TMI Solutions LLC v. Mary Kay Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: TMI Solutions LLC (Michigan)
  • Defendant: Mary Kay, Inc. (Delaware)
  • Plaintiff’s Counsel: DEVLIN LAW FIRM LLC
• Case Identification: 1:19-cv-01235, D. Del., 06/28/2019
• 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, through its use of cookies, infringes two patents related to methods for a remote computer system to automatically identify a user station over multiple communication sessions.
• Technical Context: The technology concerns client-server session management, a foundational element for personalized web experiences and e-commerce that allows a server to recognize a returning user's computer.
• Key Procedural History: The complaint notes that in prior litigation involving the same patent family, the District of Delaware denied defendants’ motions to dismiss under 35 U.S.C. § 101, finding the complaint plausibly alleged that the claims capture non-routine, unconventional activity that may improve computer functionality.

Case Timeline

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 describes the state of early online services as complex and inflexible, with no effective means for integrating centrally-distributed information (like updates) with locally-stored products (like content on a CD-ROM) (’077 Patent, col. 1:37-2:31). This created a disjointed user experience, as a remote server could not easily or automatically recognize a returning user to provide continuous service (’077 Patent, col. 5:2-5).
• The Patented Solution: The invention proposes a method where a remote server, upon interacting with a new user station for the first time, sends it a unique identifier. This identifier is then stored automatically on the user's machine. During a subsequent visit, the user's machine automatically sends the identifier back to the server. This allows the server to retrieve previously stored information associated with that user or session and provide a seamless, continuous experience without requiring extensive user interaction for re-identification (’077 Patent, Abstract; col. 5:23-45).
• Technical Importance: This method provided a way for networked computer systems to have a "memory" of prior interactions with specific user machines, a problem the complaint alleges was unsolved at the time of the invention (Compl. ¶¶16-17).

Key Claims at a Glance

• The complaint asserts at least claim 6 of the ’077 Patent (Compl. ¶25). Claim 6 depends from independent claim 1.
• Independent Claim 1 recites a method with the following essential elements:
  • Receiving "first information" at a remote server from a "user station not previously identified" during a first session.
  • Sending "second information," which is different from and a function of the first information, back 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, receiving the "second information" "automatically from the user station."
  • Using the received second information to retrieve the stored third information.
  • Using the retrieved third information for interaction with the user station.
• Dependent claim 6 adds the limitation that the "second information" is a "cookie" (’077 Patent, col. 61:35-37).

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 technology described in the ’078 Patent is substantially identical to that of the ’077 Patent, addressing the problem of creating persistent sessions and identifying returning users in a client-server network environment (’078 Patent, col. 1:20-2:34).
• The Patented Solution: The solution is a method for a remote server to assign and later recognize a unique identifier sent to a user's computer, enabling the server to retrieve stored data associated with that user for subsequent interactions (’078 Patent, Abstract).
• Technical Importance: As with the ’077 Patent, this method provided a technical solution for state management in networked applications, which the complaint alleges was a significant problem at the time of invention (Compl. ¶¶16-17).

Key Claims at a Glance

• The complaint asserts at least claims 1 and 2 of the ’078 Patent (Compl. ¶34).
• Independent Claim 1 recites a method with the following essential elements:
  • Receiving "first user identification information" at a remote server from a user station not previously identified.
  • Sending "second information," which is a function of and different from the first information, back 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 back from the user station automatically during a subsequent session.
  • Using the received second information to retrieve the stored third information.
  • Using the retrieved third information for interaction with the user station.
• Dependent claim 2 adds the limitation that the "third information includes user purchase instructions" (’078 Patent, col. 61:24-25).

III. The Accused Instrumentality

Product Identification

The accused instrumentality is Defendant Mary Kay, Inc.’s website, which allegedly employs "the use of cookies in conjunction with its website" (the "Accused Practices") (Compl. ¶¶25, 34).

Functionality and Market Context

The complaint alleges that the Accused Practices use cookie technology to automatically identify users and user stations in the context of computer networks (Compl. ¶¶16, 25). This functionality allows a website to recognize a returning visitor's browser to, for example, maintain a logged-in state, remember items in a shopping cart, or otherwise personalize the user experience across multiple visits. The complaint does not provide further technical detail on the specific implementation of this functionality on the defendant's website. No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint references claim chart exhibits that are not provided with the complaint document; therefore, the infringement theory is summarized below in prose.

U.S. Patent No. 9,484,077 Infringement Allegations

The complaint alleges that the Accused Practices infringe at least claim 6 of the ’077 Patent (Compl. ¶25). The infringement theory appears to map the standard operation of HTTP cookies to the elements of the asserted claim. This theory suggests that when a user first visits the defendant's website, the site's server (the "remote computer system") receives initial information from the user's browser (the "user station"). In response, the server sends a "cookie" (the "second information") to be "stored automatically" by the browser. The server also stores its own data associated with this interaction (the "third information"). On a subsequent visit, the browser "automatically" sends the cookie back to the server, which then uses it to retrieve the stored data to inform its "interaction" with the user during that session (Compl. ¶¶16, 25).

U.S. Patent No. 9,484,078 Infringement Allegations

The infringement allegations for the ’078 Patent are substantively identical to those for the ’077 Patent, focusing on the use of cookies to implement the claimed method (Compl. ¶34). The complaint alleges infringement of at least claims 1 and 2. The complaint does not, however, provide specific facts detailing how the Accused Practices meet the additional limitation of claim 2, which requires that the server-side stored data ("third information") includes "user purchase instructions" (Compl. ¶34).

Identified Points of Contention

• Scope Questions: A central question may be the scope of the phrase "user station not previously identified." It raises the question of whether this limitation applies only to a user's first-ever visit to a website, or if it can also read on any session where a valid identifier (e.g., a cookie) is not present, for instance, after a user has cleared their browser data.
• Technical Questions: The complaint's allegations are high-level. A key technical question for the court will be whether the specific data stored and retrieved by the defendant's servers, and the subsequent interactions, map precisely onto the claim elements. For claim 2 of the ’078 Patent, a factual question is what evidence the complaint provides that the defendant's system stores and uses "user purchase instructions" in the manner required by the claim.

V. Key Claim Terms for Construction

"user station not previously identified to the remote computer system"

(in independent claim 1 of both patents)

Context and Importance

The definition of this term is critical for determining when infringement occurs. Practitioners may focus on this term because its interpretation could limit infringement to a user's very first interaction with the website, or could broaden it to include any new session initiated without a valid, pre-existing identifier.

Intrinsic Evidence for Interpretation

• Evidence for a Broader Interpretation: The patent’s description of solving the problem of online services that are "oriented to extended online sessions which require complex user interaction to navigate" may suggest that a "not previously identified" station is any station beginning a session that would otherwise require manual re-identification (’077 Patent, col. 1:37-42).
• Evidence for a Narrower Interpretation: The specification's discussion of providing updates to an existing "customer base" and "subscribers" could support a narrower reading that the invention is directed at re-identifying known users on new or unrecognized machines, not necessarily first-time-ever visitors (’077 Patent, col. 4:46-54).

"automatically from the user station"

(in independent claim 1 of both patents)

Context and Importance

This term is central to the accused mechanism of cookie-based identification. The dispute will likely focus on whether the standard operation of a web browser sending a cookie qualifies as "automatic."

Intrinsic Evidence for Interpretation

• Evidence for a Broader Interpretation: The specification contrasts the invention with prior art requiring extensive manual user steps, such as activating a communications product and specifying objects for transport (’077 Patent, FIG. 5). The invention is described as designed "to require a minimum of user input," which supports a broad construction of "automatic" as meaning "without user action during the session" (’077 Patent, col. 8:8-14).
• Evidence for a Narrower Interpretation: It is possible a defendant could argue that user action is required to enable cookies in a browser's settings, which might suggest the process is not fully "automatic." However, the patent's focus appears to be on actions taken during the communication session itself.

VI. Other Allegations

The complaint does not allege indirect or willful infringement.

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

• A core issue will be one of historical context and validity: Given the 1994 priority date, the case will likely turn on whether the claimed method was a non-obvious and patent-eligible solution to a technical problem at that time, or whether it merely claimed an abstract idea that was later implemented with routine and conventional technology (i.e., the HTTP cookie). While a prior § 101 challenge was denied at the pleading stage, this issue will remain central through claim construction and summary judgment.
• A key evidentiary question will be one of technical specificity: Do the high-level infringement allegations plausibly map to the specific functions of the accused website? In particular for claim 2 of the ’078 Patent, the case may test the pleading standards for patent infringement and whether a general allegation is sufficient to support a specific technical limitation like "user purchase instructions."
• A final dispositive issue will be one of definitional scope: The construction of the term "user station not previously identified" will be critical. The court's decision on whether this applies broadly to any new session or narrowly to only first-time visitors will significantly impact the scope of potential infringement and the calculation of any subsequent damages.