Digi Portal LLC v. Boxed LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Digi Portal LLC (Texas)
  • Defendant: Boxed, LLC (Delaware)
  • Plaintiff’s Counsel: Chong Law Firm, P.A.
• Case Identification: 1:22-cv-00992, D. Del., 07/28/2022
• Venue Allegations: Venue is alleged to be proper based on Defendant’s organization as a Delaware limited liability company and its commission of alleged infringing acts within the district.
• Core Dispute: Plaintiff alleges that Defendant’s e-commerce platform infringes five patents related to the dynamic generation of customized webpages based on user data and preferences.
• Technical Context: The asserted patents address methods for efficiently serving personalized web content, a foundational technology for modern e-commerce, social media, and personalized web portals.
• Key Procedural History: The five asserted patents, all originally assigned to Yahoo! Inc., share a common specification and claim priority to a 1997 application. The complaint references prosecution history arguments distinguishing the claimed inventions from prior art based on unconventional features, such as storing a user-customized template in at least two locations determined by the user's request frequency.

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’s background describes prior art methods for generating customized webpages, such as executing Common Gateway Interface (CGI) scripts, as being slow and not scalable for high-traffic websites. Other methods, which involved pre-transferring data to a user’s local storage, were said to clog networks and result in outdated information (Compl. ¶14-15; ’854 Patent, col. 1:42-67).
• The Patented Solution: The invention proposes a system where a page server generates a customized "user template" from a global template and a user's specific configuration data. This user template is then populated with "live data" (e.g., stock quotes, news) that is stored locally to the page server in a shared memory. This architecture is designed to avoid repeated, slow requests to external data sources. The system also introduces the concept of storing the user template in different locations—such as a primary database or a faster cache—based on the frequency of the user's requests (Compl. ¶17, 20; ’854 Patent, Fig. 2; ’854 Patent, col. 4:43-58, col. 6:49-59).
• Technical Importance: This architecture provided a method for rapidly serving scalable, personalized web pages, a key technical challenge for the operators of large, customized web portals in the late 1990s (Compl. ¶12; ’854 Patent, col. 1:26-30).

Key Claims at a Glance

• The complaint asserts independent claims 1 (method), 8 (system), and 15 (computer-readable medium), and dependent claims 2 and 9 (Compl. ¶27).
• Independent Claim 1 (Method) includes the essential elements of:
  • Receiving a user request for a customized page.
  • Receiving a template program unique to the user and based on user-supplied configuration information, which includes user demographic information.
  • The template program is received from one of at least two locations, where the specific location is determined from the frequency of the user request for the customized page.
  • Running the template program to create the customized webpage.
• Independent Claim 8 (System) includes the essential elements of:
  • Logic for receiving a user request for a customized page.
  • Logic for receiving a template program unique to the user, based on user-supplied configuration information that includes demographic information.
  • The template is received from one of at least two locations, determined by request frequency.
  • A processor for running the template program to create the customized page.
• Independent Claim 15 (Computer-Readable Medium) includes instructions for performing the steps of method claim 1.

U.S. Patent No. 5,983,227 - “Dynamic Page Generator,” issued November 9, 1999.

The Invention Explained

• Problem Addressed: The complaint incorporates by reference the same technical problems of scalability and latency in prior art customized web page generation systems as described for the ’854 Patent (Compl. ¶44).
• The Patented Solution: As the ’227 Patent shares its specification with the ’854 Patent, the proposed solution is fundamentally the same: a page server architecture that combines user preferences with a template and populates it with live data stored in a local, shared memory to enable real-time page generation without costly calls to external servers (’227 Patent, Abstract; ’227 Patent, col. 4:12-16).
• Technical Importance: The invention provided an early, scalable solution for real-time, personalized content delivery on the web (Compl. ¶43).

Key Claims at a Glance

• The complaint asserts at least independent claim 2 (Compl. ¶45).
• Independent Claim 2 (Method) includes the essential elements of:
  • 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.
  • Providing the user with the customized page in real-time response to the request.

U.S. Patent No. 7,171,414 - “Dynamic Page Generator,” issued January 30, 2007.

• Technology Synopsis: Sharing the same specification as the lead patents, the ’414 Patent relates to a method for providing a customized page where the page is customized according to user preferences and a template is received from one of at least two locations, with the specific location being determined by the frequency of the user's request (Compl. ¶59, 61). A key feature highlighted from the prosecution history is storing real-time information in a shared local storage device to allow a page to be built entirely within the page server (Compl. ¶59-60).
• Asserted Claims: 1 and 3 (Compl. ¶62).
• Accused Features: The complaint alleges that the Boxed.com website, which utilizes a page server to provide customized pages based on user preferences (e.g., search parameters, account information), infringes this patent (Compl. ¶62).

U.S. Patent No. 7,565,359 - “Dynamic Page Generator,” issued July 21, 2009.

• Technology Synopsis: The ’359 Patent, which also shares the common specification, is directed to a computer-readable medium containing instructions for generating customized pages. The claims are described as focusing on executing a user-specific template program using real-time information stored in a shared local storage device, and combining user preferences with a generic template to form that user-specific template (Compl. ¶78).
• Asserted Claims: 10 (Compl. ¶79).
• Accused Features: The accused instrumentality is the computer-readable medium (e.g., server memory) comprising instructions for generating customized pages on the Boxed.com platform according to user preferences (Compl. ¶79-80).

U.S. Patent No. 9,626,342 - “Dynamic Page Generator,” issued April 18, 2017.

• Technology Synopsis: Also sharing the common specification, the ’342 Patent is directed to a method of generating a customized web page. The method involves generating a template program unique to a user by combining user-specific customization information with a generic global template, and then executing that program to create the final customized page containing real-time information (Compl. ¶95, 96).
• Asserted Claims: 1 and 7 (Compl. ¶93).
• Accused Features: The complaint alleges infringement by the Boxed.com platform, which allegedly generates and executes user-specific template programs (e.g., JavaScript) to create customized web pages that display, for instance, a user's name and tailored search results (Compl. ¶95).

III. The Accused Instrumentality

Product Identification

• The accused instrumentality is the e-commerce website Boxed.com and its associated backend systems and software (“Accused Instrumentality”) (Compl. ¶27).

Functionality and Market Context

• The Accused Instrumentality is an online retail platform for bulk goods. The complaint alleges that when a user logs in, the platform provides customized home and search pages (Compl. ¶28). The complaint alleges the platform utilizes user-provided information, such as account details and location, to serve personalized content and targeted advertisements (Compl. ¶28, 30). The complaint includes a screenshot of a personalized welcome message ("Welcome, John Snow!") after a user has logged in as evidence of this customization (Compl. p. 20). Functionally, the system is alleged to use a "template program," such as JavaScript, which is unique to the user and combines a generic page layout with user-specific data to render a customized webpage (Compl. ¶29). This template program and its associated data are allegedly retrieved from one of at least two locations (e.g., main server, CDN server, or local cache), with the retrieval location being determined by the user's access frequency (Compl. ¶29).

IV. Analysis of Infringement Allegations

U.S. Patent No. 8,352,854 Infringement Allegations

U.S. Patent No. 5,983,227 Infringement Allegations

Identified Points of Contention

• Scope Questions: A primary question may be whether the term "template program", rooted in the patent's 1997 description of a server-side HTML document with special tags, can be construed to read on the modern, client-side JavaScript-based application architecture alleged to be used by the accused website.
• Technical Questions: The complaint alleges that the retrieval location for page components (e.g., server vs. cache/CDN) is "determined from the frequency of the user request" (Compl. ¶29). A potential point of contention is what evidence demonstrates that this selection is based on an individual user's specific request frequency, as opposed to being the result of standard, user-agnostic web caching and content delivery network (CDN) logic that optimizes content delivery for all users.

V. Key Claim Terms for Construction

The Term: "template program"

• Context and Importance: This term is central to all asserted patents. Its construction will likely determine whether the patents’ claims, which originate from 1990s web architecture, apply to the accused modern web platform. Practitioners may focus on this term because the defendant may argue it is limited to the server-side HTML-based templates with placeholders disclosed in the specification, while the plaintiff may argue it should be construed more broadly to encompass the combination of instructions and data (e.g., JavaScript, user data objects) used to render a customized webpage.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The body of the claims uses the general term "template program" without limiting it to a specific implementation like HTML. The specification describes its function as enabling the generation of a custom page from user preferences and live data, a function that plaintiff will argue is performed by the accused instrumentality's combination of scripts and data (Compl. ¶49; ’227 Patent, col. 2:3-6).
  • Evidence for a Narrower Interpretation: The specification provides a specific, non-limiting example of a "user template" that is an HTML document containing special, non-standard tags as placeholders (Compl. ¶17, Ex. A at Fig. 4; ’854 Patent, col. 5:16-23). A defendant could argue that this embodiment limits the scope of the term to such a structure.

The Term: "the location determined from the frequency of the user request for the customized page"

• Context and Importance: This limitation from claim 1 of the ’854 Patent is a key feature alleged to be an unconventional technical improvement over the prior art. The dispute will center on whether standard web caching and CDN behavior meets this limitation.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The patent describes a benefit of this feature as reducing response time for frequent users (Compl. ¶20; ’854 Patent, col. 5:29-32). Plaintiff may argue that any system where frequently requested assets are moved to a faster tier of storage (such as a browser cache or CDN edge node) inherently functions to determine location based on request frequency.
  • Evidence for a Narrower Interpretation: The specification describes a specific architecture where user templates for infrequent users are stored in a "user configuration database," while those for frequent users may "also be stored in cache" (’854 Patent, col. 6:55-59). A defendant could argue this requires a system that actively tracks individual user frequency and makes a deliberate decision to move that specific user's template between two distinct, pre-defined storage tiers, rather than relying on generalized, system-wide caching rules.

VI. Other Allegations

Willful Infringement

• The prayer for relief requests that damages be trebled as a result of alleged willful infringement (Compl. Prayer for Relief, ¶g). The body of the complaint, however, does not plead a separate count for willfulness or allege specific facts indicating pre-suit knowledge of the patents by the Defendant. The complaint alleges only that Defendant had at least constructive notice of the patents by operation of law (Compl. ¶38, 54, 72, 86).

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

• A core issue will be one of definitional scope: can the term "template program", as defined in the context of a 1997-priority patent describing a server-centric architecture, be construed to cover the modern, dynamic, and often client-side JavaScript-driven architecture of the accused e-commerce platform?
• A key evidentiary question will be one of causation versus correlation: does the Accused Instrumentality’s use of modern web caching and Content Delivery Networks (CDNs) constitute a system where a template's storage "location [is] determined from the frequency of the user request" as required by the claims, or is the placement of assets in faster storage tiers merely a correlated outcome of user-agnostic web performance optimization techniques?