DCT
1:22-cv-00065
BNP Holdings LLC v. Intuit Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: BNP Holdings LLC (Illinois)
- Defendant: Intuit Inc. (Delaware)
- Plaintiff’s Counsel: O & Kelly, O'Rourke
- Case Identification: 1:22-cv-00065, D. Del., 01/18/2022
- Venue Allegations: Venue is asserted in the District of Delaware based on Defendant Intuit Inc.'s incorporation in the State of Delaware, which establishes residency for patent venue purposes.
- Core Dispute: Plaintiff alleges that Defendant’s QuickBooks Online browser-based accounting software infringes a patent related to an integrated, internet-facilitated system for billing and data processing.
- Technical Context: The technology concerns a client-server architecture for delivering software functionality via a web browser, a model that was a precursor to modern Software-as-a-Service (SaaS) platforms.
- Key Procedural History: The complaint notes that the patent was previously licensed following litigation against United Health Group, Inc. Plaintiff also alleges providing pre-suit notice of infringement to Intuit on July 29, 2019. The asserted patent expired on or about October 20, 2019, limiting the damages period.
Case Timeline
| Date | Event |
|---|---|
| 1999-10-20 | Priority Date for U.S. Patent No. 6,374,229 |
| 2002-04-16 | U.S. Patent No. 6,374,229 Issues |
| 2019-07-29 | Plaintiff sends pre-suit notice letter to Intuit |
| 2019-10-20 | U.S. Patent No. 6,374,229 Expires |
| 2022-01-18 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
Patent Identification: U.S. Patent No. 6,374,229, "Integrated Internet Facilitated Billing, Data Processing and Communication System," issued April 16, 2002. (Compl. ¶3).
The Invention Explained:
- Problem Addressed: The patent’s background section identifies drawbacks in prior art billing systems, including the high cost for businesses to purchase and maintain their own hardware and software, and the loss of real-time data access when billing functions are outsourced. (’229 Patent, col. 1:13-29; Compl. ¶11). It also notes the poor performance of traditional applications over wide-area networks and the inefficiency of "stand-alone" and "batch" processing systems. (’229 Patent, col. 2:29-36).
- The Patented Solution: The invention proposes a centralized, browser-based system where application software is installed and run on a main server, not on subscriber computers. (Compl. ¶13). Subscribers access the system over the internet to securely fill out data entry and billing forms, with the data being processed on the central server to generate billing invoices. (’229 Patent, col. 3:53-col. 4:5). This architecture, depicted in the patent's Figure 1, is described as using "thin client" technology to allow remote access without requiring powerful computers or local software installation on the subscriber's end. (’229 Patent, col. 2:1-6).
- Technical Importance: The described system aimed to provide businesses with real-time access to a powerful, centralized billing application without the associated expense and maintenance of on-premise infrastructure. (’229 Patent, col. 1:46-55).
Key Claims at a Glance:
- The complaint asserts independent system claim 1. (Compl. ¶31).
- The essential elements of independent claim 1 include:
- A database server and a website home page providing access to the server for multiple browser-based subscribers via an ISP.
- The home page provides secure access to distinct subscriber areas within the system.
- A "means for providing electronic transfer" of billing and data entry forms to the subscriber, and for using the entered data to produce billing invoices.
- A "means for providing real time electronic viewing and query access" of data stored on the database server.
- A "PC type computer" connected to the database server for controlling the forms and responding to queries.
III. The Accused Instrumentality
- Product Identification: The complaint identifies "Intuit's Quickbooks® Online browser-based accounting software system" as the accused instrumentality. (Compl. ¶6).
- Functionality and Market Context: The complaint alleges that QuickBooks Online is a browser-based system provided through the intuit.com website. (Compl. ¶22). Its functionality is alleged to include one or more database servers, a browser-based homepage that requires a User ID and Password for secure access, and features for electronic transfer of billing forms, creation of invoices, and viewing and querying of billing information. (Compl. ¶¶23-29). The complaint characterizes it generally as an "accounting software system" without providing further market context. (Compl. ¶8).
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
- ’229 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a database server and a home page of a website which provides access via an internet service provider (ISP) to said database server by a plurality of browser-based subscribers each of which have electronic access to said home page via a modem and the ISP; | Intuit’s system allegedly includes database servers and a browser-based homepage accessible by subscribers over the internet to access its accounting software system. | ¶33a, ¶¶23-25 | col. 3:41-52 |
| said home page providing only secure access by each browser-based subscriber to one of a plurality of subscriber areas within said system; | The QuickBooks Online homepage allegedly requires a subscriber to enter a User ID and Password to obtain secure access to the user's account. | ¶33b, ¶26 | col. 3:53-56 |
| means for providing electronic transfer of substantially only billing and data entry forms to the browser-based subscriber upon request...producing billing invoices and statements to clients and customers for each corresponding browser-based subscriber; | The system allegedly includes a means for electronic transfer of billing and data entry forms and for producing billing invoices for the subscriber's clients or customers. | ¶33c, ¶¶27-28 | col. 3:57-65 |
| means for providing real time electronic viewing and query access of data and billings stored in said database server by each corresponding browser-based subscriber; | The system allegedly provides a subscriber with a means to view and query data and billing information stored in the database servers. | ¶33d, ¶29 | col. 4:6-14 |
| a PC type computer electronically connected to said database server for controlling said forms as required and responding to queries entered by each browser-based subscriber. | The system allegedly includes a PC type computer electronically connected to the database servers. | ¶33e, ¶30 | col. 4:14-18 |
- Identified Points of Contention:
- Scope Questions: Claim 1 recites specific architectural components from the early internet era, such as access "via a modem." A potential issue is whether modern broadband and wireless internet access methods fall within the scope of this term as used in the patent.
- Technical Questions: The complaint’s allegation for the "PC type computer" limitation is conclusory. (Compl. ¶30). The patent specification appears to describe this element as a separate "billing network PC work station" used by system administrators to create forms. (’229 Patent, col. 4:14-18, Fig. 1, element 38). A key question will be whether the integrated server-side logic in the accused QuickBooks Online system meets this claim limitation, or if the claim requires a physically or logically distinct computer for form control.
- Means-Plus-Function: The construction of the "means for" limitations in claims 1(c) and 1(d) will be a central issue. The scope of these terms is limited to the structures disclosed in the specification and their equivalents. A dispute may arise over whether the software architecture of the modern QuickBooks Online product is structurally equivalent to the specific implementation described in the '229 patent. (Compl. ¶19).
V. Key Claim Terms for Construction
The Term: "a PC type computer electronically connected to said database server for controlling said forms as required and responding to queries entered by each browser-based subscriber" (Claim 1(e))
- Context and Importance: Practitioners may focus on this term because its construction could be dispositive of infringement. The dispute will likely center on whether this limitation requires a separate, dedicated machine for form management, as potentially suggested by the specification, or if it can be read on the general-purpose servers that perform these functions in a modern, integrated SaaS architecture.
- Intrinsic Evidence for a Broader Interpretation: A party could argue that the plain language "a PC type computer" is broad and not inherently limited to a specific type of machine or its user, and that any server component that performs the stated functions of "controlling said forms" and "responding to queries" would suffice.
- Intrinsic Evidence for a Narrower Interpretation: The only corresponding structure described with specificity in the patent is the "billing network PC work stations 38," which are used internally by system employees for form development and are shown as distinct from the database server. (’229 Patent, Fig. 1; col. 4:14-18). This could support an interpretation that the claim requires a computer separate from the main database server and potentially separate from the subscriber's own PC.
The Term: "means for providing electronic transfer of substantially only billing and data entry forms..." (Claim 1(c))
- Context and Importance: As a means-plus-function limitation, its scope is not determined by the words of the claim alone but by the corresponding structure disclosed in the patent. The complaint explicitly identifies this as a "means plus function" element. (Compl. ¶19). The infringement analysis will depend on whether the QuickBooks Online architecture is structurally equivalent to what is described in the '229 patent.
- Intrinsic Evidence for a Broader Interpretation: The specification describes the function in general terms, such as providing "a framework for data entry" and transferring forms to "appear on the screen of each remote subscribers PC." (’229 Patent, col. 3:57-65). This language could be argued to encompass any client-server software that sends form data for rendering in a web browser.
- Intrinsic Evidence for a Narrower Interpretation: The structure is described in the context of a specific system diagram (Fig. 1) that includes distinct "subscriber area" (28) and "logic/rules" (30) components that mediate the transfer of forms. A party could argue that an equivalent structure must contain these distinct logical components, as opposed to a more monolithically integrated software application. (’229 Patent, col. 3:53-65).
VI. Other Allegations
- Indirect Infringement: The complaint does not allege indirect infringement. The sole count is for direct infringement under 35 U.S.C. § 271(a). (Compl. ¶¶31-34).
- Willful Infringement: The complaint does not contain an explicit claim for "willful infringement." However, it alleges that Intuit had pre-suit knowledge of the '229 Patent and its potential infringement as of July 29, 2019, based on correspondence sent to Intuit's registered agent. (Compl. ¶¶20, 35). These allegations could be used to support a future claim for enhanced damages under 35 U.S.C. § 284.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim construction and structural equivalence: can the "means for" limitations in Claim 1, which are tied to the specific server architecture disclosed in the 1999-filed patent, be proven to cover the potentially different software architecture of the modern QuickBooks Online SaaS platform?
- A second key question will be one of architectural scope: does the claim limitation requiring "a PC type computer... for controlling said forms" necessitate a distinct hardware or software component, as depicted in the patent's embodiment, or can it be read broadly enough to cover the integrated, server-side processing logic of a contemporary cloud-based application? The answer will likely determine the outcome of the infringement analysis.