DCT

2:17-cv-00160

Express Mobile Inc v. BigCommerce Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:17-cv-00160, E.D. Tex., 02/27/2017
  • Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas because Defendant, a Texas-based corporation, conducts regular business in the district, and the alleged acts of infringement occurred there.
  • Core Dispute: Plaintiff alleges that Defendant’s e-commerce platform and associated website building tools infringe two patents related to browser-based website generation technology.
  • Technical Context: The patents relate to systems and methods for building dynamic websites through a browser-based interface, a foundational technology for the modern e-commerce and web development industries.
  • Key Procedural History: The complaint indicates it is a refiling of a previous action initiated on April 8, 2016, which was dismissed without prejudice to allow for settlement negotiations that ultimately failed in January 2017. Notably, public records subsequent to the complaint's filing indicate that U.S. Patent No. 6,546,397, a lead patent-in-suit, has undergone both ex parte reexamination and inter partes review, resulting in the cancellation of independent claim 1, which is asserted in this complaint. Records also show U.S. Patent No. 7,594,168 underwent an ex parte reexamination where its asserted claims were confirmed.

Case Timeline

Date Event
1999-12-02 Priority Date for '397 and '168 Patents
2003-04-08 '397 Patent Issue Date
2009-09-22 '168 Patent Issue Date
2016-04-08 Initial Complaint Filed
2017-01-XX Settlement Discussions Broke Down
2017-02-27 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"

  • Patent Identification: U.S. Patent No. 6,546,397, "Browser Based Web Site Generation Tool and Run Time Engine," issued April 8, 2003. (Compl. ¶14).

The Invention Explained

  • Problem Addressed: The patent describes conventional web authoring methods using HTML and scripting languages as being "inherently limited," slow, and lacking in computational power, which hindered the creation of rich, dynamic, and interactive web applications. (’397 Patent, col. 1:11-25).
  • The Patented Solution: The invention proposes a system architecture separating website design from execution. A user employs a browser-based "build tool" to visually create a site, which generates an "object database" containing the site's elements and attributes rather than static HTML. A separate "run time engine," delivered to an end-user's browser, then reads this database to dynamically construct and display the interactive website, aiming for capabilities beyond what standard HTML/scripting could easily achieve at the time. (’397 Patent, Abstract; col. 5:8-19; Fig. 2).
  • Technical Importance: This object-oriented, database-driven approach sought to enable more complex, application-like features to run within a standard web browser by separating content structure from the presentation logic. (’397 Patent, col. 2:5-14).

Key Claims at a Glance

  • The complaint asserts independent claims 1, 2, and 37. (Compl. ¶¶22, 24, 40).
  • Independent Claim 2 (Apparatus):
    • an interface to present a settings menu which describes elements, said panel presented through a browser;
    • where the selectable setting(s) corresponds to commands to the virtual machine;
    • a browser to generate a display in accordance with selected setting(s);
    • a database for storing information regarding selected settings; 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 for generating at least a portion of web page(s).
  • Independent Claim 37 (Apparatus):
    • an interface for building a website through control of website elements, operable through the browser;
    • an internal database associated with the interface for storing information representative of one or more of assembly of settings; and
    • a build tool to construct web page(s) of the website having: an external database containing data corresponding to the information stored in the internal database, and one or more run time files, where said run time files use information stored in the external database to generate virtual machine commands.
  • The complaint also asserts dependent claims 3-6, 8, 9, and 11, thereby reserving the right to pursue narrower infringement theories. (Compl. ¶21).

U.S. Patent No. 7,594,168 - "Browser Based Web Site Generation Tool and Run Time Engine"

  • Patent Identification: U.S. Patent No. 7,594,168, "Browser Based Web Site Generation Tool and Run Time Engine," issued September 22, 2009. (Compl. ¶50).

The Invention Explained

  • Problem Addressed: As a continuation of the '397 patent, this patent targets the same technical problem: the difficulty of creating dynamic, object-oriented websites using conventional, static web technologies. (’168 Patent, col. 1:21-47; Compl. ¶51).
  • The Patented Solution: This invention refines the concept by focusing on a system where a server-side "build engine" allows a user to associate "styles"—which include dynamic properties like "transformations and time lines"—with webpage objects (e.g., buttons, images). These object-style associations are stored in a multidimensional database, which is then provided to a client-side "runtime engine" that interprets the data to generate the final, interactive webpage. (’168 Patent, Abstract; col. 2:37-55).
  • Technical Importance: The invention emphasizes an object-centric design paradigm for web development, where dynamic behaviors are encapsulated as "styles" and linked to objects, facilitating the creation of complex animations and interactions. (’168 Patent, col. 11:58-65).

Key Claims at a Glance

  • The complaint asserts independent claim 1. (Compl. ¶58).
  • Independent Claim 1 (System):
    • a system for assembling a web site comprising a server with a build engine;
    • the web site comprising web pages with objects (one button or one image object);
    • 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;
    • wherein each web page is defined entirely by the objects and the style associated with the object;
    • 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;
    • 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 website from the objects and style data extracted from the provided database.
  • The complaint also asserts dependent claim 6. (Compl. ¶57).

III. The Accused Instrumentality

Product Identification

The "Accused Instrumentalities" are identified as Defendant BigCommerce's "website building tools" and "browser-based website and/or web page authoring tool." (Compl. ¶21, ¶57).

Functionality and Market Context

The complaint alleges that the accused platform enables users to create websites by selecting settings for various elements, storing that information in a database, and then retrieving it to generate the final website. (Compl. ¶17, ¶21). Functionality is alleged to include a WYSIWYG (What You See Is What You Get) editor and a "Carousel Builder" for creating image slideshows with transitions. (Compl. ¶31, ¶35). The complaint references a YouTube video to exemplify how the accused tools allow users to select and configure elements like buttons, images, and forms. (Compl. ¶33). The platform is marketed to a wide range of customers, partners, and end users for building e-commerce websites. (Compl. ¶42, ¶62).

IV. Analysis of Infringement Allegations

’397 Patent Infringement Allegations

Claim Element (from Independent Claim 2) Alleged Infringing Functionality Complaint Citation Patent Citation
an interface to present a settings menu which describes elements, said panel presented through a browser The accused platform provides browser-based interfaces, such as a WYSIWYG editor and Carousel Builder, with panels for selecting and configuring website elements. ¶31, ¶35 col. 66:5-9
where the selectable setting(s) corresponds to commands to the virtual machine User selections in the settings menu are alleged to correspond to commands executed by a virtual machine, which the complaint broadly defines. ¶22, ¶23 col. 66:10-13
a browser to generate a display in accordance with selected setting(s) The user's browser displays the website as configured by the settings selected in the interface. ¶24 col. 66:14-16
a database for storing information regarding selected settings The accused platform stores user-selected settings and website element information in a database, as suggested by its API documentation. ¶17, ¶27 col. 66:17-18
a build tool having run time file(s) for generating web page(s) and using stored information to generate commands to the virtual machine for generating at least a portion of web page(s) The platform is alleged to use a "build tool" and "run time file(s)" to generate webpages by using the stored database information to create commands for a virtual machine. ¶24, ¶41 col. 66:19-25
  • Identified Points of Contention:
    • Scope Questions: A primary dispute may arise over the definition of "virtual machine." The complaint relies on a broad dictionary definition (Compl. ¶23), but the patent specification's focus on Java applets and JAR/CAB files may support a narrower construction limited to a Java Virtual Machine, raising the question of whether a standard browser's JavaScript engine meets the claim's requirement.
    • Technical Questions: Does the BigCommerce platform utilize the specific "build tool" and "run time file" architecture described in the patent? The court will have to determine whether the platform's method of generating and rendering pages—which may involve server-side templating and standard web requests—maps onto the patent's model of delivering a discrete database and runtime engine to the client's browser for execution.

’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 BigCommerce operates a server-based platform that includes tools ("build engine") for creating websites. ¶57, ¶58 col. 63:67-64:1
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 platform's tools, such as the Carousel Builder, allegedly allow users to define styles for objects that include dynamic behaviors like animations and transitions ("transformations and time lines"). ¶58 col. 64:4-9
wherein each web page is defined entirely by the objects and the style associated with the object The complaint alleges that the web pages are defined by the objects and associated styles. ¶58 col. 64:10-12
produce a database with a multidimensional array comprising the objects that comprise the web site... and provide the database to a server accessible to web browser The platform is alleged to produce and provide a database containing object and style data, citing API documentation as evidence of the data structure. ¶58, ¶59 col. 64:13-65:2
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 extracted from the provided database The platform is alleged to produce a database that a browser-side "runtime engine" uses to generate the website from the stored object and style data. ¶58, ¶59 col. 65:3-7
  • Identified Points of Contention:
    • Scope Questions: The infringement analysis will likely center on the term "defined entirely by." It raises the question of whether a webpage created using modern theme engines like BigCommerce's "Stencil" (Compl. ¶61), which rely on base templates, CSS, and other files, can be considered "defined entirely by" the database objects and styles, as the claim requires.
    • Technical Questions: What evidence demonstrates that the accused platform "produce[s] a database" and "provide[s] the database to a server accessible to web browser" for client-side generation? A key question is whether this specific data flow occurs, or if the system operates more conventionally, with the server querying its own database to build and serve a pre-rendered or partially-rendered page to the browser.

V. Key Claim Terms for Construction

For the '397 Patent

  • The Term: "virtual machine"
  • Context and Importance: This term is critical to the infringement theories for claims 2 and 37, as the generation of "virtual machine commands" is a required step. The breadth of this term will determine whether modern browser JavaScript engines fall within the claim scope.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claims themselves use the general term "virtual machine" without explicit limitation to a specific type, which may support an argument for a broader, technology-neutral meaning that includes any environment for executing code. (’397 Patent, col. 66:12).
    • Evidence for a Narrower Interpretation: The specification heavily emphasizes Java technology, describing the invention in the context of Java applets, the Java Virtual Machine (JVM), and the creation of JAR/CAB files, which are packages for Java applets. (’397 Patent, col. 1:26-33, col. 5:15-18). This context may support a narrower construction limited to the specific type of virtual machine disclosed.

For the '168 Patent

  • The Term: "defined entirely by"
  • Context and Importance: This phrase in claim 1 ("wherein each web page is defined entirely by the objects and the style associated with the object") appears to be a significant limitation. The viability of the infringement claim will depend on whether the accused webpages, which are part of a complex e-commerce platform, meet this restrictive condition.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: A plaintiff might argue this term means that all user-customizable aspects and dynamic behaviors of the page originate from the objects and styles in the database, even if a static underlying template is also used.
    • Evidence for a Narrower Interpretation: The plain meaning suggests an exhaustive definition. The patent's own disclosure of creating an "HTML shell file" as part of the process (’168 Patent, col. 2:14-15) could be used to argue that the webpage is not "entirely" defined by the objects and styles, but also by this separate HTML structure, thus falling outside the literal scope of the claim.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges both induced infringement and contributory infringement. The inducement theory is based on Defendant allegedly providing instruction materials, training, and advertising that encourage and enable its customers to use the accused tools in an infringing manner. (Compl. ¶¶44-45, 64-65). The contributory infringement theory alleges the accused platform is a material component especially made for infringement and not a staple article of commerce suitable for substantial non-infringing use. (Compl. ¶¶46, 66).
  • Willful Infringement: Willfulness is alleged based on Defendant’s continued infringement after receiving notice of the patents. The complaint pleads that notice was effective "at least as early as the filing of this complaint," framing this as a theory of post-filing willfulness. (Compl. ¶¶43, 47, 63).

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

  • A threshold issue is one of claim viability: Given that independent claim 1 of the ’397 patent was cancelled in post-filing administrative proceedings, a primary question is how the Plaintiff will proceed with its case, which will now depend entirely on the surviving asserted claims.
  • A key architectural question is one of technical operation: For both patents, the case may turn on whether BigCommerce’s modern, cloud-based platform functions in the specific manner claimed—namely, by delivering a discrete "database" and "run time engine" to the client for dynamic, browser-side page generation—or if it operates on a fundamentally different, server-centric architecture that does not map to the claimed invention.
  • A central claim construction issue is one of definitional scope: The infringement analysis for the ’168 patent will heavily depend on the interpretation of "defined entirely by." The court must decide if this stringent language can be read to cover a sophisticated e-commerce webpage constructed from a combination of database content, theme templates, and external style sheets, or if it requires a self-contained system that does not exist in the accused platform.