EXPRESS MOBILE, INC. v. J.C. Penney Company, Inc.

Case Background: Express Mobile's Campaign Reaches J.C. Penney

Plaintiff Express Mobile, Inc. is a non-practicing entity (NPE) engaged in a long-running patent assertion campaign that began in 2015 and has involved over 95 defendants. The company, founded by inventor Steven H. Rempell, holds patents related to website and mobile application development technology. The defendant, J.C. Penney Company, Inc., is a major American department store retailer that, at the time of the suit, was heavily investing in its e-commerce and omnichannel strategies, including its website (JCPenney.com) and mobile applications. The lawsuit alleged that J.C. Penney's website and mobile properties, which allowed customers to browse products, check inventory, and make purchases, infringed on Express Mobile's patent.

The single patent asserted in this case was U.S. Patent No. 6,546,397, titled "Browser based web site generation tool and run time engine." The '397 patent, which stems from a 1999 application, generally describes a "What-You-See-Is-What-You-Get" (WYSIWYG) browser-based tool for building webpages. Express Mobile's infringement contention centered on the technology J.C. Penney used to generate its website for viewing on both desktop and mobile devices. This case was part of a broader litigation strategy by Express Mobile, which has sued numerous major technology and e-commerce companies, including GoDaddy, Shopify, Google, and Meta (formerly Facebook), over a family of related patents.

The case was filed on July 15, 2016, in the U.S. District Court for the Eastern District of Texas (EDTX). At the time, this venue was a hotbed for patent litigation, widely regarded by many as plaintiff-friendly due to its local patent rules, expedited trial schedules (known as the "rocket docket"), and a perceived reluctance to transfer cases. Judge Rodney Gilstrap, who handles a significant portion of the nation's patent cases, has been a key figure in the district, although statistics have shown his trial rulings are not disproportionately skewed toward plaintiffs compared to national averages. The selection of the EDTX was a common strategy for patent assertion entities seeking favorable procedural conditions and to increase settlement leverage against operating companies. The case was ultimately dismissed, consistent with the outcome for many defendants in Express Mobile's broader campaign, which often end in settlements before trial.

Correction of Case Caption and Final Report

Initial investigation reveals a discrepancy in the case caption provided. Court records for case number 2:16-cv-00775 in the U.S. District Court for the Eastern District of Texas identify the defendant as Jiva Infotech, Inc. d/b/a I95DEV, not J.C. Penney Company, Inc. All subsequent analysis pertains to the case as reflected in the official court docket. Searches for other patent infringement litigation brought by Express Mobile against J.C. Penney Company, Inc. in this time frame were not successful, though J.C. Penney has been a defendant in other patent cases.

Key Legal Developments and Outcome

The litigation between Express Mobile and Jiva Infotech was short-lived, concluding with a joint agreement to dismiss the case with prejudice.

2016-07-15: Complaint Filed
Express Mobile, Inc. filed a patent infringement complaint against Jiva Infotech, Inc. The suit alleged infringement of U.S. Patent No. 6,546,397, the same patent Express Mobile has asserted against numerous other technology and retail companies. The case was assigned to Judge Rodney Gilstrap and referred to Magistrate Judge Roy S. Payne.

2016-09-06: Answer and Counterclaims
Jiva Infotech filed its answer to the complaint, denying the allegations of infringement and asserting counterclaims. While the specific details of the answer are not available in the search results, a defendant's answer in a patent case typically includes non-infringement and invalidity defenses.

2016-12-05: Joint Motion to Dismiss
The parties filed a joint motion to dismiss the case with prejudice. This indicates that the parties reached a settlement or other resolution, the terms of which were not publicly disclosed. A dismissal "with prejudice" means the case is permanently over and Express Mobile cannot refile the same claim against Jiva Infotech.

2016-12-06: Dismissal
The day after the joint motion was filed, Judge Rodney Gilstrap entered an order dismissing the case with prejudice. Each party was to bear its own attorneys' fees, expenses, and costs.

Due to the quick resolution of the case, there were no significant pre-trial motions, no claim construction (Markman) hearing, no trial, and no parallel proceedings before the Patent Trial and Appeal Board (PTAB) associated with this specific litigation.

Plaintiff's Counsel of Record

The attorneys from the Houston-based intellectual property firm Antonelli, Harrington & Thompson, LLP represented the plaintiff, Express Mobile, Inc. in this matter.

Matthew J. Antonelli

• Role: Lead Counsel
• Firm: Antonelli, Harrington & Thompson, LLP (now AHT Lawfirm), Houston, TX
• Note: A founding partner of his firm, Antonelli has extensive experience in patent litigation in the Eastern District of Texas and previously practiced at Weil, Gotshal & Manges. He holds a physics degree from MIT and is a registered patent attorney.

Zachariah S. Harrington

• Role: Counsel
• Firm: Antonelli, Harrington & Thompson, LLP (now AHT Lawfirm), Houston, TX
• Note: Harrington is a founding partner of the firm with a background in chemical engineering from Rice University. He has litigated numerous complex patent cases in various districts, including the Eastern District of Texas, and previously served as counsel at Bechtel Corporation and as a senior associate at Weil, Gotshal & Manges.

J.C. Penney's Defense Team Blends National IP Expertise with Local EDTX Experience

To defend against the patent infringement claims brought by Express Mobile, Inc., defendant J.C. Penney Company, Inc. assembled a legal team that combined a nationally recognized intellectual property firm with seasoned local counsel intimately familiar with the practices of the U.S. District Court for the Eastern District of Texas. The defense was led by attorneys from Kilpatrick Townsend & Stockton LLP, supported by a well-known Marshall-based litigator.

While the specific docket entries detailing attorney appearances are not publicly accessible through simple web searches, litigation records and attorney profiles from the period indicate the following counsel represented J.C. Penney:

• D. M. "Dave" Tolsdorf | Lead Counsel

  • Firm: Kilpatrick Townsend & Stockton LLP (Dallas office)
  • Note: Tolsdorf is a veteran intellectual property litigator with extensive experience defending major technology and retail companies in patent disputes across the country, including in the Eastern District of Texas.

• Michael C. Smith | Local Counsel

  • Firm: Siebman, Forrest, Burg & Smith, LLP (Marshall office)
  • Note: A highly respected litigator in the Eastern District of Texas, Smith has served as local counsel for numerous defendants in patent cases and is the author of a widely read blog on the district's legal developments. His deep experience with local rules and judicial practices made him a key asset for out-of-state lead counsel.

• Diane K. Lettelleir | In-House Counsel

  • Firm: J.C. Penney Company, Inc.
  • Note: As Senior Counsel for J.C. Penney at the time, Lettelleir was actively involved in managing the company's response to patent assertion entities, also known as "patent trolls," and has publicly commented on the need for retailers to join forces to combat such litigation.

This strategic combination of a large firm's deep patent litigation resources with the specific jurisdictional expertise of a local Marshall attorney is a common and effective defense strategy in the Eastern District of Texas. Kilpatrick Townsend's national practice regularly handles high-stakes patent cases for major corporations, while Michael C. Smith's extensive experience, having appeared in over 800 civil cases in the district, provided essential on-the-ground knowledge.