DCT
2:17-cv-00128
Express Mobile Inc v. Ktree Computer Solutions Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Express Mobile, Inc. (Delaware)
- Defendant: KTree Computer Solutions Inc. (Massachusetts)
- Plaintiff’s Counsel: Devlin Law Firm LLC; Brent Coon & Associates, P.C.
- Case Identification: 2:17-cv-00128, E.D. Tex., 02/14/2017
- Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas because Defendant conducts business in the district, the claims arise in the district, and the acts of infringement have occurred and are continuing to occur there.
- Core Dispute: Plaintiff alleges that Defendant’s e-commerce platform, Magento Enterprise Edition, infringes two patents related to browser-based website generation tools.
- Technical Context: The technology concerns systems and methods that allow users to create websites through a browser interface by selecting and arranging elements, with the system then generating the necessary code and data for the final site.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendant with notice of infringement for both patents-in-suit on October 23, 2015. The provided patent documents for U.S. Patent No. 6,546,397 include an Ex Parte Reexamination Certificate and an Inter Partes Review (IPR) Certificate, which post-date the filing of the complaint. These certificates indicate that Claim 1 of the '397 patent, a central claim asserted in this litigation, has been cancelled.
Case Timeline
| Date | Event |
|---|---|
| 1999-12-02 | Earliest 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 |
| 2015-10-23 | Plaintiff Notifies Defendant of Alleged Infringement |
| 2017-02-14 | Complaint Filed |
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 describes conventional website building tools of the time as being computationally intensive, slow, and limited in their ability to create dynamic, interactive websites that could adapt to different screen resolutions and browsers (’397 Patent, col. 1:11-47; Compl. ¶9).
- The Patented Solution: The invention proposes a browser-based system where a user interacts with a "build tool" to select website elements and define their properties. These choices are stored in a separate database. A compact "run time engine" is then generated alongside the database and an HTML shell file. When a visitor accesses the website, the run time engine reads the database and dynamically constructs the web page within the visitor's browser, separating the design logic from the final rendering process (’397 Patent, Abstract; col. 5:9-25; Fig. 2).
- Technical Importance: This architecture aimed to create a more efficient and flexible web development process, enabling the creation of complex, interactive sites by users without extensive programming knowledge (’397 Patent, col. 2:31-43).
Key Claims at a Glance
- The complaint asserts independent claims 1, 2, and 37, along with several dependent claims (Compl. ¶15).
- Independent Claim 1, a method claim, includes the following essential elements:
- presenting a viewable menu of a user selectable panel of settings through a browser;
- wherein at least one selectable setting corresponds to commands for a virtual machine;
- generating a display in accordance with user-selected settings;
- storing information representative of selected settings in a database; and
- generating the website from the database using at least one run time file, which in turn utilizes the stored information to generate virtual machine commands for displaying the web pages.
- The complaint reserves the right to assert other claims, including dependent claims 3-6, 9-11, 14-15, 17, 20, and 23-25 (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, the '168 patent addresses the same fundamental problems with conventional web authoring tools, such as their static nature and coding complexity (’168 Patent, col. 1:17-56; Compl. ¶75).
- The Patented Solution: This patent claims a system for assembling a website, comprising a server with a "build engine." The engine is configured to assemble web pages from a plurality of objects (e.g., buttons, images), associate user-defined styles (including transformations and timelines) with those objects, and produce a database structured as a multidimensional array containing the objects and their properties. The system then provides this database to a server, allowing a web browser with a runtime engine to generate the final website from the extracted object and style data (’168 Patent, Abstract; col. 6:3-33).
- Technical Importance: The invention focuses on an object-oriented, database-driven approach where a web page is defined entirely by its constituent objects and associated styles, allowing for dynamic content and complex animations (’168 Patent, col. 2:27-33; Compl. ¶77).
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claims 2-6 (Compl. ¶81).
- Independent Claim 1, a system claim, includes the following essential elements:
- a system with a build engine configured to assemble a website from objects (e.g., buttons, images);
- the build engine accepts user input to associate styles, including transformations and timelines, with the objects;
- each web page is "defined entirely by the objects and the style associated with the object";
- the system produces a multidimensional array database comprising the objects, their styles, and their page location; and
- the database is produced so that a browser with a runtime engine can generate the website from the stored data.
- The complaint reserves the right to assert other claims from the patent (Compl. ¶81).
III. The Accused Instrumentality
Product Identification
- All versions of "Magento Enterprise Edition," described as a browser-based website and/or web page authoring tool used by Defendant KTree (Compl. ¶15).
Functionality and Market Context
- The complaint alleges that Magento allows users to build e-commerce websites through a browser-based interface, such as a "Manage Products" screen and a WYSIWYG editor (Compl. ¶18). Users select and configure elements like text, images, and layouts. These settings are allegedly stored in a database. The system then uses runtime files (e.g., PHP, JavaScript, CSS) to retrieve this stored information and generate the final HTML for the website (Compl. ¶6, ¶18). The complaint also highlights Magento's use of "Responsive Web Design" (RWD) to dynamically resize pages for different devices (Compl. ¶66). Defendant KTree is alleged to be a for-profit entity that uses these tools to build websites for its customers (Compl. ¶16). No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
’397 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| presenting a viewable menu of a user selectable panel of settings... said panel of settings being presented through a browser | The accused tool presents a store-builder interface, including a "Manage Products" screen and a WYSIWYG editor, to the user through a web browser. | ¶18 | col. 66:5-13 |
| at least one of said selectable settings... corresponds to commands to a virtual machine | User selections for text alignment, font, and paragraph styles correspond to HTML and JavaScript, which the complaint defines as commands for the browser's engine, a "virtual machine." | ¶18 | col. 66:13-16 |
| generating a display in accordance with one or more user selected settings | The display in the WYSIWYG editor updates "substantially contemporaneously" to reflect user selections. | ¶18 | col. 66:16-19 |
| storing information representative of one or more of said selected settings in a database | Data corresponding to user selections (e.g., text color, layout, image filenames) is stored in a database. | ¶6 | col. 69:6-9 |
| generating said website from at least a portion of said database and at least one run time file, where said at least one run time file utilizes information stored in said database to generate virtual machine commands | The accused tool uses runtime files (PHP, JavaScript, CSS) to access the stored data and generate the final HTML page, which constitutes the virtual machine commands that the browser's engine reads to render the page. | ¶6, ¶17-18 | col. 69:9-16 |
- Identified Points of Contention:
- Scope Questions: The complaint's infringement theory relies on a broad interpretation of "virtual machine" to include standard web browser engines that interpret HTML and execute JavaScript (Compl. ¶18). A central dispute may be whether this term, in the context of the patent's frequent references to "JAVA" ('397 Patent, col. 2:50-55), can be construed so broadly or if it is limited to a Java Virtual Machine (JVM) or a similar, more specific software environment.
- Technical Questions: The complaint alleges that information is stored in a "database" (Compl. ¶6). For dependent claims like Claim 3, which requires a "multi-dimensional array structured database," a question will be whether the complaint provides sufficient evidence that Magento's data storage method—allegedly evidenced by JSON strings (Compl. ¶24)—meets this specific structural requirement as taught in the patent.
’168 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A system for assembling a web site comprising a build engine configured to... assemble a web site comprising web pages with a plurality of objects | Magento is alleged to be a system that assembles websites from various objects, including buttons and images, through a build engine. | ¶82 | col. 64:58-63 |
| accept user input to associate a style with said plurality of objects, wherein a button or an image object is associated with a style that includes values defining transformations and time lines | Magento allegedly uses CSS libraries, animations, and transitions to apply styles to objects, which include transformations and timelines. | ¶82, ¶92 | col. 64:63-67 |
| produce a database with a multidimensional array comprising the objects that comprise the web site including data defining the object style, number, and an indication of the web page that each object is part of | The complaint alleges that JSON strings generated by Magento reflect a multidimensional array structure and that the system stores data defining object styles, number, and page location in its database. | ¶82, ¶84-85 | col. 65:1-6 |
| provide the database to a server accessible to a web browser; wherein the database is produced such that a web browser with access to a runtime engine is configured to generate the web site from the objects and style data extracted from the provided database | The Magento system allegedly uses a server-side database, which is provided to a server accessible by a browser. The browser, with its runtime engine, is then configured to generate the website from the object and style data extracted from this database. | ¶82, ¶85 | col. 65:6-13 |
- Identified Points of Contention:
- Scope Questions: The claim requires that "each web page is defined entirely by the objects and the style associated with the object" ('168 Patent, col. 64:67-65:1). A potential point of contention is whether a web page generated by Magento is truly defined "entirely" by these elements, or if its final appearance is also dependent on other factors like the browser's default rendering behavior, the server configuration, or base templates not captured by the claimed "objects and style."
- Technical Questions: Similar to the '397 patent, a key technical question will be whether the evidence presented—primarily the structure of JSON strings (Compl. ¶84)—is sufficient to prove the existence of the claimed "multidimensional array" database. The court will have to analyze if Magento’s actual data architecture maps onto the specific database structure disclosed in the patent (’168 Patent, Fig. 3a).
V. Key Claim Terms for Construction
For the ’397 Patent:
- The Term: "virtual machine"
- Context and Importance: This term is critical for the infringement analysis of the '397 patent. The Plaintiff's case depends on this term being construed broadly enough to read on modern web browser rendering engines. If the term is construed more narrowly to mean only a technology like a Java Virtual Machine (JVM), the infringement allegations may fail.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The complaint cites a general dictionary definition to support a broad meaning (Compl. ¶18). The term itself is not explicitly limited in the claim language.
- Evidence for a Narrower Interpretation: The specification repeatedly discusses "JAVA" and "JavaScript" in the context of the invention, and the "Background of the Invention" section specifically discusses the applicability of the invention to "JAVA and Javascript" and the limitations of "conventional web publishing applications run on platforms other than the World Wide Web (WWW) and its browsers" (’397 Patent, col. 1:48-52, col. 1:31-34). A defendant may argue this context limits the scope of "virtual machine" to the specific type of technology, like a JVM, that was central to the patent's description.
For the ’168 Patent:
- The Term: "multidimensional array"
- Context and Importance: The patentability of the claimed system in the '168 patent over prior art may depend on the specific structure of its database. Infringement requires showing that the accused Magento platform produces a database with this specific structure.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The complaint suggests that a nested data format like a JSON string, which contains arrays of pages, columns, and sections, constitutes a "multidimensional array" (Compl. ¶84).
- Evidence for a Narrower Interpretation: The patent specification explicitly illustrates a "Build Engine's Multi-dimensional Array Structured Data Base" as a distinct component of the system ('168 Patent, Fig. 3a, 358) and describes storing specific data types in "two-dimensional," "three-dimensional," and "four-dimensional" arrays ('168 Patent, col. 21:58-63, col. 22:1-25). A defendant may argue that this requires a more formal and structured database implementation than simply a textual representation like a JSON string.
VI. Other Allegations
- Indirect Infringement: The complaint does not contain formal counts for indirect infringement (induced or contributory).
- Willful Infringement: The complaint alleges willful infringement for both patents. The basis for this allegation is Defendant's alleged pre-suit knowledge of the patents and their infringement, stemming from a notice letter Plaintiff sent via Federal Express, which was allegedly received by Defendant on October 23, 2015 (Compl. ¶70-71, ¶100-101).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim validity and scope: Given that the provided patent documents indicate Claim 1 of the '397 patent was cancelled in post-grant proceedings that occurred after the complaint was filed, a threshold question is the viability of the infringement case for that patent. For both patents, a central question of scope remains: can the term "virtual machine" be construed to cover a standard browser rendering engine, or is it limited by the specification's focus on Java-era technology?
- A key evidentiary question will be one of technical mapping: Does the Plaintiff's proffered evidence, particularly the reference to JSON strings generated by the accused Magento product, sufficiently demonstrate the existence of the claimed "multidimensional array" database structure, or is there a fundamental mismatch between the accused product's architecture and the specific teachings of the patent?
- A final question will concern willfulness: Assuming infringement is found, the court will need to determine if the alleged pre-suit notice from October 2015 is sufficient to establish that any post-notice infringement was "willful," which could expose the Defendant to enhanced damages.