DCT
4:17-cv-05576
Talsk Research Inc v. Evernote Corp
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Talsk Research Inc. (Delaware)
- Defendant: Evernote Corporation (Delaware)
- Plaintiff’s Counsel: Spence, P.C.
- Case Identification: 1:16-cv-02167, N.D. Ill., 09/16/2016
- Venue Allegations: Plaintiff alleges venue is proper because Defendant Evernote Corporation regularly transacts business in the Northern District of Illinois.
- Core Dispute: Plaintiff alleges that Defendant’s Evernote platform, including its Web Clipper feature, infringes a patent related to a method and system for archiving and retrieving online reference material to combat the decay of internet citations.
- Technical Context: The technology addresses the problem of "link rot," where hyperlinks in documents become obsolete as the linked web content is altered or removed, by creating a persistent, verifiable archive of the content at the time it is cited.
- Key Procedural History: The complaint alleges that the patent’s inventor, Srikrishna Talluri, met with and presented his "JotLingo" product, which practiced the patent, to Evernote's COO in June 2012. The complaint further alleges that six months later, Evernote launched new features that copied the patented technology. This alleged pre-suit knowledge forms the basis for the willfulness claim.
Case Timeline
| Date | Event |
|---|---|
| 2000-11-13 | '097 Patent Priority Date |
| 2007-02-13 | '097 Patent Issue Date |
| 2012-06-08 | Talsk inventor emails Evernote's COO regarding "JotLingo" product and patents |
| 2012-06-13 | Talsk inventor presents "JotLingo" to Evernote's COO |
| 2012-08-24 | Date of Evernote blog post allegedly showing incorporation of new features |
| 2016-09-16 | Second Amended Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,178,097 - Method And System For Using A Communications Network To Archive And Retrieve Bibliography Information And Reference Material
- Issued: February 13, 2007
The Invention Explained
- Problem Addressed: The patent’s background section identifies the problem that online sources like websites are "fluid" and "ever modifiable," which "does not guarantee availability and true verification of the material actually used by the author" in a manuscript ('097 Patent, col. 2:15-19). This phenomenon undermines the integrity of citations.
- The Patented Solution: The invention proposes a system where an "author" can cite an online source and have it archived. The author transmits the address of a website to a database, which then obtains and stores a "verbatim" copy of the site as it existed at that moment ('097 Patent, col. 6:15-32). The database associates this archived copy with a "distinctive key," which the author includes in the manuscript's bibliography. A reader ("audience") can later use this key to request and receive the exact, time-stamped copy from the database, ensuring accurate verification regardless of subsequent changes to the live website ('097 Patent, FIG. 2).
- Technical Importance: The invention provides a technical framework for authenticating and preserving ephemeral digital information, extending the traditional, stable function of a bibliography to the dynamic environment of the internet ('097 Patent, col. 2:3-6).
Key Claims at a Glance
- The complaint asserts independent method claims 8, 19, and 23 (Compl. ¶24).
- Independent Claim 8: A method for archiving reference material, comprising the steps of:
- An author transmitting a website address to a database.
- The database obtaining a verbatim copy of the website.
- Associating a distinctive key with the copy.
- Storing the copy and key at the database.
- The author citing the website with the distinctive key in a manuscript.
- An audience obtaining the key and transmitting it to the database to request the copy.
- The database transmitting the stored copy to the audience.
- Independent Claim 19: A method for archiving a website, comprising the steps of:
- Transferring a website's identification and a verbatim copy to a database.
- Associating a unique key with the copy.
- Storing the copy with the unique key.
- An author citing the website with the unique key in a manuscript.
- An audience using the unique key to request and retrieve the stored copy from the database.
- The complaint reserves the right to assert dependent claims, specifically alleging infringement of claims 9, 14, 15, and 24 (Compl. ¶¶ 40, 41, 43, 45).
III. The Accused Instrumentality
Product Identification
- The "Evernote platform, including Evernote Web Clipper," collectively referred to as the "Evernote Reference Preservation System" (Compl. ¶24).
Functionality and Market Context
- The complaint alleges the accused system allows users to capture web content using the "Web Clipper" browser extension (Compl. ¶31). This captured content is stored in the user's Evernote account. The user can then create "text notes" (alleged to be "manuscripts") and insert a link to the stored content (Compl. ¶¶27, 29). The complaint alleges this link is an "Evernote created URL" that functions as the claimed "distinctive or unique key," allowing the user or others to retrieve the saved web content from the Evernote database (Compl. ¶34). The complaint alleges Evernote markets this functionality for team research, enabling content to be "available and shareable forever in Evernote" (Compl. ¶33).
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
'097 Patent Infringement Allegations (Claim 8)
| Claim Element (from Independent Claim 8) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| an author... transmitting the address of the webs site to a database connected to the Internet | Evernote users use a computer to transmit the address of a website to the Evernote database via the Web Clipper. | ¶31 | col. 10:41-44 |
| the database obtaining a copy of the web site from the Internet... such that the copy... is verbatim | The Evernote database obtains a copy of the website that is "verbatim to the website as on the Internet... at the time the user transmitted or transferred the web site address." | ¶31 | col. 10:45-48 |
| associating a distinctive key to the copy of the web site | Evernote's system associates or assigns a "distinctive or unique key" to the copy of the website, where the key is an "Evernote created URL that links to another note." | ¶34 | col. 10:48-49 |
| storing at the database the copy of the web site with the distinctive key | The Evernote system stores the copy of the website along with the distinctive key in the Evernote database. | ¶34 | col. 10:50-52 |
| the author citing the web site as being a reference for the manuscript by listing... the distinctive key in the bibliography of the manuscript | Users are directed to cite the website in a manuscript ("text note") by listing the website identification along with the distinctive key (the Evernote URL). | ¶36 | col. 10:53-58 |
| an audience of the manuscript obtaining the distinctive key from the bibliography of the manuscript | A user viewing the manuscript ("text note") obtains the distinctive key (the Evernote URL) from the note. | ¶38 | col. 11:1-3 |
| the audience transmitting the distinctive key to the database... to request the database for the copy of the web site | The viewing user transmits the key (by clicking the URL) to the Evernote database to request the copy of the website. | ¶38 | col. 11:4-6 |
| the database transmitting a copy of the stored copy of the web site to the audience | The Evernote database transmits a copy of the stored website in response to the request. | ¶38 | col. 11:7-13 |
'097 Patent Infringement Allegations (Claim 19)
| Claim Element (from Independent Claim 19) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| transferring identification of a web site... to a database | Users transfer a website's identification to the Evernote database via the Web Clipper feature. | ¶31 | col. 13:16-19 |
| transferring a copy of the web site from the web to the database... such that the copy... is verbatim | The Evernote system transfers a verbatim copy of the website to the Evernote database. | ¶31 | col. 13:20-24 |
| associating a unique key with the copy of the web site | Evernote's system assigns a unique key, an "Evernote created URL," to the copy of the website. | ¶34 | col. 13:25-26 |
| storing the copy of the web site with the unique key in the database | The system stores the copy of the website along with the unique key in the Evernote database. | ¶34 | col. 13:27-28 |
| the author citing the web site as being a reference for the manuscript by listing the unique key in the manuscript | Users are directed to create a "text note" (manuscript) and cite the website by including the unique key (the Evernote URL). | ¶36 | col. 13:29-31 |
| an audience... transmitting the unique key to the database in order to request the database for the copy of the web site | A user viewing the note transmits the key to the Evernote database to request the stored copy. | ¶38 | col. 13:32-35 |
| transferring a copy of the stored copy of the web site from the database to the audience | The Evernote database transfers the stored copy to the user in response to the request. | ¶38 | col. 13:36-39 |
- Identified Points of Contention:
- Scope Questions: The infringement theory raises the question of whether an informal "text note" created within the Evernote application (Compl. ¶29) qualifies as a "manuscript" as that term is used in the patent, which provides context such as "books and research papers" ('097 Patent, col. 1:19-20). It also raises the question of whether an "Evernote created URL that links to another note" (Compl. ¶34) is equivalent to the "distinctive key" taught by the patent, which is described as an identifier associated with an archived copy ('097 Patent, col. 4:37-39).
- Technical Questions: The complaint alleges the captured copy is "verbatim" (Compl. ¶31), but provides no technical detail on how the Evernote Web Clipper functions. A key factual question is whether the accused system creates a truly "verbatim" copy as required by the claims, or a simplified or otherwise altered version of the webpage.
V. Key Claim Terms for Construction
The Term: "manuscript"
- Context and Importance: This term is foundational to the patent's purpose and the infringement case. The dispute may turn on whether an Evernote "text note" (Compl. ¶29) falls within the scope of "manuscript." Practitioners may focus on this term because its construction could either limit the patent to formal publications or extend it to cover modern forms of digital writing.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not explicitly define "manuscript," which may support an argument for its plain and ordinary meaning as any written work. The patent's application to varied reference types like e-mails and digital files could suggest a broader context than just formal papers ('097 Patent, col. 9:20-22).
- Evidence for a Narrower Interpretation: The "Background Art" section repeatedly frames the context around formal documents, stating "Authors of manuscripts and documents such as books and research papers frequently cite material" and discussing the "bibliography section" and "referees of research papers" ('097 Patent, col. 1:19-20; col. 2:4-5). This could support a narrower construction limited to more structured, formal works intended for an audience.
The Term: "distinctive key" / "unique key"
- Context and Importance: This term defines the mechanism for retrieving the archived content. Infringement depends on whether the accused "Evernote created URL" (Compl. ¶34) functions as this "key." The construction will determine if a functional hyperlink is the same as the identifier contemplated by the patent.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the key's function as enabling retrieval of a specific archived copy, a function that a unique URL arguably performs ('097 Patent, col. 4:31-34). The term itself is not narrowly defined, potentially allowing for various forms of identifiers.
- Evidence for a Narrower Interpretation: The patent describes associating the key with the copy, and an author listing the key in the manuscript ('097 Patent, col. 10:53-58). An example provided is an alphanumeric string, "WebSiteChannelA1" ('097 Patent, FIG. 5), which suggests an identifier rather than a functional, embedded link. This could support an interpretation that the "key" is a piece of data used for lookup, distinct from the transport mechanism itself.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement under 35 U.S.C. §271(b), asserting that Evernote instructs its corporate users on how to use the "Evernote Reference Preservation System" in an infringing manner through advertising and instructions available on its website (Compl. ¶¶ 50-51). Specific instructions cited include how to "create text notes" and use the "Web Clipper" (Compl. ¶¶ 53-54).
- Willful Infringement: The willfulness allegation is based on alleged pre-suit knowledge of the patent and infringing conduct. The complaint details communications in June 2012, where the inventor allegedly disclosed his patented "JotLingo" technology to Evernote's COO and CEO, followed by Evernote's alleged incorporation of the patented features into its own products (Compl. ¶¶ 14-22, 58).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "manuscript," rooted in the patent’s context of formal research papers and bibliographies, be construed to cover the informal "text notes" created within the accused Evernote platform? This question extends to whether a functional hyperlink like the accused "Evernote created URL" meets the definition of a "distinctive key" as taught by the patent.
- A central dispute will likely involve the theory of divided infringement: since the patented methods involve actions by both an "author" and an "audience" (the users), as well as the "database" (Evernote's servers), the case will turn on whether Plaintiff can prove that Evernote "directs or controls" its users' performance of the method steps sufficiently to attribute all steps to Evernote under the standards for direct infringement.
- A key evidentiary question will be one of technical fidelity: does the accused Evernote Web Clipper in fact create a "verbatim" copy of a webpage as strictly required by the asserted claims, or does it capture a simplified, altered, or otherwise non-verbatim version? The outcome of this factual inquiry could be dispositive for the literal infringement analysis.