DCT
1:19-cv-01236
TMI Solutions LLC v. OfficeMax Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: TMI Solutions LLC (Michigan)
- Defendant: OfficeMax Inc (Delaware)
- Plaintiff’s Counsel: DEVLIN LAW FIRM LLC
- Case Identification: 1:19-cv-01236, D. Del., 06/28/2019
- Venue Allegations: Venue is alleged to be proper in the District of Delaware on the basis that 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 identifying a user station over a communications network to provide services from a remote computer system.
- Technical Context: The technology concerns methods for maintaining state and user identity across separate communication sessions in a client-server network, a foundational concept for e-commerce and personalized web services.
- Key Procedural History: The complaint references a September 28, 2018 Memorandum Opinion and Order from prior cases in the District of Delaware involving related patents, in which the court denied defendants' motions to dismiss under 35 U.S.C. § 101, finding the claims plausibly captured non-routine, unconventional activity that may improve the functioning of computers.
Case Timeline
| Date | Event |
|---|---|
| 1994-05-31 | '077 & '078 Patents - Earliest Priority Date |
| 2010-09-29 | '077 & '078 Patents - Application Filing Date |
| 2016-11-01 | '077 & '078 Patents - Issue Date |
| 2019-06-28 | 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”
- Issued: November 1, 2016.
The Invention Explained
- Problem Addressed: At the time of the invention, online services were complex and oriented toward extended, single sessions, making them unsuitable for distributing low-cost, periodic updates for electronic products (e.g., digital magazines). There was no seamless way to integrate downloaded updates with original content or for a remote server to automatically identify a returning user to provide continuous or personalized service. (Compl. ¶18; ’077 Patent, col. 1:36-51).
- The Patented Solution: The invention provides a method where, during a first session, a remote server receives identifying information from a user, sends back a different piece of information (a unique identifier) to be stored automatically on the user's station, and stores its own corresponding information remotely. In subsequent sessions, the user's station automatically sends its stored identifier back to the server, allowing the server to retrieve the user's stored information and continue the interaction seamlessly. (’077 Patent, Abstract; col. 5:21-46).
- Technical Importance: This method provided a solution to the problem of "amnesia" in computer networks, where each visit to a server was like the first, by creating a mechanism for session persistence and automated user recognition. (Compl. ¶18).
Key Claims at a Glance
- The complaint asserts at least independent claim 6. (Compl. ¶26).
- Claim 6 (Method):
- 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, from the remote system to the user station to be stored automatically.
- Storing third information, based on the first, at a remote location.
- During a subsequent session, automatically receiving the second information from the user station.
- Using the received second information to retrieve the stored third information.
- Using the retrieved third information for interaction with the remote computer system.
- The claim repeats these steps for "first user station identification information" to generate and use "fourth" and "fifth" information, suggesting separate tracking of the user and the machine.
U.S. Patent No. 9,484,078 - “Providing Services from a Remote Computer System to a User Station Over a Communications Network”
- Issued: November 1, 2016.
The Invention Explained
- Problem Addressed: The ’078 Patent addresses the same general technical problem as the ’077 Patent: the lack of a simple, automated method for a remote server to recognize a returning user station to provide persistent services or information updates. (’078 Patent, col. 1:36-51).
- The Patented Solution: The solution is structurally similar to that of the ’077 Patent, involving a multi-session exchange of identifiers. The abstract and claims of the ’078 Patent, however, place specific emphasis on the user station itself automatically triggering the transmission of its stored identifier back to the remote server in a subsequent session. (’078 Patent, Abstract; col. 61:19-27).
- Technical Importance: This approach automated the re-identification process from the client side, reducing the need for user intervention in subsequent sessions and creating a more seamless experience. (Compl. ¶17).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 and dependent claim 2. (Compl. ¶35).
- Claim 1 (Method):
- Receiving first information identifying a user station at a remote computer system during a first session.
- Sending second information, which is a function of the first, from the remote system to the user station.
- Storing third information, based on the first, at a remote location.
- Receiving the second information at the remote system during a subsequent session, wherein the user station triggers automatically sending the second information.
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is Defendant’s practice of “using hardware that practices the computer implemented method... via Defendant’s use of cookies in conjunction with its website” (“the Accused Practices”). (Compl. ¶¶26, 35).
Functionality and Market Context
- The complaint alleges that Defendant’s website uses cookies to identify users and their computer stations. (Compl. ¶¶26, 35). This functionality is common for e-commerce websites, enabling features such as persistent shopping carts, personalized recommendations, and saved user preferences between visits. The complaint does not provide further technical detail on the specific implementation of cookies on Defendant’s website.
No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint references, but does not include, claim charts detailing the infringement allegations. (Compl. ¶¶27, 36). The following summary is based on the narrative theory that Defendant's use of website cookies practices the claimed methods.
- 9,484,077 Infringement Allegations
| Claim Element (from Independent Claim 6) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| receiving first user identification information at a remote computer system... from a user station during a first user-initiated communication session... | Defendant's web server receives information from a user's browser, such as account credentials or items added to a shopping cart. | ¶26 | col. 5:21-24 |
| sending second information that is a function of the first user identification information... to the user station... to be stored automatically... | Defendant's web server sends an HTTP cookie containing a unique identifier to the user's browser, which stores it automatically. | ¶26 | col. 5:25-31 |
| storing third information that is based on the first user identification information at a location remote from the user station... | Defendant's server stores user profile information, such as shopping cart contents or preferences, in a database linked to the unique identifier from the cookie. | ¶26 | col. 5:32-35 |
| receiving at the remote computer system the second information... during a subsequent and separate... communication session automatically from the user station... | On a subsequent visit, the user's browser automatically transmits the stored cookie back to Defendant's web server. | ¶26 | col. 5:36-39 |
| retrieving the stored third information... using the received second information... | Defendant's server uses the unique identifier from the received cookie to look up and retrieve the user's profile information from its database. | ¶26 | col. 5:40-43 |
- 9,484,078 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| receiving by a remote computer system... first information identifying a user station not previously identified... | Defendant's web server receives a request from a new user's browser. | ¶35 | col. 61:2-6 |
| sending from the remote computer system... second information that is a function of... the first information... | Defendant's server responds by sending an HTTP cookie containing a unique identifier to the user's browser for storage. | ¶35 | col. 61:7-10 |
| storing third information based on the first information at a location remote from the user station... | Defendant's server creates a record in its database, linked to the cookie's unique identifier, to store user-specific data. | ¶35 | col. 61:11-14 |
| receiving the second information... during a second user initiated communication session... wherein the user station triggers automatically sending the second information... | When the user revisits the website, the user's browser is allegedly configured to automatically send the stored cookie back to the server as part of the HTTP request. | ¶35 | col. 61:15-27 |
- Identified Points of Contention:
- Scope Questions: A central issue may be whether the term "second information that is a function of the first user identification information" reads on the common practice of a server assigning a randomly generated unique ID in a cookie. The analysis may question whether a newly generated ID is a "function of" prior user information, or an independent value merely associated with it.
- Technical Questions: For the ’078 Patent, the dispute may center on the phrase "wherein the user station triggers automatically sending the second information." The question is whether a web browser's standard behavior of including a cookie in an HTTP request to a server—an action prompted by the server's domain—constitutes a "trigger" originating from the "user station" itself, as the claim requires.
V. Key Claim Terms for Construction
The Term: "second information that is a function of the first user identification information" (’077 Patent, Claim 6; ’078 Patent, Claim 1)
Context and Importance: The construction of this term is critical to determining whether standard cookie implementations infringe. If a server assigns a random ID to a new user, the defendant may argue this ID is not a "function of" any user-provided information. The plaintiff may argue that the act of generating and assigning any ID in response to a new user's arrival makes it a "function of" that user's initial interaction.
- Evidence for a Broader Interpretation: The specification does not appear to limit the "function" to a specific mathematical or cryptographic operation, which may suggest that any mapping or association established by the server between the first and second information falls within the scope. (’077 Patent, col. 5:25-28).
- Evidence for a Narrower Interpretation: The detailed description focuses on a structured "information transport component," which may suggest a more specific, programmed relationship is required than the simple assignment of a random identifier characteristic of standard web protocols. (’077 Patent, col. 7:13-19).
The Term: "wherein the user station triggers automatically sending the second information" (’078 Patent, Claim 1)
Context and Importance: This term is the primary distinction of the ’078 Patent’s asserted claim. Its construction will determine whether a standard web browser's passive return of a cookie qualifies as the "user station" actively "triggering" the transmission.
- Evidence for a Broader Interpretation: A plaintiff may argue that since the browser is software operating on the user station, its automatic inclusion of a cookie in a request is, by definition, an automatic trigger by the user station.
- Evidence for a Narrower Interpretation: The patent's focus on an "information transport component" separate from a conventional browser could suggest that the "trigger" must be an action initiated by that specific component, rather than a passive response dictated by standard HTTP protocols that are initiated by a user navigating to a server's domain. (’078 Patent, col. 7:13-19).
VI. Other Allegations
The complaint does not contain sufficient detail for analysis of indirect or willful infringement.
VII. Analyst’s Conclusion: Key Questions for the Case
This case will likely focus on the interplay between patent claims drafted before the widespread adoption of modern web technologies and the subsequent, standardized practices that became ubiquitous.
- A core issue will be one of definitional scope: Can the claim limitation "a function of the first user identification information" be construed to cover a server's generation of a new, random identifier for a cookie, or does it require a direct, substantive transformation of user-provided data?
- A key question will be one of causality and agency: For the ’078 patent, does a standard web browser sending a cookie as part of a server request constitute the "user station trigger[ing]" the transmission, or is this action fundamentally a response to a prompt from the remote server, thereby failing to meet a key limitation of the claim?