DCT
2:17-cv-00126
Express Mobile Inc v. Alpine Consulting Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Express Mobile, Inc. (Delaware)
- Defendant: Alpine Consulting, Inc. (Illinois)
- Plaintiff’s Counsel: Devlin Law Firm LLC; Brent Coon & Associates, P.C.
- Case Identification: 2:17-cv-00126, E.D. Tex., 02/14/2017
- Venue Allegations: Venue is alleged to be proper in the Eastern District of Texas because Defendant conducts business in the district, the claims arise in the district, and alleged acts of infringement occur there.
- Core Dispute: Plaintiff alleges that Defendant’s use of the Magento Enterprise Edition e-commerce platform infringes two patents related to browser-based website generation tools.
- Technical Context: The technology concerns What-You-See-Is-What-You-Get (WYSIWYG) website authoring tools that allow users to create complex, interactive websites without needing to write code directly.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendant with notice of infringement for both asserted patents on August 28, 2015. Public records subsequent to the complaint's filing indicate that U.S. Patent No. 6,546,397 was subject to inter partes review and ex parte reexamination, resulting in the cancellation of asserted Claim 1. Other asserted claims of that patent, and all asserted claims of U.S. Patent No. 7,594,168, were confirmed as patentable in separate reexamination proceedings.
Case Timeline
| Date | Event |
|---|---|
| 1999-12-02 | Priority Date for '397 and '168 Patents |
| 2003-04-08 | U.S. Patent No. 6,546,397 Issued |
| 2009-09-22 | U.S. Patent No. 7,594,168 Issued |
| 2015-08-28 | Defendant allegedly receives notice of infringement |
| 2017-02-14 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,546,397 - "Browser Based Web Site Generation Tool and Run Time Engine," issued April 8, 2003
The Invention Explained
- Problem Addressed: The patent's background describes conventional website creation tools as reliant on cumbersome HTML and scripting languages that have limited computational power, poor multimedia handling, and offer only "crude preview capability" of the final website (’397 Patent, col. 1:11-27).
- The Patented Solution: The invention proposes a browser-based system with two main components: a "build tool" and a "run time engine." A user interacts with the build tool through a browser interface to design a webpage, and the tool stores the user's choices (e.g., text, images, styles) as objects in a database. The system then generates a separate "run time file" which, when executed by a browser, reads the database and dynamically constructs the final, interactive website. (’397 Patent, Abstract; Fig. 2). This architecture separates the design process from the final rendering process.
- Technical Importance: This approach sought to empower non-technical users to create dynamic, media-rich websites by abstracting away the underlying code, a key development in the evolution of web authoring platforms (Compl. ¶9).
Key Claims at a Glance
- The complaint asserts independent claims 1 (method), 2 (apparatus), and 37 (apparatus) (Compl. ¶15).
- Independent Claim 1 recites a method with the steps of:
- presenting a selectable settings menu through a browser;
- generating a display in accordance with selected settings;
- storing information regarding selected settings in a database;
- generating a website by retrieving said information from the database; and
- building web page(s) and at least one run time file, where the run time file uses the stored information to generate "virtual machine commands" for display.
- Independent Claim 2 recites an apparatus comprising:
- an interface to present a settings menu through a browser, where settings correspond to "commands to the virtual machine";
- a browser to generate a display;
- a database for storing setting information; and
- a "build tool" with run time file(s) for generating web pages and commands for the virtual machine.
- Independent Claim 37 recites an apparatus comprising:
- an interface for building a website, generating a display, and accepting settings;
- an "internal database" for storing setting information; and
- a "build tool" that constructs web pages using an "external database" and run time files that generate "virtual machine commands".
- The complaint reserves the right to assert numerous dependent claims (Compl. ¶15).
U.S. Patent No. 7,594,168 - "Browser Based Web Site Generation Tool and Run Time Engine," issued September 22, 2009
The Invention Explained
- Problem Addressed: As a continuation of the '397 patent application, the '168 patent addresses the same technical challenges in website creation (’168 Patent, col. 1:21-48).
- The Patented Solution: This patent claims a system for assembling a website where a server's "build engine" accepts user input to associate styles with objects (e.g., buttons, images). A key aspect is that styles can include "values defining transformations and time lines," and the web page is "defined entirely by the objects and the style associated with the object." The system produces a multidimensional database that a browser's runtime engine uses to generate the final website. (’168 Patent, col. 63:64-66:6).
- Technical Importance: The invention focuses on enabling dynamic, animated web content by defining not just static properties but also transformations and timelines as part of an object's style, which is then stored in a structured database for rendering.
Key Claims at a Glance
- The complaint asserts independent claim 1 (system) (Compl. ¶81).
- Independent Claim 1 recites a system comprising:
- a server with a build engine;
- a website comprising web pages with objects (e.g., button or image);
- the server accepting user input to associate a style with objects, where the style includes "values defining transformations and time lines";
- each web page is "defined entirely by the objects and the style associated with the object";
- the system produces a database with a "multidimensional array" containing the objects and style data;
- the database is provided to a server such that a web browser with a runtime engine can generate the website from the data.
- The complaint reserves the right to assert dependent claims 2-6 (Compl. ¶81).
III. The Accused Instrumentality
Product Identification
- All versions of "Magento Enterprise Edition" (Compl. ¶15).
Functionality and Market Context
- The complaint describes the accused instrumentality as a website building tool that enables users to create websites via a browser interface (Compl. ¶18). It allegedly includes a dashboard and a "Manage Products" screen from which a user can access a WYSIWYG editor to select options for font, paragraph styles, and image alignment (Compl. ¶18).
- The complaint alleges that user selections are stored in a database and that the tool generates HTML, PHP, and other files for rendering by a web browser (Compl. ¶18, ¶6). It further alleges that the platform is used by Defendant to build websites for customers, generating revenue for the Defendant (Compl. ¶16).
- No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
’397 Patent Infringement Allegations (based on asserted Claim 1)
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a method...by presenting, through a browser, a user selectable panel of settings | The Accused Instrumentalities present a "website store-builder tool" through a browser after a user logs in. | ¶18 | col. 66:1-12 |
| said panel of settings being presented through a browser on said computer and said panel of settings being adapted to be in said panel as inputs therefrom | The user navigates to the "Manage Products" screen and uses a WYSIWYG editor to select options. | ¶18 | col. 66:6-9 |
| generating a display in accordance with one or more user selected settings substantially contemporaneously with the selection thereof | The display in the WYSIWYG editor "immediately updates to reflect the selected option" after a user selects image alignment or font styles. | ¶18 | col. 66:13-16 |
| storing information representative of one or more of said user selected settings in a database | Data corresponding to user selections like text color, layout, and image filenames are stored. | ¶18 | col. 66:22-25 |
| generating a website at least in part by retrieving said information stored in said database | The Accused Instrumentalities "build one or more web pages to generate a website from at least a portion of a database." | ¶17 | col. 66:26-29 |
| and building one or more web pages to generate said website and at least one run time file, where at least one run time file utilizes information stored in said database to generate virtual machine commands | The system generates runtime files (PHP, JavaScript, PHTML, XML) and the final HTML, which allegedly represents "virtual machine commands" because it is read and used by the browser's engine. | ¶18 | col. 66:29-37 |
Identified Points of Contention (’397 Patent)
- Scope Questions: The infringement theory hinges on construing a standard web browser's rendering engine (for HTML, JavaScript, etc.) as a "virtual machine." The complaint cites a dictionary definition, signaling this as a likely area of dispute (Compl. ¶18). A central question will be whether this term, in the context of the patent's disclosure (which heavily references JAVA), is limited to a more specific technology like a Java Virtual Machine.
- Technical Questions: A factual question is whether the collection of files generated by Magento (e.g., HTML, CSS, PHP) constitutes "at least one run time file" that itself "uses the stored information to generate virtual machine commands," as the claim requires, or if this mischaracterizes a standard server-side rendering architecture.
’168 Patent Infringement Allegations (based on asserted Claim 1)
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a system for assembling a website comprising a server with a build engine | The Magento platform is alleged to be the server with a build engine. | ¶82 | col. 63:64-66 |
| the website comprising web pages with objects | The complaint references the Document Object Model (DOM) to allege that websites are comprised of objects. | ¶83 | col. 64:1-3 |
| the server accepting user input to associate a style with objects, wherein a button or image object is associated with a style that includes values defining transformations and time lines | The system allegedly uses CSS libraries, "CSS-animations and CSS-transitions... for adding transformations and timelines to selected elements." | ¶92 | col. 64:3-8 |
| wherein each web page is defined entirely by the objects and the style associated with the object | The complaint makes a conclusory allegation that the accused instrumentalities infringe this limitation. | ¶83 | col. 64:8-11 |
| produce a database with a multidimensional array comprising the objects that comprise the web site | The complaint alleges that JSON strings generated by Magento originate from the database and "reflect the implementation of a multidimensional array structured database." | ¶84 | col. 64:11-17 |
| wherein the database is produced such that a web browser with access to a runtime engine is configured to generate the website from the objects and style data | The completed website allegedly includes customized runtime files (HTML and CSS) that allow a browser to generate the site. | ¶86 | col. 64:19-25 |
Identified Points of Contention (’168 Patent)
- Scope Questions: The interpretation of "defined entirely by the objects and the style" will be critical. This limitation may be difficult to satisfy if the accused system relies on any other information (e.g., server-side scripts, default templates) to generate the page. It also raises the question of whether a standard relational database that outputs structured data (like JSON) meets the "multidimensional array" limitation.
- Technical Questions: An evidentiary question will be whether the CSS animations and transitions used by Magento function as a "style" that is "associated with the object" in the specific manner described by the patent, or if there is a mismatch in the technical implementation.
V. Key Claim Terms for Construction
Term 1: "virtual machine" (’397 Patent, Claims 1, 2, 37)
- Context and Importance: This term is the lynchpin of the '397 infringement allegations. Plaintiff's case may depend on this term being construed broadly to encompass standard web browser rendering engines. Defendant will likely argue for a narrower construction limited to technologies like the Java Virtual Machine (JVM), which are explicitly mentioned in the specification.
- Intrinsic Evidence for a Broader Interpretation: The complaint itself argues that browsers "rely on browser engines comprising virtual machines to interpret and execute JavaScript and HTML" (Compl. ¶18). A party could argue the term's plain meaning includes any software that creates an execution environment abstracting the underlying hardware.
- Intrinsic Evidence for a Narrower Interpretation: The specification repeatedly discusses the invention in the context of Java, stating the build tool is "written entirely in a web based full featured programming language (e.g., JAVA)" and describing communication between a "JAVA applet inside a Javascript wrapper" and the build engine (’397 Patent, col. 1:55-63). This may support an argument that the inventors contemplated a more specific technology like the JVM.
Term 2: "defined entirely by the objects and the style" (’168 Patent, Claim 1)
- Context and Importance: Practitioners may focus on this term because the word "entirely" sets a high and potentially dispositive bar for infringement. The viability of the infringement claim may turn on whether this phrase tolerates any other inputs or logic in the page generation process.
- Intrinsic Evidence for a Broader Interpretation: A party might argue that "defined entirely" refers to the user-facing content and its visual representation, not the underlying server architecture or rendering logic, suggesting that as long as all visual and content elements trace back to an object and style in the database, the limitation is met.
- Intrinsic Evidence for a Narrower Interpretation: The plain meaning of "entirely" suggests exclusivity. The patent's flow charts, which depict a process where a database is created and then used by a runtime engine to construct the website, could be argued to describe a self-contained system where the database is the sole source of information for the page's definition (’168 Patent, Fig. 2).
VI. Other Allegations
- Indirect Infringement: The complaint's infringement counts focus on direct infringement by "using" the accused tools (Compl. ¶15, ¶81). The complaint does not plead specific facts to support claims for either induced or contributory infringement.
- Willful Infringement: The complaint alleges that Defendant had knowledge of the patents and their infringement at least as early as August 28, 2015, based on receipt of correspondence sent by Plaintiff. The complaint alleges that all infringement after this date has been willful. (Compl. ¶70-71, ¶100-101).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "virtual machine", which appears in the '397 patent alongside specific discussions of Java technology, be construed broadly enough to read on the general-purpose HTML and JavaScript rendering engines of modern web browsers as alleged in the complaint?
- A second key issue will be one of architectural fidelity: does the accused Magento platform operate in a way that meets the exacting limitations of the '168 patent, particularly the requirement that a web page be "defined entirely" by objects and associated styles stored in a "multidimensional array" database?
- A critical procedural question will be the impact of post-filing events: given that the lead method claim of the '397 patent (Claim 1) was cancelled in post-grant proceedings after the complaint was filed, the focus of the case will necessarily shift to the surviving apparatus claims, altering the original infringement theories and potential damages models.