DCT
2:17-cv-00323
Soverain IP LLC v. Experian Information Solutions Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Soverain IP, LLC (Texas)
- Defendant: Experian Information Solutions, Inc. (Ohio)
- Plaintiff’s Counsel: Capshaw Derieux, LLP; Berger & Hipskind LLP
- Case Identification: 2:17-cv-00323, E.D. Tex., 04/18/2017
- Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas because Defendant is registered to do business in the state, maintains offices in the district (Allen, TX), has transacted business there, and has admitted to doing business and consented to jurisdiction in the district.
- Core Dispute: Plaintiff alleges that Defendant’s consumer credit websites and address verification services infringe three patents related to managing information transfers, counting web access requests, and controlling data transfer in computer networks.
- Technical Context: The patents relate to foundational e-commerce and web technologies developed in the mid-1990s for managing user sessions, extracting data, and controlling communications between clients and servers.
- Key Procedural History: The complaint notes that U.S. Patent No. 7,191,447 was subject to an inter partes reexamination where the USPTO confirmed the patentability of all original claims and added 83 new claims. This history may suggest the patent’s resilience to certain validity challenges. The complaint also highlights that Amazon.com previously paid $40 million to license Soverain patents, a fact Plaintiff may use to frame arguments regarding industry recognition and reasonable royalties.
Case Timeline
| Date | Event |
|---|---|
| 1993-01-01 | Open Market, Inc. founded |
| 1995-04-01 | Open Market begins commercial shipment of Transact product |
| 1995-06-07 | Priority Date for ’900 Patent |
| 1995-10-25 | Priority Date for ’447 Patent |
| 1996-10-29 | Priority Date for ’112 Patent |
| 2001-08-21 | ’112 Patent Issued |
| 2007-03-13 | ’447 Patent Issued |
| 2012-10-05 | Reexamination Certificate for ’447 Patent Issued |
| 2013-12-10 | ’900 Patent Issued |
| 2017-04-18 | 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: The patent addresses the need to extract specific data from sources of network-based information (like web pages) for use in other applications, such as embedding live stock quotes from a financial website into a spreadsheet (Compl. ¶44; ’447 Patent, col. 10:35-42).
- The Patented Solution: The invention describes a system where an "object embedding program" on a computer can locate and apply a "script program" to a source of network information (e.g., a web page) (’447 Patent, Abstract). This script is designed to extract specific data from the page and embed that data into a separate "compound document," like a spreadsheet or word processing file (’447 Patent, col. 9:36-50, Fig. 6). The link to the script can be contained within the network information itself, for instance, in a comment tag (’447 Patent, col. 11:1-5).
- Technical Importance: This technology provided a method for creating dynamic, self-updating documents that pull live data from the web, a precursor to modern web APIs and data integration techniques.
Key Claims at a Glance
- The complaint asserts at least independent claim 5 (Compl. ¶68).
- Essential elements of claim 5 (a method claim):
- Executing an object embedding program to locate a script program from a link.
- Applying the script program to network-based information provided by a network server.
- The object embedding program is linked to the network-based information by a link.
- Executing the script program to extract data from the network-based information.
- Continuing to execute the object embedding program to embed the extracted data within a compound document.
- The complaint does not explicitly reserve the right to assert dependent claims for this patent.
U.S. Patent No. 8,606,900 - Method and System for Counting Web Access Requests
- Issued: December 10, 2013
The Invention Explained
- Problem Addressed: In the early, stateless HTTP environment, it was difficult for a server to track a user's session across multiple page requests or to accurately count unique page views without overcounting repeated requests from the same user (Compl. ¶46; ’900 Patent, col. 2:40-54).
- The Patented Solution: The invention describes a method where a server, upon receiving a request from a client, appends a "session identification" (SID) to the request and subsequent requests within that session (’900 Patent, Abstract; Compl. ¶46). This SID allows the server to identify a series of requests as coming from the same client, enabling it to count requests for pages "exclusive of repeated requests from a particular client" within a certain period (’900 Patent, col. 10:20-27). The SID can be appended to the URL itself (’900 Patent, col. 4:29-31).
- Technical Importance: This method provided a foundational technique for session management and web analytics, enabling more accurate tracking of user engagement on websites.
Key Claims at a Glance
- The complaint asserts at least independent claims 1 and 5 (Compl. ¶91).
- Essential elements of claim 1 (a method claim):
- Generating a plurality of session identifiers at a web server, with each identifier having information associated with a particular client.
- Storing the session identifiers at the web browsers operated by the clients.
- Receiving web page requests at the web server, with each request including a session identifier.
- Storing information about the requests at the server, including the requested page and the session identifier.
- Tracking the requests by evaluating the stored information and counting requests for particular pages exclusive of repeated requests from a particular client.
- The complaint does not explicitly reserve the right to assert dependent claims for this patent.
Multi-Patent Capsule
- U.S. Patent No. 6,279,112 - Controlled Transfer of Information in Computer Networks
- Issued: August 21, 2001
- Technology Synopsis: The patent describes a system for controlling information flow between servers and clients. A server sends a client a document with a "channel object"; in response to the client activating this object, an "access ticket" is stored that permits the information source to communicate with the user over a specified channel, potentially filtering the information based on the ticket (’112 Patent, Abstract; Compl. ¶49).
- Asserted Claims: At least claim 17 (Compl. ¶116).
- Accused Features: Experian’s Address Verification products are accused of infringement. These products allegedly transmit an XML document (the "channel object") that defines a search process, and use a token (the "access ticket") stored on the client to authenticate requests and control the data returned from the server (Compl. ¶¶100, 103, 107-108).
III. The Accused Instrumentality
Product Identification
- For the ’447 and ’900 Patents: Experian’s consumer credit service websites, including Experian.com, CreditReport.com, and freecreditscore.com (collectively, the "Websites") (Compl. ¶¶53, 77).
- For the ’112 Patent: Experian’s Address Verification products (the "AV Products") (Compl. ¶100).
Functionality and Market Context
- Websites: These are consumer-facing websites that provide credit reporting and monitoring services. The complaint alleges they operate by using client-side scripting (e.g., AngularJS) to request data from network servers and dynamically embed that data into the web page shown to the user (Compl. ¶¶55, 59, 61, 63; Compl. at 22). The complaint further alleges these sites use cookies and other session identifiers to track user activity across multiple page requests for purposes of website analytics (Compl. ¶¶79, 81, 86, 88). A network inspection report provided in the complaint shows various scripts being loaded when a user visits the Experian website (Compl. at 20).
- AV Products: These services, accessible via a SOAP API, allow a client to validate a physical address (Compl. at 33). The system allegedly works by transmitting an XML document that defines the search parameters (the "channel object") to the client. The client then makes requests using an authentication token (the "access ticket") to receive verification results from Experian's servers (Compl. ¶¶103, 107). A flowchart from Experian's documentation illustrates how the "VerifyLevel" returned to the client dictates the subsequent information flow (Compl. at 37).
IV. Analysis of Infringement Allegations
U.S. Patent No. 7,191,447 Infringement Allegations
| Claim Element (from Independent Claim 5) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| executing an object embedding program... to locate a script program from a link... | A user’s web browser (the object embedding program) locates and executes script programs (e.g., "Bootstrap.js") linked from the main HTML document. | ¶¶56, 59, 62 | col. 9:36-44 |
| applying said script program to network-based information provided by one of said network servers... | The browser applies the located scripts to network-based information transmitted from Experian's servers to the client computer. | ¶¶61, 63 | col. 10:43-52 |
| executing said script program... to extract data from said network-based information... | The scripts are structured to extract data from the network-based information provided by a networked server. For example, AngularJS is used to pull and replace text content. | ¶¶60, 63; Compl. at 22 | col. 11:15-19 |
| continuing to execute said object embedding program to embed said data within a compound document... | The browser executes the scripts to embed the extracted data (e.g., credit score values) within the compound web page document displayed to the user. | ¶¶64, 66 | col. 11:20-25 |
Identified Points of Contention
- Scope Questions: A central question may be whether a modern web browser, which dynamically executes JavaScript received from a server, qualifies as an "object embedding program" that "applies" a script to "embed" data in a "compound document" as those terms are used in the patent, which illustrates the concept with an OLE object in a spreadsheet (’447 Patent, Fig. 6).
- Technical Questions: What evidence does the complaint provide that the client-side scripts are specifically "extracting" data from one source of network information to embed in another, as opposed to simply rendering data provided by the server for display within a single web page context? The complaint's visual evidence shows scripts being loaded and data being bound to HTML elements (Compl. at 22), which may support Plaintiff's theory.
U.S. Patent No. 8,606,900 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| generating a plurality of session identifiers at the web server... | Experian's web servers generate multiple session identifiers, such as cookies named "s_sess," "s_pers," and "session_id," that contain values specific to a client. | ¶¶80, 81; Compl. at 26 | col. 3:9-12 |
| storing the session identifiers at a plurality of web browsers operated by the clients... | The generated session identifiers are stored as cookies in the user's web browser. | ¶82 | col. 4:18-20 |
| receiving web page requests at the web server, each web page request including a session identifier... | Experian's web server receives requests for web pages where each request includes the session identifiers stored on the client. The complaint shows a URL with a session ID appended as a parameter. | ¶¶83, 87; Compl. at 29 | col. 4:29-31 |
| storing information regarding the web page requests at the web server... | Experian keeps a log of access requests that includes the requested web pages and the associated session identifiers from the client. | ¶¶84, 88 | col. 8:1-6 |
| counting the number of requests for particular web pages exclusive of repeated requests from a particular client... | The Experian websites allegedly use analytics to track the number of webpage requests while excluding multiple requests from the same computer associated with a unique session identifier. | ¶¶86, 89 | col. 10:20-27 |
Identified Points of Contention
- Scope Questions: Does the claim term "appending a session identification," which is described in the patent as modifying a URL, also read on the use of HTTP cookies, which are transmitted in a separate header rather than as part of the URL string? The complaint provides visual evidence of a session ID being passed as a URL parameter ("&sessionid=..."), which may directly address this element (Compl. at 29).
- Technical Questions: What evidence demonstrates that Experian's analytics system performs the specific step of "counting... exclusive of repeated requests from a particular client," as required by the claim, rather than simply logging all requests? The complaint cites Experian's privacy policy and cookie policy to support this allegation (Compl. ¶¶86, 89).
V. Key Claim Terms for Construction
For the ’447 Patent
- The Term: "object embedding program"
- Context and Importance: The scope of this term is central to whether the patent applies to modern web browsers or is limited to older technologies like OLE. Experian may argue for a narrower construction tied to the patent's specific embodiments, while Soverain will likely advocate for a broader meaning covering any software that embeds data from one source into another document.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent abstract describes the invention broadly as "a system for extracting data from sources of network-based information" using such a program, without limiting it to a specific technology (’447 Patent, Abstract).
- Evidence for a Narrower Interpretation: The detailed description and Figure 6 explicitly use an "OLE Object" embedded in a "Spreadsheet" as the primary example, which could support an argument that the term should be limited to such desktop application-centric technologies (’447 Patent, Fig. 6, col. 9:36-44).
For the ’900 Patent
- The Term: "counting the number of requests... exclusive of repeated requests from a particular client"
- Context and Importance: This limitation defines the core function of the claimed web analytics. The dispute may turn on whether Experian's system merely logs all traffic or if it actively filters or processes those logs to generate counts of unique views as the claim requires.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself does not specify how the exclusion must be performed, potentially allowing for various methods of filtering or post-processing raw log data to achieve the claimed result.
- Evidence for a Narrower Interpretation: The specification discusses this in the context of avoiding distortions from users "attempting to 'stuff the ballot box,"" suggesting the exclusion must be for the purpose of ensuring fair ratings or counts, not merely for technical log management (’900 Patent, col. 8:5-9).
VI. Other Allegations
Indirect Infringement
- The complaint alleges induced infringement for all three patents. The theory is that Experian provides its products and services along with documentation, user manuals, and training materials that instruct and encourage customers and end-users to operate them in a manner that directly infringes the patents (Compl. ¶¶71, 94).
Willful Infringement
- Willfulness is alleged for all three patents. The basis is that the patents are "well-known within the industry," as evidenced by numerous citations in other patents, and that competitors have paid "considerable licensing fees." The complaint characterizes Experian's alleged infringement as an effort to gain an unfair advantage by using the licensed technology without paying royalties, describing it as "willful, wanton, malicious... or characteristic of a pirate" (Compl. ¶¶72, 95, 117).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of technological translation: can claim terms rooted in the web architecture of the mid-1990s, such as the ’447 patent’s "object embedding program" (exemplified by OLE), be construed to cover the fundamentally different operations of modern, script-driven web applications that rely on technologies like AJAX and frameworks like AngularJS?
- A second key issue will be one of functional specificity: does Experian's web analytics system perform the specific function of "counting... exclusive of repeated requests" as required by the ’900 patent, or does it perform a more general logging function that falls outside the claim's scope? The evidence regarding how Experian processes its web logs will be critical.
- A third question concerns the scope of control: for the ’112 patent, does the transmission of an XML document defining an API call and the use of a simple authentication token constitute the claimed system of a "channel object" and "access ticket" that controls and filters a communication channel, or is there a fundamental difference in the level of control contemplated by the patent?