DCT
1:23-cv-00004
Web 20 Tech LLC v. Realtimeboard Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Web 2.0 Technologies LLC (Texas)
- Defendant: RealtimeBoard, Inc. d/b/a Miro (Delaware)
- Plaintiff’s Counsel: Devlin Law Firm LLC
- Case Identification: 1:23-cv-00004, D. Del., 01/01/2023
- Venue Allegations: Venue is based on Defendant's incorporation in the state of Delaware.
- Core Dispute: Plaintiff alleges that Defendant’s Miro online collaborative whiteboard platform infringes patents related to the managed storage and collaborative sharing of online information and documents.
- Technical Context: The dispute centers on foundational technologies for cloud-based collaboration platforms, which allow distributed teams to create, share, and manage digital content with granular access controls.
- Key Procedural History: U.S. Patent No. 8,117,644 is a continuation-in-part of the application that matured into U.S. Patent No. 6,845,448, indicating a shared specification and an early priority date for the asserted technology. The complaint does not mention any other prior litigation, licensing history, or administrative proceedings.
Case Timeline
| Date | Event |
|---|---|
| 2000-01-07 | Priority Date for ’448 and ’644 Patents |
| 2005-01-18 | ’448 Patent Issued |
| 2012-02-14 | ’644 Patent Issued |
| 2021-09-27 | Date of Email from Miro to Vik Kaushal referenced in complaint |
| 2021-09-29 | Last visited date for certain Miro webpages referenced in complaint |
| 2021-09-30 | Last visited date for certain Miro webpages referenced in complaint |
| 2022-12-30 | Last visited date for certain Miro webpages referenced in complaint |
| 2023-01-01 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,845,448 - Online Repository for Personal Information (Issued Jan. 18, 2005)
The Invention Explained
- Problem Addressed: The patent identifies the inefficiency and annoyance for internet users of repeatedly filling out online forms with personal information for various websites and services. It also notes the lack of a centralized, user-controlled system for managing and selectively sharing this information. (’448 Patent, col. 1:12-34).
- The Patented Solution: The invention describes a method where a user stores various types of personal information ("information objects") on a central server. The user can then assign different security levels to each piece of information, allowing authorized third parties ("requesters") to access only the specific information they are permitted to see. The system handles receiving requests, verifying authorization, and securely transmitting the approved information. (’448 Patent, Abstract; col. 2:20-43).
- Technical Importance: This patent addresses an early-internet-era problem by proposing a centralized, permission-based architecture for managing a user's digital identity and data, a conceptual precursor to modern single sign-on systems and federated identity management. (’448 Patent, col. 1:35-46).
Key Claims at a Glance
- The complaint asserts independent Claim 1. (Compl. ¶20).
- Essential elements of asserted independent Claim 1 (as corrected Dec. 31, 2013) include:
- A server-computer-performed method for disbursing a first party's personal information to an authorized second party.
- Establishing an account and assigning an identifier for the first party (user).
- Receiving and storing the first party's personal information, comprising "a plurality of information objects."
- Receiving, from the first party, an assignment of different "security levels to each information object at any granularity."
- Storing the user identifier, information object, and its assigned security level in a database.
- Receiving a request from a second party that includes the first party's identifier.
- Retrieving and securely transmitting the selected portion of the first party's personal information to the second party.
- Obtaining a second party identifier and, if that party is not authorized, recording the identifier and rejecting the request.
- The complaint reserves the right to assert additional claims. (Compl. ¶37).
U.S. Patent No. 8,117,644 - Method and System for Online Document Collaboration (Issued Feb. 14, 2012)
The Invention Explained
- Problem Addressed: The patent identifies challenges in online collaboration, such as the unreliability of bookmarks to web pages that may be moved or deleted ("stale" bookmarks) and the lack of a robust system for multiple users to securely and controllably edit a shared digital document. (’644 Patent, col. 1:46-63).
- The Patented Solution: The invention provides a system where a first user can store a document on a server and associate it with specific access restrictions. It allows a second user to request modification access, verifies the second user's identity, and permits modifications based on granted rights. Crucially, the system includes a mechanism for receiving "approval or disapproval" for the modifications from other users and storing a record of who made the approval or disapproval. (’644 Patent, Abstract).
- Technical Importance: The technology provides a framework for auditable, multi-user, asynchronous collaboration on a single, persistent digital document, a core function of modern enterprise collaboration software. (’644 Patent, col. 3:45-54).
Key Claims at a Glance
- The complaint asserts independent Claim 1. (Compl. ¶40).
- Essential elements of asserted independent Claim 1 include:
- A server-computer-performed method for online document collaboration.
- Establishing accounts for multiple users.
- Storing a document created by a first user on the server.
- Associating "a set of access restrictions" with the document, including modification rights for a group of known users.
- Receiving a request to modify the document from a second user, which includes the user's identification.
- Verifying the second user's identity.
- Permitting the second user to modify the document based on granted access rights.
- "Receiving approval or disapproval for the modifications from one or more users."
- "Storing identifying information of the one or more users who approved or disapproved the modifications."
- The complaint reserves the right to assert additional claims. (Compl. ¶52).
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is the "Miro platform," which the complaint identifies as an "online collaborative whiteboard platform." (Compl. ¶¶21, 40).
Functionality and Market Context
- The complaint alleges the Miro platform enables distributed teams to collaborate on projects using features like digital sticky notes and agile workflow management. (Compl. ¶¶21, 40). Users can establish accounts, create "boards" (documents), and invite other users as team members, guests, or visitors with varying levels of access. (Compl. ¶21). Key alleged functionalities include assigning a "Board owner," entering information into board templates, setting granular access rights (e.g., "Can view," "Can edit," "No access"), storing user and document data, managing access requests, and logging modifications in a "board history." (Compl. ¶¶22, 23, 24, 48, 49). The platform's different subscription tiers, such as "Business" and "Enterprise," are alleged to offer progressively advanced security and administration features. (Compl. ¶25).
IV. Analysis of Infringement Allegations
’448 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| establishing an account for the first party with the server computer; | The Miro platform allows users to create an account by providing a name, work email, and password. This is depicted in a screenshot of the registration page. (Compl. ¶21). | ¶21 | col. 8:16-25 |
| assigning an identifier to the first party; | The platform assigns the identifier "Board owner" to the first party who establishes an account and creates a board. | ¶22 | col. 8:30-34 |
| entering the first party's personal information...comprising at least one of a plurality of information objects; | Users can enter information into Miro Board templates, such as a table for Name, Date of Birth, and Social Security Number, or add assets from third-party services like Google Drive and Dropbox. | ¶¶23, 26 | col. 8:41-46 |
| receiving, from the first party, assignment of at least one of a plurality of security levels to each information object at any granularity... | A board owner can assign different access rights to other users, such as "Can view," "Can comment," "Can edit," or "No access." A screenshot illustrates this "Share" window functionality. (Compl. ¶24). | ¶¶24, 25 | col. 9:21-31 |
| storing in the database the first party identifier, the information object and the security level... | The platform allegedly stores the first party identifier, the document/file, and the assigned security level in its database, managed through features like "Advanced administration settings" and "sharing permissions & link access controls." | ¶25 | col. 8:34-40 |
| receiving a request...comprising at least the first party identifier; | The platform receives a request to view a document from a second party, which comprises the "board owner" identifier. A screenshot shows a user being prompted to "Request access" from the board owner. (Compl. ¶27). | ¶27 | col. 11:10-24 |
| securely transmitting the retrieved first portion of personal information objects to the second party; | In response to a request, the platform transmits the selected document/file to the second party, for example by sending an email invitation to the collaborative board. | ¶¶29, 30 | col. 12:36-40 |
| if the second party is not authorized...recording the second party identifier; and rejecting the second party's request... | The platform obtains the second party's identifier (e.g., jane@miro.com) to determine permissions. If the user is not authorized, the platform records the access attempt in an "Audit Log" and rejects the request, displaying a "You don't have permissions" message. (Compl. ¶¶31, 32, 33). | ¶¶32, 33 | col. 14:48-65 |
- Identified Points of Contention:
- Scope Questions: A central question may be whether the "information objects" stored and shared on the Miro platform (e.g., collaborative project boards, design mockups) constitute "personal information" as contemplated by the patent, which provides examples like demographic, medical, and financial data (’448 Patent, col. 7:4-36). The complaint illustrates this point with a screenshot of a template containing fields like "SOCIAL SECURITY NUMBER," which directly aligns with the patent's description. (Compl. ¶23).
- Technical Questions: The analysis may examine whether Miro's general access control system ("Can view," "Can edit") functions as the claimed assignment of "security levels to each information object at any granularity," or if there is a technical distinction between permissioning a collaborative document and classifying discrete data objects with security levels.
’644 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| establishing...an account for each of a plurality of users; | The Miro platform allows multiple users, including an initial user and at least four other users, to establish accounts over the internet. | ¶41 | col. 25:8-10 |
| storing, on the server computer, a document created by a first user; | A first user, acting as a "Board owner," can create and store multiple "Miro boards" on Miro's server. | ¶42 | col. 25:11-12 |
| associating a set of access restrictions with the document...for modification by one of a first group of users... | A first user can restrict access to a Miro Board, allowing a first group of users to only view, comment, edit, or have no access. | ¶43 | col. 25:13-19 |
| receiving, from a second user, a request to modify the document... | A "view only" user can use the platform's chat feature to request that the first user grant modification access. | ¶44 | col. 25:20-23 |
| verifying the identity of the second user; | The platform verifies the second user's identity by sending an invitation email that the user must accept to gain access. A screenshot of this invitation email is provided. (Compl. ¶46). | ¶46 | col. 25:24-25 |
| permitting the second user to modify the document based on a set of access rights... | Once access is granted, the second user can modify the document by adding text, drawing, adding tables, and other actions. | ¶47 | col. 25:26-28 |
| receiving approval or disapproval for the modifications from one or more users; | The platform allows a first user to approve or disapprove modifications by providing features to "lock a modification or delete a change unacceptable to the first user." | ¶48 | col. 25:29-31 |
| storing identifying information of the one or more users who approved or disapproved the modifications... | The "board history" feature allegedly logs every modification and stores the identifying information of the user who made the change, which the complaint equates with approving or disapproving modifications. This is illustrated in a screenshot showing the "Board history" log. (Compl. ¶49). | ¶49 | col. 25:32-35 |
- Identified Points of Contention:
- Scope Questions: An issue for construction may be the scope of "document." While the patent defines "digital item" broadly, the dispute may focus on whether a dynamic, multi-object "Miro Board" is equivalent to the "document" described.
- Technical Questions: A key evidentiary question may be whether the alleged functions of "locking" or "deleting" a change (Compl. ¶48) or logging a user's edits in a "board history" (Compl. ¶49) meet the specific claim limitation of "receiving approval or disapproval for the modifications from one or more users" and "storing identifying information of the...users who approved or disapproved." The court will need to determine if an edit log is functionally equivalent to an explicit approval/disapproval mechanism.
V. Key Claim Terms for Construction
For the ’448 Patent:
- The Term: "information object"
- Context and Importance: This term's definition is critical because it defines the subject matter being managed by the claimed system. The infringement case hinges on whether the content created and stored within the Miro platform—such as collaborative whiteboards, project plans, and user-generated content—qualifies as a "plurality of information objects" of "personal information."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states that an "information object" is "any piece of information, however small in granularity or however agglomerated." (’448 Patent, col. 6:56-59). This language could support construing the term broadly to cover any form of digital content.
- Evidence for a Narrower Interpretation: The specification's examples of information objects are consistently tied to "personal information," such as "personal demographic information," "health related information," "biometric information," and "credit related information." (’448 Patent, col. 7:4-19). This may support an argument that the term is limited to user-specific identity or profile data, rather than general collaborative work product.
For the ’644 Patent:
- The Term: "receiving approval or disapproval for the modifications"
- Context and Importance: This step is a lynchpin of the collaboration method claimed in the ’644 patent. The infringement analysis will turn on whether the functionality of the Miro platform, as alleged in the complaint, actually performs this specific action. Practitioners may focus on this term because the complaint's theory appears to equate logging a modification with receiving approval for it.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not specify the form of the approval or disapproval, which could allow for an interpretation that encompasses implicit actions. The complaint alleges that the ability for a user to "delete a change unacceptable to the first user" constitutes receiving disapproval. (Compl. ¶48).
- Evidence for a Narrower Interpretation: The claim language suggests an active process of "receiving" a specific "approval or disapproval" communication from a user regarding a specific modification, rather than passively logging the modification itself. The complaint's evidence points to a "board history" feature that logs changes (Compl. ¶49), which may be argued is technically distinct from a system that receives and records explicit approval or disapproval decisions about those changes.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendant infringes "directly and jointly (e.g., with its customers and users)." (Compl. ¶¶20, 40). This "joint infringement" allegation suggests a potential theory of divided infringement, where some steps of the claimed method may be performed by Miro's users, acting under Defendant's control or direction. The complaint does not contain separate counts for induced or contributory infringement.
- Willful Infringement: The complaint does not include an explicit count for willful infringement or allege that Defendant had pre-suit knowledge of the patents-in-suit. The prayer for relief includes a request for a finding that the case is "exceptional" under 35 U.S.C. § 285, which could support an award of attorneys' fees, but this is distinct from a formal willfulness claim seeking enhanced damages. (Compl. ¶c., p. 22).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: Can the term "personal information", central to the ’448 Patent and exemplified by data like medical and financial records, be construed to cover the general-purpose collaborative work product, such as project boards and agile workflows, created on the Miro platform?
- A second central question will be one of functional mapping: Does the Miro platform's "board history" feature, which logs user modifications, perform the specific function of "receiving approval or disapproval for the modifications" as required by Claim 1 of the ’644 Patent, or is there a fundamental mismatch in technical operation between an audit log and an explicit approval mechanism?
- Finally, the case may explore the boundaries of joint infringement: Given that users perform key actions on the platform (e.g., entering information, making modifications), a key evidentiary question will be whether Plaintiff can establish that Miro directs or controls its users' actions to the extent necessary to be held liable for performing every step of the claimed methods.