DCT
3:15-cv-00164
Aatrix Software Inc v. Greenshades Software Inc
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Aatrix Software, Inc. (North Dakota)
- Defendant: Green Shades Software, Inc. (Florida)
- Plaintiff’s Counsel: Briggs and Morgan, P.A.; Jones Foster Johnston & Stubbs, P.A.
- Case Identification: 3:15-cv-00164, M.D. Fla., 04/26/2016
- Venue Allegations: Venue is based on Defendant's principal place of business being located in Jacksonville, Florida, within the Middle District of Florida.
- Core Dispute: Plaintiff alleges that Defendant’s tax form software products infringe patents related to a system and method for decoupling the design and data of computerized forms from a host software application.
- Technical Context: The technology addresses inefficiencies in creating, updating, and distributing computerized government forms by separating a form's visual layout and logic into distinct "form files" that can be populated by separate "data files" generated by third-party accounting software.
- Key Procedural History: This Second Amended Complaint follows prior litigation activity, including an agreement between the parties to allow Plaintiff's experts to examine the source code of the accused products under a protective order. The complaint details the prosecution histories of both patents-in-suit, noting that claims were examined and allowed by the USPTO after consideration of subject matter eligibility under 35 U.S.C. § 101, including an examination of the continuation patent that occurred after the Supreme Court's decision in Alice Corp. v. CLS Bank.
Case Timeline
| Date | Event |
|---|---|
| 1995-11-28 | Earliest reduction to practice date alleged for '393 Patent subject matter |
| 2002-03-26 | Priority date for '615 and '393 Patents (Application for '615 Patent filed) |
| 2005-03-25 | First Office Action issued for '615 Patent application |
| 2006-09-19 | Notice of Allowance issued for '615 Patent |
| 2007-01-26 | Continuation Application for '393 Patent filed |
| 2007-01-30 | '615 Patent issued |
| 2010-03-04 | First Office Action issued for '393 Patent application |
| 2014-06-09 | U.S. Supreme Court issues Alice Corp. v. CLS Bank decision |
| 2014-09-25 | Date Plaintiff allegedly sent Defendant a letter enclosing the '615 Patent |
| 2015-01-15 | Notice of Allowance issued for '393 Patent |
| 2015-02-12 | Date Defendant's counsel allegedly received notice of '393 Patent allowance |
| 2015-03-17 | '393 Patent issued |
| ~2015-03-XX | Defendant allegedly implements a redesign of accused software products |
| 2016-04-26 | Second Amended Complaint filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,171,615 - "Method and Apparatus for Creating and Filing Forms," issued January 30, 2007
The Invention Explained
- Problem Addressed: The patent describes prior art methods for computerizing forms as costly and inefficient, particularly for frequently-updated government tax forms (Compl. ¶11). These methods often involved "hard-coding" the forms directly into monolithic accounting software, which required skilled programmers for any updates, created a risk of "regression bugs," and necessitated the distribution of large, full-program updates to customers (Compl. ¶¶27-29).
- The Patented Solution: The invention proposes a decoupled architecture to solve this problem ('615 Patent, Abstract). As illustrated in the complaint's Figure 3, the system uses three separate components: 1) a "form file" that contains a model of the form's layout, calculations, and rules; 2) a "data file" (e.g., an Aatrix Universal File or "AUF") that contains the specific data to be populated, exported from a separate user application like business accounting software; and 3) a "form viewer" program that reads the form and data files to render an interactive, viewable form for the user (Compl. ¶¶32-33, 42, 45; '615 Patent, col. 1:29-41).
- Technical Importance: This separation of the form model from the application code allowed non-programmers to create and update forms more quickly and cheaply, and enabled small, efficient updates to be distributed electronically (Compl. ¶¶34-35).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 22.
- Independent Claim 1 recites a "data processing system" comprising:
- a form file that models the physical representation of an original paper form and establishes the calculations and rule conditions;
- a data file containing data for populating the viewable form; and
- a form viewer program operating on the form file and the data file to perform calculations, allow user review and changes, and create viewable forms and reports.
- Independent Claim 22 recites a method for designing, creating, and importing data into a viewable form, comprising the steps of a form designer creating a form file, executing a data file importing program, and a user executing a forms viewer program that merges the data from the two files.
- The complaint alleges infringement of numerous dependent claims and reserves the right to assert others (Compl. ¶¶126-127).
U.S. Patent No. 8,984,393 - "Method and Apparatus for Creating and Filing Forms," issued March 17, 2015
The Invention Explained
- Problem Addressed: As a continuation of the application leading to the '615 Patent, the '393 patent addresses the same problems of inefficient, monolithic, and hard-coded electronic form systems (Compl. ¶¶9, 11).
- The Patented Solution: The '393 Patent claims a method for creating and populating a viewable form that duplicates a paper form. The method involves executing a program to convert a paper form into a viewable image with data fields, importing data into those fields, performing calculations on the data, and allowing a user to review and file the resulting form ('393 Patent, Abstract). This method relies on the same underlying decoupled architecture of a form file, data file, and viewer program as the '615 Patent ('393 Patent, col. 1:51-62).
- Technical Importance: The solution provides a specific, improved method for creating and using computerized forms that mirror official paper versions, which is critical for government agency acceptance (Compl. ¶22).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 7.
- Independent Claim 1 recites a method for designing and creating a viewable form, comprising the steps of:
- executing a program to convert a paper form into a form file;
- importing data from an end user application into a data file to populate the form file;
- performing calculations on the imported data;
- allowing a user to review and change the data; and
- outputting the viewable form.
- Independent Claim 7 recites a method for creating a viewable form that includes the step of converting the viewable form into an e-file form suitable for electronic filing.
- The complaint alleges infringement of numerous dependent claims and reserves the right to assert others (Compl. ¶¶145-146).
III. The Accused Instrumentality
Product Identification
- Greenshades Tax Filing Center (“TFC”) and Greenshades Payroll Tax Service (“PTS”) (Compl. ¶5).
Functionality and Market Context
- The TFC product is described as an installed software package, while the PTS product is a software-as-a-service accessed over the Internet (Compl. ¶5). The complaint alleges both products function as "add-on" software for third-party business accounting software, such as Microsoft Dynamics (Compl. ¶13-14).
- Their core accused functionality involves creating electronic tax forms and reports by populating them with data from the accounting software (Compl. ¶10). The complaint alleges that these products create "form files" and utilize a "form viewer" to operate on those files and on "data files" created on a customer's system (Compl. ¶¶14, 123). Figure 1 of the complaint, which depicts a three-layer form representation (background, fields, calculations), is presented as an example of the technology allegedly used (Compl. ¶23).
- The complaint notes that Defendant is a direct competitor of Plaintiff in the business of creating and providing computerized forms for government tax filing (Compl. ¶10). It also states that Plaintiff's experts have examined the source code for both the pre- and post-March 2015 redesigned versions of the accused products (Compl. ¶¶9, 120).
IV. Analysis of Infringement Allegations
'615 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A data processing system for designing, creating, and importing data into, a viewable form viewable by the user of the data processing system, comprising: | Defendant makes, uses, and sells the TFC and PTS software products, which operate on computers and data processing systems to create and file forms. | ¶¶5, 120 | col. 1:29-32 |
| (a) a form file that models the physical representation of an original paper form and establishes the calculations and rule conditions required to fill in the viewable form; | Defendant's software systems allegedly create and use "form files" that contain a representation or model of a government form. Figure 3 of the complaint illustrates this concept of a separate form file. | ¶¶14, 32 | col. 1:33-36 |
| (b) a data file containing data for populating the viewable form; | Defendant's products allegedly create or deliver a "data file" on or to a customer's data processing system, containing data extracted from the customer's accounting software. | ¶123 | col. 1:37-38 |
| (c) a form viewer program operating on the form file and the data file to perform calculations, allow the user of the data processing system to review and change the data, and create viewable forms and reports. | Defendant's TFC and PTS software allegedly include a "form viewer" program that interprets the form and data files to display the form, perform calculations, and allow user interaction. | ¶¶14, 123 | col. 1:39-44 |
Identified Points of Contention
- Scope Questions: The complaint anticipates that a key dispute will be whether the functionality of the claimed "form file" must reside in a single, discrete file, or if it can be distributed across multiple files or data structures (Compl. ¶124). The definition of "data file" will also be critical, specifically whether the mechanism used by the accused products to import data from accounting software meets the claim limitation as distinct from prior art database queries (Compl. ¶53).
- Technical Questions: While the complaint alleges that an expert review of the source code confirms infringement, it withholds specific technical details, citing confidentiality (Compl. ¶120). A central question for the court will be whether the technical evidence shows that the TFC and PTS products actually employ a decoupled, three-part architecture (form file, data file, viewer) or if they operate in a fundamentally different manner.
V. Key Claim Terms for Construction
The Term: "data processing system"
- Context and Importance: This term appears in the preamble of system claims and is foundational to patent eligibility. Practitioners may focus on this term because the complaint dedicates significant space to its prosecution history, where the applicant successfully argued against a § 101 rejection by asserting the term requires physical hardware (Compl. ¶¶94-99).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term itself, without further context, could be argued to encompass a software-only system that processes data.
- Evidence for a Narrower Interpretation: The complaint details the prosecution history of a related application where the applicant provided a dictionary definition stating a "data processing system" comprises "[o]ne or more computers, peripheral equipment, and software" to overcome a rejection (Compl. ¶96). This creates a potential prosecution history estoppel that would limit the term's scope to systems including hardware.
The Term: "form file"
- Context and Importance: This term is at the core of the asserted invention, distinguishing it from prior art "monolithic" software where form logic was hard-coded (Compl. ¶¶27, 31). The complaint anticipates a dispute over its structural requirements, suggesting Defendant may argue its functionality is not contained in a single file (Compl. ¶124, ¶143).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue "form file" should be construed functionally to mean any data structure or set of structures that models the form's layout and logic, regardless of whether it is a single file on a disk.
- Evidence for a Narrower Interpretation: The specification repeatedly describes the invention in terms of creating a "separate form file" that is decoupled from the application source code and can be distributed independently, which supports a more structural, discrete definition ('615 Patent, col. 1:55-63; Compl. ¶35).
VI. Other Allegations
- Indirect Infringement: The complaint pleads separate counts for both contributory and induced infringement. Contributory infringement is based on allegations that Defendant sells the TFC and PTS software as material components of the patented system, knowing they are especially adapted for an infringing use and not a staple article of commerce (Compl. ¶¶131, 150). Inducement is based on allegations that Defendant provides advertising and instructions that encourage customers to use the products in an infringing manner (Compl. ¶¶134, 153).
- Willful Infringement: The complaint alleges that Defendant had knowledge of the '615 Patent at least as of September 2014 and of the '393 Patent at least as of its allowance in February 2015 (Compl. ¶¶130, 149). It further alleges that Defendant has "knowingly and willfully infringed" the patents in "willful disregard" of Plaintiff's rights, forming a basis for enhanced damages (Compl. ¶¶125, 144).
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this case may turn on the following central questions:
- A core issue will be one of claim scope and prosecution history estoppel: Given the extensive arguments made to the USPTO regarding patent eligibility, particularly for the term "data processing system", to what extent will the patentee be limited to a narrow, hardware-inclusive construction of the claims?
- A key evidentiary question will be one of architectural correspondence: Does the technical operation of the accused TFC and PTS products, especially following their alleged March 2015 redesign, mirror the patents' decoupled three-component architecture of a "form file", a "data file", and a "viewer", or is there a fundamental mismatch?
- A dispositive legal question may be one of patent eligibility: Despite the patents surviving examination, will the court, under the Alice framework, find the claims are directed to an abstract idea (e.g., computerizing forms) without a sufficient inventive concept, or will it agree with the complaint's narrative that the patents claim a specific, concrete improvement to computer functionality?