Electronic Receipts Delivery Systems LLC v. BP America Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Electronic Receipts Delivery Systems, LLC (Texas)
  • Defendant: BP America Inc. (Delaware)
  • Plaintiff’s Counsel: Stamoulis & Weinblatt LLC; Sand, Sebolt & Wernow Co., LPA
• Case Identification: 1:19-cv-02139, D. Del., 11/14/2019
• Venue Allegations: Venue is asserted based on Defendant’s incorporation in Delaware, which the complaint alleges makes it a resident of the district.
• Core Dispute: Plaintiff alleges that Defendant’s “My BP Station” and “BPme” systems infringe a patent related to a method for automatically issuing digital purchase receipts to a customer's pre-registered destination.
• Technical Context: The technology addresses the management of transaction records by replacing traditional paper receipts with an automated digital system linked to a customer's payment card.
• Key Procedural History: The asserted patent is part of a family with a priority date reaching back to 2005. Subsequent to the filing of this complaint, the asserted patent was the subject of a Covered Business Method (CBM) post-grant review proceeding (CBM2020-00015). On February 10, 2022, the U.S. Patent and Trademark Office issued a certificate cancelling all claims (1-20) of the patent, a fact which fundamentally impacts the viability of this litigation.

Case Timeline

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

U.S. Patent No. 8,534,551 - "SYSTEM AND METHOD FOR ISSUING DIGITAL RECEIPTS FOR PURCHASE TRANSACTIONS OVER A NETWORK"

• Issued: September 17, 2013

The Invention Explained

• Problem Addressed: The patent identifies the problem that traditional paper receipts, while important for returns, expense tracking, and warranties, are frequently lost or discarded by consumers (’551 Patent, col. 2:17-20; Compl. ¶12).
• The Patented Solution: The invention proposes a method where a customer first registers a credit card account to receive digital receipts at a specified destination, such as an email address or a web server (’551 Patent, col. 8:26-34). When a transaction is later made with that card, the system retrieves the associated customer record and automatically transmits a digital receipt to that destination, purportedly without requiring further customer input at the point of sale (’551 Patent, Abstract; col. 9:33-40).
• Technical Importance: The technology sought to provide a persistent and accessible digital record of purchases, thereby alleviating the organizational burdens and risk of loss associated with paper receipts (’551 Patent, col. 2:21-25).

Key Claims at a Glance

• The complaint asserts infringement of at least Claim 1 and notes there are three independent claims in total (Compl. ¶16, ¶21).
• The essential elements of independent Claim 1 are:
  • receiving a registration request to receive digital receipts in association with a credit card account;
  • storing a customer record in a database that associates the credit card account with a customer's destination;
  • receiving, from a point-of-sale terminal, transaction information and information identifying the credit card account;
  • retrieving the customer record from the database based on the credit card information;
  • initiating a charge to the credit card account; and
  • automatically transmitting a digital receipt to the customer's destination "without input from the first customer."

III. The Accused Instrumentality

Product Identification

The "My BP Station" and "BPme" system (the "Accused Product") (Compl. ¶22).

Functionality and Market Context

The complaint alleges the Accused Product is a system that "enables or performs a method for issuing a purchase transaction receipt over a network" (Compl. ¶22). The allegations describe a system that allows users to register a credit card, which is then associated with a user account. When a purchase is made, the system allegedly generates and transmits a digital receipt automatically (Compl. ¶23-28). The complaint asserts these infringement allegations based "at least in internal testing and usage" (Compl. ¶23). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint does not provide a claim chart exhibit but includes narrative paragraphs that map the Accused Product to the elements of Claim 1.

'551 Patent Infringement Allegations

Identified Points of Contention

• Scope Questions: The complaint's allegations are conclusory and lack specific technical details about the Accused Product's operation. A central question is whether the BPme app's functionality, which may require a user to log in or open the app to view a receipt history, meets the "automatically transmitting... without input from the first customer" limitation. The interpretation of this phrase will be critical.
• Technical Questions: What evidence does the complaint provide that the Accused Product's architecture directly maps to the claimed method? The repeated reference to "internal testing and usage" suggests Plaintiff may lack public-facing evidence for the server-side steps (e.g., storing, retrieving, and automatic transmission logic), raising the question of what discovery will reveal about the system's actual implementation.

V. Key Claim Terms for Construction

"automatically transmitting ... without input from the first customer"

• Context and Importance: This limitation is the inventive core of the claim, intended to distinguish the method from prior art that might require manual user action at the time of sale. The scope of "automatically" and "without input" will likely be a central point of dispute.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification's focus is on removing the cumbersome process at the physical point of sale ('551 Patent, col. 2:1-4). A party could argue the phrase simply means the receipt is generated and sent to its destination in the background after the purchase is complete, without requiring an explicit "send receipt" action at the POS terminal.
  • Evidence for a Narrower Interpretation: The plain language "without input" could be argued to mean no user interaction whatsoever is required to trigger the transmission. A party could argue that if a user must open an application or click a link to view or receive the receipt, this constitutes "input," and the transmission is therefore not "automatic" in the manner claimed.

"destination associated with a first customer"

• Context and Importance: Defining what constitutes a "destination" is key to determining infringement. Whether this requires the receipt to be actively "pushed" to a user (like an email) or can be a location where it is passively stored for user "pull" (like an in-app receipt history) will be a significant issue.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The patent discloses multiple embodiments, including sending the receipt to an e-mail address or making it available for access on a website ('551 Patent, col. 9:33-40, 9:53-58). This may support an interpretation that a "destination" can be either a push or pull location.
  • Evidence for a Narrower Interpretation: The term "transmitting a ... receipt to the destination" could be construed to require an active delivery or "push" of the data, potentially excluding systems where receipts are merely made available in a user's account history for later retrieval.

VI. Other Allegations

• Indirect Infringement: The complaint makes a conclusory allegation of induced infringement, stating Defendant encourages infringement with knowledge, but does not plead specific supporting facts such as instructions in user manuals or advertising materials that direct users to perform the claimed steps (Compl. ¶34).
• Willful Infringement: Willfulness is alleged based on knowledge of the '551 Patent gained "at least as of the service of the present Complaint" (Compl. ¶32). This allegation is directed at potential post-suit conduct and does not assert pre-suit knowledge.

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

1. A threshold, and likely dispositive, issue is one of patent viability: given that all claims of the '551 Patent were cancelled in a post-grant review proceeding (CBM2020-00015) that concluded after this complaint was filed, does any valid and enforceable patent right remain to support this action?
2. Should the case proceed, a core issue will be one of definitional scope: can the claim limitation "automatically transmitting ... without input from the first customer" be construed to read on a system where a user may need to open a mobile application to access their receipt history?
3. Finally, a key evidentiary question will be one of technical proof: beyond the complaint's high-level allegations, what evidence can be produced from discovery to demonstrate that the server-side architecture and data flow of the "BPme" system perform the specific sequence of retrieving, charging, and transmitting steps as recited in Claim 1?