DCT
1:17-cv-00705
Express Mobile Inc v. Mobikasa LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Express Mobile, Inc. (Delaware)
- Defendant: Mobikasa, LLC (Delaware)
- Plaintiff’s Counsel: Devlin Law Firm LLC; Brent Coon & Associates, P.C.
- Case Identification: 1:17-cv-00705, D. Del., 06/09/2017
- Venue Allegations: Venue is alleged to be proper in the District of Delaware because Defendant is a corporation organized and existing under the laws of Delaware.
- Core Dispute: Plaintiff alleges that Defendant’s use of website building platforms, namely Magento and Wordpress, infringes patents related to browser-based tools for generating dynamic websites.
- Technical Context: The technology relates to website authoring systems that separate a website's design elements and content into a database, which is then used by a run-time engine to dynamically generate the final web pages in a user's browser.
- Key Procedural History: The complaint notes that the asserted patents were subject to a patent eligibility challenge under 35 U.S.C. § 101 in a prior case against a different defendant. In that case, a Magistrate Judge recommended denial of the invalidity motion, finding the claims were directed to solving a problem particular to the internet, and that recommendation became a final, unobjected-to order.
Case Timeline
| Date | Event |
|---|---|
| 1999-12-02 | Priority Date for ’397 Patent and ’168 Patent |
| 2003-04-08 | Issue Date for U.S. Patent No. 6,546,397 |
| 2009-09-22 | Issue Date for U.S. Patent No. 7,594,168 |
| 2015-09-25 | Date of alleged pre-suit notice to Defendant |
| 2017-06-09 | 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”
The Invention Explained
- Problem Addressed: The patent describes conventional website creation methods using HTML and scripting languages as having "numerous inherent limitations," particularly for supporting multimedia applications, and notes that creating complex, published web applications in HTML and Javascript is "virtually impossible" (Compl. ¶11; ’397 Patent, col. 1:15-23).
- The Patented Solution: The invention proposes a browser-based system where a "build tool" allows a user to design a website through a visual interface. The user's selections (e.g., for objects, styles, multimedia) are stored in an "object database." This database is then packaged with a customized "run time engine" and uploaded to a web server. When a visitor accesses the site, their browser calls the run-time engine, which reads the database and dynamically generates the complete website, decoupling the site's content and logic from the static presentation layer (’397 Patent, Abstract; Fig. 2).
- Technical Importance: The technology aimed to simplify the creation of dynamic, interactive, and media-rich websites by moving away from manual, line-by-line coding in HTML and toward a more powerful, object-oriented, database-driven authoring paradigm that could run within a standard browser (’397 Patent, col. 2:50-59).
Key Claims at a Glance
- The complaint asserts independent claims 1 (method), 2 (apparatus), and 37 (apparatus) (’397 Patent, col. 65:40-66:31, 67:40-69:13; Compl. ¶19).
- Independent Claim 1 (Method) requires:
- Presenting a user-selectable panel of settings through a browser.
- Generating a display in accordance with the selected settings.
- Storing information representative of the settings in a database.
- Generating a website by retrieving the stored information.
- Building web pages and a run-time file, which uses the stored information to generate "virtual machine commands" for display.
- Independent Claim 2 (Apparatus) requires:
- An interface to present a settings menu.
- A browser to generate a display based on selected settings.
- A database for storing information from the settings.
- A build tool with a run-time file for generating web pages by using the stored information to generate "commands to the virtual machine."
- The complaint also asserts dependent claims 3-6, 9-11, 14-15, 17, 20, 23-25, and 35, and reserves the right to assert others (Compl. ¶19).
U.S. Patent No. 7,594,168 - “Browser Based Web Site Generation Tool and Run Time Engine”
The Invention Explained
- Problem Addressed: As a continuation of the ’397 patent, this patent addresses the same problem: the limitations of conventional web technologies in creating dynamic, rich-media websites, noting that HTML and Javascript were not designed for such applications and suffer from performance and capability issues (’168 Patent, col. 1:21-48).
- The Patented Solution: The patent describes a system for assembling a website where a server with a "build engine" accepts user input to associate styles, including "transformations and time lines," with objects like buttons or images. This information is stored in a "multidimensional array" database. A web browser with access to a "runtime engine" is then configured to generate the final website by extracting the object and style data from this database (’168 Patent, Abstract; col. 64:1-21).
- Technical Importance: This invention provides a more detailed system-level description for creating modern web features like animations and interactive states by defining them as properties of objects stored in a structured database, rather than hard-coding them into individual pages (’168 Patent, col. 2:59-3:4).
Key Claims at a Glance
- The complaint asserts independent claim 1 (system) (Compl. ¶84).
- Independent Claim 1 (System) requires:
- A server with a build engine.
- Web pages comprising objects (e.g., buttons, images).
- The server accepting user input to associate a style with objects, where the style includes values for "transformations and time lines."
- Producing a "multidimensional array" database containing the objects, their styles, and page locations.
- Providing the database to a server accessible to a web browser.
- A web browser with a "runtime engine" configured to generate the website from the data in the database.
- The complaint also asserts dependent claims 2-6 (Compl. ¶84).
III. The Accused Instrumentality
Product Identification
The "Accused Instrumentalities" are identified as website building tools used by the Defendant, specifically including "all versions of Magento Enterprise Edition and all versions of Wordpress" (Compl. ¶19).
Functionality and Market Context
- The complaint alleges that these tools are browser-based platforms that enable users to build websites through visual editing tools and selectable settings menus (Compl. ¶¶6, 11). For example, a user can navigate a dashboard, use a WYSIWYG editor to select font and paragraph styles, and upload images, with the display updating to reflect these changes (Compl. ¶6).
- It is alleged that user-selected information, such as text color, layout, and image filenames, is stored in a database (Compl. ¶7). The platforms then use runtime files (e.g., PHP, JavaScript, PHTML, XML) to retrieve this stored information and generate the final HTML for the website, which is then rendered by the user's browser (Compl. ¶7).
- The complaint asserts that Defendant is a for-profit entity that utilizes these tools to build websites for its customers, generating substantial revenue (Compl. ¶20).
- No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
’397 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| (a) presenting, through a browser, a viewable menu of a user selectable panel of settings describing elements... | The accused tools present a website store-builder tool or dashboard (e.g., the "Manage Products" screen) to a user through a web browser. | ¶22 | col. 66:5-14 |
| (b) generating a display in accordance with one or more user selected settings substantially contemporaneously with the selection thereof... | The display within the visual editing tool (e.g., WYSIWYG editor) updates to reflect user selections for options like image alignment or font styles. | ¶22 | col. 66:15-18 |
| (c) storing information representative of one or more user selected settings in a database; | Selections for text color, layout, image filenames, and paragraph margins are stored in a database. | ¶22 | col. 66:19-21 |
| (d) generating a website at least in part by retrieving said information from said database; | The accused tools build web pages to generate a website by retrieving the stored user selections from the database. | ¶22 | col. 66:22-24 |
| (e) building one or more web pages to generate said website and at least one run time file, where 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 said one or more web pages. | The accused tools use runtime files (PHP, JavaScript) that access the database to generate HTML, which the complaint alleges are "virtual machine commands" read by the browser's engine (a "virtual machine") to render the page. | ¶22 | col. 66:25-31 |
Identified Points of Contention
- Scope Question: A primary issue is whether a modern browser's JavaScript engine constitutes a "virtual machine" as the term is used in the patent. The complaint alleges it does (Compl. ¶22), but the patent's focus on Java and applets may suggest the inventors contemplated a more specific technology, such as a Java Virtual Machine (JVM).
- Technical Question: It is a question for the court whether the HTML and JavaScript generated by the accused platforms for browser rendering are technically equivalent to the "virtual machine commands" generated by the "run time file" as described in the patent. The patent appears to teach a distinct, packaged run-time engine, which may differ from the collection of server-side (PHP) and client-side scripts used by the accused products.
’168 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a system for assembling a website comprising a server with a build engine... | The Magento and Wordpress platforms are alleged to be systems operating on a server that functions as a build engine. | ¶85 | col. 64:1-2 |
| wherein a button or image object is associated with a style that includes values defining transformations and time lines; | The accused tools allegedly use CSS libraries, animations, and transitions to define styles for objects that include transformations and timelines, such as for a "banner-rotator" feature. | ¶95 | col. 64:6-8 |
| produce a database with a multidimensional array comprising the objects that comprise the web site including data defining the object style, number, and an indication of the web page... | The complaint alleges that JSON strings used by the accused tools reflect a "multidimensional array structured database" and that the tools store data defining object styles, numbers, and page locations. | ¶87, ¶88 | col. 64:11-15 |
| 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 accused tools are alleged to produce a database from which a browser, using runtime files like HTML and CSS, can generate the final website. | ¶85, ¶89 | col. 64:17-21 |
Identified Points of Contention
- Scope Question: The claim requires a "multidimensional array" database. The complaint's evidence for this is an allegation that "JSON strings... reflect the database structure" (Compl. ¶87). Whether the actual database architecture of Magento or Wordpress meets the specific "multidimensional array" limitation as taught in the patent will be a key factual dispute.
- Technical Question: The claim recites a "runtime engine" that generates the website. Whether the combination of server-side scripts, client-side scripts, and the browser itself in the accused systems collectively constitute the claimed "runtime engine" is a potential point of contention.
V. Key Claim Terms for Construction
"virtual machine" (’397 Patent, Claims 1, 2, 37)
- Context and Importance: This term is fundamental to the infringement theory. Plaintiff’s allegation that modern browser JavaScript engines are "virtual machines" is a critical, and potentially contentious, step in mapping the accused products onto the claims. The patent's validity and infringement scope may turn on this definition.
- Evidence for a Broader Interpretation: The complaint cites dictionary definitions to support a broad meaning (Compl. ¶22). The patent itself does not provide an explicit definition, which may support an argument that the term should be given its plain and ordinary meaning at the time of the invention, which could encompass any software that creates a virtualized environment for code execution.
- Evidence for a Narrower Interpretation: The patent specification repeatedly discusses the invention in the context of "JAVA," "Javascript," "applets," and "JAR/CAB files" (’397 Patent, col. 1:49-57, col. 8:23-27), technologies closely associated with the Java Virtual Machine (JVM). A defendant may argue this context limits the term "virtual machine" to a JVM or a similar, more substantial execution environment than a standard JavaScript interpreter.
"run time file" (’397 Patent, Claim 1) / "runtime engine" (’168 Patent, Claim 1)
- Context and Importance: The patents describe a specific architecture where a "build tool" generates a distinct "run time file" or "engine" that is then deployed. Whether the collection of standard web files (PHP, CSS, JS) used by Magento and Wordpress constitutes this claimed element is a central infringement question.
- Evidence for a Broader Interpretation: The specification describes the run time engine's function as reading the database and executing the website (’397 Patent, Fig. 2). A plaintiff could argue that any collection of code that performs this function, regardless of its specific format, meets the limitation.
- Evidence for a Narrower Interpretation: The patent describes a process to "create customized and optimized runtime engine" and package it into "CAB/JAR files" (’397 Patent, col. 7:59-8:1, col. 8:23-27). This suggests a unitary, compiled, and optimized software component, which may be structurally different from the disaggregated script files and server-side interpreters used by the accused platforms.
VI. Other Allegations
Willful Infringement
The complaint alleges that Defendant had knowledge of the ’397 and ’168 patents and its alleged infringement "at least as early as its receipt of correspondence from Plaintiff" on September 25, 2015 (Compl. ¶¶72, 103). Based on this alleged pre-suit notice, the complaint asserts that Defendant's infringement since that date has been willful (Compl. ¶¶73, 104).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "virtual machine," which appears in patents heavily focused on the Java ecosystem of the late 1990s, be construed to cover the ubiquitous JavaScript engines embedded in modern web browsers? The outcome of this claim construction dispute may be dispositive for the ’397 patent.
- A key evidentiary question will be one of architectural correspondence: do the accused platforms, which use a combination of server-side processing (e.g., PHP) and standard client-side scripts (JS, CSS), practice the specific patented architecture of a "build tool" that generates a discrete, packaged "run time file" or "engine" for generating a website from a "multidimensional array" database? The analysis will require a deep technical comparison of how the systems actually operate versus what the patent claims.
- A third question relates to patent eligibility: although a prior court order found the claims were not "merely do-it-on-a-computer claims" (Compl. ¶17), the defense of invalidity under 35 U.S.C. § 101 will almost certainly be raised again. The court will have to analyze whether the claims, which are directed to the process of building websites on a computer, are sufficiently rooted in a specific technological solution to a technological problem to be patent-eligible.