Shopify Inc., Shopify (usa) Inc. v. Express Mobile, Inc.

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
SHOPIFY INC., SHOPIFY (USA) INC.,
Plaintiffs-Appellees
v.
EXPRESS MOBILE, INC.,
Defendant-Appellant
______________________
2024-1977
______________________
Appeal from the United States District Court for the
District of Delaware in No. 1:19-cv-00439-RGA, Judge
Richard G. Andrews.
______________________
Decided: December 8, 2025
______________________
THOMAS S AUNDERS , Wilmer Cutler Pickering Hale and
Dorr LLP, Washington, DC, argued for plaintiffs-appellees.
Also represented by LAURA E. P OWELL; M ARK CHRISTOPHER
FLEMING , Boston, MA; JENNIFER L. G RABER , New York,
NY L ADAM R. BRAUSA , Morrison & Foerster LLP, San Fran-
cisco, CA.
JEFFREY A. L AMKEN , MoloLamken LLP, Washington,
DC, argued for defendant-appellant. Also represented by
RAYINER H ASHEM ; ROBERT K APPERS , JAMES RICHARD
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SHOPIFY INC. v. EXPRESS MOBILE, INC. 2
NUTTALL, Steptoe LLP, Chicago, IL; CHRISTOPHER ALAN
SUAREZ , Washington, DC.
______________________
Before D YK , REYNA, and STOLL , Circuit Judges.
D YK , Circuit Judge.
Shopify, Inc. (“Shopify”) brought a declaratory judg-
ment action against Express Mobile, Inc. (“Express Mo-
bile”) in the District of Delaware, seeking a declaration of
noninfringement of the claims of U.S. Patent
Nos. 9,063,755 (“’755 patent”), 9,471,287 (“’287 patent”),
6,546,397 (“’397 patent”), and 7,594,168 (“’168 patent”).
Express Mobile counterclaimed for infringement of the
claims of the asserted patents, as well as for infringement
of the claims of U.S. Patent No. 9,928,044 (“’044 patent”).
The district court granted Shopify’s motion for summary
judgment of noninfringement as to the asserted claims of
the ’397 and ’168 patents. After the trial, the district court
granted Shopify judgment as a matter of law (“JMOL”) as
to the asserted claims of the ’755, ’287, and ’044 patents.
Express Mobile appeals. We dismiss-in-part and affirm-
in-part.
BACKGROUND
The ’397 patent and ’168 patent relate to browser-
based systems for webpage design. These patents have a
common specification in all relevant respects. The patents
describe a “run time generation procedure that creates a
compressed web site specific customized run time engine
program file.” ’397 patent col. 2 ll. 11–13; accord ’168 pa-
tent, col. 2 ll. 19–21. This procedure allows for different
colors, fonts, images, audio clips, video clips, text areas,
URLs, and thread objects to be included in webpages that,
“with a reasonable web site design, . . . should load
quickly.” ’397 patent, col. 2 ll. 5–10, 64–66; accord ’168 pa-
tent, col. 2 ll. 13–18, col. 3 ll. 3–5.
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SHOPIFY INC. v. EXPRESS MOBILE, INC. 3
Claim 1 of the ’397 patent, which is representative of
the asserted claims in the ’397 patent, recites:
A method to allow users to produce Internet web-
sites on and for computers having a browser and a
virtual machine capable of generating displays,
said method comprising:
(a) presenting a viewable menu having a
user selectable panel of settings describing
elements on a website, said panel of set-
tings being presented through a browser on
a computer adapted to accept one or more
of said selectable settings in said panel as
inputs therefrom, and where at least one of
said user selectable settings in said panel
corresponds to commands to said virtual
machine;
(b) generating a display in accordance with
one or more user selected settings substan-
tially contemporaneously with the selec-
tion thereof;
(c) storing information representative of
said one or more user selected settings in a
database;
(d) generating a website at least in part by
retrieving said information representative
of said one or more user selected settings
stored in said database; and
(e) building one or more web pages to gen-
erate said website from at least a portion of
said database and at least one run time file,
where said at least one run time file utilizes
information stored in said database to gen-
erate virtual machine commands for the
display of at least a portion of said one or
more web pages.
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SHOPIFY INC. v. EXPRESS MOBILE, INC. 4
’397 patent, claim 1 (emphases added).
All claims of the ’168 patent derive from independent
claim 1, which recites:
A system for assembling a web site comprising:
a server comprising a build engine config-
ured to:
accept user input to create a web
site, the web site comprising a plu-
rality of web pages, each web page
comprising a plurality of objects,
accept user input to associate a
style with objects of the plurality of
web pages, wherein each web page
comprises at least one button object
or at least one image object, and
wherein the at least one button ob-
ject or at least one image object is
associated with a style that in-
cludes values defining transfor-
mations and time lines for the at
least one button object or at least
one image object; and wherein each
web page is defined entirely by
each of the plurality of objects com-
prising that web page and the style
associated with the object,
produce a database with a multidi-
mensional array comprising the ob-
jects that comprise the web site
including data defining, for each
object, the object style, an object
number, and an indication of the
web page that each object is part of,
and
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SHOPIFY INC. v. EXPRESS MOBILE, INC. 5
provide the database to a server ac-
cessible to web browser;
wherein the database is produced such that
a web browser with access to a runtime en-
gine is configured to generate the web-site
from the objects and style data extracted
from the provided database.
’168 patent, claim 1 (emphasis added).
The ’755 patent, ’287 patent, and ’044 patent relate to
systems for generating code to provide content on a display
of a device. The patents have a common specification in all
relevant respects. Generally, the claimed systems allow for
efficient programming on a large number of types of de-
vices. Such programming enables “defined UI objects”
(user interface objects) such as “buttons, text fields, im-
ages, and videos,” to be presented for display. J.A. 1019.1
Claim 1 of the ’755 patent, which is representative, re-
cites:
A system for generating code to provide content on
a display of a device, said system comprising:
computer memory storing a registry of:
a) symbolic names required for
evoking one or more web compo-
nents each related to a set of inputs
and outputs of a web service ob-
tainable over a network, where the
symbolic names are character
strings that do not contain either a
persistent address or pointer to an
1 Citations to the J.A. refer to the Corrected Confi-
dential Appendix filed by the parties in No. 24–1977, Dkt.
No. 36.
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SHOPIFY INC. v. EXPRESS MOBILE, INC. 6
output value accessible to the web
service, and
b) the address of the web service;
an authoring tool configured to:
define a user interface (UI) object
for presentation on the display,
where said UI object corresponds to
the web component included in said
registry selected from the group
consisting of an input of the web
service and an output of the web
service,
access said computer memory to se-
lect the symbolic name correspond-
ing to the web component of the
defined UI object,
associate the selected symbolic
name with the defined UI object,
produce an Application including
the selected symbolic name of the
defined UI object, where said Ap-
plication is a device-independent
code, and
produce a Player, where said
Player is a device-dependent code;
such that, when the Application
and Player are provided to the de-
vice and executed on the device,
and when a user of the device pro-
vides one or more input values as-
sociated with an input symbolic
name to an input of defined UI ob-
ject,
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SHOPIFY INC. v. EXPRESS MOBILE, INC. 7
1) the device provides the user pro-
vided one or more input values and
corresponding input symbolic
name to the web service,
2) the web service utilizes the input
symbolic name and the user pro-
vided one or more input values for
generating one or more output val-
ues having an associated output
symbolic name,
3) said Player receives the output
symbolic name and corresponding
one or more output values and pro-
vides instructions for a display of
the device to present an output
value in the defined UI object.
’755 patent, claim 1 (emphases added).
Shopify markets a web design program that includes
the Shopify Theme Editor, which uses so-called Liquid
template files to generate webpages. On March 1, 2019,
Shopify sued Express Mobile, seeking a declaration of non-
infringement of the claims of the ’755, ’287, ’397, and ’168
patents. Express Mobile then brought infringement coun-
terclaims against Shopify, accusing the Shopify Theme Ed-
itor of infringing the claims of these patents. It also alleged
infringement of the ’044 patent.
With respect to the ’397 and ’168 patents, the district
court construed the terms “one or more run time files” and
“at least one run time file” in the ’397 patent to mean “one
or more files, including a run time engine, that are down-
loaded or created when a browser is pointed to a web page
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SHOPIFY INC. v. EXPRESS MOBILE, INC. 8
or website.”2 J.A. 18. This construction is not disputed on
appeal. As the parties agree that the “run time engine”
claimed in the ’168 patent is part of the run time file, Ap-
pellant’s Br. 55 (citing J.A. 1655), it is also the case that
“the claimed ‘run time engine’ must be downloaded or cre-
ated at run time.” J.A. 34. Following claim construction,
Shopify moved for summary judgment of noninfringement
on the asserted claims of the ’397 and ’168 patents. The
district court granted summary judgment in Shopify’s fa-
vor on the “at least one run time file” and “run time engine”
limitations as these were not present in the Shopify sys-
tem, among other grounds.3 The district court concluded
Shopify’s Liquid template files—which Express Mobile
claims are the “run time files” in the ’397 patent and con-
tain the “run time engine” in the ’168 patent—are not
“‘downloaded’ or ‘created’ when a browser is pointed to a
webpage or website,” and thus the Liquid template files
could not satisfy these claim limitations. J.A. 39, 42.
The case proceeded to trial on the ’755 patent family
(the ’755, ’287, and ’044 patents). The jury found that
Shopify infringed the asserted claims of each patent in the
’755 patent family and awarded Express Mobile $40 million
2 Under the district court’s construction, the run
time engine also needed to “read[] information from the da-
tabase.” J.A. 17. We have since held in a related case, Ex-
press Mobile, Inc. v. GoDaddy.com, LLC, No. 2023-2265,
2025 WL 1013386, at *9 (Fed. Cir. Apr. 2, 2025), that this
construction was erroneous. The district court’s conclusion
as to the “downloaded or created” limitation is distinct
from—and does not rely upon—this erroneous construc-
tion.
3 Because we affirm the district court’s ruling as to
the “downloaded or created” limitation, we do not address
the district court’s alternative grounds for summary judg-
ment.
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SHOPIFY INC. v. EXPRESS MOBILE, INC. 9
in damages. Shopify filed a posttrial motion for JMOL or,
in the alternative, for new trial. In its posttrial motion,
Shopify argued that “[t]he reference to ‘the defined UI ob-
ject’ in the claims makes it clear that the same UI object
must receive input and display output values,” and because
there was no evidence that Shopify’s system uses a single
“defined UI object” for both input and output values, no
reasonable jury could find that Shopify infringed.
J.A. 19531 (emphasis removed). The district court agreed
with Shopify and granted JMOL. The district court’s rul-
ing applied to all asserted system and method claims.4
Express Mobile timely appeals. We have jurisdiction
under 28 U.S.C. § 1295(a)(1).
D ISCUSSION
I
In inter partes review proceedings, the Patent Trial
and Appeal Board (“Board”) determined that claims 1–2,
5–7, and 11 of the ’755 patent, claims 1–2, 5–7, and 11–12
of the ’287 patent, and claims 1–2, 5–7, and 11–12 of the
’044 patent were unpatentable as obvious. Today, we af-
firm these determinations. Express Mobile, Inc. v. Meta
Platforms, Inc., No. 24-1190 (Fed. Cir. Dec. 4, 2025). In a
separate ex parte reexamination proceeding, the Board de-
termined claim 1 of the ’397 patent was unpatentable as
obvious. We also affirmed this determination. In re Ex-
press Mobile Inc., No. 23-1076, 2024 WL 2747287 (Fed. Cir.
May 29, 2024). Therefore, with respect to these claims, we
dismiss Express Mobile’s appeal as moot. XY, LLC
v. Trans Ova Genetics, 890 F.3d 1282, 1295 (Fed. Cir.
4 The district court also, on alternative grounds,
granted JMOL as to the method claims and conditionally
granted a new trial. Given our affirmance of the district
court’s ruling as to the “defined UI object” limitation, we do
not reach these issues.
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SHOPIFY INC. v. EXPRESS MOBILE, INC. 10
2018). However, this case is not moot as to each asserted
patent because asserted claims 12 and 22 of the ’755 pa-
tent, claim 13 of the ’287 patent, claims 17 and 19 of the
’044 patent, claims 2, 3, 11, and 37 of the ’397 patent, and
claims 1, 2, and 3 of the ’168 patent have not been deter-
mined to be unpatentable. We therefore address the merits
of Express Mobile’s arguments as to these asserted claims.
II
We first address the summary judgment ruling as to
the ’397 and ’168 patents. Here, the question is whether
the Shopify system includes run time files “that are down-
loaded or created when a browser is pointed to a web page
or website,” J.A. 18, that “generate virtual machine com-
mands.” ’397 patent, claim 1. Although the Liquid tem-
plate files in the Shopify system generate such commands,
Express Mobile’s expert, Dr. Almeroth, conceded that the
Liquid template files as they exist on Shopify’s servers are
not downloaded onto a user’s browser when the user visits
a webpage or website. As such, the Liquid template files
themselves cannot satisfy the “run time files” or “run time
engine” limitations. However, Express Mobile offered tes-
timony that the Liquid template files generate virtual ma-
chine commands through an “instantiation” process where
a “copy” of the Liquid template file is created and down-
loaded to a user’s browser each time a user points her
browser to a Shopify website.
As the district court noted, “the content of the two files
[the preexisting Liquid template file and the newly created
file] is not the same, because the Liquid template file on
the server has lines of code that the ‘Liquid Template
Downloaded in Browser’ does not have.” J.A. 38. Dr. Al-
meroth’s conclusory testimony that “to me, those are both
the same file,” J.A. 35, is not sufficient to support infringe-
ment, as “conclusory expert assertions do not give rise to a
genuine issue of material fact.” Streck, Inc. v. Rsch. &
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SHOPIFY INC. v. EXPRESS MOBILE, INC. 11
Diagnostic Sys., Inc., 665 F.3d 1269, 1290 (Fed. Cir. 2012).5
We see no error in the district court’s conclusion that Ex-
press Mobile did not raise a genuine issue of material fact
regarding whether the Liquid template file on Shopify’s
server and the “copy” of the Liquid template file are the
same file.
Nor do the newly created files themselves generate vir-
tual machine commands. The ’397 patent requires that the
“run time file utilizes information stored in [a] database to
generate virtual machine commands.” ’397 patent, claim 1.
Dr. Almeroth opined that the “virtual machine commands”
generated by the “run time file” were HTML, JS, and CSS
code. At his deposition, Dr. Almeroth admitted that this
same HTML, JS, and CSS code is “filled into” the files that
were the instantiated “copy” of the liquid template file. He
argued this “copy” satisfied the “at least one run time file”
limitation. As the district court noted, “[u]nder Express
Mobile’s view, the HTML, JS, and CSS runtime files would
be generating those same HTML, JS, and CSS virtual ma-
chine commands, which does not make sense as the files
would then be generating themselves.” J.A. 37–38. We
conclude there is no genuine issue of material fact whether
the “copy” of the Liquid template file is the claimed “run
time file” nor the “run time engine,” and affirm the district
court’s summary judgment grant as to claims 2, 3, 11, and
37 of the ’397 patent and claims 1, 2, and 3 of the ’168 pa-
tent.
5 Express Mobile also relies on an open-source docu-
ment to support its “instantiation” theory. Appellant’s
Br. 62–63 (citing J.A. 11954). However, neither Dr. Alme-
roth nor any other witness relied on or interpreted this doc-
ument, and so the district court did not err in concluding
that “Express Mobile has not met its burden of proof that
the open-source document means anything at all.” J.A. 39.
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SHOPIFY INC. v. EXPRESS MOBILE, INC. 12
III
As to the ’755 patent family, we see no error in the dis-
trict court’s decision to grant JMOL as to the “defined UI
object” limitation. At the JMOL hearing, Express Mobile
admitted that, by the claims’ plain language, the defined
UI object “has to receive an input and display an output.”
J.A. 19786. Throughout its pleadings, expert report, and
trial testimony, Express Mobile consistently referred to the
“defined UI object” as individual user interface objects such
as “buttons, text fields, images, and videos.” E.g.,
J.A. 1019; see also J.A. 5156–57 (Dr. Almeroth’s expert re-
port) (opining that some examples of the “defined UI ob-
jects” are the video section div, video-control button,
iframe, product form, selection list for product id, text field
for quantity, add to cart button, and GooglePay-button);
J.A. 18714 (Dr. Almeroth trial testimony describing “the
product form, the product form name, [and] the product” as
symbolic names for defined UI objects).6
In its JMOL briefing, Shopify agreed that Express Mo-
bile presented evidence of specific “defined UI objects” that
received inputs and separate “defined UI objects” that dis-
played outputs. For example, Express Mobile’s expert,
Dr. Almeroth, testified that users may enter an input into
a “quantity” textbox user interface object to indicate the
number of items the user would like to purchase, and, as a
result, a separate user interface object displays an output
value adjusted by the number of items that the user en-
tered the “quantity” textbox. J.A. 19532 (citing
J.A. 18730–32). But Shopify argued that Express Mobile
did not present evidence of objects that both received
6 The district court was not asked to construe “de-
fined UI object,” and expressly declined to do so in its
JMOL order. J.A. 138. We agree with the district court
that any claim construction argument related to “defined
UI object” by either party was forfeited. Id.
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SHOPIFY INC. v. EXPRESS MOBILE, INC. 13
inputs and displayed outputs. Shopify’s expert,
Mr. Schmandt, pointed out that Dr. Almeroth did not iden-
tify “any UI object that both receives an input and displays
an output that is claimed by Express Mobile.” J.A. 19158–
59. On JMOL, Express Mobile abandoned its reliance on
the earlier claimed UI objects and contended that the “de-
fined UI objects” were the display for the “product pages
with embedded add-to-cart functionality” and the display
for the “YouTube Video widgets.” J.A. 19569. But the dis-
trict court found that, at trial, Dr. Almeroth, and
Mr. Schmandt did not testify that the display for the prod-
uct page or the YouTube Video widget were the “defined UI
object,” and thus there was no evidence for the jury to con-
clude “that in Shopify’s system the whole display is a de-
fined UI object.” J.A. 138–39. As a result, the Shopify
system was not shown to satisfy the “defined UI object” lim-
itations, and thus the district court granted JMOL of non-
infringement on each of the claims asserted at trial.
On appeal, Express Mobile contends “a reasonable jury
could have readily concluded from Dr. Almeroth’s testi-
mony that the product pages are the ‘defined UI object,’ not
that the product pages simply have UI objects in them.”
Appellant’s Br. 29. We have carefully reviewed the record,
including each citation identified in Express Mobile’s brief-
ing, and come to the same conclusion as the district court:
There was no evidence at trial showing the “defined UI ob-
ject” was the display for the product page or the display
page for the YouTube functionality.7 Dr. Almeroth never
7 Express Mobile also contends that it presented
“similar evidence for Shopify’s pages that display YouTube
functionality.” Appellant’s Br. 21–22. The YouTube video
functionality may appear on the product page or on a sep-
arate page. See Appellant’s Br. 18 (discussing YouTube
functionality on the “product page”); Appellant’s Br. 21
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SHOPIFY INC. v. EXPRESS MOBILE, INC. 14
used the words “product page” in his testimony. And Ex-
press Mobile’s counsel properly conceded at oral argument
that Dr. Almeroth “never explicitly [said] that the page is
the UI object.” Oral Arg. at 4:18–40.
Express Mobile argues that even if no testimony at
trial suggested the product page was the “defined UI ob-
ject,” we should still reverse because “[t]he jury did not
need expert testimony to understand the disputed fact that
they needed to decide” and could rely on the product pages
themselves. Appellant’s Br. 30. We disagree. As Dr. Al-
meroth told the jury, the claims are “very technical,” and
“[t]here’s a lot of parts that you may not understand what
they do or how those requirements are being—are to be
met. The claims are not intended to be written to a layper-
son . . . .” J.A. 18689. “[W]hen the art is complex,” we have
recognized that “where the accused infringer offers expert
testimony negating infringement, the patentee cannot sat-
isfy its burden of proof by relying only on testimony from
those who are admittedly not expert in the field.” Cen-
tricut, LLC v. Esab Grp., Inc., 390 F.3d 1361, 1370
(Fed. Cir. 2004).
Finally, Express Mobile relies on attorney argument as
establishing that the product page is the “defined UI ob-
ject.” Appellant’s Br. 33 (quoting attorney argument in
closing). Although Express Mobile’s counsel argued in clos-
ing that the display for the product page could be the “de-
fined UI object,” “[a]ttorney argument is not evidence.”
(discussing “Shopify’s pages that display YouTube video
functionality” more generally). Dr. Almeroth discussed
how the “play button” user interface object receives an in-
put when a user clicks on the button, and that the result is
that “the video will be played on the screen,” J.A. 18733–
34, but this testimony does not suggest that the webpage
containing the “play button” and the YouTube video is the
“defined UI object.”
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SHOPIFY INC. v. EXPRESS MOBILE, INC. 15
Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034,
1043 (Fed. Cir. 2017). The verdict cannot rest on a new
infringement theory—not supported by testimony—that
was raised for the first time in closing argument.
Express Mobile did not meet its burden of proof as to
the “defined UI object” limitation, and thus the district
court did not err in granting JMOL on claims 12 and 22 of
the ’755 patent, claim 13 of the ’287 patent, and claims 17
and 19 of the ’044 patent.
CONCLUSION
We conclude that this case is moot as to the claims de-
termined to be unpatentable in proceedings before the
Board (affirmed by this court) and that the district court
did not err in granting summary judgment of noninfringe-
ment as to claims 2, 3, 11, and 37 of the ’397 patent and
claims 1, 2, and 3 of the ’168 patent or JMOL of nonin-
fringement as to claims 12 and 22 of the ’755 patent,
claim 13 of the ’287 patent, and claims 17 and 19 of the ’044
patent. We have considered Express Mobile’s remaining
arguments and find them unpersuasive. We thus dismiss-
in-part and affirm-in-part.
DISMISSED IN PART AND AFFIRMED IN PART.
COSTS
Costs to Shopify.
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