DCT

3:22-cv-01736

Lexos Media IP LLC v. MSC Industrial Direct Co Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 3:22-cv-01736, N.D. Tex., 09/03/2024
  • Venue Allegations: Plaintiff alleges that venue is proper because Defendant operates an interactive e-commerce website accessible within the district and has appeared in the action.
  • Core Dispute: Plaintiff alleges that Defendant’s e-commerce website, mscdirect.com, infringes patents related to the technology of dynamically modifying a user's cursor to display an image corresponding to on-page content.
  • Technical Context: The technology at issue involves altering a computer cursor's appearance based on web page content to provide a novel form of user interaction and advertising, moving beyond traditional banner ads or pop-ups.
  • Key Procedural History: The complaint notes that U.S. Patent Nos. 5,995,102 and 6,118,449 were subject to inter partes review (IPR) proceedings initiated by a third party in 2018. While some claims were canceled, the complaint states that several asserted claims survived these validity challenges at the Patent Trial and Appeal Board (PTAB), with the outcomes affirmed by the Federal Circuit. The complaint also states that U.S. Patent No. 7,975,241 has never been subject to an IPR proceeding.

Case Timeline

Date Event
1997-06-25 Earliest Priority Date for "102", "449", and "241" Patents
1999-11-30 U.S. Patent No. 5,995,102 Issued
2000-09-12 U.S. Patent No. 6,118,449 Issued
2011-07-05 U.S. Patent No. 7,975,241 Issued
2014-06-18 Earliest Alleged Infringement Date Documented by Visual Evidence
2016-01-01 Alleged Start of Infringement Period for Damages
2018-01-01 IPR Proceedings Initiated by Third Party against "102" and "449" Patents
2024-09-03 Second Amended Complaint Filed

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 November 30, 1999

The Invention Explained

  • Problem Addressed: The patent's background describes prevalent online advertising methods, such as banner ads and frames, as being passive and easily ignored by users, while "self-appearing" screens are overly intrusive and generate user resentment (’102 Patent, col. 2:5-26; Compl. ¶14).
  • The Patented Solution: The invention proposes a server-based system that transmits instructions embedded within a web page to a user's terminal. These "cursor display instructions" cause the user's standard cursor to be modified into a "specific image" that has a shape and appearance related to the content being viewed on the web page, thereby creating a less intrusive but more engaging advertising tool (’102 Patent, Abstract; col. 4:25-39).
  • Technical Importance: The technology offered a method to combat "banner blindness" by leveraging the user's natural point of focus—the cursor—as a vehicle for delivering advertising or branding messages without completely interrupting the user experience (’102 Patent, col. 2:27-35).

Key Claims at a Glance

  • The complaint asserts claims 33, 36, and 72, which rely on independent method claims 28 and 72 (Compl. ¶23).
  • Independent Claim 28 breaks down into these essential elements:
    • Receiving a request at a server to provide specified content.
    • Providing the content, which includes a cursor display instruction and an indication of cursor image data.
    • Transforming an initial cursor image into a specific image in response to the instruction.
    • The specific image includes content corresponding to a portion of the information being displayed.
    • The instruction indicates a "cursor display code" to process the instruction.
  • Independent Claim 72 breaks down into these essential elements:
    • Receiving a request at a server for content.
    • Providing the content with a cursor display instruction.
    • Transforming the initial cursor image into a specific image that includes content corresponding to a portion of the displayed information.
    • The transformation is responsive to the movement of the cursor over a portion of the displayed information.

U.S. Patent No. 6,118,449 - "Server system and method for modifying a cursor image," Issued September 12, 2000

The Invention Explained

  • Problem Addressed: As a continuation of the application that led to the "102" Patent, this patent addresses the same technical problem of creating online advertising that is neither easily ignored nor overly intrusive (’449 Patent, col. 2:5-26).
  • The Patented Solution: The invention describes a server system and method where a server transmits a web page containing instructions and code. This code is operable on the user's terminal to modify the cursor into a specific image, which can be related to the web page content and change in response to user actions, such as moving the cursor over a specific area (’449 Patent, Abstract; col. 4:27-39).
  • Technical Importance: This patent further develops the concept of using the cursor as a dynamic advertising medium, elaborating on the client-server architecture required to remotely manage the cursor's appearance (’449 Patent, col. 2:27-35).

Key Claims at a Glance

  • The complaint asserts claims 1, 5, 31, 38, 53, 58, 60, and 62, which rely on independent system claim 1 and independent method claim 53 (Compl. ¶44).
  • Independent Claim 1 (a system claim) breaks down into these essential elements:
    • Cursor image data for a specific image.
    • A "cursor display code" operable to modify the cursor.
    • A server computer that transmits content to a user terminal.
    • The content includes a cursor display instruction that indicates the location of the image data.
    • The specific image displayed corresponds to a portion of the information on the user's display.
  • Independent Claim 53 (a method claim) breaks down into these essential elements:
    • Receiving a request for content at a server.
    • Providing the content with a cursor display instruction.
    • Transforming the initial cursor image into a specific image.
    • The transformation is responsive to the movement of the cursor over displayed information.
    • The specific image has a shape and appearance relating to the information being displayed.

Multi-Patent Capsule

  • Patent Identification: 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 (Compl. ¶11).
  • Technology Synopsis: This patent, part of the same family, claims a system for modifying a cursor image. A client computer receives content, such as a web page, from a server that includes at least one "cursor display instruction." In response, the client computer processes the instruction to modify its cursor to include a visual image that can track the cursor's movement and contain promotional material (’241 Patent, Abstract; Compl. ¶62-66).
  • Asserted Claims: The complaint asserts independent system claim 35 (Compl. ¶60).
  • Accused Features: The complaint alleges that the MSC Website, in combination with a user's computer, forms an infringing system that receives content with instructions, processes those instructions, and displays a modified cursor image that includes a promotional visual image (Compl. ¶61-65).

III. The Accused Instrumentality

  • Product Identification: The accused instrumentality is the "cursor modification technology" implemented on Defendant's e-commerce website, "www.mscdirect.com" (the "MSC Website") (Compl. ¶8, 22).
  • Functionality and Market Context:
    • The complaint alleges that when a user hovers the cursor over a product image on the MSC Website, the default cursor is replaced by a "specific image" (Compl. ¶28, 32). This functionality is described as a product zoom or magnifying glass effect, where a transparent box appears over a portion of the product image, and an enlarged view of that portion is displayed in a separate area on the page (Compl. ¶33, 36, 38). The complaint includes a screenshot of network traffic, described as showing the server-client connection that enables the functionality (Compl. ¶30, Figure 1). Figure 3 in the complaint depicts the user's cursor transformed into a "shaded, semi-transparent image of the displayed product" (Compl. ¶32).
    • Plaintiff alleges this technology is an "important aspect" of Defendant's strategy to increase revenue and that the MSC Website is a "key component" of its business and a "competitive advantage" (Compl. ¶8, 22).

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... MSC employs a method on its website that modifies the cursor's appearance from a standard arrow. ¶23-24 col. 20:28-31
receiving a request at said at least one server to provide specified content information to said user terminal; MSC's server receives HTTP requests from user terminals for web pages on the MSC Website. ¶25 col. 20:32-34
providing said specified content information... including at least one cursor display instruction... In response, MSC's server transmits a web page containing instructions (e.g., JavaScript/CSS) that define the cursor modification behavior. ¶26-27 col. 20:35-39
transforming said initial cursor image... into the shape and appearance of said specific image... said specific image including content corresponding to at least a portion of said information to be displayed... The cursor transforms into a transparent box or "zoom lens" that corresponds to the portion of the product image it is hovering over. A 2022 screenshot reflects a "transparent box surrounding an image of a portion of a product." ¶28-29, 36 col. 20:40-47
responsive to movement of said cursor image over a display of at least a portion of the information to be displayed on the display of the user's terminal. The cursor modification is triggered when the user moves the cursor over a product image on the web page. ¶32, 37 col. 20:48-52
  • Identified Points of Contention:
    • Scope Questions: A central question may be whether the accused "zoom lens" functionality constitutes a "specific image" as contemplated by the patent. A court may need to determine if a functional user interface element like a magnifier, which alters the view of existing content, meets the definition of an "image" that "includ[es] content," which the patent specification primarily illustrates with distinct graphical objects like logos and product pictures.
    • Technical Questions: The "102" Patent specification heavily details an implementation using browser "plug-ins" or "ActiveX controls." A key technical question will be whether the accused implementation, which likely uses modern, browser-native technologies such as JavaScript and CSS, falls within the scope of claim terms like "cursor display code" and "cursor display instruction."

"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; MSC's system uses data that defines the zoom lens/magnifier image that appears over product photos. ¶47, 54 col. 18:41-43
cursor display code, said cursor display code operable to modify said cursor image; The MSC Website includes code (e.g., JavaScript) executed by the user's browser that is operable to modify the cursor. ¶48, 52 col. 18:44-46
a first server computer for transmitting specified content information to said remote user's terminal... MSC operates servers that transmit web page content to users accessing the MSC Website. The complaint provides a screenshot of network traffic logs as evidence of this transmission. ¶46, 49, 30 col. 18:47-49
...said specified content information including at least one cursor display instruction... operable to cause said user terminal to display a modified cursor image... The transmitted web page includes instructions that, when processed by the user's browser, cause the cursor to change. ¶50 col. 18:52-56
...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 zoom lens image corresponds to and highlights the underlying product information displayed on the page. Figure 4A from the complaint shows a transparent box over a product image, with an enlarged view appearing to the right. ¶51, 54 col. 18:57-61
  • Identified Points of Contention:
    • Scope Questions: As with the "102" Patent, the construction of "specific image" will be critical. Does a functional magnifier qualify, or is the term limited to more pictorial or branding-related graphics?
    • Technical Questions: For this system claim, infringement requires that the defendant makes, uses, or sells the claimed system. Since the system comprises both a server computer and functionality on the user's terminal, a potential point of dispute is whether MSC "uses" the entire system. The complaint asserts that MSC "controlled each element of the systems" (Compl. ¶55), and the evidence supporting this level of control over the user's terminal will be a key factual question.

V. Key Claim Terms for Construction

  • The Term: "specific image" (appearing in "102" Patent, Claim 72 and "449" Patent, Claim 1)

    • Context and Importance: This term is fundamental, as the infringement theory hinges on the accused "zoom lens" or "transparent box" functionality meeting this definition. Practitioners may focus on this term because its construction could either embrace modern e-commerce UI tools or confine the patent to the types of graphical replacements explicitly shown in the specification.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification provides a non-limiting list of potential images, including corporate logos, mascots, "slogans, icons, brand images, advertising messages... [and] abstract suggestions (such as a straw or glass)" (’102 Patent, col. 17:7-14). This broad language may support an argument that any graphical modification of the cursor, including a functional one, qualifies as a "specific image."
      • Evidence for a Narrower Interpretation: The patent's figures and primary examples illustrate the cursor being replaced by distinct, representational objects, such as a "Fizzy Cola" bottle (’102 Patent, Fig. 8). An argument could be made that a "specific image" must be a new graphical object, not merely a functional tool like a magnifier that alters the view of existing on-page content.

  • The Term: "cursor display code" (appearing in "102" Patent, Claim 28 and "449" Patent, Claim 1)

    • Context and Importance: The patents were filed in an era of browser plug-ins, while the accused website almost certainly uses modern, browser-native JavaScript/CSS. The interpretation of "code" will determine if these newer technologies are within the patent's scope.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification states that the invention is not limited to its primary embodiment and that other technologies like "Java, JavaScript and JavaBeans" may be used (’102 Patent, col. 13:51-54). This suggests the term was intended to be technologically neutral, covering any set of instructions that performs the claimed function.
      • Evidence for a Narrower Interpretation: The detailed description of the invention focuses heavily on an architecture involving a "browser extension or browser plug-in" and specifically an "ActiveX® control" (’102 Patent, Fig. 2; col. 9:4-20). A party could argue that this context limits "cursor display code" to code operating within such a plug-in architecture, distinguishing it from standard-compliant code executed directly by the browser.

VI. Other Allegations

  • Indirect Infringement: The complaint does not plead a separate count for indirect infringement. However, it alleges facts that may support such a theory, stating that MSC "initiated and controlled the performance of those steps" that occurred on a third party's device (Compl. ¶39) and made its systems "available to others for use" (Compl. ¶44). These allegations could form the basis for an inducement theory, where MSC provides a website that instructs users' browsers to perform the allegedly infringing methods.
  • Willful Infringement: The complaint does not allege that Defendant had pre-suit knowledge of the patents-in-suit and does not include an explicit claim for willful infringement.

VII. Analyst’s Conclusion: Key Questions for the Case

  • A core issue will be one of definitional scope: Can the term "specific image," which the patent illustrates with brand logos and pictorial icons, be construed to cover the functional "zoom lens" or "magnifying glass" feature common on modern e-commerce websites? The outcome of this claim construction dispute may be dispositive.
  • A second central question will be one of technological evolution: Do the claims, written in the context of browser plug-ins like ActiveX, read on the accused system's likely implementation using modern, browser-native technologies like JavaScript and CSS? This will test the breadth of terms like "cursor display code."
  • Finally, for the asserted system claims, a key evidentiary question will be one of control: Can the Plaintiff establish that the Defendant "uses" the entire claimed system, which includes components operating on both the server it controls and the remote user's terminal, which it does not directly own?