DCT
1:20-cv-06598
Pop Top Corp. v
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Pop Top Corp. (California)
- Defendant: Barnesandnoble.com LLC (Delaware)
- Plaintiff’s Counsel: WAWRZYN LLC
- Case Identification: 1:20-cv-06598, S.D.N.Y., 08/18/2020
- Venue Allegations: Plaintiff alleges venue is proper in the Southern District of New York because Defendant conducts continuous and systematic business and maintains corporate offices in the district.
- Core Dispute: Plaintiff alleges that Defendant’s Nook e-reader application infringes a patent related to a method for enabling highlighting of content within an internet document via a distinct, server-based service.
- Technical Context: The technology concerns methods for allowing users to interact with, annotate, and save specific portions of digital content delivered over a network, a key feature in e-reading and web-based research tools.
- Key Procedural History: The complaint does not reference any prior litigation, Inter Partes Review (IPR) proceedings, or licensing history related to the patent-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 2006-06-22 | Priority Date for U.S. Patent No. 7,966,623 |
| 2011-06-21 | U.S. Patent No. 7,966,623 Issued |
| 2020-08-18 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,966,623 - METHOD AND APPARATUS FOR ENABLING HIGHLIGHTER SERVICES FOR VISITORS TO WEB PAGES
- Patent Identification: U.S. Patent No. 7,966,623, METHOD AND APPARATUS FOR ENABLING HIGHLIGHTER SERVICES FOR VISITORS TO WEB PAGES, issued June 21, 2011.
The Invention Explained
- Problem Addressed: The patent's background section identifies shortcomings with conventional web bookmarks for retrieving specific information, noting that they often lack context, can become stale, and are cumbersome for sharing the relevant portion of a document with others (col. 1:48-2:24).
- The Patented Solution: The invention proposes a system where a content provider embeds a small piece of code ("snippet of code") into their web page, which displays a user interface object like a button (col. 3:15-22; ’623 Patent, Abstract). When a user clicks this object, it communicates with a separate "highlighter server" to invoke a highlighting service. This service allows the user to select and highlight specific text or objects on the page, with the highlights being stored on the highlighter server and associated with the user for later recall or sharing (col. 4:26-44, 5:25-34).
- Technical Importance: This architecture allows any third-party website owner to easily integrate persistent, user-specific highlighting functionality without needing to develop or host the complex backend service themselves (col. 3:15-29).
Key Claims at a Glance
- The complaint asserts independent Claim 1.
- The essential elements of Claim 1 are:
- At a content server, receiving a request for an internet document from a client web browser.
- Serving the internet document, which includes code for invoking a highlighting service hosted at a separate highlighting service server.
- The code causes a user interface object for invoking the service to be displayed.
- Responsive to a user selecting the object, the client web browser communicates a request to the highlighting service server.
- The highlighting service server enables the highlighting service for the document.
- Displaying highlighting tools in the client web browser.
- Responsive to the user highlighting an object, communicating the highlighted object to the highlighting service server for storage associated with the user.
- The complaint does not reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
The accused instrumentality is the Barnes & Noble "Nook application" (the "App") and its associated backend infrastructure (Compl. ¶13).
Functionality and Market Context
The complaint alleges the App runs on a user's device and communicates with Barnes & Noble’s backend servers to download e-books, which the complaint defines as "internet documents" (Compl. ¶13). The App is alleged to include a feature where a user can enter a "Menu" and choose an "Add Highlights and Notes" option. This action allegedly sends a request to a highlighting server, which then allows the user to select and highlight text within the book. The resulting highlights and notes are stored on the backend and associated with the user's account (Compl. ¶13-15). No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
U.S. Patent No. 7,966,623 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| at a content server, receiving a request for an internet document from a client web browser; | The Nook App on a user device communicates with servers on a backend to facilitate the download of a book. The complaint characterizes the book as an "internet document." | ¶13 | col. 8:20-22 |
| serving the internet document from the content server to the client web browser, wherein the internet document includes code for invoking a highlighting service...the highlighting service hosted at a highlighting service server which is different than the content server... | The book is served to the user device with executable code to invoke a highlighting service. A part of the App's backend is alleged to be a highlighting service hosted by a highlighting server. | ¶13 | col. 8:23-30 |
| ...and the code causing a user interface object for invoking the highlighting service to be displayed by the client web browser in connection with the internet document; | The App includes a tool that allows a user to enter "Menu" and choose the "Add Highlights and Notes" option. | ¶13 | col. 8:30-34 |
| responsive to a user selecting the user interface object in the client web browser, the client web browser communicating a request to the highlighting service server to invoke the highlighting service; | When a user wants to highlight, the App sends a request to the highlighting server. | ¶14 | col. 8:35-39 |
| responsive to the request to invoke the highlighting service, the highlighting service server enabling the highlighting service for the internet document; | The complaint alleges this step occurs but does not provide specific operational details beyond stating the request is sent to the highlighting server. | ¶14-15 | col. 8:40-42 |
| responsive to the highlighting service being enabled...displaying in the client web browser tools for highlighting text and objects...said tools configured to provide the user with a selection of controls enabling various features and functions of the highlighting service; | After selecting text, the user can use an on-screen keyboard to type notes and tap a "Submit" button to highlight the text and add the note. The complaint describes moving a cursor using a navigation wheel and tapping "Start Selection" and "End Selection" options. | ¶15 | col. 8:43-49 |
| responsive to the user highlighting an object...communicating the highlighted object or portions thereof to the highlighting service server for storage in such a manner as to be associated with the user who generated the highlight. | The user's highlighting and notes are stored on the backend and associated with the user's account "Library". | ¶15 | col. 8:50-55 |
Identified Points of Contention
- Scope Questions: A central dispute may arise over whether the accused "Nook application" and its e-book files fall within the scope of the claim terms "client web browser" and "internet document." The patent specification repeatedly discusses traditional web browsers and "web pages" identified by URLs, raising the question of whether the claims are limited to that context or can read on a proprietary e-reader ecosystem.
- Technical Questions: Claim 1 requires the "highlighting service server" to be "different than the content server." The complaint alleges that Barnes & Noble's "backend" includes a content server function and a "highlighting service hosted by a highlighting server" (Compl. ¶13). The case may turn on evidence of whether these are, in fact, distinct servers or merely different software components within a single, unified backend infrastructure, and how the court construes the term "different."
V. Key Claim Terms for Construction
Term: "client web browser"
- Context and Importance: The infringement theory depends on the Nook App qualifying as a "client web browser." Practitioners may focus on this term because the patent's examples and figures all depict conventional web browsers (e.g., ’623 Patent, FIG. 3-8), potentially limiting the term's scope to such software.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term itself is not explicitly defined. A party might argue that any client software that requests, receives, and displays documents from a server (col. 8:20-22) performs the function of a web browser in the context of the claim.
- Evidence for a Narrower Interpretation: The specification consistently uses the term in the context of traditional web browsing, referring to a "web browser application" (col. 1:41), "URL," and displaying "web pages" (col. 2:9-12, col. 1:39-43), suggesting the term was understood by the inventor to mean a conventional internet browser.
Term: "internet document"
- Context and Importance: The downloaded e-book file within the Nook App must be considered an "internet document" for the infringement allegation to hold. This term's construction is critical because the patent appears focused on "web pages."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim uses the general term "internet document," which could be argued to encompass any document retrieved over the internet, not just an HTML web page. The complaint makes this direct assertion (Compl. ¶13).
- Evidence for a Narrower Interpretation: The patent’s title is ENABLING HIGHLIGHTER SERVICES FOR VISITORS TO WEB PAGES. The specification consistently uses "web page" (col. 1:18, col. 3:19) and "URL" (col. 1:35) when describing the document, which could support an interpretation limiting "internet document" to a publicly accessible web page.
VI. Other Allegations
The complaint alleges only direct infringement and does not contain allegations to support claims of indirect or willful infringement.
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this case will likely hinge on questions of claim construction and the application of that construction to the accused Nook system.
- A core issue will be one of definitional scope: can the terms "client web browser" and "internet document," which are rooted in the patent's disclosure of traditional web page technology, be construed broadly enough to encompass the proprietary software environment of the Nook e-reader application and its downloaded e-book files?
- A second key question will be one of architectural fact and construction: what does the claim term "different" require when distinguishing the "content server" from the "highlighting service server," and does the evidence show that Barnes & Noble's backend infrastructure meets that requirement?