DCT

1:17-cv-00965

TMI Solutions LLC v. Bath & Body Works Direct Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:17-cv-00965, D. Del., 07/17/2017
  • Venue Allegations: Venue is alleged to be proper in the District of Delaware because the Defendant is a Delaware corporation.
  • Core Dispute: Plaintiff alleges that Defendant’s website infringes two patents related to methods for a remote computer system to automatically identify a user across separate communication sessions.
  • Technical Context: The technology concerns the use of client-side tokens to maintain user identity and state between distinct interactions, a foundational mechanism for modern e-commerce, user personalization, and session management.
  • Key Procedural History: The complaint does not reference any prior litigation, Inter Partes Review (IPR) proceedings, or licensing history related to the patents-in-suit.

Case Timeline

Date Event
1994-05-31 Priority Date for ’077 and ’078 Patents
2016-11-01 U.S. Patent No. 9,484,077 Issues
2016-11-01 U.S. Patent No. 9,484,078 Issues
2017-07-17 Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 9,484,077 - Providing Services from a Remote Computer System to a User Station over a Communications Network

The Invention Explained

  • Problem Addressed: The patent's background describes the difficulty and expense of distributing timely updates for electronic publications (e.g., those on CD-ROMs) (’077 Patent, col. 1:33-51). Existing online services were described as having complex interfaces, inflexible charging models, and poor integration with locally stored content, making them unsuitable for mass-market updates (’077 Patent, col. 2:21-62).
  • The Patented Solution: The invention proposes a method where a remote computer system interacts with a previously unknown user station. The remote system receives initial information, sends back a unique identifier ("second information") which is stored on the user's machine, and stores corresponding user data ("third information") remotely. In subsequent sessions, the user's machine automatically sends the identifier back to the remote system, which uses it to retrieve the stored user data and continue the interaction seamlessly. (’077 Patent, Abstract; col. 5:22-46).
  • Technical Importance: This method automates user identification for repeat interactions without requiring manual logins, forming a basis for persistent user sessions, personalization, and streamlined e-commerce. (’077 Patent, col. 4:46-54).

Key Claims at a Glance

  • The complaint asserts at least dependent Claim 6, which relies on independent Claim 1 (Compl. ¶11).
  • Independent Claim 1 recites a method with the following essential elements:
    • Receiving first user identification information at a remote computer system during a first session from a user station not previously identified.
    • Sending second information, which is a function of the first information, from the remote system to the user station to be stored automatically.
    • Storing third information, based on the first information, at a location remote from the user station.
    • Receiving the second information during a subsequent session automatically from the user station.
    • Retrieving the stored third information using the received second information.
    • Using the retrieved third information for interaction with the remote system.
  • Dependent Claim 6 adds the limitation that "the third information includes user purchase instructions." (’077 Patent, col. 62:3-5).

U.S. Patent No. 9,484,078 - Providing Services from a Remote Computer System to a User Station over a Communications Network

The Invention Explained

  • Problem Addressed: The ’078 Patent shares a specification with the ’077 Patent and addresses the same technical problems related to updating electronic content and identifying users across sessions (’078 Patent, col. 1:33-51, col. 2:21-62).
  • The Patented Solution: The solution is substantively the same as that of the ’077 Patent, focusing on a method where an identifier stored on a user's machine enables automated recognition by a remote server in later sessions (’078 Patent, Abstract).
  • Technical Importance: As with the ’077 Patent, the method enables persistent, personalized user experiences without requiring repeated authentication.

Key Claims at a Glance

  • The complaint asserts at least independent Claim 1 and dependent Claim 2 (Compl. ¶19).
  • Independent Claim 1 recites a method with the following essential elements:
    • Receiving second information at a remote computer system during a second user-initiated session.
    • The user station triggers automatically sending the second information to the remote computer system.
    • Retrieving previously stored third information at the remote computer system.
    • Matching at least a portion of the received second information with the stored third information.
  • Dependent Claim 2 adds limitations specifying that the second information is used by the remote system as a "station identifier" and that this identifier serves as a "surrogate for a user identifier." (’078 Patent, col. 61:1-5).

III. The Accused Instrumentality

Product Identification

The website of Defendant Bath & Body Works Direct, Inc. (Compl. ¶11, ¶19).

Functionality and Market Context

The complaint alleges that the accused instrumentality is the Defendant's website and, specifically, its "use of cookies in conjunction with its website" (Compl. ¶11, ¶19). The complaint does not provide further technical details about the specific implementation of cookies on the website or describe the user-facing functionality that relies on this cookie-based system.

IV. Analysis of Infringement Allegations

The complaint references claim chart exhibits that were not provided with the pleading (Compl. ¶11, ¶19). The infringement theory is therefore summarized based on the narrative allegations.

  • ’077 Patent Infringement Allegations: The complaint alleges that Defendant’s website infringes at least Claim 6 through its use of cookies (Compl. ¶11). A potential infringement theory would map the lifecycle of a web cookie to the claimed method steps. For a new visitor ("user station not previously identified"), the website might receive initial information (e.g., from an HTTP request), set a cookie on the user's browser ("sending second information... to be stored automatically"), and store corresponding user data on its servers ("storing third information"). On a subsequent visit, the user's browser would automatically include the cookie in its request ("receiving the second information... automatically"), which the server could then use to retrieve the user's stored data ("retrieving the stored third information") to personalize the session.
  • ’078 Patent Infringement Allegations: The complaint alleges that the website's use of cookies also infringes Claims 1 and 2 (Compl. ¶19). A potential theory would contend that a user's web browser "triggers automatically sending" the cookie (the "second information") when it requests a page from Defendant's domain. The server then receives this cookie and "matche[s]" it against its database to retrieve stored user information. Per Claim 2, this cookie would function as a "station identifier" that serves as a "surrogate for a user identifier," allowing the website to recognize the visitor without a formal login.

No probative visual evidence provided in complaint.

Identified Points of Contention

  • Scope Questions: The infringement theory may raise the question of whether a standard web browser's handling of cookies, which is subject to user settings and may not be controlled by the remote server, meets the claim limitation of being "stored automatically at the user station" (’077 Patent, Claim 1). A dispute could arise over the degree of control the remote system must exert to satisfy the "storing" step.
  • Technical Questions: For the ’077 Patent, a key question may be what specific "first user identification information" is received from a "not previously identified" user station that serves as the basis for the "second information" (the cookie). For the ’078 Patent, the analysis may focus on whether the user's browser or the "user station" itself performs the claimed step of "trigger[ing] automatically sending the second information."

V. Key Claim Terms for Construction

  • The Term: "stored automatically at the user station" (’077 Patent, Claim 1)

  • Context and Importance: The construction of this term is central to determining whether the remote server performs the claimed action. Practitioners may focus on this term because Defendant could argue that its server merely sends an HTTP header suggesting a cookie be set, and it is the user's independent browser software that performs the actual "storing" based on its own configuration.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The specification's general description of providing a "software-only" solution for information distribution that is compatible with diverse user systems could support a construction where "stored automatically" encompasses any process initiated by the server that results in storage, regardless of the intermediate agent (e.g., the browser) (’077 Patent, col. 4:3-14).
    • Evidence for a Narrower Interpretation: The detailed description of the "inventive information transport component 14" being "embedded or contained in the containing information product 12" could suggest a system where the client-side component is more directly controlled by the remote server than a standard, general-purpose web browser (’077 Patent, col. 7:6-12).

  • The Term: "triggers automatically sending" (’078 Patent, Claim 1)

  • Context and Importance: This term is critical for identifying the agent responsible for initiating the communication in a subsequent session. The dispute will likely center on whether the Defendant's system causes this action or if it is an independent function of the user's browser when requesting a resource from a domain for which it holds a cookie.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The patent's focus on creating a seamless user experience where updates are fetched "without any user intervention" could support a broad reading where any automated client-side action that returns the identifier in response to user navigation qualifies as being "trigger[ed] automatically" (’078 Patent, col. 8:35-41).
    • Evidence for a Narrower Interpretation: The patent describes a "transporter" component that handles communications, which could imply a specific software agent distinct from a general web browser is performing the triggering action, potentially narrowing the claim's scope (’078 Patent, col. 7:7-9).

VI. Other Allegations

The complaint contains counts only for direct infringement under 35 U.S.C. § 271(a) (Compl. ¶10, ¶18). The complaint does not allege indirect infringement or willful infringement.

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

  • A core issue will be one of agency and control: Does a remote web server, by sending standard HTTP Set-Cookie headers, perform the claimed actions of causing information to be "stored automatically" and "trigger[ing] automatically sending," or are these actions performed by the user's independent browser software in a manner that breaks the chain of infringement?
  • A second central question will be one of definitional scope: Can the patent's description of a client-side "information transport component" be construed broadly enough to read on a user's general-purpose, third-party web browser, or does the specification limit the claims to a more specific, integrated software component as described in the embodiments?
  • An evidentiary question will be one of factual mapping: Assuming the claim terms are construed broadly, what specific evidence will show that the Defendant's system performs the entire sequence of claimed steps, beginning with an interaction with a "not previously identified" user station and proceeding through each subsequent step of the patented method?