DCT
2:17-cv-00130
Express Mobile Inc v. Svanaco Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Express Mobile, Inc. (Delaware)
- Defendant: Svanaco, Inc. (Illinois)
- Plaintiff’s Counsel: Devlin Law Firm LLC; Brent Coon & Associates, P.C.
- Case Identification: 2:17-cv-00130, E.D. Tex., 02/14/2017
- Venue Allegations: Plaintiff alleges venue is proper because Defendant conducts business in the Eastern District of Texas, introduces products into the stream of commerce knowing they would be sold there, and the alleged acts of infringement arise from these contacts.
- Core Dispute: Plaintiff alleges that Defendant’s use of e-commerce platform tools to build websites for customers directly infringes patents related to browser-based website generation systems.
- Technical Context: The technology concerns browser-based tools that allow users to design and publish websites through a graphical interface, storing design choices in a database that a runtime engine uses to generate the final site.
- Key Procedural History: The complaint alleges Defendant had pre-suit knowledge of the patents-in-suit via correspondence sent on October 2, 2015. Post-filing patent office proceedings have significantly impacted the asserted patents. An ex parte reexamination and an inter partes review of the ’397 Patent resulted in the cancellation of asserted independent claim 1. An ex parte reexamination of the ’168 Patent confirmed the patentability of the asserted claims.
Case Timeline
| Date | Event |
|---|---|
| 1999-12-02 | Priority Date for ’397 and ’168 Patents |
| 2003-04-08 | U.S. Patent No. 6,546,397 Issues |
| 2009-09-22 | U.S. Patent No. 7,594,168 Issues |
| 2015-10-02 | Plaintiff allegedly notifies Defendant of infringement |
| 2017-02-14 | Complaint Filed |
| 2021-07-30 | USPTO confirms claims 1-6 of ’168 Patent in ex parte reexamination |
| 2024-10-03 | USPTO cancels claim 1 of ’397 Patent in ex parte reexamination |
| 2025-06-24 | USPTO cancels claim 1 of ’397 Patent in inter partes review |
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, using direct HTML and scripting languages, as being technically complex, limited in capability, and inefficient for creating dynamic or interactive websites that can adapt to different screen sizes (’397 Patent, col. 1:11-47).
- The Patented Solution: The invention proposes a system where a user creates a website through a browser-based interface without writing code. The user’s design choices (e.g., layout, multimedia elements) are stored as structured data in an "object database." A separate, customized "run time engine" is generated alongside an HTML shell file. When a visitor accesses the website, the run time engine reads the database and dynamically constructs the web page for display, separating the site's design from its underlying content (’397 Patent, Abstract; Fig. 2).
- Technical Importance: This architecture aimed to make web design accessible to non-programmers and to facilitate the creation of sophisticated, database-driven websites directly within a web browser, a departure from traditional desktop-based coding environments (’397 Patent, col. 1:48-63).
Key Claims at a Glance
- The complaint asserts independent claims 1, 2, and 37, along with several dependent claims (Compl. ¶15). As of a 2024 reexamination, claim 1 is canceled, leaving apparatus claims 2 and 37 as the key asserted independent claims.
- Independent Claim 2 (Apparatus):
- An apparatus for producing websites on computers having a browser and a virtual machine.
- An interface to present a selectable settings menu, presented through a browser, with settings corresponding to commands for the virtual machine.
- A browser to generate a display based on selected settings.
- A database for storing information from the selected settings.
- A build tool with a run time file for generating web pages, which uses the stored information to generate commands for the virtual machine.
- The complaint reserves the right to assert other claims, including 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 application leading to the ’397 Patent, this patent addresses the same limitations of conventional, code-based web development (’168 Patent, col. 1:21-57).
- The Patented Solution: This invention details a system for assembling a website where a server-side "build engine" allows a user to associate specific "styles"—including transformations and timelines for animation—with web page "objects" like buttons and images. The patent claims that each web page is "defined entirely by the objects and the style associated with the object." This information is stored in a multidimensional array database, which is then used by a runtime engine to generate the final website for a visitor's browser (’168 Patent, Abstract; col. 2:32-53).
- Technical Importance: The invention focuses on enabling the creation of dynamic, styled, and animated web pages through a structured, object-oriented, browser-based interface, moving beyond static page construction (’168 Patent, col. 2:26-31).
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claims 2-6 (Compl. ¶83).
- Independent Claim 1 (System):
- A system with a server and a build engine for assembling a website.
- The website comprises web pages with objects (e.g., a button or image).
- The server accepts user input to associate a style with the objects, where the style includes values for transformations and timelines.
- Each web page is defined entirely by the objects and associated style.
- The system produces a database with a multidimensional array containing the objects and style data.
- The database is provided to a server accessible to a web browser, which uses a runtime engine to generate the website from the database.
- The complaint reserves the right to assert other claims (Compl. ¶83).
III. The Accused Instrumentality
Product Identification
The "Accused Instrumentalities" are identified as website building tools used by Defendant Svanaco, specifically "all versions of Magento Enterprise Edition and all versions of BigCommerce website building tools" (Compl. ¶15).
Functionality and Market Context
The complaint alleges that Defendant uses these e-commerce platforms to build websites for its customers (Compl. ¶16). The described functionality involves a user logging into a browser-based interface, using a dashboard or store-builder with a WYSIWYG editor to select and configure website elements (e.g., products, text, images, styles). These user selections are allegedly stored in a database (Compl. ¶18). Subsequently, runtime files (e.g., PHP, JavaScript, CSS) retrieve the stored information to generate the final HTML that is rendered in a visitor's browser (Compl. ¶¶ 6, 18). The complaint also notes that these tools enable responsive web design, which dynamically resizes pages for different devices (Compl. ¶68).
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
’397 Patent Infringement Allegations
| Claim Element (from Independent Claim 2) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An apparatus for producing websites on and for computers having a browser and a virtual machine... | The accused tools are browser-based website builders; modern browsers are alleged to include virtual machines (e.g., JavaScript engines) to interpret and execute code. | ¶¶19, 21 | col. 66:3-5 |
| an interface to present a settings menu which describes elements, said panel presented through a browser... | The accused tools present a "store-builder tool" or dashboard through a browser, allowing users to navigate menus such as "Manage Products" or "Add a Product." | ¶21 | col. 66:6-9 |
| a browser to generate a display in accordance with selected setting(s)... | A WYSIWYG editor within the browser generates a display that updates to reflect user selections for elements like text alignment, font, and paragraph styles. | ¶21 | col. 66:12-14 |
| a database for storing information regarding selected settings; | User selections such as text color, layout, image filenames, and margin settings are stored. | ¶21 | col. 66:15-16 |
| and a build tool having run time file(s) for generating web page(s) and using stored information to generate commands to the virtual machine... | The accused tools build web pages using runtime files (e.g., PHP, JavaScript, PHTML, XML) that utilize the stored database information to generate the final HTML, which the complaint defines as virtual machine commands for the browser's engine. | ¶¶8-9 | col. 66:17-23 |
- Identified Points of Contention:
- Scope Questions: A primary issue may be the scope of the term "virtual machine". The complaint asserts that modern browser engines for executing JavaScript and HTML meet this limitation (Compl. ¶18). A defendant may argue that, in the context of the patent, the term refers to a more specific technology like a Java Virtual Machine (JVM), which is discussed in the specification (’397 Patent, col. 2:54-64).
- Technical Questions: The complaint's theory relies on the final generated HTML being "virtual machine commands." A key technical question is whether this characterization is accurate or if there is a functional distinction between the patent's "run time engine" generating commands and a browser simply rendering standard HTML.
’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 server with a build engine, the web site comprising web pages with a plurality of objects... | The accused tools are described as a "browser-based website creation system including a server comprising a build engine" used to create web pages with objects. | ¶¶79, 84 | col. 64:58-62 |
| the server accepting user input to associate a style with at least one of said plurality of objects...wherein a button or image object is associated with a style that includes values defining transformations and time lines... | The accused tools allegedly use CSS libraries and animations to add transformations and timelines to user-selected elements. | ¶94 | col. 64:63-67 |
| wherein each web page is defined entirely by the objects and the style associated with the object... | The complaint recites this limitation but provides limited factual detail to support how the accused products' web pages are "defined entirely" by the user-selected objects and styles. | ¶84 | col. 64:29-32 |
| produce a database with a multidimensional array comprising the objects that comprise the web site... | The complaint alleges that JSON strings used by the accused tools originate from and reflect a "multidimensional array structured database." | ¶86 | col. 64:32-37 |
| provide the database to a server accessible to 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... | The accused system allegedly uses runtime files (HTML and CSS) to generate the final website from the stored data, which is then accessible to a web browser. | ¶¶84, 88 | col. 65:1-7 |
- Identified Points of Contention:
- Scope Questions: The limitation "defined entirely by the objects and the style" is a significant point of contention. A defendant would likely argue that web pages generated by platforms like Magento or BigCommerce are not defined "entirely" by user-selected objects and styles, but also by underlying templates, server-side logic, and platform architecture not controlled by the user.
- Technical Questions: The complaint's allegation that JSON strings "reflect the database structure" of a "multidimensional array" (Compl. ¶86) raises the question of whether this is a sufficient technical mapping or an oversimplification of how the accused platforms' databases are structured and operate.
V. Key Claim Terms for Construction
The Term: "virtual machine" (’397 Patent, claim 2)
- Context and Importance: This term's construction is foundational to the infringement case for the ’397 Patent. The Plaintiff's theory depends on a broad construction that encompasses modern web browser rendering and script engines. A narrow construction could be case-dispositive for the defense.
- Intrinsic Evidence for a Broader Interpretation: The term is not explicitly defined in the patent, which may support giving it a plain and ordinary meaning that could be broad enough to cover any software that creates an execution environment, such as a JavaScript engine (Compl. ¶18).
- Intrinsic Evidence for a Narrower Interpretation: The specification extensively discusses "JAVA" and "JAVA applet[s]" as the exemplary embodiment of the "full featured programming language" for the build engine (’397 Patent, col. 2:54-64). This repeated reference to a specific technology (Java) that runs on a specific virtual machine (the JVM) could be used to argue the inventor envisioned and claimed a narrower scope.
The Term: "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" imposes a strict condition that could be difficult to prove. The viability of the infringement claim for the ’168 patent hinges on whether the accused web pages meet this exacting standard.
- Intrinsic Evidence for a Broader Interpretation: A plaintiff might argue that "defined entirely" should be interpreted from the perspective of the user's creative input, meaning all user-configurable aspects of the page are derived from the claimed objects and styles, even if a static underlying template exists.
- Intrinsic Evidence for a Narrower Interpretation: The plain meaning of "entirely" suggests exclusivity. A defendant could argue that the presence of any other defining code, such as a base theme template or platform-level scripts not part of the claimed "objects and style," would mean a page is not "defined entirely" by them, thus falling outside the claim's scope. The patent's focus on generating a complete website from a self-contained database supports this literal reading (’168 Patent, Abstract).
VI. Other Allegations
- Willful Infringement: The complaint alleges that Defendant's infringement has been willful since at least October 2, 2015, the date it allegedly received correspondence from Plaintiff providing notice of the ’397 and ’168 patents and the alleged infringement (Compl. ¶¶ 72-73, 102-103).
VII. Analyst’s Conclusion: Key Questions for the Case
- Impact of Post-Filing PTAB Proceedings: With independent claim 1 of the ’397 patent now canceled, a central question is how the case will proceed. The Plaintiff must now prove infringement of the remaining, narrower dependent claims, fundamentally altering the strategic landscape and evidentiary requirements for that patent.
- Claim Scope and Definitional Boundaries: The case will likely turn on claim construction. A core issue is one of definitional scope: can the term "virtual machine" from the ’397 patent, which the specification links to Java technology, be construed broadly enough to read on the standard JavaScript engines of modern web browsers?
- Evidentiary Sufficiency on Technical Operation: A key question is one of factual proof: can the Plaintiff provide sufficient evidence that web pages created by the accused Magento and BigCommerce platforms are "defined entirely by the objects and the style associated with the object," as strictly required by claim 1 of the ’168 patent? This presents a high bar that will require a deep technical analysis of the accused platforms' architecture.