DCT
2:24-cv-00112
Asymmetric IP LLC v. Vendasta Tech Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Asymmetric IP LLC (Texas)
- Defendant: Vendasta Technologies Inc. (Canada)
- Plaintiff’s Counsel: Findlay Craft, P.C.; Bradford Black P.C.
- Case Identification: 2:24-cv-00112, E.D. Tex., 02/19/2024
- Venue Allegations: Venue is alleged to be proper because the defendant is not a resident of the United States and may therefore be sued in any judicial district.
- Core Dispute: Plaintiff alleges that Defendant’s Email Builder Software infringes a patent related to a method for document editing that uses a dual-pane interface for simultaneous editing and previewing.
- Technical Context: The technology concerns "what you see is what you get" (WYSIWYG) editors for web content, aiming to improve user experience by providing a real-time, accurately rendered preview of changes as they are made.
- Key Procedural History: The complaint details an extensive prosecution history, distinguishing the patented invention from prior art such as Microsoft's FrontPage "split view" editor and several Microsoft patents. Plaintiff also alleges it provided Defendant with pre-suit notice of infringement via a letter dated September 6, 2023.
Case Timeline
| Date | Event |
|---|---|
| 2009-04-06 | '261 Patent Priority Date |
| 2015-06-02 | '261 Patent Issue Date |
| 2023-09-06 | Plaintiff sent pre-suit notice letter to Defendant |
| 2024-02-19 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,047,261 - "Document Editing Method"
- Patent Identification: U.S. Patent No. 9,047,261, issued June 2, 2015.
The Invention Explained
- Problem Addressed: The patent’s background section describes challenges with prior art document editors, including the complexity of editing raw code, the "time-consuming and onerous" cycle of editing and then separately previewing, and the "inaccurate representation" provided by WYSIWYG editors that display editing mark-up, which can interfere with layout (’261 Patent, col. 1:5-47). The patent aims to solve the problem of editing a document portion in a "vacuum" without seeing its effect on the overall layout (’261 Patent, col. 1:35-44).
- The Patented Solution: The invention proposes a method where a document is displayed in two separate areas. A user makes edits to the document in a "second display area," and those changes are simultaneously or near-simultaneously applied and shown in a "first display area" that displays a clean, true representation of the final document without editing mark-up (’261 Patent, col. 2:21-35; col. 2:54-64). Figure 4 illustrates this concept, showing an editing pane (410) and a corresponding preview pane (402).
- Technical Importance: This method seeks to provide a more intuitive editing workflow by allowing a user to see a live, accurately rendered preview of their changes in context, thereby avoiding the "loss of contextual continuity" common in prior systems (Compl. ¶17).
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claims 2-11, 16, 23, and 26-29 (Compl. ¶53).
- Independent Claim 1 of the ’261 Patent recites the core method, which includes the following essential elements:
- Receiving data associated with a document, including mark-up language data.
- Processing the data to render and display the document in a first display area.
- Processing the data to render and display the document in a second display area.
- Receiving editing data.
- Editing the document in the second display area and applying the editing to the first display area.
- Storing the edited document as a "first edited version."
- Receiving "further editing data."
- Further editing the document and applying the changes.
- Storing the further edited document as a "second edited version."
III. The Accused Instrumentality
Product Identification
The accused instrumentality is Defendant’s "Email Builder Software" ("EBS"), specifically a version described as a "redesigned" platform featuring a "drag-and-drop block editor and instant preview" (Compl. ¶32).
Functionality and Market Context
The complaint alleges the EBS provides a two-pane user interface for creating and editing email documents. A user makes edits in a lefthand pane using various controls, and a formatted, real-time preview of the email is rendered in a righthand pane (Compl. ¶35-37, 43). The complaint includes a screenshot from the Defendant's website showing this dual-pane layout, with an editing interface on the left and a rendered email preview on the right (Compl. ¶33, p. 12). The system allegedly receives mark-up language associated with a template, processes it for display in both panes, and allows for changes made in the editor pane to be reflected in the preview pane in real-time (Compl. ¶34-39). The complaint also alleges the EBS allows users to save edited templates and switch between different versions (Compl. ¶40, 48).
IV. Analysis of Infringement Allegations
’261 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a) receiving data associated with the document, the data including mark-up language data; | EBS receives mark-up language data associated with a user's email template upon login. | ¶34 | col. 10:55-60 |
| b) processing the received data to render at least part of the document for display in a first display area ... wherein the rendering comprises formatting the ... document based on the mark-up language data; | EBS processes the mark-up data to render a formatted document for display in the "righthand side of the display area," which acts as a preview pane. | ¶35 | col. 10:15-19 |
| c) processing the received data to render the at least part of the document for display in a second display area ... wherein the rendering comprises formatting the ... document based on the mark-up language data; | EBS processes the mark-up data to render the document for display in the "lefthand side of the display area," which acts as an editing pane. | ¶36 | col. 10:20-24 |
| d) receiving editing data; | EBS receives editing data from the user via the user interface on the lefthand side of the display area. | ¶38 | col. 10:25-29 |
| e) editing the at least part of the document displayed in the second display area using the editing data, and applying said editing to the at least part of the document displayed in the first display area; | EBS uses the editing data to modify the document in the lefthand pane while applying the changes to the preview in the righthand pane. The complaint includes a screenshot of the accused dual-pane editor (p. 14). | ¶39, 42 | col. 13:21-30 |
| f) storing data associated with the at least part of the document edited in e) as a first edited version; | EBS can store data for each edited version, for example by allowing a user to add a unique template name for an edited email. | ¶40 | col. 4:51-54 |
| g) receiving further editing data; | EBS receives "further editing data" from the user via the user interface on the lefthand side. | ¶41 | col. 5:13-14 |
| h) further editing the at least part of the document... and applying the further editing... | EBS uses the further editing data to further edit the lefthand side while applying these further edits to the righthand side. | ¶42 | col. 5:15-20 |
| i) storing as a second edited version data associated with the further edited at least part of the document. | EBS allows users to "switch between versions" and save multiple templates, which the complaint alleges meets the requirement of storing a second edited version. A screenshot shows a library of saved templates (p. 14). | ¶48 | col. 5:21-24 |
Identified Points of Contention
- Scope Questions: A central question may be whether the phrase "editing the at least part of the document displayed in the second display area" reads on the functionality of the accused EBS. The patent specification contrasts its method with merely editing code and emphasizes editing "the document itself" (’261 Patent, col. 2:12-13), while the accused EBS is described as a "drag-and-drop block editor" (Compl. ¶32) that appears to use abstract controls (e.g., text fields, buttons) rather than allowing direct manipulation of the rendered document in the editing pane.
- Technical Questions: The infringement theory for the "storing ... as a first edited version" and "second edited version" limitations (1f, 1i) relies on allegations that the EBS can save uniquely named templates and allows users to switch between them (Compl. ¶40, 48). A dispute may arise over whether this functionality meets the claim limitations, which could be interpreted to require a more structured version control system that tracks sequential edits to a single document entity, as suggested by the patent's discussion of comparing versions (’261 Patent, col. 16:56-64).
V. Key Claim Terms for Construction
The Term: "editing the at least part of the document displayed in the second display area"
- Context and Importance: The construction of this term is critical to the infringement analysis. The dispute will likely focus on whether this term requires direct, in-place manipulation of a rendered document (as one might do in a word processor) or if it is broad enough to cover interaction with a separate set of abstract user interface controls (e.g., forms, buttons, menus) that generate the document, as the accused EBS appears to do (Compl. ¶33).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent claims editing "content" which is defined broadly to include text, images, graphic elements, and hyperlinks, suggesting the focus is on the result rather than the specific user action (’261 Patent, col. 6:12-19).
- Evidence for a Narrower Interpretation: The specification states that "by editing the document itself, and not for example code for rendering the document, the editor does not require specialist knowledge" (’261 Patent, col. 2:12-15). This, combined with Figure 4 showing a text cursor (413) placed directly within the document text in the second display area (410), could support an interpretation requiring direct manipulation of the document representation itself.
The Term: "storing data ... as a first edited version"
- Context and Importance: Practitioners may focus on this term because its meaning will determine whether the accused product's feature for saving customized templates infringes. The question is whether "Save As" functionality is equivalent to creating a "version."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself is general and does not specify the method of storage. Storing the data associated with an edited document under a unique name (Compl. ¶40) could be argued to fall within the plain meaning of creating an "edited version."
- Evidence for a Narrower Interpretation: The patent discusses features for selecting, displaying, and comparing multiple versions, including a "first" and "second" version created sequentially (’261 Patent, claim 1(i), col. 16:56-64). This could imply a structured versioning system that tracks a lineage of edits, rather than merely creating independent, saved-as copies.
VI. Other Allegations
Indirect Infringement
The complaint alleges inducement of infringement based on Defendant providing the EBS to its customers and partners, along with "promotional and marketing materials" and technical assistance that allegedly instruct and encourage users to operate the software in an infringing manner (Compl. ¶54, 56).
Willful Infringement
The complaint alleges willfulness based on Defendant's knowledge of the ’261 Patent, citing a pre-suit notice letter sent on September 6, 2023. It is alleged that Defendant's continued infringement after receiving this notice is willful and deliberate (Compl. ¶55, 60). The complaint also alleges Defendant has a policy of not investigating whether its products infringe the patents of others (Compl. ¶59).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the claim phrase "editing the ... document displayed in the second display area", which the patent contrasts with editing code, be construed to cover interaction with the abstract controls of a "block editor," as allegedly implemented in the accused software?
- A key evidentiary question will be one of functional equivalence: does the accused product's system for saving and managing named templates perform the function of "storing data ... as a first edited version" and a subsequent "second edited version" as recited in the claims, or is there a fundamental mismatch between a "Save As" function and the sequential versioning system contemplated by the patent?
- Finally, should infringement be seriously contested, a dispositive issue will likely be patent validity. The complaint's proactive effort to distinguish the invention from Microsoft's "split view" prior art suggests that the central validity question will be whether the patented dual-pane, live-preview method constitutes a non-obvious advance over these earlier systems.