DCT
2:17-cv-00265
Product Association Tech LLC v. Clique Media Group
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Product Association Technologies LLC (Texas)
- Defendant: Clique Media Group (California)
- Plaintiff’s Counsel: Kizzia Johnson, PLLC
- Case Identification: 2:17-cv-00265, E.D. Tex., 04/05/2017
- Venue Allegations: Plaintiff alleges venue is proper because Defendant is deemed to reside in the district and has committed acts of infringement in the district.
- Core Dispute: Plaintiff alleges that Defendant’s online shopping portal websites infringe a patent related to using universal product codes to retrieve and display product information over the Internet.
- Technical Context: The technology concerns early e-commerce methods for linking a product displayed on one website to detailed, manufacturer-provided information hosted on another website using standardized product identifiers.
- Key Procedural History: The patent-in-suit is subject to a terminal disclaimer, which may affect its expiration date. The complaint does not mention other prior litigation, licensing history, or post-grant proceedings.
Case Timeline
| Date | Event |
|---|---|
| 1998-03-27 | Earliest Priority Date for U.S. Patent No. 6,154,738 |
| 2000-11-28 | U.S. Patent No. 6,154,738 Issues |
| 2017-02-22 | Date of screenshots of accused functionality (Net-a-Porter) |
| 2017-02-23 | Date of screenshots of accused functionality (Byrdie, Who What Wear) |
| 2017-04-05 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,154,738 - Methods and Apparatus for Disseminating Product Information via the Internet Using Universal Product Codes, Issued November 28, 2000
The Invention Explained
- Problem Addressed: In the early commercial Internet, manufacturers made detailed product information available on their own websites, but this information was often difficult for consumers to find, particularly when the manufacturer's specific website address (URL) was not known (’738 Patent, col. 1:44-53).
- The Patented Solution: The invention proposes a system, referred to as a "product code translator" or "cross-referencing resource," that uses pre-existing universal product codes (like UPCs) as keys to look up the correct Internet address for detailed product information (’738 Patent, Abstract; col. 2:3-14). As depicted in Figure 5, a user's web browser (331), upon activation of a link on a merchant's web page (334), sends a request containing a product code (338) to a cross-reference server (336), which then redirects the browser to the correct product information server (344) to retrieve detailed information (346).
- Technical Importance: The invention provided a method to bridge the gap between the world of physical retail, which relied on standardized barcodes, and the decentralized nature of the World Wide Web, allowing e-commerce sites to provide dynamic, manufacturer-maintained data without having to store it locally (’738 Patent, col. 2:26-36).
Key Claims at a Glance
- The complaint asserts at least independent Claim 1 (Compl. ¶13).
- Independent Claim 1 (Method):
- transmitting via the Internet a Web page containing at least one hyperlink including a reference to separately stored information, with the reference including a particular universal product code value that uniquely designates a selected product.
- employing a Web browser program to receive and display the Web page.
- employing the Web browser to respond to hyperlink activation by transmitting a first request message to a cross-referencing resource, the request containing at least a portion of the universal product code.
- processing the first request at the cross-referencing resource by referring to a database to identify the particular Internet address corresponding to the universal product code.
- returning a redirection message to the Web browser containing the particular Internet address.
- employing the Web browser to automatically respond to the redirection message by transmitting a second request message to the particular Internet address.
- employing a Web server at the particular Internet address to respond to the second request by returning product information.
- employing the Web browser to automatically display the product information to the user.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are the online shopping portal systems operating at http://shop.byrdie.com/, http://shop.mydomaine.com/, and http://shop.whowhatwear.com/ (collectively, "Products") (Compl. ¶14).
Functionality and Market Context
The complaint alleges the Products are e-commerce platforms that disseminate product information online (Compl. ¶15). They are alleged to operate by displaying products and, when a user clicks a hyperlink associated with a product, redirecting the user to a third-party retailer's website where detailed information and purchasing options are available (Compl. ¶16, ¶20-21). For example, a user on the BYRDIE portal can be redirected to a product page on net-a-porter.com (Compl. ¶16). The complaint provides a screenshot from one of the portals showing a product grid with hyperlinks. This screenshot from the WHO WHAT WEAR portal shows multiple jacket listings, one of which is labeled "Hyperlink" and another element is labeled "Reference to separately stored information" (Compl. p. 6).
IV. Analysis of Infringement Allegations
U.S. Patent No. 6,154,738 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| transmitting via the Internet a Web page containing at least one hyperlink including a reference to separately stored information, said reference including a particular universal product code value that uniquely designates a selected product | Defendant's Products transmit web pages displaying products with hyperlinks; these links allegedly reference separately stored information and contain a product code designating the selected product. An example given is a link to a Net-a-Porter URL containing the product code "774584". | ¶18, ¶16 | col. 33:46-52 |
| employing a Web browser program to receive said Web page and display said Web page to a user | The Products are alleged to employ a web browser program to receive and display web pages to a user. | ¶19 | col. 33:53-54 |
| further employing said Web browser to respond to the activation of said hyperlink... by transmitting a first request message to said cross-referencing resource, said first request message containing at least a portion of said particular universal product code value | When a user clicks a hyperlink, the browser transmits a request message to the Products' cross-referencing resource (e.g., a database for the shopping portal), which contains a portion of the product code. A screenshot from the BYRDIE portal shows a product grid where an item is marked with the label "Hyperlink" (Compl. p. 5). | ¶19 | col. 33:55-61 |
| processing said first request message at said cross-referencing resource by referring to said database to identify the particular Internet address which corresponds to said particular universal product code value | The Products' cross-referencing resource processes the request by using its database to identify the Internet address corresponding to the product code. | ¶20 | col. 33:62-65 |
| and returning a redirection message to said Web browser which contains said particular Internet address | The system is alleged to return a redirection message containing the identified Internet address to the user's web browser. | ¶20 | col. 33:65 - col. 34:1 |
| employing said Web browser to automatically respond to said redirection message by transmitting a second request message to said particular Internet address | The web browser automatically responds to the redirection by transmitting a second request to the destination Internet address. | ¶21 | col. 34:2-4 |
| employing a Web server... to respond to said second request message by returning product information describing said selected product to said Web browser | A third-party server (e.g., net-a-porter.com) responds to the second request by providing product information for the selected product. A screenshot shows a product page on Net-a-Porter, which the complaint alleges is the result of this step, providing "Product Information" (Compl. p. 9). | ¶22 | col. 34:5-9 |
| and employing said Web browser program to automatically display said product information from said Web server to said user | The web browser causes the received product information to be automatically displayed to the user. | ¶22 | col. 34:10-13 |
- Identified Points of Contention:
- Scope Questions: The complaint alleges that numeric identifiers like "774584" are "universal product codes" (Compl. ¶16). A central issue will be whether these internal or partner-specific product identifiers fall within the patent's definition of "universal product codes," which includes UPCs, EANs, and "any other multi-industry or single industry standard product designation system" ('738 Patent, col. 4:46-57). The defense may argue that the accused codes are proprietary and not "standard" in the manner contemplated by the patent.
- Technical Questions: The infringement theory relies on the accused system operating as a "cross-referencing resource" that returns a "redirection message" ('738 Patent, col. 33:65 - col. 34:1). A key question will be what technical evidence supports this specific multi-step process. The defense may argue its system is a simpler affiliate marketing architecture that does not involve a "redirection message" from a "cross-referencing resource" in the manner claimed, but rather a direct hyperlink.
V. Key Claim Terms for Construction
The Term: "universal product codes"
Context and Importance: This term's scope is critical. If construed narrowly to only cover formal standards like UPC and EAN, the infringement case may fail if the accused product codes are shown to be proprietary SKUs. If construed broadly, as Plaintiff advocates, it could cover a wide range of product identifiers used in e-commerce. Practitioners may focus on this term because the patent provides its own lexicography, which typically controls, but the examples in the specification could be used to argue for a narrower interpretation of the catch-all phrase "any other... standard."
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification explicitly defines the term to include UPCs, EANs, and "any other multi-industry or single industry standard product designation system" ('738 Patent, col. 4:46-57). The complaint quotes this definition directly (Compl. ¶17).
- Evidence for a Narrower Interpretation: The specification's primary examples and detailed embodiments focus on established, globally recognized codes like UPCs and ISBNs (International Standard Book Numbers) ('738 Patent, col. 16:29-36). A party could argue these examples contextualize and limit the scope of the "any other standard" phrase.
The Term: "cross-referencing resource"
Context and Importance: The nature of this "resource" defines the infringing architecture. Infringement depends on whether the accused portals' back-end systems meet the functional and structural identity of this claimed element.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent describes the resource functionally as a system that "receives Internet request messages containing all or part of a universal product code and returns the Internet address at which information about the identified product... may be obtained" ('738 Patent, Abstract). This functional description could be read broadly.
- Evidence for a Narrower Interpretation: The patent provides specific structural examples, such as the relational database with specific tables shown in Figure 2 or an implementation using the Internet Domain Name Service (DNS) ('738 Patent, col. 2:58-63; Fig. 2). A party may argue the term should be limited to these disclosed, more complex architectures.
VI. Other Allegations
- Indirect Infringement: The complaint does not contain allegations of indirect infringement.
- Willful Infringement: The complaint does not allege willfulness or plead facts that would support a finding of pre-suit knowledge or egregious conduct. The prayer for relief includes a request for enhanced damages pursuant to 35 U.S.C. § 284, but the body of the complaint lacks the factual predicate for such a request (Compl. p. 10).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: Can the term "universal product codes," which the patent defines to include "any other... standard product designation system," be construed to cover the product identifiers allegedly used in Defendant's affiliate marketing links, or is it limited to formal, inter-industry standards like UPC and EAN?
- A key evidentiary question will be one of technical operation: Does the accused portal architecture function as the claimed "cross-referencing resource" that processes a request and returns a "redirection message," or does it operate as a simpler system (e.g., generating direct affiliate hyperlinks) that creates a fundamental mismatch with the specific multi-step process required by Claim 1?