DCT
3:22-cv-01736
Lexos Media IP LLC v. MSC Industrial Direct Co Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Lexos Media IP, LLC (Delaware)
- Defendant: MSC Industrial Direct Co., Inc. (New York)
- Plaintiff’s Counsel: Buether Joe & Counselors, LLC
- Case Identification: 3:22-cv-01736, N.D. Tex., 01/20/2023
- Venue Allegations: Venue is asserted as proper in the district, and the complaint notes that Defendant has already appeared in the action by filing an answer.
- Core Dispute: Plaintiff alleges that Defendant’s e-commerce website, mscdirect.com, infringes patents related to dynamically modifying a user's cursor image to display advertising or product-related content.
- Technical Context: The technology concerns online advertising methods that alter a user's cursor to make it interactive and content-aware, aiming to provide a more engaging and less intrusive alternative to traditional banner ads.
- Key Procedural History: The complaint notes that U.S. Patents 5,995,102 and 6,118,449 were subject to inter partes review (IPR) proceedings initiated by Ralph Lauren in 2018. The Patent Trial and Appeal Board (PTAB) found the asserted claims of those patents (Claim 72 of the ’102 Patent and Claims 1, 38, and 53 of the ’449 Patent, among others) not unpatentable, and the Federal Circuit affirmed. This history may strengthen the presumption of validity for these specific claims.
Case Timeline
| Date | Event |
|---|---|
| 1997-06-25 | Priority Date for ’102, ’449, and ’241 Patents |
| 1999-11-30 | U.S. Patent 5,995,102 Issued |
| 2000-09-12 | U.S. Patent 6,118,449 Issued |
| 2011-07-05 | U.S. Patent 7,975,241 Issued |
| 2014-06-18 | Date of screenshot capture for Figures 2 and 3 |
| 2019-06-19 | Date of screenshot capture for Figure 5 |
| 2022-08-08 | Date of screenshot capture for Figures 4A and 4B |
| 2023-01-20 | Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent 5,995,102 - “Server system and method for modifying a cursor image,” Issued Nov. 30, 1999
The Invention Explained
- Problem Addressed: The patent’s background section identifies drawbacks with online advertising prevalent in the mid-1990s, such as banner ads and pop-up windows. These methods are described as either too passive and "easily ignored" or "totally interrupting and intrusive" (’102 Patent, col. 2:25-33).
- The Patented Solution: The invention proposes a system where a remote server sends instructions to a user’s computer to modify the standard cursor (e.g., an arrow) into a "specific image" that is related to the content being displayed on the web page (’102 Patent, col. 4:25-39; Abstract). This is achieved by embedding "cursor display instructions" in a web page, which are interpreted by the user's browser or a plug-in to retrieve and display the new cursor image, creating a more integrated and less disruptive advertising experience (’102 Patent, col. 7:1-16).
- Technical Importance: This approach represented a novel method of advertising by transforming a fundamental user interface element—the cursor—into a dynamic, content-aware marketing tool.
Key Claims at a Glance
- The complaint asserts independent method Claim 72 (Compl. ¶20).
- Claim 72 Elements:
- A method for modifying an initial cursor image displayed on a user terminal connected to a server.
- Receiving a request at the server to provide specified content information to the user terminal.
- Providing the 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 specified content information includes information to be displayed on the user's terminal.
- The specific image includes content corresponding to at least a portion of the information to be displayed.
- The transformation is responsive to the movement of the cursor image over a display of at least a portion of the information.
- The complaint does not explicitly reserve the right to assert other claims.
U.S. Patent 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 application leading to the ’102 Patent, the ’449 Patent addresses the same problem: the ineffectiveness and annoyance of conventional online advertising like banner ads and pop-ups (’449 Patent, col. 2:25-35).
- The Patented Solution: The patent describes a server-based system for modifying a cursor image in a way that corresponds to the content a user is viewing (’449 Patent, col. 2:56-62). It claims a server system that transmits content information containing cursor display instructions, which cause a user's terminal to display a modified cursor that relates to the on-screen content, often for advertising purposes (’449 Patent, col. 18:36-62, Claim 1).
- Technical Importance: The invention provides a system-level architecture for implementing the cursor-modification advertising method, focusing on the role of the server in providing the necessary data and instructions.
Key Claims at a Glance
- The complaint asserts independent system Claims 1 and 38, and independent method Claim 53 (Compl. ¶39).
- Claim 1 (System) Elements:
- A server system for modifying a cursor image.
- Cursor image data corresponding to a specific image.
- Cursor display code operable to modify the cursor image.
- A first server computer for transmitting specified content information to a remote user terminal.
- The content information includes a cursor display instruction indicating the location of the cursor image data.
- The instruction and code are operable to cause the user terminal to display a modified cursor image.
- The specific image includes content corresponding to at least a portion of the information being displayed.
- The complaint does not explicitly reserve the right to assert other claims.
Multi-Patent Capsule
- Patent Identification: U.S. Patent 7,975,241, “System for replacing a cursor image in connection with displaying the contents of a web page,” Issued Jul. 5, 2011.
- Technology Synopsis: This patent, which shares a specification with the ’102 and ’449 patents, claims a system for modifying a cursor. The system involves a client computer receiving content information from a server, where the information includes a "cursor display instruction" that specifies the appearance of a "visual image." The client computer processes this instruction to modify its cursor to include the visual image, which contains promotional material.
- Asserted Claims: Independent system Claim 35 is asserted (Compl. ¶55).
- Accused Features: The accused features are the systems and methods on the MSC Website that cause a user's cursor to change, for example, into an image of a product surrounded by a box or rectangle when hovering over a product image (Compl. ¶56, ¶58). Figure 5, showing a product page with a modified cursor, is provided as an example of this infringement (Compl. ¶58).
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is the e-commerce website
www.mscdirect.com(“MSC Website”) and the underlying "cursor modification technology" it employs (Compl. ¶8, ¶20).
Functionality and Market Context
- The complaint alleges that when a user moves their cursor over a product image on the MSC Website, the standard arrow cursor is transformed into a "specific image," such as a shaded, semi-transparent version of the product image itself or a transparent box that highlights a portion of the product (Compl. ¶29, ¶30). This functionality is alleged to be part of an "image zoom" or "product highlight" feature. Figure 3 is a screenshot showing the initial cursor image transformed into "a shaded, semi-transparent image of the displayed product" (Compl. ¶29).
- The complaint alleges that this cursor modification technology is an important innovation used by MSC to build the popularity and profitability of its website and is a key part of its strategy to increase revenue (Compl. ¶p. 6, "THE CURSOR MODIFICATION ACCUSED INSTRUMENTALITY").
IV. Analysis of Infringement Allegations
’102 Patent 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... comprising: receiving a request at said at least one server to provide specified content information to said user terminal; | MSC's servers receive a request from a user's browser to provide a web page from the MSC Website. | ¶22 | col. 22:10-14 |
| providing said specified content information to said user terminal in response to said request, said specified content information including at least one cursor display instruction... | In response, MSC's servers transmit a web page containing instructions and code to modify the cursor. | ¶23-24 | col. 22:15-20 |
| transforming said initial cursor image displayed on said display of said user terminal into the shape and appearance of said specific image in response to said cursor display instruction... | The code on the MSC Website transforms the user's standard arrow cursor into a specific image with a particular shape and appearance, such as a semi-transparent view of the product. | ¶25 | col. 22:21-25 |
| wherein said specified content information includes information that is to be displayed on said display of said user's terminal... | The MSC web page includes product information (images, text, pricing) to be displayed on the user's screen. | ¶28 | col. 22:26-28 |
| wherein said specific image includes content corresponding to at least a portion of said information that is to be displayed... | The modified cursor image is a semi-transparent version of the product image shown on the page, thereby corresponding to the displayed information. | ¶26, ¶29 | col. 22:29-32 |
| and wherein said cursor display instruction indicates a cursor display code operable to process said cursor display instruction to modify said cursor image... responsive to movement of said cursor image over a display of said at least a portion of said information... | The cursor modification is triggered when the user moves the cursor over the product image displayed on the web page. Figure 4A shows this feature, where moving a cursor over a product image creates a transparent box for zooming. | ¶34, ¶49 | col. 22:33-41 |
Identified Points of Contention
- Scope Questions: Does the term "specific image including content corresponding to" the displayed information read on a copy of the displayed information (e.g., a semi-transparent product photo)? The patent specification often discusses advertising logos or brand-related images as examples, raising the question of whether a direct replica of on-page content meets the claim's intent.
- Technical Questions: What specific "cursor display instruction" does the MSC Website provide, and how does it map to the detailed instruction format described in the patent (e.g., Figure 4 of the patent)? The complaint alleges instructions exist but does not provide the source code.
’449 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A server system for modifying a cursor image... comprising: cursor image data corresponding to said specific image; | The MSC Website server system possesses data for the modified cursor images, such as the transparent box or semi-transparent product photo. | ¶42 | col. 18:39-40 |
| cursor display code, said cursor display code operable to modify said cursor image; and... | The MSC Website includes code (e.g., JavaScript) that is operable to modify the cursor image on the user's display. | ¶43, ¶47 | col. 18:41-42 |
| a first server computer for transmitting specified content information to said remote user terminal... | MSC's server computer transmits web pages containing product information to the user's terminal in response to requests. | ¶41, ¶44 | col. 18:43-45 |
| said specified content information including at least one cursor display instruction indicating a location of said cursor image data... | The transmitted web page includes instructions and code that cause the modification and an indication of the data for the modified cursor. | ¶44-45 | col. 18:46-51 |
| said specific image including content corresponding to at least a portion of said information to be displayed on said display of said user's terminal. | The modified cursor (e.g., a transparent zoom box) corresponds to the product image over which the user is hovering. Figure 4A is cited as showing the "claimed specific image" and "corresponding portion of the specified content information." | ¶46, ¶49 | col. 18:56-62 |
Identified Points of Contention
- Scope Questions: Claim 1 requires a "server system" comprising both "cursor image data" and "cursor display code." The analysis may question whether the system is properly defined as solely MSC's servers, or if it necessarily includes the user's computer, which executes the code. This raises potential divided infringement issues.
- Technical Questions: Does the accused functionality constitute a "modification" of the cursor image itself, or is it an overlay or separate graphical element that appears near the cursor? The complaint describes it as a transformation of the initial cursor, but a defendant may argue it is a separate visual effect.
V. Key Claim Terms for Construction
For the ’102 and ’449 Patents:
- The Term: "specific image including content corresponding to at least a portion of said information to be displayed" (’102 Patent, Claim 72; ’449 Patent, Claim 1).
- Context and Importance: This term is central to the infringement analysis. The dispute will likely hinge on whether the accused functionality—which creates a modified cursor from the product image itself (e.g., a transparent copy)—falls within the scope of this limitation. Practitioners may focus on this term because its definition determines whether the patent covers only distinct advertising images (like logos) or also encompasses dynamic visual effects derived from existing page content.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claims use the general term "content corresponding to," without limiting it to advertising. The specification mentions that the changed cursor may "connote a relationship with the topic or subject of the web site" (’102 Patent, col. 4:59-62), which could support an argument that a copy of the product image is a strong form of correspondence.
- Evidence for a Narrower Interpretation: The "Summary of the Invention" and background sections repeatedly frame the invention in the context of on-screen advertising, mentioning "corporate name or logo, a brand logo, an advertising or marketing icon or slogan" as examples (’102 Patent, col. 2:64-67). This could support an argument that "content corresponding to" implies a separate marketing or advertising element, not merely a replication of existing page content.
VI. Other Allegations
- Indirect Infringement: The complaint does not use the terms "induce" or "contributory." However, it alleges that MSC "initiated and controlled the performance" of any steps that occurred on a third-party user's computer (Compl. ¶36) and "controlled each element of the system" including functionality on the user's computer (Compl. ¶50, ¶63). These allegations appear to be a direct response to potential divided infringement defenses, where a defendant argues it does not perform all steps of a claimed method or control all components of a claimed system.
- Willful Infringement: The complaint does not explicitly allege willful infringement or make factual assertions regarding pre-suit knowledge of the patents. However, the prayer for relief requests damages under 35 U.S.C. § 284, which is the statutory basis for enhanced damages that may be awarded for willful infringement (Compl. ¶(b) p. 21).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of definitional scope: Can the claim term "specific image including content corresponding to" the displayed information be construed to cover a direct, functional replication of on-page content (like a semi-transparent product image for a zoom feature), or is its scope limited by the specification's focus on distinct advertising-related imagery like brand logos?
- A second key issue will concern divided infringement: As the accused method and system necessarily involve actions on both MSC's server and the end-user's computer, the case will likely turn on whether the plaintiff can prove that MSC "directs or controls" the actions of its users to the degree required by law to be liable for direct infringement.
- An evidentiary question will be one of technical implementation: Can the plaintiff produce evidence, such as source code from the MSC Website, that demonstrates the "cursor display instructions" and "cursor display code" operate in the manner required by the patent claims, or will the defense successfully characterize the accused feature as a conventional web technology that functions in a fundamentally different way?