Digi Portal LLC v. News America Marketing Digital LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Digi Portal LLC (Texas)
  • Defendant: News America Marketing Digital L.L.C. (Delaware)
  • Plaintiff’s Counsel: Stamoulis & Weinblatt LLC
• Case Name: Digi Portal LLC v. News America Marketing Digital L.L.C.
• Case Identification: 1:19-cv-01624, D. Del., 08/29/2019
• Venue Allegations: Plaintiff alleges venue is proper in the District of Delaware because Defendant is a Delaware limited liability company and has allegedly committed acts of infringement within the district.
• Core Dispute: Plaintiff alleges that Defendant’s Smartsource.com website infringes five patents related to the dynamic generation and serving of customized web pages based on user preferences and real-time data.
• Technical Context: The patents address foundational methods for efficiently providing personalized web experiences, a technology crucial for user engagement on large-scale internet portals.
• Key Procedural History: The asserted patents, which claim priority back to 1997, were originally assigned to Yahoo! Inc. and relate to the architecture for services like the "My Yahoo!" personalized portal. The complaint notes that patents in this family were cited during the prosecution of over 700 patents owned by major technology companies, suggesting the technology is well-known in the field.

Case Timeline

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 8,352,854 - "Dynamic Page Generator"

• Issued: January 8, 2013

The Invention Explained

• Problem Addressed: The patent describes that prior art methods for serving customized web pages, such as those using Common Gateway Interface (CGI) scripts, were inefficient and did not scale well for a large number of users, leading to delays that could cause users to leave a site (Compl. ¶14; ’854 Patent, col. 1:42-58). Alternative methods that streamed data to be stored locally on a user's machine clogged networks and resulted in outdated information (Compl. ¶15; ’854 Patent, col. 1:59-67).
• The Patented Solution: The invention proposes a more efficient architecture where a server generates a user-specific "template" based on a user's stored preferences (Compl. ¶17). This template is then populated with dynamic, "live" data (e.g., stock quotes, news headlines) that is held in a shared, local memory on the page server itself (’854 Patent, col. 4:43-51). This avoids the need for the server to make slow, repeated calls to external data sources for every page request, allowing for faster generation of the customized page (Compl. ¶24). To further improve speed, the user template itself can be stored in different locations—such as a persistent database or a faster cache—based on how frequently the user accesses the page (Compl. ¶20; ’854 Patent, col. 5:23-38).
• Technical Importance: This server-side template architecture was a key technical innovation that enabled early internet portals to provide scalable and responsive personalized content to millions of users simultaneously (Compl. ¶12).

Key Claims at a Glance

• The complaint asserts independent claim 1 and dependent claims 2-3, 8-10, and 15 (Compl. ¶27).
• Independent Claim 1 (Method):
  • Receiving a user request for a customized page;
  • Receiving a template program that is unique to the user and based on user configuration information, which is supplied by the user and includes user demographic information;
  • The template program being received from one of at least two locations, with the location being determined by the frequency of the user's requests;
  • Receiving an advertisement selected in accordance with the user demographic information;
  • Executing the template program with the advertisement to generate the customized page; and
  • Providing the customized page to the user.
• The complaint does not explicitly reserve the right to assert other dependent claims.

U.S. Patent No. 5,983,227 - "Dynamic Page Generator"

• Issued: November 9, 1999

The Invention Explained

• Problem Addressed: The ’227 Patent shares an identical specification with the ’854 Patent and thus addresses the same problems of scalability and speed in delivering customized web content (’227 Patent, col. 1:14-18, 1:30-58; Compl. ¶44).
• The Patented Solution: The solution is the same server-side template architecture described for the ’854 Patent. The complaint notes that during the prosecution of the ’227 Patent, it was considered unconventional to download real-time information to a server for integration with a template, as opposed to prior art methods that linked directly to the real-time information source (Compl. ¶44). The invention combines user preferences with a generic template to form a user-specific template, which is then populated with real-time data held in a local storage device to generate the final page (’227 Patent, Abstract).
• Technical Importance: As the earliest patent in the asserted family, this patent represents an early approach to solving the fundamental challenge of serving personalized web pages at scale (Compl. ¶43).

Key Claims at a Glance

• The complaint asserts at least claim 2 (Compl. ¶45).
• Independent Claim 2 (Method):
  • Obtaining user preferences indicating items of interest;
  • Obtaining real-time information from information sources;
  • Storing the real-time information in a storage device;
  • Combining the user preferences and a template to form a template program specific to the user;
  • Receiving a user request for a customized page;
  • Executing the template program using the stored real-time information to generate the customized page; and
  • Providing the customized page to the user in real-time response to the request, where the page includes at least one item of real-time information.
• The complaint does not explicitly reserve the right to assert other dependent claims.

U.S. Patent No. 7,171,414 - "Dynamic Page Generator"

• Patent Identification: U.S. Patent No. 7171414, issued January 30, 2007 (Compl. ¶58).
• Technology Synopsis: This patent, which shares the same specification as the others, focuses on a method for providing a customized page where real-time information is stored in a "shared local storage device," allowing the page to be built entirely within the page server and eliminating the need to make requests to other servers for live data (Compl. ¶62). It also discloses receiving the template program from one of at least two locations based on the frequency of the user request (Compl. ¶63).
• Asserted Claims: At least claims 1 and 3 are asserted (Compl. ¶64).
• Accused Features: The complaint accuses the Smartsource.com website's method of using its server to obtain real-time information (e.g., coupon listings), store it locally, and provide a customized page based on user preferences (Compl. ¶¶64-65).

U.S. Patent No. 7,565,359 - "Dynamic Page Generator"

• Patent Identification: U.S. Patent No. 7565359, issued July 21, 2009 (Compl. ¶79).
• Technology Synopsis: This patent shares the same specification. The complaint notes that its prosecution focused on executing a user-specific template program using real-time information stored in a shared local storage device, and on combining user preferences with a generic template to form that user-specific program (Compl. ¶83).
• Asserted Claims: At least claim 10 is asserted (Compl. ¶84).
• Accused Features: The complaint accuses the computer-readable medium (e.g., server storage) of the Accused Instrumentality, which allegedly contains instructions for generating customized pages according to user preferences (Compl. ¶84).

U.S. Patent No. 9,626,342 - "Dynamic Page Generator"

• Patent Identification: U.S. Patent No. 9626342, issued April 18, 2017 (Compl. ¶96).
• Technology Synopsis: This patent also shares the same specification. The technology involves generating a template program unique to a user by combining customization information (e.g., location, interests) with a global template that is generic to a plurality of users (Compl. ¶¶100, 102). The customized webpage is then generated using this unique template and includes real-time information selected based on the user's specific customization information (Compl. ¶104).
• Asserted Claims: At least claims 1 and 7 are asserted (Compl. ¶101).
• Accused Features: The complaint accuses the method practiced by the Smartsource.com server of generating and executing a unique template program for each user to create a customized webpage with real-time, location-specific coupon deals (Compl. ¶¶102, 104).

III. The Accused Instrumentality

Product Identification

The accused instrumentality is the Defendant's website, Smartsource.com (Compl. ¶27).

Functionality and Market Context

• Smartsource.com is a service that provides users with customized web pages displaying coupons and advertisements (Compl. ¶¶28-29). Users can create an account and provide configuration information, such as their location via a zip code, which is then used to personalize the content they see (Compl. ¶29). The complaint provides a screenshot showing a page customized for a user named "Naveen" with offers based on the zip code "98002" (Compl. p. 14).
• The complaint alleges that the website generates these pages using a "template program (e.g., a JavaScript page) that is unique to the user and based on user configuration information" (Compl. ¶29). It further alleges that this template information is stored in at least two locations—such as a main server for less frequently accessed files and local storage on the user's computer for more frequently accessed files—with the retrieval location determined by access frequency (Compl. ¶33). The service also allegedly selects and integrates advertisements based on user demographic information (Compl. ¶34).

IV. Analysis of Infringement Allegations

'854 Infringement Allegations

Identified Points of Contention

• Technical Question: A central point of contention may be the factual basis for the allegation that the "template program" is retrieved from at least two locations based on "frequency of the user request." The complaint alleges this is accomplished via a main server, browser local storage, and cookies (Compl. ¶33). The defense may argue that this describes standard web and browser caching behavior, not the specific, integrated, frequency-determined system disclosed in the patent.
• Scope Question: The dispute may raise the question of whether a modern "JavaScript page" (Compl. ¶29) functions as the "template program" described in the 1997-priority-date patent, which illustrates the concept as a modified HTML file with placeholder tags (’854 Patent, Fig. 3).

'227 Infringement Allegations

Identified Points of Contention

• Scope Question: A potential dispute may arise over the meaning of "real-time information from information sources." The patent specification provides examples like polling stock, sports, and news servers (’227 Patent, col. 1:47-51). The question for the court may be whether retrieving coupon listings from the defendant's own database and ads from a third-party ad server meets the scope of this term as understood in the patent.
• Technical Question: Whether the accused system's page generation is performed in "real-time response" to the user request may be a point of contention, as the technical meaning of this phrase can be subject to dispute depending on the specific server processes involved.

V. Key Claim Terms for Construction

"template program"

• Context and Importance: This term is the core component of the claimed invention that is customized for the user and then executed to generate the final page. Its definition is critical because the infringement case depends on whether the accused website's JavaScript files and objects (Compl. ¶29) constitute a "template program" as the patent describes it. Practitioners may focus on this term because the patent's examples show a structure akin to a modified HTML file with specific placeholder tags (’854 Patent, Fig. 3), which could be argued as structurally different from modern JavaScript-based rendering.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The claims use the general term "template program" without limiting it to a specific file format. The abstract of the related ’227 Patent describes user preferences being "organized into templates stored in compact data structures," which could be argued to encompass more than just HTML files.
  • Evidence for a Narrower Interpretation: The specification's detailed description and figures consistently illustrate the template as an HTML document containing placeholder tags like <!-- leftside:nsum --> (’854 Patent, Fig. 3, col. 5:16-19). A party could argue that these specific embodiments define the scope of the term.

"received from one of at least two locations, the location determined from the frequency of the user request" (’854 Patent, Claim 1)

• Context and Importance: This limitation defines a key performance-enhancing feature of the invention, where templates for frequent users are served from a faster location (cache) and those for infrequent users from a more persistent one (database). The infringement allegation hinges on whether the accused system's use of its main server versus the user's browser cache/local storage maps onto this claimed functionality (Compl. ¶33).
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification explains this concept broadly: "For infrequent users, the user template is stored in a user configuration database, whereas for frequent users the user template may also be stored in cache" (’854 Patent, col. 6:51-59). This language may support an interpretation covering different types of storage tiers determined by usage frequency.
  • Evidence for a Narrower Interpretation: A party could argue that this limitation requires a specific, server-controlled architectural choice between two distinct server-side storage locations, and that standard, automatic browser caching behavior does not satisfy the "determined from the frequency" requirement, as browser caching may be governed by different rules.

VI. Other Allegations

The complaint does not contain specific factual allegations to support claims of indirect or willful infringement.

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

• A core issue will be one of technical implementation: Does the accused Smartsource.com website employ a specific, frequency-based, dual-location storage and retrieval architecture for its templates as claimed in the ’854 patent, or does its operation rely on standard web server and browser caching mechanisms that are technically distinct from the patented method?
• A key question will be one of definitional scope: Can the term "template program," which is rooted in the patent's examples of modified HTML files with placeholders, be construed broadly enough to read on the modern JavaScript files and objects allegedly used by the accused system to render dynamic web pages?
• A central evidentiary question will be one of functional operation: What discovery will show about how the accused system actually obtains, stores, and uses "real-time information" to generate pages, and does this operation match the specific sequence of combining preferences, executing a template, and providing a page in "real-time response" as required by the ’227 patent claims?