DCT

6:22-cv-00592

M4siz Ltd v. ODP Corp

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 6:22-cv-00592, W.D. Tex., 06/09/2022
  • Venue Allegations: Venue is alleged to be proper based on Defendant maintaining regular and established places of business within the Western District of Texas, including a specific physical location in Austin.
  • Core Dispute: Plaintiff alleges that Defendant’s Office Depot-branded websites infringe a patent related to a method for conducting internet searches by entering a combined URL and search query into a browser's address bar.
  • Technical Context: The technology concerns a method to streamline web searching by using a deliberately invalid URL to trigger an error, which is then parsed by a program to initiate a search, bypassing the need to first navigate to a search engine's homepage.
  • Key Procedural History: The complaint alleges that the patent-in-suit was conveyed to Plaintiff M4siz Limited on May 14, 2007, with the assignment being recorded with the USPTO on May 28, 2010.

Case Timeline

Date Event
2000-10-27 '402 Patent Priority Date
2003-02-25 '402 Patent Issue Date
2007-05-14 '402 Patent Allegedly Conveyed to M4siz Limited
2010-05-28 '402 Patent Assignment Recorded with USPTO
2022-06-09 Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 6,526,402 - "Searching procedures"

  • Patent Identification: U.S. Patent No. 6,526,402, "Searching procedures", issued February 25, 2003.

The Invention Explained

  • Problem Addressed: The patent describes conventional internet searching of the time as a multi-step process: a user must first access a search engine's website, then enter search terms into designated fields using that engine's specific syntax, and finally sort through the results. This process is described as requiring an "unnecessary amount of user input and steps" and yielding "large amounts of uncontrolled, spurious and unrelated information" (ʼ402 Patent, col. 1:13-20).
  • The Patented Solution: The invention proposes a more "seamless" procedure where a user submits a single "request string" directly into a browser's address/location field. This string contains both a pointer to a search engine (its URL) and a search query. Because this combined string is an invalid web address, it generates an error signal. The invention "traps" this error signal, which triggers a program to parse the string, separate the search engine's URL from the search query, submit the query to the engine, and return the processed results to the user ('402 Patent, Abstract; col. 2:31-54).
  • Technical Importance: The described method aimed to simplify the user search experience by reducing the number of discrete actions required to execute a search ('402 Patent, col. 1:24-28).

Key Claims at a Glance

  • The complaint asserts "at least claim 1" of the ʼ402 Patent (Compl. ¶17).
  • Independent Claim 1 of the ʼ402 Patent recites the following essential elements:
    • A database searching procedure using a search engine.
    • submitting a request string comprising a valid pointer to a specified search engine and a search string for specified data.
    • monitoring for the generation of an error signal from the search engine.
    • using the error signal to trigger parsing of the request string into the pointer and the search string.
    • submitting the search string to the search engine.
    • passing at least some of the returned data back to the user.
  • The complaint reserves the right to assert additional claims later in the litigation (Compl. ¶25).

III. The Accused Instrumentality

Product Identification

  • The complaint identifies the accused instrumentalities as "Office Depot-branded websites," providing https://www.officedepot.com as an example (Compl. ¶15).

Functionality and Market Context

  • The complaint alleges the accused websites are "available to businesses and individuals throughout the United States" (Compl. ¶22). However, the complaint does not provide specific details about the technical operation of the search functionality on these websites. It refers to a claim chart in "Exhibit B" for infringement details, but this exhibit was not attached to the filed complaint document (Compl. ¶25). Therefore, the complaint does not provide sufficient detail for a technical analysis of the accused instrumentality's functionality.

IV. Analysis of Infringement Allegations

The complaint references a claim chart in Exhibit B to detail its infringement theory, but this exhibit is not included in the provided court filing (Compl. ¶25). As such, a claim chart summary cannot be constructed.

The narrative theory presented is that Defendant directly infringes, literally or under the doctrine of equivalents, at least claim 1 of the '402 patent through the making, using, testing, and offering for sale of its Office Depot-branded websites (Compl. ¶17). The complaint does not, however, explain how the accused websites are alleged to meet the specific limitations of claim 1, such as the generation and use of an "error signal" to trigger parsing. No probative visual evidence provided in complaint.

  • Identified Points of Contention:
    • Technical Question: A central issue will be whether the search function on the accused websites operates by generating and trapping an "error signal" resulting from an invalid URL, as recited in the claims ('402 Patent, col. 6:58-62). The defense may argue that modern website search bars, which often use client-side scripting (e.g., AJAX) to provide dynamic results, employ a fundamentally different technical mechanism that does not generate an "error signal" in the manner contemplated by the patent.
    • Evidentiary Question: The complaint provides no evidence showing that the accused websites actually perform the claimed steps. A key question for discovery will be for the Plaintiff to produce evidence that the accused websites' code implements the specific "monitor," "trigger," and "parse" functions initiated by an "error signal" as required by the claim.

V. Key Claim Terms for Construction

  • The Term: "error signal"

  • Context and Importance: The "error signal" is the lynchpin of the claimed method, acting as the trigger for the entire parsing and searching process. The construction of this term will likely determine whether the claim scope can cover modern web search implementations or is limited to the specific error-handling process described in the patent.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The patent states that the signal "may comprise an error code or message," which could be argued to encompass a wide range of signals indicating a request cannot be immediately fulfilled as-is ('402 Patent, col. 2:7-8).
    • Evidence for a Narrower Interpretation: The specification repeatedly frames the invention in the context of a deliberately "invalid" web address that would otherwise lead to a "standard error page" ('402 Patent, col. 4:30-42). Figure 2 shows that if "error Trapping" is not enabled, a "Standard HTML Error Page" results. This suggests the "error signal" is specifically the signal generated from a failed page-lookup request, not just any internal software flag in a web application.

  • The Term: "request string comprising a valid pointer to a specified search engine and a search string"

  • Context and Importance: This term defines the input that initiates the claimed process. Its construction will be critical to determining if a user's typed query into a website's search bar constitutes the specific type of concatenated string described in the patent.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: A plaintiff might argue this language covers any data packet that contains both an identifier for the search engine (the pointer) and the user's query (the search string), regardless of the format visible to the user.
    • Evidence for a Narrower Interpretation: The specification provides a specific example format: "www.searchengine.com/fishing/float/" ('402 Patent, col. 5:58-62). This suggests the "request string" is a single, user-entered string structured like a URL path, rather than separate data fields submitted by a web form.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges both induced and contributory infringement (Compl. ¶18). Inducement is premised on Defendant providing "information and technical support to its customers, including product manuals, brochures, videos, demonstrations, and website materials" that allegedly instruct customers on how to use the infringing functionality (Compl. ¶19). Contributory infringement is alleged on the basis that Defendant "supplied the technology that allowed its customers to infringe" (Compl. ¶18).
  • Willful Infringement: The complaint does not use the term "willful," but it lays a foundation for such a claim by alleging that Defendant "made no attempt to design around the claims" and "did not have a reasonable basis for believing that the claims of the '402 patent were invalid" (Compl. ¶20-21). The prayer for relief requests a finding that the case is "exceptional" under 35 U.S.C. § 285 (Compl. ¶E).

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

  • A key evidentiary question will be one of technical mechanism: Does the accused "officedepot.com" search feature operate by generating and parsing a formal "error signal" from an invalid URL, as detailed in the '402 patent, or does it utilize different technologies, such as client-side scripts, that process search queries without generating such an error?
  • The case will likely turn on a core issue of claim construction: Can the term "error signal," as used in the patent, be construed broadly to cover internal logic within a modern web application, or is its meaning confined by the specification to the specific context of a trapped page-not-found error message from the early 2000s internet architecture?