DCT

1:20-cv-11184

Content Square SAS v. Decibel Insight Ltd

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:20-cv-11184, D. Mass., 06/22/2020
  • Venue Allegations: Venue is alleged to be proper in the District of Massachusetts because Defendant Decibel Insight, Inc. maintains its principal place of business in the district, and both Defendants are alleged to have committed acts of infringement and to have a regular and established place of business there.
  • Core Dispute: Plaintiff alleges that Defendant’s digital experience analytics platform infringes five patents related to monitoring, tracking, and analyzing user browsing activity on websites and mobile devices.
  • Technical Context: The technology at issue falls within the field of digital experience analytics, a market focused on providing website owners with granular data on user interactions to optimize website design, improve user engagement, and increase conversion rates.
  • Key Procedural History: Subsequent to the filing of the complaint, Inter Partes Review (IPR) proceedings were initiated against all five asserted patents. These proceedings resulted in the cancellation of all asserted claims for three patents (the '525, '081, and '737 patents) and the cancellation of the asserted independent claims for the remaining two patents (the '365 and '645 patents), leaving only certain dependent claims patentable. These outcomes significantly narrow the scope of the dispute, focusing the case on the surviving dependent claims of the '365 and '645 patents.

Case Timeline

Date Event
2006-04-01 Earliest Priority Date ('525 & '081 Patents)
2011-05-10 Issue Date (U.S. Patent No. 7,941,525)
2012-05-10 Earliest Priority Date ('645 Patent)
2013-09-13 Earliest Priority Date ('737 Patent)
2013-12-31 Earliest Priority Date ('365 Patent)
2016-11-29 Issue Date (U.S. Patent No. 9,508,081)
2017-10-17 Issue Date (U.S. Patent No. 9,792,365)
2018-08-28 Issue Date (U.S. Patent No. 10,063,645)
2018-09-18 Issue Date (U.S. Patent No. 10,079,737)
2020-06-22 Complaint Filing Date
2020-12-29 IPR Filed against '645 Patent (IPR2021-00364)
2020-12-31 IPR Filed against '081 Patent (IPR2021-00363)
2021-01-29 IPR Filed against '525 Patent (IPR2021-00464)
2021-02-05 IPR Filed against '737 Patent (IPR2021-00416)
2021-02-12 IPR Filed against '365 Patent (IPR2021-00530)
2022-05-04 IPR Certificate Issued for '737 Patent (All claims cancelled)
2022-10-06 IPR Certificate Issued for '645 Patent (Some dependent claims survive)
2023-03-21 IPR Certificate Issued for '525 Patent (All claims cancelled)
2023-03-23 IPR Certificate Issued for '365 Patent (Some dependent claims survive)
2023-03-28 IPR Certificate Issued for '081 Patent (All claims cancelled)

II. Technology and Patent(s)-in-Suit Analysis

Given the subsequent cancellation of all claims in the '525, '081, and '737 patents, this analysis focuses on the two patents with surviving claims that remain at issue in the litigation.

U.S. Patent No. 10,063,645 - "Method and System for Monitoring and Tracking Browsing Activity on Handled Devices"

The Invention Explained

  • Problem Addressed: The patent describes that conventional website analytics tools were designed for personal computers using a mouse and could not accurately monitor or analyze user interactions on the growing number of handheld, touch-screen devices like smartphones and tablets, which feature different display sizes and input methods (’645 Patent, col. 1:12-35).
  • The Patented Solution: The invention provides a method to track user activity on handheld devices by receiving browsing and page information, and then generating an "exposure map" that indicates the "salience" of different areas of a webpage viewed by the user (’645 Patent, Abstract). To account for variations in device displays, the system maps individual "viewport instances" (the visible portion of the page at a given time) to a standardized "reference layout," allowing for accurate aggregation of user attention data across different devices and screen orientations (’645 Patent, col. 8:3-26).
  • Technical Importance: This technology enabled website owners to gain meaningful insights into user behavior on mobile platforms, a critical capability as user traffic increasingly shifted from desktops to handheld devices (’645 Patent, col. 1:12-15).

Key Claims at a Glance

  • The complaint asserts one or more claims of the patent (Compl. ¶ 57). Post-IPR, surviving claims include dependent claims 9-13 and 19-23. The independent claims on which they depend (claims 1 and 16) were cancelled.
  • The surviving claims add key limitations. For example, claim 9 (dependent on cancelled claim 1) requires:
    • aggregating viewports contained in the pan/zoom dataset to create the page-view exposure map
    • wherein the aggregated viewports are overlaid on top of another page-view of the page corresponding to the created page-view
  • The complaint reserves the right to assert other claims (Compl. ¶ 57).

U.S. Patent No. 9,792,365 - "Method and System for Tracking and Gathering Multivariate Testing Data"

The Invention Explained

  • Problem Addressed: The patent notes that while many websites use multivariate testing (e.g., A/B tests) to optimize design and content, these tests are performed by different service providers, and no existing tool allowed for gathering and analyzing testing data across different websites and providers (’365 Patent, col. 2:5-22).
  • The Patented Solution: The invention discloses a system that acts as a competitive intelligence tool by crawling the internet to find webpages, analyzing those pages to detect if they are undergoing multivariate testing, identifying the different test variations, and saving the collected data into a central data warehouse for analysis (’365 Patent, Abstract; col. 4:43-52).
  • Technical Importance: This system provides a way to systematically gather intelligence on competitors' website optimization strategies, a capability not previously available.

Key Claims at a Glance

  • The complaint asserts one or more claims of the patent (Compl. ¶ 49). Post-IPR, surviving claims include dependent claims 6 and 18. The independent claims on which they depend (claims 1 and 12) were cancelled.
  • The surviving claims add specific functionality. For example, claim 6 (dependent on cancelled claim 1) adds limitations for a specific method of detecting a test:
    • generating a unique sample for each page view by removing unique elements
    • checking if the unique samples are generated in a sequential order
    • determining that a test is not performed if the samples are sequential
    • computing a frequency of occurrence of each unique sample when a test is performed
  • The complaint reserves the right to assert other claims (Compl. ¶ 49).

Multi-Patent Capsule Analysis

  • U.S. Patent No. 7,941,525: Titled "Method and System for Monitoring an Activity of a User," issued May 10, 2011. This patent, the earliest in the asserted family, discloses foundational techniques for tracking user activity on a webpage, compressing the collected activity data, and transmitting it to a server for analysis and playback (Compl. ¶ 17; ’525 Patent, Abstract). The complaint asserts one or more claims (Compl. ¶ 33). Post-filing, all claims of this patent were cancelled in IPR2021-00464.
  • U.S. Patent No. 9,508,081: Titled "Method and System for Monitoring an Activity of a User," issued November 29, 2016. As a divisional of the application that led to the ’525 Patent, this patent covers similar technology related to recording, compressing, and replaying user sessions on a website (Compl. ¶¶ 20-21; ’081 Patent, Abstract). The complaint asserts one or more claims (Compl. ¶ 41). Post-filing, all claims of this patent were cancelled in IPR2021-00363.
  • U.S. Patent No. 10,079,737: Titled "A Method and System for Generating Comparable Visual Maps for Browsing Activity Analysis," issued September 18, 2018. This patent discloses a system for generating and displaying multiple, comparable visual maps (e.g., heatmaps) of user activity side-by-side, allowing a user to compare browsing behavior across different data sets or filter parameters within a single window (Compl. ¶ 29; ’737 Patent, Abstract). The complaint asserts one or more claims (Compl. ¶ 65). Post-filing, all claims of this patent were cancelled in IPR2021-00416.

III. The Accused Instrumentality

Product Identification

  • The accused instrumentality is "Decibel's digital experience analytics platform," referred to as the "Platform" (Compl. ¶ 6).

Functionality and Market Context

  • The complaint alleges the Platform is used for "monitoring user interaction with websites" (Compl. ¶ 14). Its functionality is said to include the "identification of behaviors that may indicate frustration, such as multiclick behavior, birdsnest behavior, or rapid screen rotation" (Compl. ¶ 14). The complaint alleges that Decibel markets its Platform as a competitor to ContentSquare's technology, quoting Decibel marketing material that states, "Go beyond Content Square's manual analysis. See how Decibel's AI pinpoints exactly where, why, and how to improve digital experiences on your website" (Compl. ¶ 14). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint references claim-chart exhibits for each asserted patent but does not attach them (Compl. ¶¶ 34, 42, 50, 58, 66). The infringement theory is therefore based on the narrative allegations in the complaint.

'645 Patent Infringement Allegations

The complaint alleges that the Decibel Platform directly and indirectly infringes the ’645 Patent by making, using, and selling a system for monitoring user activity on handheld devices that incorporates the patented technology (Compl. ¶¶ 57, 59-60). The core of the allegation is that the Platform performs the claimed method of receiving user browsing information from mobile devices and generating analytical outputs, such as exposure maps, to help customers understand user behavior (Compl. ¶¶ 14-15).

  • Identified Points of Contention:
    • Technical Question: A central question will be whether the analytical output generated by the accused Platform is equivalent to the "exposure map" as required by the claims. The patent describes a specific process of mapping "viewport instances" to a "reference layout" and then aggregating them (’645 Patent, col. 8:3-26). The infringement analysis will depend on whether Decibel's Platform performs this specific technical process or an equivalent thereof.
    • Scope Question: A dispute may arise over the meaning of "aggregating viewports...overlaid on top of another page-view" (from surviving claim 9). The parties will likely contest whether this requires a literal visual overlay in a graphical user interface or if it can be met by a backend data aggregation process that corresponds to a different page view.

'365 Patent Infringement Allegations

The complaint alleges that the Decibel Platform infringes the ’365 Patent, which is directed to a system for tracking and gathering data from multivariate tests across the internet (Compl. ¶¶ 49, 51-52).

  • Identified Points of Contention:
    • Scope Question: A primary point of contention appears to be a fundamental mismatch between the claimed invention and the accused product's alleged function. The patent claims a system that "crawl[s] through a plurality of servers" to discover and analyze multivariate tests on third-party websites (’365 Patent, col. 11:39-40). The complaint, however, describes the accused Platform as a tool sold to customers to analyze user behavior on their own websites (Compl. ¶ 14). The complaint does not allege that the Decibel Platform crawls the broader internet to gather competitive testing data. This raises the question of whether the accused Platform performs the "crawling" limitation at all.
    • Technical Question: Assuming the "crawling" limitation can be met, a further question is whether the Platform performs the specific analysis required by surviving claim 6, which involves generating "unique samples," checking for "sequential order" to rule out a test, and calculating "frequency of occurrence" to analyze a test. Evidence would be needed to show the accused Platform uses this specific logic.

V. Key Claim Terms for Construction

For the '645 Patent:

  • The Term: "exposure map"
  • Context and Importance: This term defines the ultimate work product of the claimed method and system. Its construction is critical because it will determine what kind of analytical output infringes. Practitioners may focus on this term because the patent suggests it "indicates a salience of each area of a page-view" and can be rendered as a "heat map," which may or may not be limiting (’645 Patent, col. 7:37-39, Abstract).
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The abstract describes the map as indicating "a salience of each area," which could be argued to encompass any data representation of user attention, not just a visual graphic (’645 Patent, Abstract).
    • Evidence for a Narrower Interpretation: The specification repeatedly gives the example of rendering the map "as a two-dimensional heat map," which a defendant might argue limits the term to a graphical, color-coded visualization (’645 Patent, col. 7:37-39).

For the '365 Patent:

  • The Term: "crawling through a plurality of servers"
  • Context and Importance: This term appears in the preamble of the (now-cancelled) independent claim 1, but its interpretation is foundational to the surviving dependent claims. The viability of the infringement case for this patent hinges on whether the accused Platform "crawls" as the patent requires.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: A plaintiff might argue that "crawling" could be interpreted more broadly to mean any automated requesting of webpages, even if confined to a single customer's domain, if it involves multiple pages or servers within that domain.
    • Evidence for a Narrower Interpretation: The background and summary consistently describe a system that crawls the wider "Internet" to find and analyze tests on different websites, suggesting the term implies a wide-ranging, multi-domain web-crawling capability, not an analysis tool confined to a single customer's site (’365 Patent, col. 1:15-18, col. 4:43-52).

VI. Other Allegations

  • Indirect Infringement: The complaint alleges that Decibel induced infringement and contributed to the infringement of all five patents. This is based on allegations that Decibel "actively promotes" the use of its Platform in an infringing manner through its "website, user guides, and instruction manuals" (Compl. ¶¶ 35-36, 43-44, 51-52, 59-60, 67-68).
  • Willful Infringement: Willfulness is alleged for all five patents. The complaint claims this is based on Decibel having "emulated and copied features of ContentSquare's platform" and having either actual knowledge of the patents or having been willfully blind to their existence (Compl. ¶¶ 37, 45, 53, 61, 69).

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

The IPR proceedings have reshaped this case, eliminating three patents entirely and leaving only dependent claims for the remaining two. The litigation will now turn on a few central questions:

  1. A primary issue is one of applicability: For the '365 patent, does a platform sold to customers for analyzing their own websites meet the claim limitation of "crawling through a plurality of servers," which the patent specification appears to describe as a competitive intelligence tool for analyzing third-party websites across the internet?
  2. A key evidentiary question will be one of technical operation: For the '645 patent, does the accused Platform perform the specific, multi-step process of creating a "reference layout" and mapping "viewport instances" to it to generate an "exposure map," as defined by the patent, or is there a fundamental difference in how the accused analytics are generated?
  3. An overarching legal question is the viability and scope of the surviving claims: With the original independent claims cancelled, the case for the '365 and '645 patents rests on dependent claims. The dispute will involve not only whether the accused product meets the limitations of those dependent claims but also how those claims should be construed in the absence of their original independent claim base.