DCT

3:21-cv-05428

MasterObjects Inc v. Meta Platforms Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 6:20-cv-00087, W.D. Tex., 02/12/2021
  • Venue Allegations: Plaintiff alleges venue is proper in the Western District of Texas because Defendant has committed acts of infringement in the district and maintains multiple regular and established places of business in Austin, Texas.
  • Core Dispute: Plaintiff alleges that Defendant’s predictive search functionality, used on its website and mobile applications, infringes four patents related to asynchronous client-server communication for retrieving search results based on incremental user input.
  • Technical Context: The technology at issue is commonly known as "instant search" or "predictive search," where search suggestions and results are dynamically displayed as a user types characters into a search field, eliminating the traditional "request-response loop" of early web search.
  • Key Procedural History: The complaint notes that U.S. Patent No. 8,539,024 survived an inter partes review (IPR) proceeding initiated by eBay, Inc., with the Patent Trial and Appeal Board (PTAB) finding the challenged claims patentable. The complaint also states that a separate IPR petition filed by Unified Patents, LLC against U.S. Patent No. 10,311,073 was denied institution by the PTAB.

Case Timeline

Date Event
2001-08-20 Earliest Priority Date for ’024, ’628, ’073, and ’866 Patents
2012-03-XX Facebook employee allegedly spoke with MasterObjects representatives
2013-09-17 ’024 Patent Issued
2015-02-XX U.S. Patent and Trademark Office examiner allegedly cited MasterObjects application to Facebook during prosecution
2017-09-12 ’628 Patent Issued
2018-07-25 PTAB Final Written Decision in eBay IPR finding ’024 Patent claims patentable
2019-06-04 ’073 Patent Issued
2019-06-11 Inter Partes Review Certificate issued for ’024 Patent
2019-08-27 ’866 Patent Issued
2020-02-05 Original Complaint Filed
2021-01-11 PTAB denied institution of Unified IPR against ’073 Patent
2021-02-12 First 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 Sep. 17, 2013

The Invention Explained

  • Problem Addressed: The complaint describes the conventional internet search process as being hampered by a slow and frustrating "request-response loop" (Compl. ¶9). In this synchronous model, a user types a complete query, submits it, and waits for a server to process the request and return a full page of results, a process that had to be repeated iteratively if the results were unsatisfactory (’073 Patent, col. 1:15-2:30).
  • The Patented Solution: The invention claims a client-server system that breaks this loop using asynchronous communication (Compl. ¶11). As a user types, the client object sends messages representing the "lengthening string of characters" to a server system (Compl. ¶17). The server receives this incremental input and asynchronously returns matching information, allowing for near-instant feedback without a full page reload (’073 Patent, Abstract; col. 2:40-50). The client then tests the usability of the returned results before displaying them to the user (’024 Patent, col. 36:17-23).
  • Technical Importance: This asynchronous approach allows for search results to be provided "much faster and more efficiently than prior computer systems," thereby improving the functionality of the computer system by reducing latency and improving the timeliness of results (Compl. ¶13-14).

Key Claims at a Glance

  • The complaint asserts independent Claim 1 (Compl. ¶48).
  • Essential elements of Claim 1 include:
    • A server system configured to receive query messages from a client object, where the query messages represent a lengthening string of characters as a user provides input.
    • The server system, while receiving the messages, uses the input to query available data and sends return messages to the client with results.
    • The client object receives the return messages and tests the usability of the results by comparing the message to the then-current input or matching it with a request identification.
    • If usability is established, the results are returned to the user.
  • The complaint does not explicitly reserve the right to assert dependent claims for this patent.

U.S. Patent No. 9,760,628 - “System and Method for Asynchronous Client Server Session Communication,” Issued Sep. 12, 2017

The Invention Explained

  • Problem Addressed: As with the related ’024 Patent, this patent addresses the inefficiencies of the traditional, synchronous "request-response loop" in internet search (Compl. ¶9; ’073 Patent, col. 1:15-2:30).
  • The Patented Solution: The invention describes an asynchronous client-server communication system where incremental user input is sent to a server, which returns results in near-real time (Compl. ¶11-13). This patent's asserted claim specifically adds a server-side caching element, where the server caches query results to avoid repeating the same query to an underlying data source, thereby improving efficiency (’628 Patent, col. 34:47-56).
  • Technical Importance: Adding a server-side cache improves the operation of the server system by enabling common search requests to be fulfilled more quickly while using fewer system resources (Compl. ¶14).

Key Claims at a Glance

  • The complaint asserts independent Claim 13 (Compl. ¶53).
  • Essential elements of Claim 13 include:
    • A server system configured to asynchronously receive query messages representing a lengthening string of characters from a client object.
    • The server system uses the input to query available data and sends return messages with results to the client.
    • The server system caches query results.
    • The server system subsequently determines results by looking up the query in the cache to avoid performing a redundant query on a data source.
  • The complaint does not explicitly reserve the right to assert dependent claims for this patent.

Multi-Patent Capsule: U.S. Patent No. 10,311,073

  • 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.
  • Technology Synopsis: The patent describes a system to overcome the limitations of the "Request-Response Loop" in network applications (’073 Patent, col. 2:31-34). It provides for a client and server to communicate asynchronously, where the server receives incremental text-based input from the client and returns matching information from various "content channels" that query underlying data sources like databases or search engines (’073 Patent, Abstract).
  • Asserted Claims: The complaint asserts infringement of at least Claim 1 (Compl. ¶58).
  • Accused Features: The complaint alleges that Facebook Predictive Search and Facebook Applications infringe by practicing the inventions disclosed in the patent (Compl. ¶58).

Multi-Patent Capsule: U.S. Patent No. 10,394,866

  • Patent Identification: U.S. Patent No. 10,394,866, “System and Method for Asynchronous Client Server Session Communication,” Issued Aug. 27, 2019.
  • Technology Synopsis: The patent discloses a session-based, bi-directional, and multi-tier client-server system for asynchronous search (’866 Patent, Abstract). The system sends a character-by-character string from a client to a server, which is configured to immediately analyze the lengthening string and return "increasingly appropriate database information" to the client as the string is being sent (’866 Patent, Abstract).
  • Asserted Claims: The complaint asserts infringement of at least Claim 1 (Compl. ¶63).
  • Accused Features: The complaint alleges that Facebook Predictive Search and Facebook Applications infringe by practicing the inventions disclosed in the patent (Compl. ¶63).

III. The Accused Instrumentality

Product Identification

  • The accused instrumentalities are "Facebook Predictive Search," which includes the "Facebook Typeahead" functionality on Facebook's full and mobile websites, and "Facebook Applications" for iOS and Android mobile platforms (Compl. ¶26-28). The complaint identifies Facebook's backend system known as "Unicorn" as supporting this functionality (Compl. ¶26-27).

Functionality and Market Context

  • The accused functionality provides search suggestions to a user in real-time as the user types characters into a search field (Compl. ¶29). The complaint includes a screenshot illustrating that as a user types "Spe," a dropdown list appears with suggestions like "spencer hosie" and "spectrum cable" (Compl. ¶29, p. 10). Another screenshot shows the underlying network communication, depicting a "GET" request sent from the client to the server containing the partial query "value: ["Spe"]" (Compl. ¶29, p. 10). This functionality is a core feature of Facebook's website and mobile applications, which are primary platforms for user engagement (Compl. ¶26-27).

IV. Analysis of Infringement Allegations

’024 Patent 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... whereby the query messages represent the lengthening string of characters as additional characters are being input to the client object by a user... Facebook’s server system, identified as Unicorn, is configured to receive HTTP GET requests from a client (e.g., a web browser) containing the partial string being typed by a user. ¶26, ¶29 col. 36:1-8
wherein the server system, while receiving said query messages, uses the input to query data available to the server object and send return messages to the client object containing results in response to the input... The Facebook server processes the partial input (e.g., "Spe") and sends a return message containing a data payload with search suggestions (e.g., "spencer"). ¶29 col. 36:8-12
and wherein, upon receiving a return message... the client object tests the usability of the results in the return message by comparing the return message to the then-current input or matching it with a request identification... and if usability is established, the results are returned to the user. The complaint does not provide sufficient detail for analysis of how the client object specifically tests the usability of results before displaying them. ¶48 col. 36:13-23
  • Identified Points of Contention:
    • Technical Questions: The final element of Claim 1 requires an active step by the "client object" to "test[] the usability of the results." The complaint makes a conclusory allegation of infringement but does not provide specific facts or evidence showing how Facebook's client-side code performs this specific function. A key question will be what technical evidence demonstrates that the client does more than simply display the data payload received from the server.

’628 Patent Infringement Allegations

Claim Element (from Independent Claim 13) Alleged Infringing Functionality Complaint Citation Patent Citation
A system comprising: a server system... which is configured to receive query messages from a client object... whereby the query messages represent the lengthening string as additional characters are being input by the user... Facebook’s server system (Unicorn) receives asynchronous requests from a client containing the user's lengthening string of characters. ¶26, ¶29 col. 34:25-39
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... The Facebook server processes the input and sends back results, such as predictive search suggestions. ¶29 col. 34:39-43
wherein the server system caches query results and subsequently determines results by looking up the query in said cache so that it can avoid performing a query for the same input on a data source... The complaint does not provide sufficient detail for analysis of how the server system specifically caches results from predictive searches to avoid querying a data source. ¶53 col. 34:47-53
  • Identified Points of Contention:
    • Technical Questions: A central limitation of Claim 13 is the server-side caching of query results to avoid redundant queries to an underlying data source. The complaint alleges this element is met but provides no specific technical evidence, such as architectural diagrams or descriptions of Facebook's caching mechanisms for its "Typeahead" feature. The infringement analysis may turn on whether discovery reveals evidence of this specific caching functionality.

V. Key Claim Terms for Construction

  • The Term: "tests the usability of the results" (’024 Patent, Claim 1)

  • Context and Importance: This term is critical because it describes an action performed by the client, not the server. Infringement of Claim 1 requires proof that Facebook's client-side code (e.g., JavaScript in a browser) performs this specific active step. The dispute will likely center on what level of client-side logic constitutes a "test" for "usability."

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The claim language itself offers two alternative methods for the test: "comparing the return message to the then-current input or matching it with a request identification" (’024 Patent, col. 36:17-20). This suggests usability can be established simply by confirming that received results are not stale and correspond to the query that is currently in the input field.
    • Evidence for a Narrower Interpretation: The specification describes a complex client-server object model involving "Questers" and a specific communication protocol (’866 Patent, FIG. 4). A party may argue that the "test" requires more than a simple string comparison and should be interpreted in the context of this more structured protocol, where "usability" is determined through the exchange of specific request/response identifiers and state information.

  • The Term: "query messages" (’024 Patent, Claim 1)

  • Context and Importance: The complaint defines this term as representing "the lengthening string of characters" (Compl. ¶17). The construction of this term will determine the scope of communications covered by the patent. Practitioners may focus on this term because if it is construed broadly, it could cover any asynchronous HTTP request containing partial user input, whereas a narrower construction might limit it to a specific, proprietary message format.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The patent's summary and background focus on the high-level concept of sending "incremental text-based input" to a server to overcome the "Request-Response Loop," suggesting the specific format is less important than the asynchronous, incremental nature of the communication (’073 Patent, Abstract; col. 2:31-34).
    • Evidence for a Narrower Interpretation: The detailed description discloses specific client-side and server-side objects ("Quester," "Questlet," "Controller") that exchange information through a defined protocol (’866 Patent, FIG. 2, FIG. 4). A party could argue that "query messages" should be construed as the specific messages exchanged between these disclosed objects, not as a generic term for any client-server request.

VI. Other Allegations

  • Willful Infringement: The complaint alleges that Facebook has willfully infringed both pre- and post-suit (Compl. ¶41). The basis for pre-suit knowledge includes allegations that: (1) a Facebook employee spoke with MasterObjects representatives in March 2012 (Compl. ¶32); (2) in February 2015, a U.S. patent examiner cited a MasterObjects patent application (from the same family as the patents-in-suit) during the prosecution of two of Facebook’s own patents related to predictive search (Compl. ¶34); and (3) Facebook continued to infringe after being made aware of the MasterObjects patent family and after the ’024 patent survived an IPR challenge (Compl. ¶38-39, 44). Post-suit willfulness is based on notice provided by the original complaint filed on February 5, 2020 (Compl. ¶40).

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

  • A core issue will be one of evidentiary proof: can Plaintiff, through discovery, produce technical evidence from Facebook's source code and system architecture to demonstrate that the accused products practice the specific client-side "usability test" required by the '024 patent and the server-side "caching" method of the '628 patent, for which the complaint currently lacks detailed factual support?
  • A second key question will be one of definitional scope: will claim terms like "tests the usability" and "query messages" be construed broadly to cover the general functionality of modern asynchronous web applications, or will they be limited by the court to the specific object models and communication protocols detailed in the patent specifications?
  • A final focus of the case will be willfulness: given the allegation that the U.S. Patent and Trademark Office directly cited Plaintiff's technology to Facebook during the prosecution of its own patents, a central question will be whether this constitutes pre-suit knowledge sufficient to support a finding of egregious conduct and potential enhanced damages.