DCT
1:17-cv-00706
Express Mobile Inc v. Salzer Tech Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Express Mobile, Inc. (Delaware)
- Defendant: Salzer Technologies, Inc. (Delaware)
- Plaintiff’s Counsel: Devlin Law Firm LLC; Brent Coon & Associates, P.C.
- Case Identification: 1:17-cv-00706, D. Del., 06/09/2017
- Venue Allegations: Venue is alleged to be proper in the District of Delaware because the Defendant is a corporation organized and existing under the laws of Delaware.
- Core Dispute: Plaintiff alleges that Defendant’s use of website building platforms infringes patents related to browser-based website generation tools and their corresponding run-time engines.
- Technical Context: The technology at issue concerns systems and methods that allow a user to create and generate a website within a web browser, which then produces a database and associated files that dynamically render the site for end-users.
- Key Procedural History: The complaint notes that in a prior case against a different defendant (KTree Computer Solutions), a magistrate judge in the Eastern District of Texas recommended denying a motion that the patents-in-suit were invalid as abstract under 35 U.S.C. § 101. The complaint also alleges that Defendant was notified of the patents and its alleged infringement on November 13, 2015.
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 |
| 2009-09-22 | U.S. Patent No. 7,594,168 Issues |
| 2015-11-13 | Plaintiff allegedly provides pre-suit notice to Defendant |
| 2017-06-09 | 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 describes conventional website construction tools as cumbersome, requiring significant user skill and operating as applications separate from the web browser itself. It notes that languages like HTML and JavaScript were not originally designed for complex, dynamic applications, leading to performance and scalability issues. (’397 Patent, col. 1:11-45).
- The Patented Solution: The invention proposes a browser-based "build engine" that allows a user to design a website entirely within a browser interface. This tool generates an object database that stores the website's structure, content, and styles. This database is then paired with a customized "run time engine." When an end-user visits the website, their browser loads a shell file which calls the run time engine; the engine in turn reads the database and dynamically constructs and displays the web pages. (’397 Patent, Abstract; col. 5:10-23).
- Technical Importance: This architecture aimed to separate the design environment from the execution environment, enabling more dynamic, platform-independent website creation without requiring users to directly manipulate code. (’397 Patent, col. 2:21-34).
Key Claims at a Glance
- The complaint asserts infringement of independent claims 1 and 37.
- Independent Claim 1 (Method):
- Presenting a selectable settings menu through a browser.
- At least one setting corresponds to a command for a "virtual machine."
- Generating a display based on selected settings.
- Storing information for the selected settings in a database.
- Generating a website by retrieving that information.
- Building web pages and a "run time file" which uses the stored information to generate "virtual machine commands" for display.
- Independent Claim 37 (Apparatus):
- An interface for building a website, operable through a browser to present menus and generate a display via commands to a "virtual machine."
- An "internal database" associated with the interface for storing settings information.
- A "build tool" to construct web pages, which has an "external database" with corresponding data and "run time files" that use the external database information to generate "virtual machine commands."
- The complaint reserves the right to assert other claims, including dependent claims. (Compl. ¶19).
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 problems of conventional website authoring tools being inflexible and not fully leveraging the browser environment. (’168 Patent, col. 1:21-57).
- The Patented Solution: The invention describes a system for assembling a website composed of objects (e.g., buttons, images) and associated styles. A server with a "build engine" accepts user input to define styles, including dynamic properties like "transformations and time lines." The system produces a "multidimensional array" database containing all the object and style data, which a "runtime engine" then uses to generate the final website for a visitor's browser. (’168 Patent, Abstract; col. 2:27-41).
- Technical Importance: This patent emphasizes an object-oriented approach where the entire website is defined by a collection of objects and their associated styles, allowing for complex and dynamic visual effects to be managed systematically. (’168 Patent, col. 2:27-34).
Key Claims at a Glance
- The complaint asserts infringement of independent claim 1.
- Independent Claim 1 (System):
- A system with a server and a "build engine" for assembling a website.
- The website comprises web pages with objects (e.g., button or image object).
- The server accepts input to associate a style with objects, where the style can include values defining "transformations and time lines."
- Each web page is defined entirely by the objects and their associated styles.
- The system produces a "database with a multidimensional array" defining the objects, styles, and page structure.
- The database is provided to a server accessible to a web browser, where a "runtime engine" generates the website from the database.
- The complaint reserves the right to assert other claims, including dependent claims. (Compl. ¶84).
III. The Accused Instrumentality
Product Identification
- The "Accused Instrumentalities" are identified as website building tools used by the Defendant, including "all versions of Magento Enterprise Edition and all versions of Wordpress." (Compl. ¶19).
Functionality and Market Context
- The complaint alleges that these are browser-based tools that enable users to build websites through a visual, WYSIWYG (What You See Is What You Get) editor. (Compl. ¶22). Users select elements and define their properties (e.g., text color, alignment, font), and this information is stored in a database. (Compl. ¶22). The tools then use this stored data along with runtime files (such as PHP, JavaScript, and CSS files) to generate the final HTML pages that are rendered in a visitor's browser. (Compl. ¶22, ¶89). The complaint alleges Defendant is a for-profit organization that uses these tools to build websites for its customers, thereby generating revenue. (Compl. ¶20). No probative visual evidence provided in complaint.
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 method... comprising: (a) presenting, through a browser, a viewable menu of a user selectable panel of settings to describe elements on a... website... | The Accused Instrumentalities present a "website store-builder tool" through a browser. A user can navigate a dashboard to screens like "Manage Products" and use a "visual editing tool." | ¶22 | col. 6:10-14 |
| wherein at least one of said user selectable settings in said panel corresponds to commands to said virtual machine; | Modern browsers are alleged to include "virtual machines" (e.g., JavaScript engines). The HTML generated by the accused tools is alleged to represent "virtual machine commands" because it is interpreted by the browser's engine to render the page. | ¶22 | col. 66:10-14 |
| (c) means for storing information... representative of a plurality of said one or more user selected settings; and | User selections for elements like text color, layout, image filenames, and paragraph margins are alleged to be stored in a database. | ¶22 | col. 6:18-20 |
| (d) means for building one or more web pages... from at least a portion of said database and at least one run time file, where said at least one run time file utilizes... 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 are alleged to build web pages using a database and "at least one run time file." These files (e.g., PHP, JavaScript) allegedly use the stored database information to generate the final HTML, which in turn acts as "virtual machine commands" for the browser's rendering engine. | ¶22 | col. 66:15-23 |
U.S. Patent No. 7,594,168 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A system for assembling a web site comprising a server with a build engine... | The Accused Instrumentalities are described as server-based systems used by Defendant to build websites for customers. | ¶84, ¶85 | col. 5:40-42 |
| the server accepting user input to associate a style with objects, wherein... a style that includes values defining transformations and time lines; | The accused tools are alleged to use CSS libraries, "CSS-animations and CSS-transitions... for adding transformations and timelines to selected elements," including child buttons and images. | ¶95 | col. 64:25-30 |
| 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 that each object is part of... | The complaint alleges that JSON strings used by the accused tools reflect a "multidimensional array structured database." It further alleges that data such as object styles (e.g., font, size) and the page an object belongs to are stored in a CSS database file. | ¶87, ¶88 | col. 64:31-36 |
| and provide the database to a server accessible to web browser; wherein the database is produced such that a web browser with access to a runtime engine is configured to generate the web site from the objects and style data... | The complaint alleges that the accused tools include customized runtime files (an HTML file and a CSS file) and that a browser with a runtime engine (e.g., JavaScript engine) uses the data from the database to generate the website. | ¶85, ¶89 | col. 65:1-6 |
Identified Points of Contention
- Scope Questions: A primary dispute may arise over the meaning of "virtual machine." The patents were filed in an era where this term often connoted a Java Virtual Machine, whereas the complaint alleges infringement by modern JavaScript engines in browsers (Compl. ¶22). The court will need to determine if the claim term, in the context of the patent, is broad enough to cover the accused technology.
- Scope Questions: The definition of "run time file" (’397 Patent) and "runtime engine" (’168 Patent) raises another question. The patents describe creating a "customized and optimized" engine for each site (’397 Patent, Fig. 25), while the accused products use more generalized components like standard PHP, CSS, and JavaScript libraries. Whether these standard components meet the "customized" nature suggested by the specification may be a central issue.
- Technical Questions: The complaint's assertion that the accused databases are "multidimensional array structured" relies on an interpretation of JSON strings (Compl. ¶27, ¶87). This presents a factual question of whether the actual database architecture of Magento and Wordpress meets this specific limitation, which would likely require expert testimony.
V. Key Claim Terms for Construction
The Term: "virtual machine" (’397 Patent, Claim 1)
- Context and Importance: This term is foundational to the infringement theory. The complaint equates modern browser JavaScript engines with the claimed "virtual machine." The outcome of the case may depend heavily on whether this interpretation is adopted. Practitioners may focus on this term because its meaning has evolved since the patent's 1999 priority date.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the build engine as being written in "a fully featured programming language (e.g., JAVA)" (’397 Patent, col. 2:23-24). The use of "e.g." (for example) suggests that Java is merely an exemplary embodiment, not a limiting one, potentially allowing the term to cover other execution environments like a JavaScript engine.
- Evidence for a Narrower Interpretation: The detailed description frequently refers to technologies closely associated with the Java platform at the time, such as "JAVA Applet," "JAR file," and "CAB file" (’397 Patent, col. 5:17-20; col. 7:59-62). A defendant may argue these repeated, specific examples show that the inventors contemplated a Java-like virtual machine, not a general-purpose script interpreter.
The Term: "multidimensional array structured database" (’168 Patent, Claim 1)
- Context and Importance: This term defines the specific structure of the database required by the claim. The infringement allegation relies on equating JSON strings with this structure (Compl. ¶87). The technical accuracy of this mapping will be a critical point of proof for the plaintiff.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claims themselves do not specify the type of database management system, only its logical structure. Plaintiff may argue that any data structure that organizes information in a multi-level or nested fashion, like JSON, meets the "multidimensional array" requirement.
- Evidence for a Narrower Interpretation: Figure 24 of the ’397 patent (incorporated by reference into the ’168 patent family) depicts "Write Array Structures" into distinct record types (Boolean, Integer, Multimedia, String). A defendant could argue this implies a more rigid, typed array structure than the flexible key-value pairing found in JSON, and that the accused database must reflect this specific implementation. (’397 Patent, Fig. 24).
VI. Other Allegations
Indirect Infringement
- The complaint focuses on allegations of direct infringement, stating that "Defendant, its employees and/or agents utilize the Accused Instrumentalities in the building of websites for Defendant's customers." (Compl. ¶20). The allegations do not appear to articulate a separate theory of indirect infringement against third parties.
Willful Infringement
- The complaint alleges that Defendant had knowledge of both the ’397 and ’168 patents and their alleged infringement "at least as early as its receipt of correspondence from Plaintiff" on November 13, 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 the patent specification heavily associates with Java Applets from the late 1990s, be construed broadly enough to read on the modern JavaScript engines embedded in web browsers, as alleged in the complaint? The case's viability may hinge on the answer.
- A key technical question will be one of structural correspondence: does the database architecture of the accused Magento and Wordpress platforms, which the complaint claims is evidenced by JSON strings, actually implement the "multidimensional array structured database" required by the ’168 patent?
- A central point of dispute will likely be the nature of the accused components: do the standardized, server-side scripts (e.g., PHP) and client-side libraries (e.g., CSS, JS) of the accused platforms constitute the "build tool" that generates a "customized run time file," as the patent specification appears to describe, or is there a fundamental mismatch between the off-the-shelf nature of the accused tools and the bespoke generation process claimed by the patents?