DCT
3:23-cv-00225
Innovaport LLC v. Home Depot Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Innovaport LLC (Wisconsin)
- Defendant: The Home Depot, Inc. (Principal Place of Business: Georgia)
- Plaintiff’s Counsel: BOYLE FREDRICKSON, S.C.
- Case Identification: 3:23-cv-00225, W.D. Wis., 04/11/2023
- Venue Allegations: Venue is based on Defendant operating retail stores within the Western District of Wisconsin, where infringing systems have allegedly been made and/or used.
- Core Dispute: Plaintiff alleges that Defendant’s mobile phone application and website infringe four patents related to systems and methods for providing in-store product location information to customers.
- Technical Context: The technology addresses the challenge of helping customers locate specific products within large retail environments using electronic interfaces connected to a product database.
- Key Procedural History: The complaint alleges that the inventor pitched the patent portfolio to The Home Depot in March 2012, more than a decade before the suit was filed. This allegation of pre-suit notice forms the basis for the claim of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 1999-10-09 | Earliest Priority Date for all Patents-in-Suit |
| 2012-03 | Inventor allegedly pitched patent portfolio to The Home Depot |
| 2014-07-08 | U.S. Patent 8,775,260 Issues |
| 2014-07-22 | U.S. Patent 8,787,933 Issues |
| 2016 (approx.) | Alleged start date of infringement |
| 2016-11-08 | U.S. Patent 9,489,690 Issues |
| 2018-06-05 | U.S. Patent 9,990,670 Issues |
| 2023-04-11 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent 8,775,260 - "Apparatus and method for providing product location information to customers in a store," issued July 8, 2014
The Invention Explained
- Problem Addressed: The patent’s background section describes the difficulty shoppers face in locating specific products within large, modern retail stores, noting that store signs are often inadequate and asking employees for help is inefficient for both the customer and the employee (ʼ260 Patent, col. 1:30-65).
- The Patented Solution: The invention proposes a system of user interfaces, such as fixed kiosks, positioned throughout a store and connected to a central inventory database. A customer can use an interface to inquire about a product, and the system queries the database to provide the product's in-store location and other related information (ʼ260 Patent, Abstract; Fig. 1). This automates the process of finding product information.
- Technical Importance: The technology aimed to streamline the in-store shopping experience by providing a convenient, centralized, and automated source for product location information, an improvement over static signage and reliance on employee knowledge (ʼ260 Patent, col. 2:60-65).
Key Claims at a Glance
- The complaint asserts independent claim 15.
- Essential elements of claim 15 include:
- A method of providing product location information within a store.
- Providing a "hub" that communicates with a plurality of "user interfaces" and can access at least one database.
- The database contains product location information and additional product-related information (quantity, price, availability, and a cross-referential link to another product).
- The hub periodically communicates with the user interfaces by receiving inquiry signals and providing responsive information signals.
- At least some of the communication must be wireless.
- The complaint alleges infringement of "at least claim 15," reserving the right to assert other claims (Compl. ¶15).
U.S. Patent 8,787,933 - "Apparatus and method for providing product location information to customers in a store," issued July 22, 2014
The Invention Explained
- Problem Addressed: The patent addresses the same problem as the ’260 Patent: the inefficiency and frustration customers experience when searching for products in large stores (ʼ933 Patent, col. 2:1-15).
- The Patented Solution: This invention describes a method centered on a system of communicating devices that includes a mobile device. A user interface on one device sends an input signal to an information storage device, which returns product location information and provides suggestions based on customer preferences, which can be derived from past inquiries or other data (ʼ933 Patent, Abstract; col. 14:7-20).
- Technical Importance: By incorporating mobile devices, the invention reflects a shift towards using personal electronics for in-store assistance, enabling more dynamic and personalized interactions than fixed kiosks might allow (ʼ933 Patent, col. 13:40-46).
Key Claims at a Glance
- The complaint asserts independent claim 1.
- Essential elements of claim 1 include:
- A method using a plurality of communicating devices, including a mobile device.
- At least one device has a user interface and at least one has an information storage device.
- The storage device includes product location information plus additional information, including quantity, price, presence/absence, time of future availability if absent, a cross-referential link, and information on a past location inquiry.
- A user interface receives an input signal, which causes a query of the storage device.
- A product location information signal is sent to the user interface, which then provides an output signal including at least one suggestion in accordance with customer preferences.
- The complaint alleges infringement of "at least claim 1," reserving the right to assert other claims (Compl. ¶29).
U.S. Patent 9,489,690 - "Apparatus and method for providing product location information to customers in a store," issued November 8, 2016
- Technology Synopsis: The ’690 patent describes a method of providing product location information that focuses on the specific signal processing steps involved. It requires a user interface to receive a "product location inquiry," which is then processed by a "signal processing device" to generate a "product location inquiry signal" that causes a query of an information storage device (Compl. ¶53, 55, 57).
- Asserted Claims: Independent claim 1 is asserted (Compl. ¶46).
- Accused Features: The complaint alleges that the search function of the Home Depot mobile app and website embodies the claimed sequence of receiving, processing, and querying based on a user's product inquiry (Compl. ¶54-58).
U.S. Patent 9,990,670 - "Apparatus and method for providing product location information to customers in a store," issued June 5, 2018
- Technology Synopsis: The ’670 patent describes a system architecture for providing product location information. It claims an information storage device (with a database) configured for at least indirect communication with at least one other device, where one of the two is or includes a mobile device with a user interface, and details the processing and response to a "product location inquiry signal" (Compl. ¶69, 75).
- Asserted Claims: Independent claim 1 is asserted (Compl. ¶66).
- Accused Features: The complaint alleges that the Home Depot mobile app and website, through their interaction between a customer's mobile device and Home Depot's back-end inventory database, constitute the claimed system architecture (Compl. ¶70, 72).
III. The Accused Instrumentality
Product Identification
- The Home Depot mobile phone application and The Home Depot website (collectively, the "Accused Products") (Compl. ¶85).
Functionality and Market Context
- The complaint alleges the Accused Products provide a search function that allows customers to find products within a specific retail store (Compl. ¶11). The functionality, as depicted in screenshots, includes displaying a product's price, in-store availability, specific location (e.g., "Aisle: 13 Bay: 12"), and current stock quantity (e.g., "8 in Stock") (Compl. ¶21, 34). A screenshot from the complaint shows the search results for a hammer, including its price, stock status, and in-store location (Compl. p. 5). The Accused Products also allegedly link a searched product to other products through features like "Similar Items To Consider" and "Frequently Bought Together" (Compl. ¶21, 52). The complaint alleges these products have been in use since at least 2016 (Compl. ¶85).
IV. Analysis of Infringement Allegations
8,775,260 Patent Infringement Allegations
| Claim Element (from Independent Claim 15) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| providing a hub that is at least indirectly in communication with each of a plurality of user interfaces... | The mobile application on a customer's device communicates with a "hub" (a back-end server), and the numerous customers using the app constitute a "plurality of user interfaces." | ¶18, ¶19, ¶23 | col. 9:11-15 |
| ...the at least one database including both product location information and additional product-related information, wherein the additional product-related information includes: information concerning a quantity of a first product... a price of the product... an availability... and information linking the product with another product... | The app displays product location ("Aisle: 13 Bay: 12"), quantity ("8 in Stock"), price ("$12.97"), availability ("in Stock"), and links to other products ("Frequently Bought Together"). This is shown in a screenshot of a product detail page. | ¶20, ¶21; p. 5 | col. 9:35-40 |
| periodically engaging in the communication with each of the user interfaces... receiving inquiry signals from the user interfaces; querying the database to obtain portions of the product location information... and providing information signals in response... | The app sends a search query (inquiry signal) to the hub/database, which processes it and returns product information (information signals) for display on the app. | ¶22, ¶23 | col. 9:51-64 |
| wherein at least some of the communication is wireless communication. | The mobile phone application communicates wirelessly with the hub to obtain search results and product information. | ¶24, ¶25 | col. 9:22-25 |
- Identified Points of Contention:
- Scope Questions: A central dispute may arise over the term "user interfaces." The '260 Patent specification extensively describes these as fixed, store-provided devices like kiosks (ʼ260 Patent, Abstract; col. 8:16-19). The infringement theory, however, maps this term onto customer-owned mobile devices running an application. The case may turn on whether the claim term can be construed broadly enough to cover this implementation or if its scope is limited by the specification's embodiments.
8,787,933 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| providing a plurality of devices including a mobile device, wherein the plurality of devices are in communication with one another... | The system comprises a customer's mobile device running the app and a Home Depot information storage device (server/database) that communicate with each other. | ¶31, ¶32 | col. 13:40-46 |
| ...the at least one information storage device includes... product location information and additional product-related information that includes information regarding at least one of... a quantity... a price... a presence or absence... a time at which the product should be available... if the product is currently absent... linking the product with another product... and... at least one past location inquiry of a customer... | The app allegedly provides information on quantity, price, and presence. It links to other products ("Frequently Bought Together"), and "remembering" the selected store is alleged to meet the "past location inquiry" element. A screenshot displays many of these data types. | ¶33, ¶34; p. 9 | col. 15:5-14 |
| ...providing a product location information signal... whereby the at least one user interface is able to provide an output signal based upon the product location information signal... | In response to a search, the app receives a signal and displays product information, such as whether it is located in a specific store. | ¶39, ¶40 | col. 12:55-64 |
| wherein the output signal provide at least one suggestion to the customer in accordance with one or more preferences of the customer... | The app suggests other products, and the complaint alleges this is in accordance with customer preferences, such as the location of the selected store. | ¶41, ¶42 | col. 14:7-20 |
- Identified Points of Contention:
- Technical Questions: Claim 1 requires the system to provide "information concerning a time at which the product should be available at the store if the product is currently absent from the store." The complaint does not allege, nor do its visual exhibits show, that the Accused Products provide this specific type of information. This raises a direct question of whether a required claim element is met by the accused functionality.
- Scope Questions: The meaning of "preferences of the customer" may be contested. The complaint suggests that providing suggestions based on a user's selected store location is sufficient (Compl. ¶42). A court may need to determine if this meets the claim limitation or if a more sophisticated form of personalization (e.g., based on purchase history, as also described in the patent) is required.
V. Key Claim Terms for Construction
Term ('260 Patent, Claim 15): "user interfaces"
- Context and Importance: The plaintiff's infringement case for the ’260 Patent hinges on construing this term to include customer-owned mobile phones running an application. The defense will likely argue the term is limited to the fixed, store-owned kiosks that are the primary embodiment described in the patent specification. The outcome of this construction could be dispositive for this patent.
- Intrinsic Evidence for a Broader Interpretation: The claim language itself does not contain an explicit limitation to "fixed" or "store-owned" devices; it simply recites "user interfaces" (ʼ260 Patent, col. 18:37).
- Intrinsic Evidence for a Narrower Interpretation: The specification repeatedly describes the interfaces as "fixed within the store" (ʼ260 Patent, Abstract) and provides examples such as stand-alone terminals or units mounted on shelving (ʼ260 Patent, Fig. 2a, 2b; col. 9:57-61). The patent summary states the system comprises a "first user interface fixed within the store" (ʼ260 Patent, col. 4:16-17).
Term ('933 Patent, Claim 1): "information concerning at least one past location inquiry of a customer"
- Context and Importance: This term's definition is critical because the complaint's sole allegation for meeting it is that the app "'remembering' the customer's selected or local store" satisfies the requirement (Compl. ¶34). Practitioners may focus on this term because if "remembering a store" is not a "past location inquiry," this element may not be met.
- Intrinsic Evidence for a Broader Interpretation: The patent does not explicitly define the term, potentially leaving room for a broad interpretation where any stored location context could qualify.
- Intrinsic Evidence for a Narrower Interpretation: The specification discusses developing "customer typologies" and "customer profile[s]" based on "product location inquiries received from the given customer" (ʼ933 Patent, col. 14:7-17). This context suggests the "past location inquiry" is more specific than just a remembered store, referring instead to the specific products a customer has previously searched for.
VI. Other Allegations
- Indirect Infringement: The complaint does not plead separate counts for indirect infringement. However, it alleges that Home Depot "provided its mobile phone application to customers" (Compl. ¶15, 29, 46, 66), which could form the factual basis for a future claim of induced infringement. The primary focus of the complaint is on Home Depot's direct infringement through its own use and maintenance of the accused systems.
- Willful Infringement: The complaint alleges willful infringement for all four asserted patents (Compl. ¶14, 28, 45, 65). The basis for this allegation is the claim that the inventor, John Pienkos, contacted and pitched the patent portfolio directly to The Home Depot in March 2012, allegedly providing pre-suit knowledge of the technology (Compl. ¶12).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "user interfaces" from the ’260 patent, which is described in the specification primarily as fixed, store-owned kiosks, be construed to cover the thousands of customer-owned smartphones running the accused application?
- A key evidentiary question will be one of factual-technical mismatch: can the plaintiff demonstrate that The Home Depot's application performs every function required by the asserted claims, particularly the ’933 patent's requirement to provide information on the future availability of out-of-stock items, a feature for which the complaint provides no evidence?
- The viability of the willful infringement claim will depend on the factual evidence surrounding the alleged March 2012 meeting, including what specific patents or applications were disclosed and whether Home Depot’s subsequent conduct was objectively reckless.