DCT
1:18-cv-01169
Express Mobile Inc v. Born Group Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Express Mobile, Inc. (Delaware)
- Defendant: Born Group Inc. (Delaware)
- Plaintiff’s Counsel: Devlin Law Firm LLC
- Case Identification: 1:18-cv-01169, D. Del., 08/03/2018
- Venue Allegations: Venue is asserted based on Defendant’s incorporation in the State of Delaware.
- Core Dispute: Plaintiff alleges that Defendant’s use of website building tools, such as Drupal and Wordpress, infringes patents related to browser-based website generation systems that use a database to store user-selected elements and a run-time engine to render the final site.
- Technical Context: The patents address database-driven, browser-based website authoring tools, a technological approach that serves as a foundation for modern content management systems (CMS).
- Key Procedural History: The complaint notes that in a prior case in the Eastern District of Texas (C.A. 2:17-cv-00128), a Magistrate Judge recommended denying a defendant’s motion to invalidate the asserted patents under 35 U.S.C. § 101, finding the claims appeared to address a problem particular to the internet and were not merely "do-it-on-a-computer" claims.
Case Timeline
| Date | Event |
|---|---|
| 1999-12-02 | Earliest 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 |
| 2018-08-03 | 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 building tools of its time as "cumbersome," "inefficient," and having "limited computational power," particularly when dealing with multimedia applications. It notes that HTML and scripting languages were not designed for creating sophisticated applications and that their use for dynamic content was slow and inefficient. (’397 Patent, col. 1:10-26).
- The Patented Solution: The invention proposes a browser-based system that separates the design process from the final website execution. A user interacts with a "build tool" within their browser to select and arrange website elements in a WYSIWYG (What You See Is What You Get) manner. These user-selected settings and element properties are stored in an object database. A separate "run time engine" is then generated, which reads the information from the database to construct and display the final, interactive website. (’397 Patent, Abstract; Fig. 2).
- Technical Importance: This architecture represented a move away from manually coding static HTML pages toward a more dynamic, database-driven content management paradigm, all operable within a web browser. (’397 Patent, col. 2:41-50).
Key Claims at a Glance
- The complaint asserts independent claims 1, 2, and 37. (Compl. ¶19).
- Independent Claim 1 (Method):
- A method for producing websites on computers with browsers and virtual machines.
- Presenting a user-selectable settings panel through a browser.
- Storing information from user selections in a database.
- Generating a website by retrieving that stored information.
- Building web pages and at least one "run time file."
- The run time file uses the stored information to generate "virtual machine commands" for displaying the web pages.
- Independent Claim 2 (Apparatus):
- An interface to present a settings menu.
- A browser to generate a display based on selected settings.
- A database for storing information about the selected settings.
- A "build tool" with one or more run time files for generating web pages using the stored information.
- Independent Claim 37 (Apparatus):
- An interface operable through a browser for building a website by presenting a settings menu, accepting settings, and generating a display.
- An "internal database" associated with the interface for storing settings information.
- A "build tool" to construct web pages, having an "external database" and run time files that use information from the external database.
- The complaint reserves the right to assert various 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 '397 patent, the '168 Patent addresses the same inefficiency and cumbersomeness of prior art website creation tools. (’168 Patent, col. 1:21-29).
- The Patented Solution: This patent focuses on a system for assembling a website from a "plurality of objects" (e.g., buttons, images). A server-side "build engine" accepts user input to associate styles, including dynamic properties like "transformations and time lines," with these objects. The system then generates a "multidimensional array" database that defines the objects, their styles, and their placement. This database is provided to a web browser, where a runtime engine uses the structured data to render the complete website. (’168 Patent, Abstract; col. 2:58-67).
- Technical Importance: The invention refines the database-driven concept by specifying a more structured, object-oriented approach to defining website content and behavior, enabling more complex styling and animations.
Key Claims at a Glance
- The complaint asserts independent claim 1. (Compl. ¶89).
- Independent Claim 1 (System):
- A system with a server and a "build engine."
- The website is comprised of web pages with a plurality of objects.
- The server accepts user input to associate a "style" with objects, where the style includes values for "transformations and time lines."
- The system produces a "database with a multidimensional array" comprising the objects and their style data.
- This database is provided to a server accessible to a web browser, which uses a "runtime engine" to generate the website from the database.
- The complaint reserves the right to assert dependent claims 4 and 6. (Compl. ¶89).
III. The Accused Instrumentality
Product Identification
The "Accused Instrumentalities" are identified as website building tools used or provided by the Defendant, specifically naming "Drupal and/or Wordpress." (Compl. ¶19, ¶89).
Functionality and Market Context
- The complaint alleges these are browser-based tools that enable users to build websites through a graphical interface or "dashboard" without directly writing code. (Compl. ¶23). It is alleged that user selections for layout, content, and styling are stored in a database. (Compl. ¶24, ¶31). When a visitor accesses a website built with these tools, "runtime files" (e.g., PHP, JavaScript) allegedly retrieve the stored information from the database to generate the final HTML, which is then rendered by the visitor's browser. (Compl. ¶25-26).
- The complaint alleges that the accused systems' use of JSON strings to format data reflects the "multidimensional array structured database" taught by the '168 patent. (Compl. ¶92). A screenshot of a data structure, cited as "Field.png", is referenced to show evidence of this multidimensional database structure. (Compl. ¶38, ¶92).
- The complaint alleges Defendant is a for-profit entity that uses these tools to build and host websites for its customers, generating revenue from these services. (Compl. ¶20).
IV. Analysis of Infringement Allegations
'397 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a method...on and for computers with browsers and virtual machines... | Modern internet browsers (e.g., Chrome, Firefox) are alleged to include virtual machines, such as JavaScript engines, that interpret and execute code. | ¶22 | col. 1:50-60 |
| presenting, through a browser, a viewable user selectable settings panel of settings to describe elements on a web page... | The Accused Instrumentalities present a "dashboard" or "website-builder tool" in a browser, allowing users to select and configure website elements. | ¶23 | col. 9:15-20 |
| storing information representative of one or more user selected settings in a database; | User selections for layout, text color, image filenames, and other properties are alleged to be stored in a database. | ¶24 | col. 6:3-6 |
| generating a website at least in part by retrieving said information stored in said database; | The accused tools are alleged to build web pages by dynamically retrieving the user-configured information from the database at runtime. | ¶24 | col. 7:41-45 |
| building one or more web pages to generate said website and at least one run time file... | The accused systems are alleged to use various runtime files, including PHP, JavaScript, and XML files, in their file directory. | ¶26 | col. 8:14-18 |
| wherein said 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. | At runtime, PHP and JavaScript files allegedly use information from the database to generate HTML, which the complaint defines as "virtual machine commands" that are executed by the browser's engine. | ¶25 | col. 8:18-25 |
'168 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A system for assembling a website, said system comprising a server with a build engine... | The accused Drupal and Wordpress systems are alleged to operate on a server that includes a build engine to create and apply styles and assemble the website. | ¶84, ¶90 | col. 5:6-9 |
| ...the website comprising web pages with a plurality of objects, wherein at least one of said plurality of objects is one button object or one image object... | The accused tools are alleged to allow users to add various objects to web pages, including buttons and images. | ¶90 | col. 2:15-18 |
| ...the server accepting user input to associate a style with one or more of said plurality of objects, wherein a button object or image object is associated with a style that includes values defining one or more of transformations and time lines... | The accused tools are alleged to use CSS libraries to add transformations and timelines (animations) to elements like buttons and images. | ¶59, ¶90 | col. 7:4-7 |
| ...produce a database with a multidimensional array comprising the objects that comprise the web site... | The complaint alleges that JSON strings used by the accused systems originate from the database and reflect the implementation of a "multidimensional array structured database." | ¶92 | col. 2:5-7 |
| ...provide the database to a server accessible to a web browser; 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 completed website is alleged to include runtime files (e.g., HTML, CSS) that allow a web browser's engine to render the site using the style and object data originating from the database. | ¶94 | col. 7:22-31 |
Identified Points of Contention
- Scope Questions: A central issue may be whether the term "virtual machine," as understood in 1999 when the patent was filed (often referring to a Java Virtual Machine), can be construed to read on the JavaScript engines embedded in modern web browsers, as the complaint alleges.
- Technical Questions: The infringement theory for the '168 patent hinges on whether the relational databases typically used by Drupal and Wordpress (e.g., MySQL) meet the "multidimensional array structured database" limitation. The complaint's reliance on the structure of outputted JSON strings (Compl. ¶92) raises the question of whether the claim requires the database itself to have this structure, or if it is sufficient that the system can generate data in such a format.
V. Key Claim Terms for Construction
The Term: "virtual machine" ('397 Patent)
- Context and Importance: This term's construction is critical for infringement. Plaintiff's theory requires this term, from a 1999 patent, to cover modern browser-based JavaScript engines. Practitioners may focus on this term because the patent's specification contains numerous references to JAVA and applets, technologies contemporary to its filing, which could be used to argue for a narrower definition than what Plaintiff alleges.
- Intrinsic Evidence for a Broader Interpretation: The abstract and summary describe the invention in general terms of a "browser based build engine" without explicitly limiting the type of underlying execution environment. (’397 Patent, Abstract; col. 2:41-45).
- Intrinsic Evidence for a Narrower Interpretation: The specification frequently references technologies like "JAVA object 'applets'," "JAR file," and "CAB/JAR file," suggesting the inventors may have contemplated a Java Virtual Machine (JVM) or a similar, more heavyweight environment than a script interpreter. (’397 Patent, Fig. 2; col. 1:58-60).
The Term: "multidimensional array structured database" ('168 Patent)
- Context and Importance: The accused systems typically use relational databases. Plaintiff's infringement case depends on mapping this architecture to the claimed "multidimensional array" structure, primarily by pointing to JSON outputs. The case may turn on whether this claim term refers to the underlying storage architecture or the logical structure of the data as it is processed and output.
- Intrinsic Evidence for a Broader Interpretation: The patent family specification discusses storing "multi-dimensional arrays of various multimedia objects" as a type of data, which could be interpreted as describing the logical data model rather than a required physical database technology. (’397 Patent, col. 2:7-9).
- Intrinsic Evidence for a Narrower Interpretation: The patent figures depict a distinct block labeled "Build Engine's Multi-Dimensional Array Structured Data Base," suggesting it is a specific architectural component, not merely a description of data format. (’397 Patent, Fig. 3a, element 358). A defendant could argue this implies a specific database type is required.
VI. Other Allegations
Indirect Infringement
The complaint alleges that Defendant induces infringement by, for example, "offer[ing] website building and/or hosting services at reduced pricing as an inducement to attract customers, who then purchase additional products or services." (Compl. ¶20). The complaint does not detail specific instructions or manuals provided by Defendant to its customers that would direct them to perform the claimed steps.
Willful Infringement
Willfulness is alleged based on Defendant’s knowledge of the patents "at least as early as the filing of this Complaint." (Compl. ¶77, ¶100). This appears to be an allegation of post-filing willfulness.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: Can terms conceived in the late 1990s, such as "virtual machine," be construed to cover technologically evolved but functionally related counterparts like modern JavaScript engines? Similarly, does a system that uses a relational database but outputs structured data (e.g., JSON) meet the claim requirement of a "multidimensional array structured database"?
- A key evidentiary question will be one of architectural mapping: Can the distributed, modular, and open-source nature of platforms like Drupal and Wordpress be mapped element-for-element onto the more integrated "build tool" and "run time engine" architecture described in the patents, or will the defense be able to establish a fundamental mismatch in their technical operation and design?