DCT
2:22-cv-00311
Lexos Media IP LLC v. Nike Inc
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Lexos Media IP, LLC (Delaware)
- Defendant: Northern Tool & Equipment Company, Inc. (Minnesota)
- Plaintiff’s Counsel: Buether Joe & Counselors, LLC; Sethlaw PLLC
- Case Identification: 2:22-cv-00311, E.D. Tex., 07/26/2023
- Venue Allegations: Venue is alleged to be proper as Defendant is a multi-channel business with retail stores nationwide and has appeared in the action.
- Core Dispute: Plaintiff alleges that the "hover-to-zoom" feature on Defendant’s e-commerce website infringes three patents related to methods and systems for modifying a computer cursor's appearance based on web page content.
- Technical Context: The technology concerns dynamically altering a user's cursor into a new image for online advertising or enhanced user interaction, an approach developed as an alternative to early, static forms of web advertising like banner ads.
- Key Procedural History: The complaint notes that U.S. Patent Nos. 5,995,102 and 6,118,449 survived inter partes review (IPR) proceedings initiated by a third party in 2018. The Patent Trial and Appeal Board (PTAB) found asserted claim 72 of the '102 patent and numerous asserted claims of the '449 patent to be not unpatentable, a decision affirmed by the Federal Circuit. This history may be raised to suggest the patents’ claims are robust against certain invalidity challenges.
Case Timeline
| Date | Event |
|---|---|
| 1997-06-25 | Priority Date for '102 and '449 Patents |
| 1999-11-30 | '102 Patent Issued |
| 2000-09-12 | '449 Patent Issued |
| 2005-01-21 | Priority Date for '241 Patent |
| 2011-07-05 | '241 Patent Issued |
| 2016-01-01 (approx.) | Alleged Infringement Begins ("Since at least 2016") |
| 2018-01-01 (approx.) | IPRs filed against the '102 and '449 Patents |
| 2023-07-26 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 5,995,102, “Server system and method for modifying a cursor image,” issued Nov. 30, 1999
The Invention Explained
- Problem Addressed: At the time of the invention, online advertising methods like banner ads and pop-up windows were described as either too passive and easily ignored or overly intrusive and annoying to the user (Compl. ¶14; ’102 Patent, col. 1:11-col. 2:25).
- The Patented Solution: The patent describes a server-based system that embeds "cursor display instructions" into a web page's code. When a user visits the page, their browser or a browser plug-in executes these instructions, transforming the standard cursor (e.g., an arrow) into a "specific image" (e.g., a brand logo) that is related to the content being displayed on the screen (’102 Patent, Abstract; col. 4:25-50). This aims to deliver an advertising impression that is integrated with user interaction rather than being a static or disruptive element.
- Technical Importance: The invention provided a novel technique for interactive, on-screen advertising by linking the appearance of the most-watched element on the screen—the cursor—directly to the content being viewed, improving on what the patent calls "conventional systems" where the cursor's appearance did not change to correspond with on-line content (’102 Patent, col. 4:48-52; Compl. ¶15).
Key Claims at a Glance
- The complaint asserts independent method claim 72.
- Essential elements of Claim 72 include:
- Receiving a request at a server to provide specified content information to a user terminal.
- Providing that content information, which includes at least one "cursor display instruction" and an indication of "cursor image data" for a "specific image."
- Transforming the initial cursor image into the "specific image" in response to the instruction.
- The transformation is responsive to the "movement of said cursor image over a display of at least a portion of said information to be displayed."
- The "specific image" includes content corresponding to a portion of the information displayed on the user's terminal.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 6,118,449, “Server system and method for modifying a cursor image,” issued Sep. 12, 2000
The Invention Explained
- Problem Addressed: As a continuation of the '102 patent, the ’449 Patent addresses the same technical problem of making online advertising more effective and less obtrusive than the banner ads and pop-up windows prevalent at the time (’449 Patent, col. 1:11-col. 2:35).
- The Patented Solution: The patent claims a server system that transmits content to a user, where the content includes instructions to modify the user's cursor into a specific, content-related image. The system comprises the cursor image data, a "cursor display code" to perform the modification, and a server to transmit the content and instructions, which cause the user's terminal to display the modified cursor when it moves over a relevant part of the web page (’449 Patent, Abstract; col. 4:25-50).
- Technical Importance: This patent further builds on the concept of using the cursor as a vehicle for interactive advertising, claiming the system components that enable the functionality described in the parent '102 patent (’449 Patent, col. 2:36-43).
Key Claims at a Glance
- The complaint asserts independent system claim 1, independent method claim 53, and dependent claims 5 and 38.
- Essential elements of Independent Claim 1 include:
- A server system comprising "cursor image data" for a "specific image," and a "cursor display code" operable to modify the cursor.
- A server computer that transmits content information to a remote user terminal.
- The content information includes a "cursor display instruction" that causes the terminal to display a modified cursor image.
- The modification is responsive to the "movement of said cursor image over a display of at least a portion of said information to be displayed."
- The complaint also asserts other claims, including method claim 53 which largely mirrors '102 Patent claim 72.
U.S. Patent No. 7,975,241, “System for replacing a cursor image in connection with displaying the contents of a web page,” issued July 5, 2011
- Technology Synopsis: Continuing the same patent family, the ’241 Patent describes a system for modifying a cursor. A server sends a web page containing a "cursor display instruction" to a client computer. The client computer processes this instruction, modifies its cursor to include a new "visual image" that contains promotional material, and displays the modified cursor, which tracks the movement of the original cursor (Compl. ¶¶ 56-60).
- Asserted Claims: Independent system claim 35.
- Accused Features: The complaint alleges that the Northern Tool website constitutes the claimed system, where its servers transmit web pages with instructions that cause a user's computer to modify its cursor into the "hover-to-zoom" visual image (Compl. ¶57).
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is the Defendant's e-commerce website, "northerntool.com", and specifically the "cursor modification technology" used on it (Compl. ¶¶ 8, 20).
Functionality and Market Context
- The complaint focuses on the "hover-to-zoom" or "image enlarge" feature on product pages of the Northern Tool Website (Compl. ¶¶ 28-31). When a user moves their standard arrow cursor over a product image, the cursor is allegedly transformed into a "slightly shaded and transparent rectangle" or a cross-hairs image (Compl. ¶¶ 29, 31). This new cursor image highlights a portion of the product, and an enlarged view of that portion appears elsewhere on the page.
- The complaint provides visual evidence from archived versions of the website, alleging this functionality has been in use "since at least 2016" and is part of what has built the "popularity and profitability of the Northern Tool Website" (Compl. ¶¶ 20, 22). Figure 2 of the complaint shows the cursor transformed into a transparent square with cross-hairs over a generator image, which is alleged to be the infringing "specific image" (Compl. ¶29).
IV. Analysis of Infringement Allegations
U.S. Patent No. 5,995,102 Infringement Allegations
| Claim Element (from Independent Claim 72) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method for modifying an initial cursor image displayed on a display of a user terminal connected to at least one server... | Northern Tool provides web pages from its servers that operate to modify the appearance of the cursor on a user's terminal (Compl. ¶22). | ¶21 | col. 2:40-45 |
| receiving a request at said at least one server to provide specified content information... | Northern Tool's servers receive a request from a user terminal to provide a web page (Compl. ¶23). | ¶23 | col. 6:49-56 |
| providing said specified content information...including at least one cursor display instruction...and...data corresponding to a specific image... | Northern Tool transmits a web page that includes instructions and data to modify the initial cursor image (Compl. ¶¶ 24-25). | ¶25 | col. 4:31-39 |
| transforming said initial cursor image...into the shape and appearance of said specific image in response to said cursor display instruction, wherein said specified content information includes information that is to be displayed... | The user's initial cursor (e.g., an arrow) is transformed into a "specific image" (a transparent square or cross-hairs) that highlights a portion of the product displayed on the web page (Compl. ¶¶ 26, 29). | ¶26 | col. 9:1-10 |
| wherein said specific image includes content corresponding to at least a portion of said information that is to be displayed... | The transformed cursor image is described as a "slightly shaded and transparent rectangle including an image of a portion of a product displayed on the web page" (Compl. ¶29). | ¶29 | col. 24:2-4 |
| wherein said cursor display instruction indicates a cursor display code operable to process said...instruction...responsive to movement of said cursor image over a display... | The cursor transformation occurs when the user moves the cursor over the product image area, and is controlled by code provided by Northern Tool (Compl. ¶30). | ¶30 | col. 14:46-54 |
U.S. Patent No. 6,118,449 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| cursor image data corresponding to said specific image; | The accused website provides data corresponding to the "specific image" (the zoom box) to be displayed on the user's terminal (Compl. ¶41). | ¶41 | col. 8:58-60 |
| cursor display code, said cursor display code operable to modify said cursor image; | The website provides code that is operable to modify the cursor image on the user's display (Compl. ¶42). | ¶42 | col. 8:51-58 |
| a first server computer for transmitting specified content information to said remote user terminal... | Northern Tool's web servers transmit web pages to user terminals (Compl. ¶40, 43). | ¶43 | col. 6:49-56 |
| ...said specified content information including at least one cursor display instruction...operable to cause said user terminal to display a modified cursor image...responsive to movement of said cursor image over a display... | The transmitted web pages contain instructions that cause the cursor to be modified into the zoom box/cross-hairs shape when moved over the product image (Compl. ¶¶ 44, 46). Figure 3 shows this functionality in use on a different product (Compl. ¶33). | ¶44 | col. 19:1-8 |
- Identified Points of Contention:
- Scope Questions: A primary question for the court will be the scope of the term "specific image". The patents’ specifications and figures appear to contemplate a transformation into a thematic or branded icon (e.g., a "Fizzy Cola" bottle), whereas the complaint alleges infringement by a functional "zoom box" that is a transparent overlay containing a magnified portion of the underlying content. The case may turn on whether a functional tool like a zoom lens/box can be considered a "specific image" in the advertising-focused context of the patent family.
- Technical Questions: The infringement analysis will question whether the accused website's use of what is likely standard web technologies (e.g., CSS, JavaScript) for its zoom feature constitutes the specific "cursor display code" architecture described in the patents. The specifications describe a distinct software component (e.g., an ActiveX control) that is downloaded and executed by the browser or a plug-in, which may present a technical mismatch with the accused functionality.
V. Key Claim Terms for Construction
The Term: "specific image"
Context and Importance: This term is central to the infringement analysis for all asserted patents. Its construction will determine whether the accused "hover-to-zoom" functionality, which creates a transparent rectangle or cross-hairs over a product, falls within the scope of the claims. Practitioners may focus on this term because the patents' examples show a complete transformation to a new, distinct icon, while the accused functionality is an overlay tool.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claims require the "specific image" to include "content corresponding to at least a portion of said information to be displayed" ('102 Patent, cl. 72). A zoom box containing a magnified part of the displayed product arguably meets this literal requirement.
- Evidence for a Narrower Interpretation: The specification repeatedly provides examples of the cursor changing into a corporate or brand logo, or a thematic icon like a "Fizzy Cola bottle" or "witch-on-a-stick" ('102 Patent, col. 1:65-67; Fig. 8). The abstract describes modifying a cursor image "to a specific image having a desired shape and appearance," which may suggest a pre-determined, rather than dynamically generated, image.
The Term: "cursor display code"
Context and Importance: This term, appearing in the '449 and '102 patents, is critical for defining the mechanism of infringement. If construed narrowly to require a specific type of software component, it could exclude infringement by standard web scripting.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself is broad, referring to code that is "operable to modify said cursor image" ('449 Patent, cl. 1). This could be read to encompass any set of instructions, including modern JavaScript, that achieves the claimed function.
- Evidence for a Narrower Interpretation: The detailed description of the invention heavily relies on an architecture involving a browser "plug-in" or "extension" and a downloadable software component like an ActiveX control, which is explicitly identified as the "Cursor Display Code" in the description of the figures ('102 Patent, Fig. 2, element 52; col. 8:51-58). This suggests the term was intended to mean a specific type of executable module, not just generic script within an HTML page.
VI. Other Allegations
- Indirect Infringement: The complaint does not contain counts for indirect or contributory infringement. It alleges Defendant "controlled" the functionality on the user's computer, a theory of direct infringement under 35 U.S.C. § 271(a) (Compl. ¶¶ 32, 51, 61).
- Willful Infringement: The complaint does not allege willful infringement.
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this case will likely depend on the court’s answers to two central questions:
- A core issue will be one of definitional scope: Can the term "specific image", which in the patents’ context refers to a thematic or branded icon like a company logo, be construed to cover the functional, transparent "zoom box" used in the accused website's "hover-to-zoom" feature?
- A key evidentiary question will be one of technical implementation: Does the accused website’s use of standard web scripting languages to create its zoom feature meet the requirements of the "cursor display code" as claimed, or is that term limited by the specification to the more complex, downloadable software module architecture (e.g., ActiveX control) that was the basis for the patents’ preferred embodiments?