DCT
2:17-cv-00271
Product Association Tech LLC v. Connexity Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Product Association Technologies LLC (Texas)
- Defendant: Shopzilla, Inc. (California)
- Plaintiff’s Counsel: Kizzia Johnson, PLLC
- Case Identification: 2:17-cv-00271, 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 there.
- Core Dispute: Plaintiff alleges that Defendant’s online shopping portal infringes a patent related to using universal product codes to retrieve product information from disparate sources across the Internet.
- Technical Context: The technology provides a method for linking standardized product identifiers, such as those used in retail, to specific manufacturer-provided product information pages on the Internet, a foundational process for online price comparison and product aggregation services.
- Key Procedural History: The patent-in-suit was filed with a terminal disclaimer, which may affect the patent's expiration date and enforceability by linking it to the term of a parent patent.
Case Timeline
| Date | Event |
|---|---|
| 1998-03-27 | '738 Patent Priority Date |
| 2000-11-28 | '738 Patent Issue Date |
| 2016-11-21 | Date of Alleged Infringement Evidence |
| 2017-04-05 | Complaint Filing Date |
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: The patent describes a problem in the early commercial Internet where manufacturers made detailed product information available online, but this information was often difficult for consumers and resellers to locate, particularly when the specific URL for the manufacturer's website was not known (ʼ738 Patent, col. 1:40-52).
- The Patented Solution: The invention proposes a centralized "cross-referencing resource" that acts as a directory. This resource receives a request containing a universal product code (e.g., a UPC), looks up a corresponding Internet address for that product's information source (e.g., the manufacturer's server), and returns a "redirection message" that automatically sends the user's browser to that address to retrieve the detailed product information (ʼ738 Patent, Abstract; col. 2:36-44).
- Technical Importance: The technology established a standardized framework for bridging the gap between physical-world product identifiers and siloed online product data, facilitating the aggregation of product information from multiple sources ('738 Patent, col. 2:4-11).
Key Claims at a Glance
- The complaint asserts at least independent Claim 1 (Compl. ¶13).
- The essential elements of Claim 1, a method claim, include:
- Establishing a "cross-referencing resource" (e.g., a database) that links "universal product code values" to Internet addresses.
- Transmitting a web page with a hyperlink that includes a "particular universal product code value" for a selected product.
- Using a web browser to display the page and, upon user activation of the hyperlink, transmit a "first request message" containing the product code to the cross-referencing resource.
- Processing the first request at the resource to identify the corresponding Internet address and return a "redirection message" containing that address to the browser.
- Using the browser to automatically respond to the redirection message by sending a "second request message" to the identified Internet address.
- Using a server at that Internet address to respond to the second request by providing product information, which the browser then automatically displays to the user.
- The complaint reserves the right to assert other claims (Compl. ¶13).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are the "Shopzilla shopping portal, www.shopzilla.com and any similar products and services" (collectively, "Products") (Compl. ¶14).
Functionality and Market Context
- The complaint alleges the Products are an e-commerce platform that disseminates product information online (Compl. ¶15). The system is alleged to operate by receiving a user search, displaying a web page of results with hyperlinks for specific products, and then directing the user to a third-party merchant's website to view detailed product information (Compl. ¶¶18, 22). The complaint provides an annotated screenshot showing a search results page for shoes on Shopzilla.com (Compl. p. 4). A second screenshot shows the resulting product detail page on a third-party (Groupon) website (Compl. p. 6). The allegations frame Shopzilla as a product search and comparison-shopping aggregator.
IV. Analysis of Infringement Allegations
'738 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| establishing a cross-referencing resource connected to the Internet which includes a database containing a plurality of cross-references... | The complaint alleges the Products use a "database associated with the Shopzilla platform" that contains cross-references associating a product code with an Internet address for a destination site. | ¶16 | col. 2:20-25 |
| transmitting via the Internet a Web page containing at least one hyperlink including a reference to separately stored information... | The Products allegedly transmit a web page with hyperlinks, such as one for "Men's Franco Vanucci Men's Casual Lace-up Oxford Shoes," which includes a reference to separately stored information. | ¶18 | col. 2:16-19 |
| ...said reference including a particular universal product code value... | The hyperlink reference allegedly includes a product code, identified in a screenshot as a "Stock keeping unit (SKU)" with the value "52738779". | ¶18 | col. 4:46-57 |
| ...employing said Web browser to respond to the activation of said hyperlink... by transmitting a first request message to said cross-referencing resource... | A user click on the hyperlink allegedly transmits a "first request message" to the Shopzilla database, with the request containing the product code value. | ¶19 | col. 2:19-25 |
| processing said first request message... and returning a redirection message to said Web browser which contains said particular Internet address... | The Shopzilla database allegedly processes the request, identifies the destination Internet address, and "returns a redirection message to the web browser" containing that address. | ¶20 | col. 2:39-44 |
| employing said Web browser to automatically respond to said redirection message by transmitting a second request message... | The web browser allegedly responds to the redirection message by transmitting a "second request message" to the destination Internet address, redirecting the user. | ¶21 | col. 2:42-44 |
| employing a Web server... to respond to said second request message by returning product information... | A server at the destination site (e.g., groupon.com) responds by providing product information, as illustrated in a screenshot of the final product page. | ¶22 | col. 2:1-3 |
Identified Points of Contention
- Scope Questions: A primary question is whether the "Stock keeping unit (SKU)" used by Shopzilla qualifies as a "universal product code" under the patent's definition. The patent defines the term to include UPCs, EANs, and "any other multi-industry or single industry standard product designation system" (ʼ738 Patent, col. 4:46-57). The analysis may turn on whether a merchant-specific SKU is considered a "standard product designation system."
- Technical Questions: The complaint alleges the Shopzilla system returns a "redirection message" (Compl. ¶20). A key factual question will be whether the technical mechanism used by the accused platform—which the complaint illustrates with a long, complex URL containing terms like "redirect.ashx" (Compl. p. 4)—meets the technical requirements of the "redirection message" limitation as defined by the claim and specification.
V. Key Claim Terms for Construction
The Term: "universal product codes"
- Context and Importance: The infringement theory depends on the accused "Stock keeping unit (SKU)" falling within the scope of this term. The complaint explicitly equates the two by quoting the patent's definition and then identifying an SKU in its infringement example (Compl. ¶¶17-18).
- Intrinsic Evidence for a Broader Interpretation: The patent provides an explicit definition: "The term 'universal product codes'... includes the Universal Product Codes ('U.P.C.s')... the EAN codes... and any other multi-industry or single industry standard product designation system" (ʼ738 Patent, col. 4:46-57). Plaintiff may argue that an SKU used consistently across an e-commerce platform constitutes a "single industry standard product designation system."
- Intrinsic Evidence for a Narrower Interpretation: The specification’s primary examples are globally unique, inter-company standards like UPC and EAN ('738 Patent, col. 4:50-55). A party could argue that this context limits the term's scope to such broad, non-proprietary standards, potentially excluding internal or less-standardized identifiers like an SKU.
The Term: "redirection message"
- Context and Importance: This term is central to the claimed method for transferring the user from the initial site to the final product information source. The complaint alleges that the Shopzilla system "returns a redirection message" to the user's browser (Compl. ¶20). Whether the accused system's technical process meets this limitation will be a focal point.
- Intrinsic Evidence for a Broader Interpretation: The specification describes the functional result of the message: "The requesting web browser then automatically redirects the request message to the destination URL" ('738 Patent, col. 2:42-44). This focus on the automatic redirection function could support an interpretation that covers various technical implementations achieving this outcome, not just a specific protocol.
- Intrinsic Evidence for a Narrower Interpretation: One embodiment in the specification describes a specific technical implementation where the message is an "HTTP response message which includes a location header field containing a destination URL" ('738 Patent, col. 2:39-42). A party may argue this narrows the term to formal HTTP redirection protocols (e.g., a 3xx status code response).
VI. Other Allegations
Indirect Infringement
- The complaint does not explicitly allege indirect or induced infringement. The single count is for direct infringement under 35 U.S.C. § 271 (Compl. ¶¶8-25).
Willful Infringement
- The complaint does not contain specific factual allegations to support a claim for willful infringement, such as pre-suit knowledge of the patent.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the patent's term "universal product codes," which is defined to include major standards like UPC and EAN as well as other "standard product designation system[s]," be construed to cover the "Stock Keeping Unit (SKU)" allegedly used by the accused e-commerce platform?
- A key evidentiary question will be one of technical mechanism: does the accused system's process for sending a user to a third-party merchant site constitute a "redirection message" as required by Claim 1, or is there a mismatch between the specific technology used by the defendant and the functionality described in the patent?
- The case may also raise questions of divided infringement: since the claimed method includes steps performed by a user's web browser, a central issue may be whether the defendant's control over its server-side platform is sufficient to make it liable for direct infringement of the entire method.