TMI Solutions LLC v. Victoria's Secret Stores Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: TMI Solutions LLC (Michigan)
  • Defendant: Victoria’s Secret Stores, Inc. and L Brands, Inc. (Delaware)
  • Plaintiff’s Counsel: Devlin Law Firm LLC; Nelson Bumgardner PC
• Case Identification: 1:17-cv-00969, D. Del., 07/17/2017
• Venue Allegations: Plaintiff alleges venue is proper in the District of Delaware because Defendants are incorporated in Delaware.
• Core Dispute: Plaintiff alleges that Defendants’ e-commerce websites infringe two patents related to methods for identifying a user’s computer across separate communication sessions using locally stored identifiers.
• Technical Context: The technology at issue is foundational to modern e-commerce, enabling websites to recognize returning users for purposes such as maintaining shopping carts and personalizing content, a functionality commonly implemented using HTTP cookies.
• Key Procedural History: The complaint does not mention any prior litigation, Inter Partes Review proceedings, or licensing history related to the patents-in-suit.

Case Timeline

Date	Event
1994-05-31	'077 and '078 Patents – Earliest Priority Date
2016-11-01	'077 and '078 Patents – Issue Date
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 Computer Network"

• Patent Identification: U.S. Patent No. 9,484,077, "Providing Services from a Remote Computer System to a User Station over a Computer Network," issued November 1, 2016.

The Invention Explained

• Problem Addressed: The patent describes a technological environment of early online services (e.g., CompuServe, Prodigy) and CD-ROM-based software, noting the difficulty of integrating remotely downloaded information with locally stored content and the complexity of user interactions required for online sessions (’077 Patent, col. 1:24-48). The implicit technical problem is the lack of a persistent state or automated user recognition between separate connections to a remote server.
• The Patented Solution: The invention proposes a method where, during a first session with a user, a remote computer system receives identifying information, sends back a different piece of information to be stored on the user's machine (a "user station"), and stores a third piece of information on the remote system that is associated with the first (’077 Patent, Abstract). In a subsequent session, the user's machine automatically provides the stored information, allowing the remote system to retrieve the user's associated data and continue the interaction seamlessly (’077 Patent, col. 5:35-46).
• Technical Importance: This method of creating a persistent identifier on a client machine to be automatically recognized by a server in later sessions became a foundational mechanism for enabling stateful interactions over a stateless protocol, a cornerstone of modern e-commerce and web personalization.

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 computer-implemented method with the following essential elements:
  • Receiving first user identification information at a remote computer system from a user station during a first session.
  • Sending second information, which is a function of the first information, to the user station to be stored automatically.
  • Storing third information, based on the first information, at a location remote from the user station.
  • During a subsequent session, automatically receiving the second information from the user station.
  • Retrieving the stored third information using the received second information.
  • Using the retrieved third information for interaction with the remote computer system during the subsequent session.

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

• Patent Identification: U.S. Patent No. 9,484,078, "Providing Services from a Remote Computer System to a User Station over a Computer Network," issued November 1, 2016.

The Invention Explained

• Problem Addressed: The ’078 Patent addresses the same technical problems as its companion ’077 Patent: the challenge of maintaining user context and identity across discrete communication sessions in early networked computing environments (’078 Patent, col. 1:24-48).
• The Patented Solution: The solution is functionally identical to that of the ’077 Patent, describing a method where a remote server establishes a persistent, automatically retrievable identifier on a user's computer during an initial session with a previously unknown user (’078 Patent, Abstract). This allows the server to recognize the user in subsequent sessions without requiring repeated manual identification.
• Technical Importance: As with the ’077 patent, this technology provided a method for automated user recognition, which is a critical building block for personalized online services and e-commerce.

Key Claims at a Glance

• The complaint asserts independent claim 1 and dependent claim 2 (Compl. ¶19).
• Independent Claim 1 recites a computer-implemented method with the following essential elements:
  • Receiving first information at a remote computer system from a user station not previously identified to the system.
  • Sending second information, which is a function of and different from the first information, to the user station to be stored automatically.
  • Storing third information, based on the first information, at a location remote from the user station.
  • During a subsequent session, automatically receiving the second information from the user station.
  • Retrieving the stored third information using the received second information.
  • Using the retrieved third information for interaction during the subsequent session.
• The complaint reserves the right to assert additional claims (Compl. ¶10, ¶18).

III. The Accused Instrumentality

Product Identification

• The accused instrumentalities are the websites operated by Defendants Victoria's Secret Stores, Inc. and L Brands, Inc. (Compl. ¶11, ¶19).

Functionality and Market Context

• The complaint alleges that the accused websites infringe by practicing the claimed methods "via Defendants' use of cookies in conjunction with their websites" (Compl. ¶11, ¶19). Cookies are small data files stored by a web browser on a user's computer that allow a website's server to identify the user's browser upon a return visit. This functionality is widely used in e-commerce to manage user sessions, maintain shopping cart contents, and store user preferences.
• The complaint does not provide sufficient detail for analysis of the accused products' commercial importance or market positioning.

IV. Analysis of Infringement Allegations

The complaint does not provide the claim-chart exhibits it references. The narrative infringement theory is summarized below. No probative visual evidence provided in complaint.

’077 Patent Infringement Allegations

• The complaint alleges that Defendants infringe at least claim 6 of the ’077 Patent by "practicing and/or using hardware that practices the computer implemented method... via Defendants' use of cookies in conjunction with their websites" (Compl. ¶11). The complaint states that evidence of this infringement is detailed in a claim chart attached as Exhibit 2, which was not provided with the public filing (Compl. ¶11).

’078 Patent Infringement Allegations

• The complaint alleges that Defendants infringe at least claims 1 and 2 of the ’078 Patent through the same mechanism: the use of cookies in conjunction with their websites (Compl. ¶19). Evidence for this allegation is purportedly contained in a claim chart attached as Exhibit 4, which was also not provided with the public filing (Compl. ¶19).

Identified Points of Contention

• Scope Questions: A central dispute may arise over whether the claims, rooted in a 1994 priority date and a specification describing pre-web technologies like CD-ROMs and services like Prodigy, can be construed to read on modern e-commerce websites operating over the World Wide Web using the HTTP protocol and browser-managed cookies (’077 Patent, col. 1:33-50).
• Technical Questions: The claims require the "second information" (the cookie) to be a "function of" the "first information" received from the user. A technical question for the court will be what evidence demonstrates this functional relationship. If the accused cookies are, for example, randomly generated identifiers, a dispute may arise as to whether they are a "function of" any specific information initially received from the user station, as required by the claim language. The complaint does not specify what it considers the "first information."

V. Key Claim Terms for Construction

• The Term: "user station"

  • Context and Importance: This term appears in the asserted independent claims of both patents. Its construction will be critical to determining the scope of the invention. Practitioners may focus on this term because the specification's context of early personal computers connected to dial-up services and using CD-ROMs could support a narrow construction, while the generality of the term itself could support a broader construction covering modern devices like smartphones and tablets running web browsers.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claims themselves do not limit the "user station" to any particular type of hardware. The specification discusses communication over a generic "communications network," which could include modern networks (’077 Patent, col. 7:46-54).
    • Evidence for a Narrower Interpretation: The Background section frames the invention in the context of "personal digital assistants (PDA's) such as Apple Corp.'s NEWTON® product" and notes the limitations of services like "PRODIGY, COMPUSERVE and AMERICA ONLINE" (’077 Patent, col. 2:18-24). This language may be used to argue that a "user station" is limited to the types of computing devices prevalent in that specific technological era.

• The Term: "second information that is a function of the first... information"

  • Context and Importance: This functional limitation is a core element of the asserted independent claims. The infringement analysis will depend heavily on whether the accused cookie values are generated in a manner that satisfies this "function of" requirement.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification does not explicitly define "function of." A party could argue for a broad interpretation where the second information is simply generated in response to or in association with the first information, without requiring a direct mathematical or cryptographic relationship.
    • Evidence for a Narrower Interpretation: A party could argue that the plain and ordinary meaning of "function of" in a technical context implies a direct, deterministic relationship where the first information is an input that produces the second information as an output (e.g., via a hashing algorithm). The patent does not provide specific embodiments that clarify this relationship, making its construction a likely focus of expert testimony.

VI. Other Allegations

The complaint alleges only direct infringement under 35 U.S.C. § 271(a) and does not contain allegations to support indirect or willful infringement.

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

• Definitional Scope: A core issue will be whether claim terms like "user station" and "communication session," which originate from a 1994 priority date and are described in the context of pre-web online services, can be construed to encompass modern e-commerce interactions conducted via web browsers over the Internet. The outcome of this claim construction battle will likely determine the reach of the patents.
• Functional Operation: A key evidentiary question will be one of technical causality: does the plaintiff's evidence show that the unique identifiers stored in Defendants' cookies are a "function of" specific initial information received from a user, as strictly required by the claims? The complaint's lack of detail on this point suggests that establishing this technical nexus will be a central and potentially dispositive challenge in the litigation.