DCT
2:19-cv-00018
Flectere LLC v. FedEx Corp
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Flectere LLC (Texas)
- Defendant: FedEx Corporation (Delaware)
- Plaintiff’s Counsel: Rabicoff Law LLC
- Case Identification: 2:19-cv-00018, E.D. Tex., 01/18/2019
- Venue Allegations: Venue is alleged based on Defendant having committed acts of infringement and maintaining a regular and established place of business within the Eastern District of Texas, including specific retail locations.
- Core Dispute: Plaintiff alleges that Defendant’s "Ship Manager Lite" online portal and "InSight" shipment tracking software infringe two patents related to computerized form processing and the dynamic presentation of information based on user preferences.
- Technical Context: The technologies at issue relate to web-based user interface systems for ensuring data integrity via audit trails and for customizing the presentation of information to users.
- Key Procedural History: Subsequent to the filing of this complaint, both patents-in-suit were challenged in Inter Partes Review (IPR) proceedings before the U.S. Patent and Trademark Office. In October 2021, the Patent Trial and Appeal Board issued certificates cancelling all claims of both the '506 Patent (IPR2020-00402) and the '094 Patent (IPR2020-00400). This post-filing invalidation of the asserted intellectual property is a dispositive event for the infringement claims as originally pleaded.
Case Timeline
| Date | Event |
|---|---|
| 1997-09-12 | U.S. Patent No. 6,272,506 Priority Date |
| 1999-05-27 | U.S. Patent No. 6,401,094 Priority Date |
| 2001-08-07 | U.S. Patent No. 6,272,506 Issued |
| 2002-06-04 | U.S. Patent No. 6,401,094 Issued |
| 2019-01-18 | Complaint Filed |
| 2020-01-13 | IPR Petition Filed against '506 Patent (IPR2020-00402) |
| 2020-01-13 | IPR Petition Filed against '094 Patent (IPR2020-00400) |
| 2021-10-08 | IPR Certificate Issued Cancelling All Claims of '506 Patent |
| 2021-10-13 | IPR Certificate Issued Cancelling All Claims of '094 Patent |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,272,506 - "Computerized Verification Form Processing System and Method," issued August 7, 2001
The Invention Explained
- Problem Addressed: The patent describes a deficiency in then-current computerized form systems, which typically overwrite old data without leaving a record of the change. This creates problems in regulated industries, such as pharmaceuticals, where the FDA requires a clear audit trail for any data modifications, including crossing out old data while keeping it legible and initialing the change ('506 Patent, col. 2:39-51).
- The Patented Solution: The invention proposes a computerized system that monitors for changes to data fields. When a change is detected, the system flags the modification and prompts the user to "sign off" on it, thereby creating a permanent, auditable record of the original value, the new value, and the user's authorization ('506 Patent, col. 2:52-59; Fig. 13).
- Technical Importance: This technology aimed to bridge the gap between the convenience of digital records and the stringent data-integrity and audit requirements of regulated environments. ('506 Patent, col. 1:42-56).
Key Claims at a Glance
- The complaint asserts independent claim 11.
- Essential elements of Claim 11 include:
- a database for storing a form with fields
- a viewer for viewing the form
- a data entry device for user input
- a monitoring routine to detect changes to previously entered information
- a field modification verification routine to prompt the user to "sign off on any such change"
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 6,401,094 - "System and Method for Presenting Information in Accordance with User Preference," issued June 4, 2002
The Invention Explained
- Problem Addressed: The patent notes that while some websites could customize the substance of information (e.g., financial vs. sports news), the presentation was static. This one-size-fits-all presentation is suboptimal because different users have different "personality traits" and respond better to different formats ('094 Patent, col. 1:46-54).
- The Patented Solution: The invention describes a system that stores information in a database and dynamically formats it for presentation based on a user-selected preference corresponding to a personality trait (e.g., "amiable," "analytical," "driver"). Instead of serving a static page, the system builds the page on-the-fly to match the user's preferred interaction style ('094 Patent, Abstract; col. 4:15-18).
- Technical Importance: The technology represents an early approach to personalizing the user experience beyond content selection, focusing on the "how" of information delivery, not just the "what." ('094 Patent, col. 2:13-19).
Key Claims at a Glance
- The complaint asserts independent claim 13.
- Essential elements of Claim 13 include:
- storing information
- permitting a user to specify a "preference" and receiving that preference
- retrieving the information from a database server
- dynamically formatting the information according to the preference
- sending the custom-formatted information to the user's workstation
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
- The complaint accuses FedEx’s "Ship Manager Lite" portal and its "InSight" software. (Compl. ¶¶ 18, 28).
Functionality and Market Context
- The "Ship Manager Lite" portal is a web-based interface that allows users to enter sender and recipient information to generate shipping labels. (Compl. ¶18). The complaint highlights the portal’s "Address Checker" feature, which suggests corrections to user-entered addresses. (Compl. ¶22). Figure 1 of the complaint provides a screenshot of the Ship Manager Lite data entry form. (Compl. ¶18, Fig. 1).
- The "InSight" software is a service for tracking and managing shipments. (Compl. ¶28). The complaint alleges that InSight allows users to create "Custom views" and set "Preferences" for how shipment data is displayed, such as selecting a page layout (portrait or landscape) and the number of rows to show. (Compl. ¶¶ 28, 30). Figure 13 of the complaint shows a diagram of the alleged data flow for FedEx Web Services. (Compl. ¶29, Fig. 13).
IV. Analysis of Infringement Allegations
’506 Patent Infringement Allegations
| Claim Element (from Independent Claim 11) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a database for storing at least one form including one or more fields | The Ship Manager Lite portal allegedly "comprises a database for storing at least one form including one or more fields," evidenced by HTML code. (Compl. ¶19, Fig. 2). | ¶19 | col. 9:10-15 |
| a viewer for viewing a stored form | The Ship Manager Lite portal allegedly "allows users to see the data they enter into the form." Figure 3 shows the portion of the form for the recipient's address. (Compl. ¶20, Fig. 3). | ¶20 | col. 9:16-17 |
| a data entry device for allowing a user to enter information into the fields of the form | The portal allegedly "allows users to enter in data, such as street address, into the form." Figure 4 shows the form populated with example data. (Compl. ¶21, Fig. 4). | ¶21 | col. 9:18-20 |
| a monitoring routine configured to actively monitor whether previously entered information in a field of the form is being changed by the user | The portal allegedly "monitors whether previously entered information is being changed by users," pointing to the "FedEx Address Checker" functionality. Figure 5 describes how the Address Checker works. (Compl. ¶22, Fig. 5). | ¶22 | col. 9:21-25 |
| a field modification verification routine configured to, on the viewer, prompt the user to sign off on any such change | The portal allegedly asks users to use a verified address instead of the manually entered one, which is alleged to be a prompt to "sign off on a change." Figure 7 shows a "Verify your address" pop-up with options to "Use address as entered" or "Use this suggestion." (Compl. ¶23, Fig. 7). | ¶23 | col. 9:26-30 |
’094 Patent Infringement Allegations
| Claim Element (from Independent Claim 13) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| storing the information | FedEx's InSight software allegedly stores shipment records and tracking information on "secure database servers." Figure 13 depicts a system architecture where data flows from a customer to a FedEx Server. (Compl. ¶29, Fig. 13). | ¶29 | col. 15:51 |
| permitting the user to specify the preference through the workstation and receiving from the workstation a request for the information and an indication of the preference... | InSight allegedly "allows users to set preferences according to their needs," such as selecting portrait or landscape layouts and setting the number of rows to display. Figure 15 shows a FAQ explaining how to change layout and row display preferences. (Compl. ¶30, Fig. 15). | ¶30 | col. 15:52-59 |
| retrieving the information from a database server | InSight allegedly "provides shipment information by retrieving it from FedEx's database servers" when a user requests it. (Compl. ¶31). | ¶31 | col. 15:60-61 |
| dynamically formatting the information in accordance with the preference to form custom-formatted information | InSight allegedly "allows users to dynamically format how the information is presented such as by saving user preferences on how the information is to be displayed." (Compl. ¶32). | ¶32 | col. 15:62-65 |
| sending the custom-formatted information to the workstation | InSight allegedly "displays the saved format of the shipping information based on the user's saved preference settings." Figure 11 shows a customized view of shipment data. (Compl. ¶33, Fig. 11). | ¶33 | col. 16:1-2 |
Identified Points of Contention
- Scope Questions:
- For the ’506 Patent, a central question is whether the "Address Checker" function, which prompts a user to select between their typed address and a system-suggested one, constitutes a "field modification verification routine" that prompts a user to "sign off" on a change. The patent's focus on formal audit trails for regulatory compliance may suggest a more rigorous "sign off" than selecting a corrected shipping address. ('506 Patent, col. 2:39-51).
- For the ’094 Patent, a key dispute may arise over the definition of "preference." The complaint maps this term to user choices for layout (portrait/landscape) and the number of rows displayed. (Compl. ¶30). However, the patent specification heavily emphasizes that the invention relates to preferences corresponding to "personality traits" such as "amiable," "expressive," or "analytical." ('094 Patent, Abstract; col. 4:15-18). This raises the question of whether the accused functionality falls within the scope of "preference" as taught by the patent.
V. Key Claim Terms for Construction
Term from ’506 Patent, Claim 11: "sign off on any such change"
- Context and Importance: This term is the lynchpin of the final and most specific element of asserted Claim 11. The infringement case for this patent depends on construing the accused "Verify your address" prompt as a "sign off." (Compl. ¶23).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself does not specify the form of the "sign off," which could support an argument that any user action confirming a choice suffices.
- Evidence for a Narrower Interpretation: The specification's background and summary repeatedly frame the invention in the context of satisfying strict FDA regulations, which require formal, auditable actions. ('506 Patent, col. 2:39-51). The patent discusses "digital biometric signature or initial capture or by electronic signatures" as methods of authorization, suggesting a more formal act than what is alleged in the complaint. ('506 Patent, col. 2:33-37).
Term from ’094 Patent, Claim 13: "preference"
- Context and Importance: The meaning of "preference" is critical, as it defines the entire basis for the custom formatting. The plaintiff's theory requires this term to cover simple display choices, whereas the defendant may argue for a narrower definition tied to the patent's core concept. Practitioners may focus on this term because the specification provides significant context that appears narrower than the plain meaning of the word.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim itself uses the general term "preference" without explicit limitation to personality types.
- Evidence for a Narrower Interpretation: The specification consistently and repeatedly describes the "preference" as corresponding to a user's "personality traits." ('094 Patent, col. 1:12). The detailed description provides specific examples of these traits, such as "amiable," "expressive," "analytical," and "driver," and explains their characteristics at length. ('094 Patent, col. 4:15-18; col. 6:53-7:52). This may support an interpretation that limits the term to these types of behavioral characteristics.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement for both patents. The factual basis for inducement is the allegation that FedEx provides "access to support for, training and instructions" that actively encourage customers to use the accused Ship Manager Lite and InSight websites in an infringing manner. (Compl. ¶¶ 24, 34).
- Willful Infringement: The prayer for relief seeks treble damages for willful infringement. (Compl. p.20, ¶D). However, the body of the complaint does not contain specific factual allegations that would typically support a finding of willfulness, such as FedEx's pre-suit knowledge of the patents or its alleged infringement.
VII. Analyst’s Conclusion: Key Questions for the Case
The most significant development in this case occurred after the complaint was filed. The subsequent cancellation of all claims of both patents-in-suit during IPR proceedings fundamentally alters the landscape of the dispute. The central questions are therefore procedural and legal, rather than purely technical.
- A primary question is one of mootness: Given that all asserted claims were invalidated and cancelled ab initio through Inter Partes Review, what legal basis, if any, remains for the plaintiff's claims for past damages or injunctive relief?
- A second, now largely hypothetical, question concerns definitional scope: Had the patents remained valid, the case would likely have turned on whether FedEx's general-purpose user interface options could be properly characterized as the specific technologies claimed. This would involve determining if a shipping address suggestion is a regulatory-grade "sign off" and if selecting a screen layout qualifies as a "preference" based on "personality traits" as described in the patents.