S3G Technology LLC v. Designer Brands Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: S3G Technology LLC (California)
  • Defendant: Designer Brands Inc. (Ohio)
  • Plaintiff’s Counsel: PARKER, BUNT & AINSWORTH, P.C.
• Case Identification: 6:23-cv-00814, W.D. Tex., 11/28/2023
• Venue Allegations: Venue is alleged to be proper based on Defendant operating a regular and established place of business, specifically a retail store, within the Western District of Texas.
• Core Dispute: Plaintiff alleges that Defendant’s DSW mobile applications and associated server infrastructure infringe three patents related to methods for efficiently modifying software applications on remote devices.
• Technical Context: The technology addresses the challenge of updating software on networked devices by sending small, targeted "dialogue modules" to alter application behavior, rather than transmitting entire new application files, which is particularly relevant for systems operating over bandwidth-limited networks.
• Key Procedural History: The complaint notes that Plaintiff S3G has filed numerous similar lawsuits asserting patents from this family against other defendants. It also cites claim construction rulings from a prior case, S3G Tech. LLC v. Unikey Techs., Inc., which defined key terms such as "code" and "dialogue module," suggesting these constructions will be central to the present dispute. The complaint further notes that the U.S. Patent Examiner allowed the patent claims over prior art based on their unique claimed structure.

Case Timeline

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

U.S. Patent No. 11,210,082 - "Modification of Terminal and Service Provider Machines Using an Update Server Machine"

The Invention Explained

• Problem Addressed: The patents address the inefficiency and difficulty of updating software applications distributed across a large number of remote devices, particularly over wireless networks. Transmitting a complete, recompiled software application for each update consumes significant bandwidth and time. (Compl. ¶¶ 12-14; ’774 Patent, col. 2:17-67).
• The Patented Solution: The invention proposes a three-entity system comprising a terminal machine (e.g., a mobile device), a service provider machine (e.g., a server), and an update server machine. (Compl. ¶15). Instead of sending a full application update, the update server sends small "dialogue modules" containing "code." This "code" is specifically defined as information that must be translated by the application before it can be executed, distinguishing it from directly "computer-executable instructions" that form the application's core. (Compl. ¶16; ’774 Patent, col. 4:36-46). These modules modify portions of the application to alter its "dialogue sequence" with the service provider, thereby changing functionality without requiring a full replacement. (Compl. ¶19). Figure 1 of the patent, reproduced in the complaint, illustrates the communication paths between the three distinct machines. (Compl. p. 8).
• Technical Importance: This method is designed to reduce network bandwidth utilization, allowing for more efficient modification of applications running on remote devices. (Compl. ¶23; ’774 Patent, col. 6:67-7:2).

Key Claims at a Glance

• The complaint asserts at least independent claim 1 of the ’082 Patent. (Compl. ¶47).
• Essential elements of claim 1, a method performed by a service provider machine, include:
  • Running a provider application comprising computer-executable instructions and code.
  • Receiving information associated with a data entry from a dialogue sequence.
  • Storing at least a portion of that information.
  • Receiving a "second code" that replaces or supplements the application's existing code to produce a "first updated code," which adapts the provider application for a modified dialogue sequence.
  • Sending a "third code" to a recipient to facilitate the recipient's portion of the modified dialogue.
• The complaint alleges infringement of "one or more claims." (Compl. ¶47).

U.S. Patent No. 9,940,124 - "Modification of Terminal and Service Provider Machines Using an Update Server Machine"

The Invention Explained

• Problem Addressed: As with the related ’082 patent, the technology addresses the technical challenge of distributing large software updates to geographically dispersed devices over networks with limited data transfer capabilities. (Compl. ¶¶ 13-14; ’774 Patent, col. 2:34-56).
• The Patented Solution: The patent describes a method of interaction between a terminal machine and a service provider machine. The key innovation is modifying the terminal application not by replacing the entire software, but by receiving a "terminal dialogue module." This module contains "first code" that updates a portion of the application's existing code, adapting it to display new prompts or conduct a modified dialogue sequence. (Compl. ¶¶ 15, 19). The complaint includes Figure 2 from the patent, which visually distinguishes between the directly executable instructions (224) and the translatable "code" (222) that constitutes the terminal application. (Compl. p. 9).
• Technical Importance: The solution provides for efficient modification of remote software, resulting in technological benefits such as improved network utilization and design efficiencies. (Compl. ¶19; ’774 Patent, col. 7:1-2).

Key Claims at a Glance

• The complaint asserts at least independent claim 1 of the ’124 Patent. (Compl. ¶28).
• Essential elements of claim 1, a method of conducting a dialogue sequence, include:
  • Displaying a first prompt by running a terminal application comprising first computer-executable instructions and first code.
  • Accepting a first data entry.
  • Communicating information from the terminal to a service provider machine.
  • Storing at least a portion of the information in memory for analysis.
  • Receiving at the terminal machine a "terminal dialogue module" that updates at least a portion of the first code to produce "first updated code."
  • The first updated code adapts the terminal application to display a second prompt for a modified dialogue sequence.
• The complaint alleges infringement of "one or more claims." (Compl. ¶28).

U.S. Patent No. 10,261,774 - "Modification of Terminal and Service Provider Machines Using an Update Server Machine"

Technology Synopsis

This patent, part of the same family, is directed to a method for modifying a software application's interactive dialogue. The technical solution avoids sending large, complete software updates by instead transmitting targeted "third code" to a terminal machine. This code modifies the application's existing "first code" to produce an "updated code," thereby altering the application's prompts and data entry sequences in a network-efficient manner. (Compl. ¶¶ 12-15, 19).

Asserted Claims

At least independent claim 1 is asserted. (Compl. ¶66).

Accused Features

The complaint alleges that the DSW app's functionality for managing "favorite items" infringes. This includes the app (terminal) displaying prompts, communicating user data to Defendant's servers (service provider), and receiving information back (alleged "third code" in JSON format) that modifies the app's code to reflect updated favorite items, thus changing the dialogue sequence. (Compl. ¶¶ 68-71).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are Defendant's "DSW mobile applications" for Android and iOS, along with the supporting backend systems, including servers and software (collectively, the "Accused System"). (Compl. ¶7).

Functionality and Market Context

The DSW applications provide e-commerce functionality, allowing users to interact with Defendant's services. The complaint focuses on features where users manage "favorite items," which involves displaying prompts on the user's device, accepting user input (e.g., adding or deleting an item), and communicating that information to Defendant's servers. (Compl. ¶¶ 30, 32, 50). The complaint alleges that Defendant derives a significant portion of its revenue from the services provided through these applications. (Compl. ¶7).

IV. Analysis of Infringement Allegations

11,210,082 Infringement Allegations

9,940,124 Infringement Allegations

Identified Points of Contention

• Scope Questions: A primary question will be whether the architecture of a standard mobile application (using Android's ART and bytecode) and a web server (using .NET's CLR) maps onto the patent's specific two-part software structure of "computer-executable instructions" and translatable "code." The complaint's reliance on prior claim constructions for these terms suggests this will be a central point of dispute. (Compl. ¶¶ 16, 18). Another question is whether the data exchanged between the app and server, allegedly in JSON format, constitutes a "dialogue module" containing "code" as claimed, or is merely data processed by the application's existing logic.
• Technical Questions: What evidence does the complaint provide that the bytecode of the DSW app or the .NET program on the server is actually modified or updated by the JSON data received? The analysis may focus on whether the received data structurally alters the application's executable logic (infringement) or is simply consumed as content by pre-existing, unmodified application logic (non-infringement).

V. Key Claim Terms for Construction

• The Term: "code"

• Context and Importance: This term is foundational to the patents' claimed novelty, which rests on the distinction between directly executable instructions and "code" that requires translation. The infringement theory depends on mapping components of modern software environments (e.g., Android bytecode, .NET programs) to this specific definition of "code." Practitioners may focus on this term because the patents were allegedly allowed by the USPTO based on this unique structure. (Compl. ¶24).

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The term "code" is generic in software engineering. The complaint's theory applies it to widely used forms of software like bytecode and compiled .NET programs. (Compl. ¶¶ 30, 49).
  • Evidence for a Narrower Interpretation: The specification explicitly states, "[t]he code represents at least some information that must be translated by the software application before it can be implemented on the machine processor." (’774 Patent, col. 4:41-44). The complaint also cites a prior judicial construction defining it as "information that must be translated before it can be executed on a processor." (Compl. ¶18, n.5).

• The Term: "dialogue module"

• Context and Importance: Infringement requires showing that the data exchanged between the DSW app and its servers is a "dialogue module." The definition of this term will determine whether standard data transmissions like JSON objects fall within the claim scope.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The complaint cites a prior construction defining the term as "code or instructions related to a dialogue sequence." (Compl. ¶18). This could potentially be interpreted to cover structured data that dictates a conversational flow.
  • Evidence for a Narrower Interpretation: The complaint also quotes the same court stating the term refers to "a particular type of structure rather than to any structure for performing a function," and that it "can contain code or other data." (Compl. ¶20). The specification further notes that in a "preferred embodiment, the dialogue module is less than 1 Mb to facilitate communication over a network with limited data transfer capacity." (’774 Patent, col. 6:65-67). This suggests a specific, bounded package containing code, not just any data transmission.

VI. Other Allegations

• Indirect Infringement: The complaint alleges inducement based on Defendant's acts of "marketing, promoting, and offering for use the Accused Instrumentalities," specifically by encouraging customers to download and run the DSW app, allegedly with knowledge that its use infringes. (Compl. ¶¶ 40, 59, 77). It alleges contributory infringement on the basis that the Accused Instrumentalities are not staple articles of commerce and are "especially made or especially adapted" for infringement. (Compl. ¶¶ 41, 60, 78).
• Willful Infringement: The complaint does not allege pre-suit knowledge of the patents. It asserts that Defendant has had "actual knowledge" of each patent "At least since the filing of this complaint." (Compl. ¶¶ 27, 46, 65). This allegation may form the basis for a claim of willful infringement for any infringing activity that continues post-filing.

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

• A core issue will be one of architectural mapping: can the components of a conventional client-server application—such as the Android Runtime Environment and an application's bytecode, or a server's .NET Common Language Runtime and its compiled program—be construed as the distinct "computer-executable instructions" and translatable "code" required by the patent claims? The case may turn on whether this claimed two-part software structure is present in the accused system or if the Plaintiff's theory is an attempt to read a specific patent architecture onto a general-purpose one.
• A key evidentiary question will be one of definitional scope: does the data transmitted between the accused app and server (allegedly JSON) function as a "dialogue module" that contains "code" to structurally modify the application? The central technical dispute will likely be whether this data transfer constitutes a modification of the application's code, as the patent describes, or is simply a routine data exchange processed by the application's pre-existing and unmodified logic.