DCT
2:17-cv-00306
Soverain IP LLC v. Wal Mart Stores Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Soverain IP, LLC (Texas)
- Defendant: Wal-Mart Stores, Inc. and Wal-Mart Stores Texas LLC (Delaware)
- Plaintiff’s Counsel: Capshaw Derieux, LLP
- Case Identification: 2:17-cv-00306, E.D. Tex., 04/12/2017
- Venue Allegations: Plaintiff alleges venue is proper because Defendants are registered to do business in Texas, maintain offices and facilities in the state, and have transacted business and committed acts of infringement in the Eastern District of Texas.
- Core Dispute: Plaintiff alleges that Defendant’s e-commerce website, Walmart.com, infringes three patents related to foundational internet technologies for data extraction, user session tracking, and access control.
- Technical Context: The technologies at issue concern methods developed in the mid-to-late 1990s to overcome the "stateless" nature of the early internet and to enable dynamic data presentation, which are foundational for modern e-commerce.
- Key Procedural History: The complaint notes that U.S. Patent Nos. 7,191,447 and 5,708,780 both survived inter partes reexamination proceedings where all original claims were confirmed as patentable and numerous new claims were added. The complaint also highlights that the ’780 Patent was the subject of a prior Markman claim construction order in the Eastern District of Texas in litigation against Amazon.com, which also resulted in a $40 million license to the patent portfolio.
Case Timeline
| Date | Event |
|---|---|
| 1995-06-07 | ’780 Patent Priority Date |
| 1995-10-25 | ’447 Patent Priority Date |
| 1998-01-13 | ’780 Patent Issue Date |
| 2000-04-12 | ’900 Patent Priority Date |
| 2007-03-13 | ’447 Patent Issue Date |
| 2013-12-10 | ’900 Patent Issue Date |
| 2017-04-12 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,191,447 - Managing Transfers of Information in a Communications Network, issued March 13, 2007
The Invention Explained
- Problem Addressed: In the early commercial internet, information on web pages was often static. The patent addresses the need to extract data dynamically from various network sources and integrate it into other documents or applications. (Compl. ¶39; ’447 Patent, Abstract).
- The Patented Solution: The invention describes, among other techniques, an "object embedding program" that can locate a script, apply that script to a network-based source (like a web page), extract specific data, and embed that data into a separate "compound document" like a spreadsheet. (’447 Patent, col. 1:63-67, Fig. 6). This allows, for example, a stock price on a financial website to be automatically pulled into and updated within a user's spreadsheet. (Compl. ¶39).
- Technical Importance: This technology facilitated the creation of more dynamic, integrated applications on the web, moving beyond simple page viewing to functional data extraction and reuse. (Compl. ¶24-25).
Key Claims at a Glance
- The complaint asserts infringement of at least Claim 5. (Compl. ¶75).
- Independent Claim 5 (System):
- An object embedding program implemented on a computer.
- A script program implemented on a computer, structured to extract data from network-based information.
- The object embedding program comprises a link to the network-based information and a link from which the script program can be located.
- The object embedding program is structured to apply the script to the network-based information to cause the data to be extracted.
- The program then embeds the extracted data within a compound document.
U.S. Patent No. 8,606,900 - Method and System for Counting Web Access Requests, issued December 10, 2013
The Invention Explained
- Problem Addressed: The early internet protocol (HTTP) was "stateless," meaning each user request to a server was treated as an isolated event. This made it difficult to track a user's journey through a website or to accurately measure user engagement without counting every single page reload as a new, unique visit. (’780 Patent, col. 2:42-48).
- The Patented Solution: The invention uses a "session identifier" appended to web requests to link together a series of actions from a single user. The core of the solution is a method for counting requests for particular web pages in a way that is "exclusive of repeated requests from a particular client," thereby providing a more accurate measure of unique user activity and preventing distortion from users repeatedly accessing the same page. (’780 Patent, col. 8:14-25).
- Technical Importance: This method provided a foundation for web analytics, enabling website operators to distinguish unique user sessions from repetitive actions and gain more meaningful insight into user behavior. (Compl. ¶89).
Key Claims at a Glance
- The complaint asserts infringement of at least Claims 1 and 5. (Compl. ¶101).
- Independent Claim 1 (Method):
- Generating a plurality of session identifiers at a web server.
- Storing the session identifiers at a plurality of web browsers operated by clients.
- Receiving web page requests at the server, each including a session identifier.
- Storing information regarding the web page requests at the server.
- Tracking the requests by counting the number of requests for particular web pages exclusive of repeated requests from a particular client using information associated with that client.
- Independent Claim 5 (System): Recites a web server with means for performing the steps of method claim 1.
U.S. Patent No. 5,708,780 - Internet Server Access Control and Monitoring, issued January 13, 1998 (Multi-Patent Capsule)
- Technology Synopsis: This patent, which shares a specification with the ’900 patent, discloses a method for managing user sessions on the stateless internet. It uses a server-generated "session identifier" (SID) appended to URLs to recognize a series of requests from the same client, allowing the server to control access to protected resources and monitor user activity without requiring re-authentication for every page request. (Compl. ¶46-48).
- Asserted Claims: At least claims 22, 23, 32, 33, 112-114, 127, 128, and 129 are asserted, which include independent claims 22 and 32. (Compl. ¶137).
- Accused Features: The complaint alleges that the Walmart.com website's use of a "Visitor_ID" appended to URLs to track users and process service requests infringes the ’780 patent. (Compl. ¶112-113).
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is the Walmart.com website, along with the associated servers, software, and computer equipment that operate it (collectively, the "Wal-Mart Products"). (Compl. ¶60, ¶84, ¶110).
Functionality and Market Context
- The complaint alleges that the Walmart.com website functions as an e-commerce platform. For the ’447 Patent, the accused functionality involves web pages that contain scripts enabling the extraction of network-based information (e.g., product data and images) from network servers, which is then rendered on the user's browser. (Compl. ¶62). A visual in the complaint shows HTML code on a Walmart.com page referencing an image source on a separate server,
us-i5.wal.co. (Compl. p. 22). - For the ’900 and ’780 Patents, the accused functionality is the website's system for tracking user activity. This system allegedly generates session identifiers, such as a 22-character "Visitor_ID," and appends them to URLs to track requests from visitors. The system is also alleged to use cookies to store information associated with the "Visitor_ID" on the client computer, allowing for further tracking. (Compl. ¶87-88, ¶92). A network inspection report figure shows a "visitor_id" parameter in a URL query string. (Compl. p. 29).
IV. Analysis of Infringement Allegations
’447 Patent Infringement Allegations
| Claim Element (from Independent Claim 5) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a script program, implemented on a computer in said communications network, structured to extract data from network-based information... | The Walmart.com website utilizes script programs (e.g., JavaScript files) that are loaded by a web browser and lead to the extraction of data from network sources. | ¶67 | col. 1:63-67 |
| an object embedding program, implemented on a computer in said communications network, comprising a link to said network-based information...and a link from which said object embedding program can locate said script program | The Wal-Mart products enable an object embedding program that includes links to network-based information (e.g., product images on server us-i5.wal.co) and links to the script programs that process this information. |
¶62, ¶68 | col. 10:48-52 |
| said object embedding program being structured to apply said script program to said network-based information...and to embed said data within a compound document... | The system executes the script program to extract network data, which is then embedded and displayed in the compound document (the rendered web page) for the user. A network inspection visual shows rendered content in the browser. | ¶71 | col. 11:21-26 |
- Identified Points of Contention:
- Scope Questions: A central question may be whether a standard web browser rendering an HTML page constitutes the claimed "object embedding program." Defendant may argue the patent’s embodiment (Fig. 6), which shows an OLE object in a spreadsheet, requires a more specific software component than a general-purpose browser.
- Technical Questions: The analysis may focus on whether a URL for a resource (e.g., in an
<img>tag) functions as a "link from which said object embedding program can locate said script program," as required by the claim. Plaintiff's theory appears to be that the browser is the "program" and the various JavaScript files and resource URLs are the "links."
’900 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| generating a plurality of session identifiers at a web server, each...having information associated with a particular client... | The Wal-Mart products generate session identifiers such as "Visitor_ID," which are text strings associated with a specific client computer to identify a series of requests. | ¶87-88 | col. 7:15-21 |
| storing the session identifiers at a plurality of web browsers operated by the clients | Defendant's website uses cookies that are placed on a client computer to store and associate tracking information with the "visitor_id." A visual shows cookie values stored on the client. | ¶88, ¶92 | col. 8:25-31 |
| tracking the web page requests by...counting the number of requests for particular web pages exclusive of repeated requests from a particular client... | The Wal-Mart products allegedly contain website analytics functionality that tracks webpage requests while excluding multiple requests from the same computer associated with a unique session identifier. | ¶96 | col. 8:14-25 |
- Identified Points of Contention:
- Technical Questions: The complaint provides direct evidence for the generation and use of a "Visitor_ID" session identifier, including screenshots of URL query strings and cookie values. (Compl. pp. 29, 31). However, the evidence for the specific limitation of "counting...exclusive of repeated requests" is more inferential, relying on allegations of "website analytics functionality." (Compl. ¶96). A key dispute will likely be whether the accused system performs this specific exclusionary counting, or if it merely logs all requests associated with a session ID, which may not meet the claim limitation.
V. Key Claim Terms for Construction
For the ’447 Patent:
- The Term: "object embedding program"
- Context and Importance: This term is the central component of the asserted system claim. Its construction will determine whether the claim reads on modern web browser activity or is limited to older, more specific technologies like OLE. Practitioners may focus on this term because the patent's examples depict a specific technology (OLE in a spreadsheet, Fig. 6), while the infringement allegation targets the general functionality of a web browser.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself is broad, requiring only "a program, implemented on a computer." (’447 Patent, col. 12:5-7). The patent also discusses its applicability to other architectures like OpenDoc, suggesting it is not limited to Microsoft's OLE. (’447 Patent, col. 11:17-19).
- Evidence for a Narrower Interpretation: The detailed description of the preferred embodiment repeatedly uses the specific example of an "OLE Object" embedded in a "spreadsheet." (’447 Patent, col. 10:37-43, Fig. 6). The title of Fig. 6 is "OLE Object." An argument could be made that the invention is tied to this specific context.
For the ’900 Patent:
- The Term: "counting...exclusive of repeated requests from a particular client"
- Context and Importance: This limitation distinguishes the claimed invention from simple logging of all web traffic. The definition of "exclusive" and "repeated requests" is critical to determining infringement, as the complaint alleges this functionality but provides less direct proof of its specific mechanism.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification explains the purpose is to avoid "distortions by users attempting to 'stuff the ballot box," suggesting the term could cover any method that filters out duplicative or non-substantive user actions to get a truer measure of activity. (’780 Patent, col. 8:20-22).
- Evidence for a Narrower Interpretation: The specification discloses a specific method for this exclusion: "In one embodiment, the time intervals between repeated requests by a common client are measured to exclude those requests falling within a defined period of time." (’780 Patent, col. 8:22-25). A defendant might argue that this disclosure limits the claim scope to time-based filtering of repeated requests.
VI. Other Allegations
- Indirect Infringement: The complaint alleges active inducement of infringement for the asserted patents. The alleged inducing acts include Wal-Mart providing "documentation and training materials" that instruct customers and end-users on how to use the Walmart.com website in a manner that allegedly infringes. (Compl. ¶78, ¶104).
- Willful Infringement: Willfulness is alleged based on the patents being "well-known within the industry," as evidenced by numerous forward citations and licensing by competitors. (Compl. ¶79, ¶105, ¶138). Knowledge is alleged as of at least the date of service of the complaint.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "object embedding program," conceived in the context of 1990s compound document technologies like OLE, be construed to cover the routine, ubiquitous function of a modern web browser rendering a webpage with embedded resources and executing client-side scripts?
- A key evidentiary question will be one of functional specificity: does the complaint provide sufficient factual support that Wal-Mart's web analytics system performs the specific function of "counting...exclusive of repeated requests" as required by the ’900 patent claims, or is there a potential mismatch between the broad allegation of "tracking" and the patent's more precise claim language?