device type was increasingly expensive and time-consuming (Compl. ¶43; ’755 Patent, col. 1:20-26).
- The Patented Solution: The invention separates the programming into two parts: a device-independent "Application" containing the core logic and content, and a device-specific "Player" that runs on the end-user's device (Compl. ¶45). An authoring tool is used to create the device-independent Application, which can then be deployed across a variety of devices, each using its own tailored Player to interpret and execute the Application (’755 Patent, Abstract; Compl. ¶45).
- Technical Importance: This architecture aimed to solve the cross-platform development problem for the mobile ecosystem, enabling developers to "write once, run anywhere" and more efficiently distribute and update applications across a wide range of devices (Compl. ¶45).
Key Claims at a Glance
- The complaint asserts independent claim 23 (Compl. ¶53).
- Essential elements of Claim 23 include:
- Accepting a first, device-platform-dependent code on a device over a network.
- Accepting a second, device-independent code that includes a plurality of "symbolic names" for inputs and outputs associated with a web service.
- Executing the first code on the device, which involves processing the symbolic names, transmitting instructions to the web service, and accepting a third, device-independent code from the web service in response.
- The symbolic names are required to be character strings from a registry that "do not contain either a persistent address or pointer to an output value." (Compl. ¶54).
U.S. Patent No. 9,471,287 - "Systems and Methods for Integrating Widgets on Mobile Devices," issued October 18, 2016
- Technology Synopsis: This patent, related to the ’755 Patent, describes a system for generating and distributing dynamic content to mobile devices. It discloses an architecture involving a device-independent "Application" and a device- and platform-dependent "Player," where the system uses a registry of web components and "symbolic names" to define UI objects and interact with web services (Compl. ¶¶ 68-70).
- Asserted Claims: Claim 15 is asserted (Compl. ¶78).
- Accused Features: The complaint accuses Dropbox Paper of practicing the claimed method by using a "Player" (HTML, CSS, JavaScript) and an "Application" to display content, defining UI objects that correspond to web components (images, text blocks) stored in a registry and identified by symbolic names (Compl. ¶¶ 80-81, 85).
U.S. Patent No. 9,928,044 - "Systems and Methods for Programming Mobile Devices," issued March 27, 2018
- Technology Synopsis: This patent is also related to the ’755 and ’287 patents and addresses the generation of dynamic content for mobile devices. It describes a method using an authoring tool to define UI objects, storing their settings and associated "symbolic code" in a database, and then using that information to produce a device-independent "application" and a device-dependent "player" that collaborate to render the content (Compl. ¶¶ 95-97, 112).
- Asserted Claims: Claim 15 is asserted (Compl. ¶105).
- Accused Features: The complaint alleges Dropbox Paper infringes by using non-volatile memory to store symbolic names for web components, an authoring tool to create UI objects, storing their settings in a database, and generating both an "application" (device-independent code) and a "player" (device-dependent code) to display the document (Compl. ¶¶ 107-112).
III. The Accused Instrumentality
Product Identification
- Defendant’s "Paper" product and service (Compl. ¶12).
Functionality and Market Context
- The complaint describes Paper as a feature of Dropbox’s cloud storage service that allows users to create, edit, and share formatted documents through a web interface (Compl. ¶¶ 11-12). When a document is accessed, its content and formatting settings are retrieved from a database. JavaScript files then use these settings to generate and display the final webpage to the user (Compl. ¶13). The service is allegedly advertised as a tool for users to collaborate on webpages (Compl. ¶36). The complaint references a YouTube video titled "Dropbox Paper: A Collaborative Workspace for Creation and Coordination," which demonstrates users adding and configuring images, multimedia, and tables within a Paper document (Compl. ¶37).
IV. Analysis of Infringement Allegations
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... where at least one of said user-selectable settings... corresponds to commands to said virtual machine | Paper presents menus allowing users to control elements, such as image width, fonts, and highlights. These settings are alleged to correspond to commands for the browser's virtual machine (i.e., its JavaScript engine). | ¶29, ¶30, ¶33 | col. 66:5-14 |
| (b) generating a display in accordance with one or more user-selected settings substantially contemporaneously with the selection thereof | When a user selects a setting, Paper is alleged to update the displayed document "substantially contemporaneously with the selection thereof." | ¶31 | col. 66:15-18 |
| (c) storing information representative of said one or more user-selected settings in a database | Paper is alleged to store the user-selected settings in a database. | ¶32 | col. 66:19-21 |
| (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 Paper web server sends run time files to the browser, which then retrieve the user-selectable settings stored in the database to generate the document. | ¶34 | col. 66:22-25 |
| (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 at least one run time file uses information... to generate virtual machine commands for the display... | Run time files allegedly retrieve settings from the database and use them to generate virtual machine commands (in the form of JSON code), which are executed by the browser's virtual machine to generate the Paper document. | ¶34 | col. 66:26-32 |
- Identified Points of Contention:
- Scope Questions: A primary question may be whether the term "virtual machine," as used in a patent with a 1999 priority date, can be construed to read on a modern web browser’s JavaScript engine as alleged. Further, the analysis may question whether a collaborative "Paper Doc" constitutes a "website" or "webpage" as contemplated by the patent.
- Technical Questions: What evidence does the complaint provide that the user-selectable settings in Paper generate specific "virtual machine commands" (allegedly JSON code) for a "virtual machine" (allegedly the browser's JS engine), as opposed to simply being parameters used by standard JavaScript functions?
U.S. Patent No. 9,063,755 Infringement Allegations
| Claim Element (from Independent Claim 23) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| accepting, on the device, a first code over the network, where said first code is device-platform-dependent | Paper is alleged to accept and execute device- and platform-dependent code from the Paper web server, identified as HTML, CSS, and JavaScript. | ¶56 | col. 39:1-4 |
| accepting, on the device, a second code over the network, where said second code is device-independent and includes a plurality of symbolic names... | Paper is alleged to also accept device-independent code from the server that includes symbolic names of inputs and outputs. | ¶56 | col. 39:4-7 |
| where the symbolic names are... character strings that do not contain either a persistent address or pointer to an output value accessible to the web service | The symbolic names used by Paper are alleged to be character strings that do not contain a persistent address or pointer to an output value. | ¶58 | col. 38:11-14 |
| where said executing includes: processing said symbolic names... transmitting processed instructions... and accepting a third code... in response to the second code | The browser is alleged to execute the code, process the symbolic names, transmit instructions back to the web service, and accept new, device-independent code in response. | ¶59 | col. 39:14-20 |
- Identified Points of Contention:
- Scope Questions: The distinction between "device-platform-dependent" and "device-independent" code will be a central issue. The litigation may explore whether standard web technologies like HTML, CSS, and JavaScript, designed for cross-browser compatibility, can be properly characterized as "device-platform-dependent" under the patent's claims.
- Technical Questions: Does the accused Paper system use "symbolic names" that meet the negative limitation of not containing a "persistent address or pointer," and what is the specific technical nature of the "first," "second," and "third" codes alleged to be transferred between the client and server?
V. Key Claim Terms for Construction
For the ’397 Patent:
- The Term: "virtual machine"
- Context and Importance: The infringement allegation for the ’397 Patent hinges on construing a modern web browser's JavaScript engine as a "virtual machine." The definition of this term is therefore critical, as a narrow construction limited to technologies prevalent at the time of invention could undermine the infringement theory.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Practitioners may argue that the patent does not explicitly define the term, suggesting it should be given its plain and ordinary meaning, which could encompass any software-based execution environment that isolates an application from the underlying hardware.
- Evidence for a Narrower Interpretation: The specification makes numerous references to "JAVA," "JAVA Applet," and the "JAVA engine," which may suggest that the inventive context was focused on Java Virtual Machines (’397 Patent, col. 2:50-65). This context could be used to argue for a narrower construction limited to a JVM or similar technologies.
For the ’755 Patent:
- The Term: "device-platform-dependent" code
- Context and Importance: The infringement theory for the ’755 Patent and its progeny relies on classifying standard web code (HTML, CSS, JavaScript) as "device-platform-dependent." Practitioners may focus on this term because if such code is deemed platform-independent, a core premise of the infringement allegation may fail.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The complaint alleges this code is written for specific platforms like "browsers, laptops, tablets, or smartphones" (Compl. ¶56). A party might argue that any code which must be interpreted by platform-specific software (like a browser) is inherently "platform-dependent."
- Evidence for a Narrower Interpretation: The patent distinguishes this code from "device-independent" code (’755 Patent, col. 2:44-50). A party might argue that standard web technologies are, by their nature, designed to be platform-independent and that the term must refer to compiled, non-portable code specific to an operating system or hardware architecture.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement for all four patents. The allegations are based on Defendant’s actions of advertising and providing instructions for the Paper service, which allegedly encourage and enable users to directly infringe the patents. The complaint specifically references a YouTube video as an example of Defendant touting the infringing functionalities (Compl. ¶¶ 36-37, 61-62, 88-89, 115-116).
- Willful Infringement: Willfulness is alleged for all four patents. The claims are based on alleged pre-suit knowledge stemming from notice letters Plaintiff sent to Defendant. The complaint specifies notice for the ’397 patent was provided on or before November 14, 2012, and for the ’755, ’287, and ’044 patents on or before December 19, 2019 (Compl. ¶¶ 35, 39, 60, 64, 87, 91, 114, 118).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "virtual machine," from a patent with a 1999 priority date, be construed to cover a modern web browser's JavaScript engine, and can a collaborative document from the "Paper" service be considered a "website" under the patent's claims?
- A key dispute will be one of technical classification: does the accused system's use of standard web technologies (HTML, CSS, JavaScript) satisfy the claims' division between "device-platform-dependent" code and "device-independent" code, or is there a fundamental mismatch between the patent's architecture and modern web standards?
- A central evidentiary question will be one of functional implementation: what is the precise technical nature of the "symbolic names" used by the accused Paper product, and do they meet the negative limitation of not containing a "persistent address or pointer to an output value" as required by claims in three of the four asserted patents?