DCT
1:19-cv-00439
Shopify Inc v. Express Mobile Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Shopify Inc. (Canada) and Shopify (USA), Inc. (Delaware)
- Defendant: Express Mobile, Inc. (Delaware)
- Plaintiff’s Counsel: McCarter & English, LLP; Durie Tangri LLP
- Case Identification: 1:19-cv-00439, D. Del., 03/01/2019
- Venue Allegations: Venue is alleged to be proper in the District of Delaware because Defendant [Express Mobile, Inc.](https://ai-lab.exparte.com/party/express-mobile-inc) is a Delaware corporation and thus resides in the district.
- Core Dispute: Plaintiff seeks a declaratory judgment that its e-commerce software platform and mobile applications do not infringe four of Defendant's patents related to browser-based website generation tools and systems for presenting information on mobile devices.
- Technical Context: The patents-in-suit relate to technologies for simplifying website creation and for developing cross-platform mobile applications, foundational areas for the modern e-commerce and mobile software industries.
- Key Procedural History: The complaint alleges that this action was precipitated by a December 20, 2018 demand letter from Express Mobile accusing Shopify of infringement. This follows what the complaint characterizes as an "industry-wide patent litigation campaign" by Express Mobile, involving over 50 lawsuits against Shopify's competitors since 2015. Notably, subsequent to the filing of this complaint, U.S. Patent No. 6,546,397, one of the patents-in-suit, has been the subject of inter partes review and ex parte reexamination proceedings at the U.S. Patent and Trademark Office, which resulted in the cancellation of asserted claim 1.
Case Timeline
| Date | Event |
|---|---|
| 1999-12-02 | U.S. Patent Nos. 6,546,397 & 7,594,168 Priority Date |
| 2000-11-20 | ’397 Patent inventor assignment to Akira Technologies, Inc. |
| 2003-04-08 | U.S. Patent No. 6,546,397 Issued |
| 2008-04-07 | U.S. Patent Nos. 9,063,755 & 9,471,287 Priority Date |
| 2009-04-06 | ’287 Patent inventor assignment to Express Mobile |
| 2009-04-07 | ’755 Patent inventor assignment to Express Mobile |
| 2009-09-22 | U.S. Patent No. 7,594,168 Issued |
| 2012-02-23 | ’397 & ’168 Patents assigned to Express Mobile, Inc. |
| 2015-06-23 | U.S. Patent No. 9,063,755 Issued |
| 2016-01-01 | Shopify (USA), Inc. was formed |
| 2016-10-18 | U.S. Patent No. 9,471,287 Issued |
| 2018-12-20 | Express Mobile sends letter to Shopify accusing it of infringement |
| 2019-03-01 | Complaint for Declaratory Judgment 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"
- Patent Identification: U.S. Patent No. 6,546,397, "Browser based web site generation tool and run time engine," issued April 8, 2003 (the "’397 Patent"). (Compl. ¶11).
The Invention Explained
- Problem Addressed: The patent's background describes conventional website building tools as requiring substantial programming knowledge (e.g., HTML, JavaScript), resulting in applications that are platform-dependent, slow, and possess limited multimedia capabilities. (’397 Patent, col. 1:15-46).
- The Patented Solution: The invention proposes a browser-based system with two main components: a "build tool" and a "run time engine." A user interacts with the build tool through a WYSIWYG interface to design a website. This process creates an "object database" containing the site's content and structure, along with a customized run time engine that contains the logic for displaying it. When a visitor accesses the website, the browser calls the run time engine, which reads the database and executes the website. (’397 Patent, Fig. 2; col. 5:35-61).
- Technical Importance: The technology aimed to democratize web development by separating a site's content from its presentation logic, allowing users with little programming skill to create dynamic, media-rich websites. (’397 Patent, col. 1:47-57).
Key Claims at a Glance
- The complaint seeks a declaratory judgment of non-infringement of at least claim 1. (Compl. ¶30).
- Independent Claim 1 of the ’397 Patent recites a method with essential elements including:
- presenting a viewable menu of a user selectable panel of settings to describe elements on a website;
- generating a display in accordance with user selected settings;
- generating information representative of user selected settings in a database; and
- building one or more web pages from the database and at least one "run time file," where the run time file uses information from the database to "generate virtual machine commands" for displaying the web pages. (’397 Patent, col. 65:36 - 66:8).
- The complaint does not specify any dependent claims.
U.S. Patent No. 7,594,168 - "Browser based web site generation tool and run time engine"
- Patent Identification: U.S. Patent No. 7,594,168, "Browser based web site generation tool and run time engine," issued September 22, 2009 (the "’168 Patent"). (Compl. ¶13).
The Invention Explained
- Problem Addressed: As a continuation of the application leading to the ’397 Patent, the ’168 Patent addresses the same problems of complexity, inefficiency, and platform-dependency in conventional web development tools. (’168 Patent, col. 1:19-54).
- The Patented Solution: The invention describes a system with a "build engine" that produces a "database with a multidimensional array" containing the website's objects (e.g., text, images) and their associated styles. A "runtime engine," accessed by a web browser, is configured to generate the website by extracting the objects and style data from this database, separating the site's content and structure from the rendering logic. (’168 Patent, col. 2:13-24; Abstract).
- Technical Importance: This approach continued the effort to abstract away the complexities of web programming languages, enabling more accessible and dynamic website creation through a data-driven model. (’168 Patent, col. 1:55-67).
Key Claims at a Glance
- The complaint seeks a declaratory judgment of non-infringement of at least claim 1. (Compl. ¶36, 37).
- Independent Claim 1 of the ’168 Patent recites a system with essential elements including:
- a build engine configured to accept user input to associate styles with objects and produce a database;
- the database comprising a "multidimensional array" that includes data defining, for each object, its style, number, and web page location; and
- a web browser with access to a "runtime engine" that is configured to generate the website from the objects and style data extracted from the database. (’168 Patent, col. 64:45 - 65:6).
- The complaint does not specify any dependent claims.
U.S. Patent No. 9,063,755 - "Systems and methods for presenting information on mobile devices"
- Patent Identification: U.S. Patent No. 9,063,755, "Systems and methods for presenting information on mobile devices," issued June 23, 2015 (the "’755 Patent"). (Compl. ¶15).
- Technology Synopsis: The patent addresses the difficulty of developing applications for the diverse and fragmented mobile device market. (’755 Patent, col. 1:13-31). Its solution is an authoring tool that produces two distinct code components: a "device-independent code" called an "Application" (containing the core logic) and a "device-dependent code" called a "Player" (a thin client that interprets the Application for a specific device). (’755 Patent, col. 5:4-17; Abstract).
- Asserted Claims: The complaint references independent claim 1. (Compl. ¶43).
- Accused Features: The complaint alleges that Shopify's native iOS and Android mobile applications do not infringe because they consist of device-dependent code and do not include the claimed "device-independent code." (Compl. ¶43).
U.S. Patent No. 9,471,287 - "Systems and methods for integrating widgets on mobile devices"
- Patent Identification: U.S. Patent No. 9,471,287, "Systems and methods for integrating widgets on mobile devices," issued October 18, 2016 (the "’287 Patent"). (Compl. ¶17).
- Technology Synopsis: As a continuation of the application for the ’755 patent, this invention also describes a system for generating and distributing programming for mobile devices. It similarly relies on an architecture that separates device-independent "Applications" from device-specific "Players" to enable cross-platform development. (’287 Patent, Abstract; col. 1:13-30).
- Asserted Claims: The complaint references independent claim 1. (Compl. ¶49).
- Accused Features: The complaint alleges that Shopify's native mobile applications do not infringe because they are device-dependent and do not include or provide any "device-independent code" as required by the claim. (Compl. ¶49).
III. The Accused Instrumentality
Product Identification
The complaint identifies Plaintiff's "eCommerce software and platform" and its native iOS and Android "mobile applications" as the instrumentalities for which it seeks a declaration of non-infringement. (Compl. ¶28, 43, 49).
Functionality and Market Context
- The accused platform is described as a system for "building web sites and web pages for customers." (Compl. ¶23). The complaint asserts several key technical distinctions for its non-infringement arguments. It alleges the platform does not generate "virtual machine commands" as required by the ’397 Patent. (Compl. ¶30). It further alleges the platform does not use a "runtime engine" that is downloaded when a browser visits a webpage, nor does it store website object data in the specific "multidimensional array" database structure required by the ’168 Patent. (Compl. ¶36, 37).
- Regarding the mobile applications, the complaint alleges they consist of "device-dependent code" (e.g., the iOS application runs only on iOS devices) and do not include the "device-independent code" required by the ’755 and ’287 Patents. (Compl. ¶43, 49).
- The complaint establishes the market context by noting that Defendant has engaged in litigation against many of Shopify's competitors, suggesting the patents are asserted broadly against e-commerce platform providers. (Compl. ¶19).
- No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint seeks a declaratory judgment of non-infringement. The following tables summarize the key non-infringement arguments presented by Shopify.
U.S. Patent No. 6,546,397 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| building one or more web pages... where 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 | Shopify's eCommerce software and platform does not generate "virtual machine commands," which the complaint defines as commands for an abstract machine that is emulated in software and executes intermediate code. | ¶30 | col. 66:1-8 |
Identified Points of Contention (’397 Patent)
- Scope Questions: A central issue will be the construction of the term "virtual machine commands." Does the term, in the context of the patent, require the specific generation of intermediate code for a software-emulated machine as Shopify contends, or could it be interpreted more broadly to encompass other executable instructions rendered by a browser environment?
- Technical Questions: The complaint's non-infringement argument rests on a specific technical characterization of its own platform. A key factual question will be whether Shopify's platform, in generating code for web browsers, produces instructions that meet the court's construction of "virtual machine commands."
U.S. Patent No. 7,594,168 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a web browser with access to a runtime engine is configured to generate the web-site from the objects and style data extracted from the provided database | Shopify's products do not include the claimed "runtime engine" because they do not use a file that is downloaded when a browser is pointed to a webpage and which contains executable code to retrieve database information and generate display commands. | ¶36 | col. 65:3-6 |
| a database with a multidimensional array comprising the objects that comprise the website including data defining, for each object, the object style, an object number, and an indication of the web page that each object is a part of | Shopify's system stores objects in file systems and references them in the webpage's code, rather than in a "database with a multidimensional array" that contains the specifically recited data defining each object's style, number, and page location. | ¶37 | col. 64:55-61 |
Identified Points of Contention (’168 Patent)
- Scope Questions: The dispute may turn on the definitions of "runtime engine" and "database with a multidimensional array." Does the patent require a discrete, downloadable software component as Shopify argues for the "runtime engine," or could modern client-side scripting frameworks be considered equivalent? Similarly, does Shopify's method of storing and referencing object data meet the structural requirements of the claimed "database"?
- Technical Questions: What is the precise architecture of the Shopify platform? An evidentiary inquiry will be necessary to determine how it stores data about website objects and how it delivers executable code to a user's browser for rendering a page.
V. Key Claim Terms for Construction
"virtual machine commands" (’397 Patent, Claim 1)
- Context and Importance: This term is the sole basis for Shopify's asserted non-infringement of the ’397 patent. Its construction is dispositive for this patent. Practitioners may focus on this term because its meaning will determine whether modern web technologies, which may not use the specific Java Virtual Machine architecture contemplated at the time of invention, fall within the claim scope.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification frequently references "JAVA" and "Javascript," noting that "a conventional web publishing application can offer only what a real web browser will like." (’397 Patent, col. 1:32-35). A party might argue that a web browser itself, with its JavaScript engine, functions as a type of virtual machine, and thus the scripts it executes are "virtual machine commands."
- Evidence for a Narrower Interpretation: The patent was filed in an era dominated by Java applets, which run on the Java Virtual Machine (JVM). The specification repeatedly discusses "JAVA Applet[s]" and files such as "JAR" or "CAB" files, which are associated with Java. (’397 Patent, col. 2:60-63; Fig. 2). This context may support Shopify's narrower interpretation that the term is tied to a system that generates intermediate code for a software-emulated machine like the JVM, not standard web scripts.
"device-independent code" (’755 Patent, Claim 1; ’287 Patent, Claim 1)
- Context and Importance: Shopify's non-infringement argument for the two mobile patents hinges on this term. Shopify contends its native mobile apps are device-dependent. The case will depend on whether this term can be construed to cover applications compiled for specific operating systems.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A patentee could argue that code written in a high-level language, before it is compiled for a specific platform like iOS or Android, constitutes "device-independent code," and that the combination of this source code with a device-specific compiler (analogous to the "Player") meets the claim limitations.
- Evidence for a Narrower Interpretation: The patent describes a system where the device-independent "Application" and the device-dependent "Player" are provided to the device and executed on it. (’755 Patent, col. 38:29-34). This suggests a runtime interpretation model (like Java bytecode and a JVM), not a compile-time model. Shopify's argument that its final, executable apps are purely "device-dependent code" aligns with an interpretation that the code must be independent at the time of execution on the device. (Compl. ¶43, 49).
VI. Other Allegations
The complaint does not provide sufficient detail for analysis of indirect or willful infringement, as it is a complaint for declaratory judgment of non-infringement and does not contain counterclaims from the patent owner. The December 20, 2018 letter cited in the complaint would likely form the basis for any future allegation of willful infringement by Express Mobile. (Compl. ¶22).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of architectural equivalence: do Shopify's modern e-commerce and mobile platforms, which rely on server-side logic and native compiled code, operate in a substantially different way from the patented systems, which describe a distinct "runtime engine" for web and a "Player/Application" model for mobile that appears to contemplate a runtime interpretation architecture?
- A second key issue will be one of definitional scope, particularly for claim terms rooted in the technology of the late 1990s and 2000s. Can terms like "virtual machine commands" and "device-independent code" be construed broadly enough to read on current web and mobile application development paradigms that may not have been explicitly contemplated by the inventors?
- Finally, a significant procedural question will be the impact of post-filing invalidity determinations. Given that a key asserted claim has already been cancelled by the USPTO, the case may evolve to focus on the infringement and validity of the remaining asserted claims and any others Express Mobile may introduce in counterclaims.