DCT

1:20-cv-00416

Internet Media Interactive Corp v. Shopify Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:20-cv-00416, D. Del., 03/25/2020
  • Venue Allegations: Plaintiff alleges venue is proper in the District of Delaware because Defendant conducts business in the state, directs advertisements to Delaware residents, and has purposefully availed itself of the privilege of conducting business in the district.
  • Core Dispute: Plaintiff alleges that Defendant’s system for directing users to web destinations via shortened URLs infringes a patent related to using multi-digit "jump codes" to simplify access to internet locations.
  • Technical Context: The technology addresses the difficulty of navigating the early World Wide Web by providing a directory-and-code system to bypass the manual entry of long and complex URLs.
  • Key Procedural History: The complaint alleges that key claim terms were previously construed by the District of Delaware in a 2009 proceeding involving the same patent-in-suit. The infringement theory relies on a divided infringement framework, attributing the actions of end-users and a third-party service provider to the Defendant.

Case Timeline

Date Event
1996-08-30 '835 Patent Priority Date
2000-04-11 '835 Patent Issue Date
2009-01-04 Prior Claim Construction in D. Del. for the '835 Patent
2020-03-25 Complaint Filing Date

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

U.S. Patent No. 6,049,835 - "System For Providing Easy Access To The World Wide Web Utilizing A Published List Of Preselected Internet Locations Together With Their Unique Multi-Digit Jump Codes"

  • Patent Identification: U.S. Patent No. 6,049,835, "System For Providing Easy Access To The World Wide Web Utilizing A Published List Of Preselected Internet Locations Together With Their Unique Multi-Digit Jump Codes," issued April 11, 2000.

The Invention Explained

  • Problem Addressed: In the mid-1990s, accessing specific websites required the "error-prone, tedious and confusing entry of URLs" ('835 Patent, col. 7:14-16). The patent describes navigating the then-100,000+ websites as a potentially "frustrating and information starving experience" ('835 Patent, col. 4:5-6).
  • The Patented Solution: The invention proposes a system to simplify web access. The core components are a "published compilation" (e.g., a physical book or an online directory) containing reviews of preselected websites and a "unique multi-digit jump code" for each site ('835 Patent, Abstract; col. 5:44-56). A user accesses a central, "specialized Web site" (an embodiment is named "JumpCity"), enters a jump code from the compilation, and software on the central site automatically converts the code into the corresponding destination URL and redirects the user ('835 Patent, col. 5:34-44).
  • Technical Importance: The system offered a curated, simplified navigation method analogous to a "phone book" for the internet, at a time before modern keyword-based search engines became the dominant discovery tool ('835 Patent, col. 4:10-22).

Key Claims at a Glance

  • The complaint asserts independent method claim 11 ('835 Patent, col. 9:1-28; Compl. ¶12).
  • The essential elements of independent claim 11 include:
    • Publishing a compilation of preselected Internet locations with a unique multi-digit jump code for each.
    • Providing a predetermined Internet location with means for capturing a jump code entered by a user.
    • A user accessing the predetermined location and entering the jump code.
    • Receiving the entered jump code.
    • Converting the received jump code to a destination URL.
    • Automatically accessing the destination URL.
  • The complaint does not explicitly reserve the right to assert other claims.

III. The Accused Instrumentality

Product Identification

  • The accused instrumentality is Defendant Shopify's system and method of using its website (www.shopify.com), its Twitter account (@Shopify), and a third-party link shortening service (spr.ly, operated by Sprinklr) to advertise and provide access to web locations (Compl. ¶¶6, 12).

Functionality and Market Context

  • The complaint alleges that Shopify publishes content, such as advertisements, on online media like Twitter (Compl. ¶12.a). This content includes shortened URLs, which incorporate a multi-digit code (e.g., spr.ly/6016BWrdr) (Compl. ¶12.b). When a user clicks such a link, the request is allegedly processed by the spr.ly service, which captures the code, converts it to a destination URL, and automatically redirects the user's browser to that final destination (Compl. ¶¶12.d-g). The complaint does not provide sufficient detail for analysis of the product's specific commercial importance beyond its general use in Shopify's marketing.

IV. Analysis of Infringement Allegations

No probative visual evidence provided in complaint.

  • Claim Chart Summary: The complaint alleges infringement of method claim 11, attributing the actions of end-users and a third-party service provider (Sprinklr) to Shopify under a theory of divided infringement (Compl. ¶¶12-13).

'835 Patent Infringement Allegations

Claim Element (from Independent Claim 11) Alleged Infringing Functionality Complaint Citation Patent Citation
publishing a compilation of preselected Internet locations, said published compilation including a unique predetermined multi-digit jump code assigned to each of said preselected Internet locations published therein Shopify publishes advertisements on Twitter, which allegedly constitute a "published compilation." These posts include shortened codes (e.g., "6016BWrdr") that are alleged to be the claimed "jump codes." ¶12.a, 12.b col. 7:15-19
providing a predetermined Internet location having an address published in said published compilation, said predetermined Internet location comprising means for capturing a desired multi-digit jump code... The spr.ly domain, managed by Sprinklr, is alleged to be the "predetermined Internet location" which serves to capture the jump code. ¶12.c col. 5:34-44
accessing said predetermined Internet location and entering said desired multi-digit jump code into said predetermined Internet location A user performs this step by clicking a URL embedded in the compilation (e.g., a Tweet). The complaint alleges Shopify is vicariously liable for the user's action. ¶12.d col. 5:65-68
receiving said multi-digit jump code entered into said predetermined Internet location... The link shortening service provider (Sprinklr) allegedly receives the jump code. The complaint alleges Shopify is vicariously liable for this action based on a service agreement. ¶12.e col. 7:3-5
converting the received multi-digit jump code to a URL address corresponding to the desired preselected Internet location The Sprinklr service allegedly converts the received code to a full URL address. The complaint again alleges Shopify is vicariously liable for this action. ¶12.f col. 7:6-8
automatically accessing said desired preselected Internet location using said URL address... The Sprinklr service allegedly performs the final step of automatically redirecting the user to the destination website. ¶12.g col. 7:8-10
  • Identified Points of Contention:
    • Scope Questions: A primary question is whether Shopify’s series of posts on a social media feed constitutes a "published compilation" as that term is used in the patent, which describes a curated book or directory. A related question is whether a user clicking a single hyperlink containing an alphanumeric string constitutes "entering" a "multi-digit jump code" into a "predetermined Internet location," as the patent appears to describe a two-step process of first navigating to a portal and then separately inputting a code.
    • Legal Questions: The infringement theory hinges on divided infringement. A central issue will be whether the complaint's allegations—that Shopify "conditions participation" for users and has a service agreement with Sprinklr—are sufficient to establish that Shopify "directs or controls" the actions of both the end-user and the third-party service provider under the standard set forth in Akamai Techs., Inc. v. Limelight Networks, Inc. (Compl. ¶¶12.d, 12.e, 13).

V. Key Claim Terms for Construction

  • The Term: "published compilation of preselected Internet locations"

    • Context and Importance: This term's scope is critical. If construed narrowly to require a curated, static directory like the book described in the patent, it may not read on a dynamic, user-generated social media feed. The complaint relies on a prior, allegedly broader construction from 2009 (Compl. ¶12.a).
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The complaint cites a prior construction defining the phrase as "a publicly accessible collection of information" (Compl. ¶12.a). The patent also mentions an "on-line list" as a potential embodiment, which could suggest a more dynamic format than a printed book ('835 Patent, col. 7:64-65).
      • Evidence for a Narrower Interpretation: The specification's primary embodiment is a printed book ("What's on the Web") containing "reviews" of sites selected according to specific criteria like content, usefulness, and professional design ('835 Patent, col. 5:56-59; col. 6:26-55). This could support an argument that the term requires a level of curation and organization not present in a stream of individual social media posts.

  • The Term: "entering said desired multi-digit jump code into said predetermined Internet location"

    • Context and Importance: The infringement theory reads this limitation on the act of a user clicking a single hyperlink. Practitioners may focus on this term because the patent appears to describe a distinct two-step action: navigating to a portal, then typing in a code. The viability of the infringement case may depend on whether a single click can be interpreted as performing this claimed step.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: A plaintiff may argue that the claim is not limited to manual typing and that clicking a link that transmits the code to the server is a technical equivalent that achieves the same function of "entering" the code for processing.
      • Evidence for a Narrower Interpretation: The specification describes a user who has accessed the "specialized Web site" then "entering the four digit jump code" ('835 Patent, col. 5:66-68). This language, combined with the description of software that accepts the code in an "on-screen HTML box or form" ('835 Patent, col. 7:3-5), suggests a more deliberate and separate action than a single click on a consolidated link.

VI. Other Allegations

  • Indirect Infringement: The complaint frames its allegations as direct infringement under a divided infringement theory, asserting that Shopify is liable for the combined actions of itself, end-users, and a third-party service provider (Sprinklr) (Compl. ¶¶12, 13). To support this, the complaint alleges that Shopify conditions a benefit upon the user's performance of a step and establishes the manner of that performance (Compl. ¶12.d). It further alleges that Shopify is liable for Sprinklr's actions based on the existence of a Master Services Agreement (Compl. ¶12.e).

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

  • A core issue will be one of divided infringement liability: Can the plaintiff demonstrate that Shopify "directs or controls" the actions of both unaffiliated end-users and the third-party link-shortening service (Sprinklr) to the degree required to hold Shopify liable for performing all steps of the claimed method under the Akamai standard?
  • A key question will be one of claim scope and technical equivalence: Can the 1996-era patent claim—describing a process of accessing a central portal and then separately "entering" a code—be construed to cover the modern, integrated action of clicking a single shortened hyperlink that contains the code? The resolution will depend on how the court interprets the claimed steps in light of the patent's specification and the accused technology's actual operation.