DCT
1:17-cv-07831
Lit v. Ace Hardware Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Samuel Lit (Pennsylvania)
- Defendant: Ace Hardware Corporation (Delaware)
- Plaintiff’s Counsel: Wawrzyn & Jarvis LLC
- Case Identification: 1:17-cv-07831, N.D. Ill., 10/31/2017
- Venue Allegations: Plaintiff alleges venue is proper in the Northern District of Illinois because Defendant Ace Hardware Corporation conducts continuous and systematic business in the district, and the patent infringement claim arises from this activity.
- Core Dispute: Plaintiff alleges that the "display carousel" feature on Defendant's e-commerce website, www.acehardware.com, infringes a patent related to systems and methods for displaying online content.
- Technical Context: The technology concerns dynamic web-based advertising, specifically the use of rotating modules or "carousels" to display multiple pieces of content (e.g., advertisements, promotions) in a single, space-efficient area on a webpage.
- Key Procedural History: The complaint does not mention any prior litigation involving the patent-in-suit, any post-grant proceedings before the U.S. Patent and Trademark Office, or any prior licensing history.
Case Timeline
| Date | Event |
|---|---|
| 2007-11-07 | ’330 Patent Priority Date |
| 2014-07-29 | ’330 Patent Issue Date |
| 2017-10-30 | Date of Observed Infringement Alleged in Complaint |
| 2017-10-31 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,793,330 - "Information Display System and Method," issued July 29, 2014 (’330 Patent)
The Invention Explained
- Problem Addressed: The patent's background describes conventional internet advertising methods, such as static banner ads and "framing" advertisements around a website's main content, as being limited in their effectiveness and efficiency (’330 Patent, col. 1:26-34). It identifies a need for an improved system to disseminate information and advertising over the internet in a more rapid, cost-effective, and space-maximizing manner (’330 Patent, col. 1:36-42).
- The Patented Solution: The invention is a "Display Carousel" system for dynamically displaying various types of content on a website (’330 Patent, col. 2:40-43). The system features one or more display windows that can show text, graphics, video, or other media, which give the appearance of rotating like a carousel to cycle through different content items (’330 Patent, col. 2:43-49). The system architecture comprises a server component (with a database, image processing engine, and display engine) and a client component (a web browser), which communicate to deliver and manage the carousel's content (’330 Patent, FIG. 1).
- Technical Importance: This approach sought to provide a more engaging and information-dense user interface for web advertising and content delivery than the static methods that were common at the time (’330 Patent, col. 1:26-34).
Key Claims at a Glance
- The complaint asserts infringement of claim 16, an independent system claim, and reserves the right to assert other claims from the patent's 20 total claims (Compl. ¶9).
- Essential elements of independent claim 16 include:
- A "display carousel" embedded in a website, comprising one or more display windows configured to "revolve at a predetermined rate of speed."
- A "display engine" configured to deliver content to the display windows when the website is viewed in a web browser.
- The display engine is in communication with the website and a server.
- A "database" for storing and retrieving "statistical and financial information" about the content displayed on the carousel, with the database being in communication with the server.
- Content is "instantly passed" between the display engine and the display carousel.
III. The Accused Instrumentality
Product Identification
The accused instrumentality is the website www.acehardware.com (Compl. ¶9.a).
Functionality and Market Context
The complaint alleges that the Ace Hardware website, used for selling products to consumers, incorporates a "display carousel" feature (Compl. ¶9.a). This feature is described as having four "display windows" that revolve at a set speed to display promotional content, such as "October Savings" and "Online Only Savings" (Compl. ¶9.a). The complaint further alleges that the website's operation involves a display engine communicating with a server and a database used for tracking customer purchases (Compl. ¶¶9.b, 9.c).
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
’330 Patent Infringement Allegations
| Claim Element (from Independent Claim 16) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a display carousel embedded into a website or webpage, said display carousel comprising one or more display windows configured to display said content and to revolve at a predetermined rate of speed | The acehardware.com website includes a display carousel with four display windows that revolve at a predetermined rate to show content like "October Savings" and "One Day Only Deals." | ¶9.a | col. 10:62-11:2 |
| a display engine configured to deliver said content to said display windows of said display carousel when said website or webpage is displayed on a web browser, wherein said display engine is in communication with said website or webpage and a server of said system | A display engine communicates with the Ace site and a server, which powers the display carousel. | ¶9.b | col. 11:3-7 |
| a database comprising storage and retrieval functionality for statistical and financial information about said content displayed on said display carousel, wherein said database is in communication with said server | "Ace uses a database to track how many customers purchase, for example, vacation packages displayed on the display carousel." | ¶9.c | col. 11:8-11 |
| wherein said content is instantly passed between said display engine and said display carousel | Content is "instantly passed" on the Ace website when the display engine powers the display carousel. | ¶9.d | col. 11:12-13 |
- Identified Points of Contention:
- Technical Questions: A significant factual question arises from the allegation for the "database" element. The complaint alleges Ace uses a database to track purchases of "vacation packages" displayed on the carousel (Compl. ¶9.c). This specific allegation may be difficult to substantiate for a hardware retail website and raises the question of whether the plaintiff has a sufficient good-faith basis for this element of its infringement theory.
- Scope Questions: The meaning of "instantly passed" may be a central issue. The court will need to determine whether this term implies a specific, near-real-time data transfer technology or if it can be read to cover standard data delivery protocols used by web browsers. The complaint does not provide technical details on how the accused system allegedly achieves this "instant" passing of content (Compl. ¶9.d).
V. Key Claim Terms for Construction
The Term: "a database comprising storage and retrieval functionality for statistical and financial information about said content displayed on said display carousel"
- Context and Importance: The construction of this term is critical because infringement requires the accused database to manage a specific type of information ("statistical and financial") that is directly related to the content on the carousel. The viability of the plaintiff's case may depend on whether a general e-commerce database that tracks sales can satisfy this limitation, or if a more specific link between the database's function and the carousel's content is required.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent specification describes various database datafiles, including "bannerstats" for tracking clicks and views and "accountspaid" as a "commerce gateway application engine" (’330 Patent, col. 5:53-59, col. 6:3-7). This could suggest that standard e-commerce and ad-tracking functions fall within the claim's scope.
- Evidence for a Narrower Interpretation: The claim language explicitly links the "statistical and financial information" to the "content displayed on said display carousel." This may support an interpretation that requires the database to do more than just track general site activity; it must specifically store and retrieve financial data (e.g., revenue generated, cost of placement) tied to each piece of content within the carousel itself. The complaint's unusual "vacation packages" example highlights the specificity that may be required (Compl. ¶9.c).
The Term: "instantly passed"
- Context and Importance: Practitioners may focus on this term because it implies a temporal characteristic for the data transfer between the system's components. Whether the standard operation of the Ace website meets this "instant" requirement will be a key factual and legal question.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent describes the system's "unique organic nature" as enabling the "simultaneously and seamlessly" delivery of multimedia "from the client side to the user side ... instantly" (’330 Patent, col. 5:32-39). This descriptive language may support an interpretation aligned with the user's perception of a fast, responsive website, rather than a specific technical speed threshold.
- Evidence for a Narrower Interpretation: The patent lacks a specific technical definition or embodiment of what makes the transfer "instant." A defendant may argue that without a clear technical anchor in the specification, the term should be limited to the context of the invention and not read to cover the conventional, and inherently latent, processes of web data delivery.
VI. Other Allegations
- Indirect Infringement: The complaint does not allege indirect infringement. It pleads only direct infringement under 35 U.S.C. § 271(a) (Compl. ¶9).
- Willful Infringement: The complaint does not contain allegations of willful infringement or facts that would typically support such a claim, such as pre-suit knowledge of the patent.
VII. Analyst’s Conclusion: Key Questions for the Case
- A central evidentiary question will be one of factual basis: can the plaintiff produce evidence that the accused Ace Hardware website uses a database that performs the specific function required by claim 16—namely, tracking "statistical and financial information about said content displayed on said display carousel"? The complaint's specific allegation regarding "vacation packages" on a hardware store's website suggests this element may be a significant point of dispute.
- A key legal question will be one of definitional scope: how should the term "instantly passed" be construed? The case may turn on whether this claim term is interpreted to require a specific data transfer mechanism distinct from standard web protocols, or if it can be satisfied by the perception of a responsive user experience.