DCT
3:23-cv-00227
Innovaport LLC v. Staples Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Innovaport LLC (Wisconsin)
- Defendant: Staples, Inc. (Massachusetts)
- Plaintiff’s Counsel: BOYLE FREDRICKSON, S.C.
- Case Identification: 3:23-cv-00227, W.D. Wis., 04/14/2023
- Venue Allegations: Venue is alleged to be proper based on Defendant's regular business and operation of retail stores within the Western District of Wisconsin.
- Core Dispute: Plaintiff alleges that Defendant’s mobile phone application and website, which allow customers to find products in physical stores, infringe four patents related to systems and methods for providing in-store product location information.
- Technical Context: The technology addresses the challenge of locating specific items within large retail environments by using electronic user interfaces to query a product inventory and location database.
- Key Procedural History: The asserted patents claim priority back to a provisional application filed in 1999 and constitute a broad family covering various aspects of in-store digital product location services. The complaint does not mention any prior litigation, inter partes reviews, or licensing history concerning these patents.
Case Timeline
| Date | Event |
|---|---|
| 1999-10-09 | Earliest Priority Date for ’260, ’933, ’690, and ’670 Patents |
| 2014-07-08 | U.S. Patent 8,775,260 Issues |
| 2014-07-22 | U.S. Patent 8,787,933 Issues |
| 2016-01-01 | Alleged Infringement Start Date ("at least as early as 2016") |
| 2016-11-08 | U.S. Patent 9,489,690 Issues |
| 2018-06-05 | U.S. Patent 9,990,670 Issues |
| 2023-04-14 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 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 describes the increasing frustration shoppers experience when trying to find specific products in large, modern stores with a vast variety of goods. It notes that store signage is often inadequate and asking employees for help is inefficient for both the customer and the employee (’260 Patent, col. 1:30-65).
- The Patented Solution: The invention proposes a system of user interfaces connected to a central "hub" or inventory database. A customer makes an inquiry at a user interface, which sends a signal to the hub; the hub queries its database for the product's location and sends that information back to the user interface for the customer (’260 Patent, Abstract; col. 3:15-29). The system is designed to be a convenient, robust, and inexpensive electronic solution to the product-finding problem (’260 Patent, col. 3:3-8).
- Technical Importance: This technology represents an early approach to automating in-store navigation and product discovery, aiming to improve the retail customer experience and optimize employee productivity by offloading informational queries to an electronic system (’260 Patent, col. 2:60-67).
Key Claims at a Glance
- The complaint asserts independent claim 15 (Compl. ¶14).
- Essential elements of Claim 15 include:
- A method of providing product location information within a store.
- Providing a "hub" that communicates with multiple user interfaces, where at least some communication is wireless.
- The hub can access a database containing product location information and "additional product-related information," which includes quantity, price, availability, and cross-referential links to other products.
- The method involves "periodically engaging" in communication by receiving inquiry signals from user interfaces, querying the database, and providing responsive information signals back to the interfaces.
- The user interfaces provide output signals to the customer based on the information signals.
U.S. Patent No. 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 fundamental problem as the ’260 Patent: the difficulty and frustration of locating products in large retail stores (’933 Patent, col. 1:35-49).
- The Patented Solution: This patent focuses more specifically on a system where a customer uses a mobile device to interact with the store's information system. The solution involves the mobile device communicating with an information storage device to retrieve not only product location but also personalized suggestions based on the customer's past inquiries or known preferences (’933 Patent, col. 14:12-34). Figure 3 illustrates the communication architecture between a user interface and a central hub containing a database (’933 Patent, Fig. 3).
- Technical Importance: The invention reflects a shift toward leveraging customers' personal mobile devices for in-store assistance and introducing a layer of personalization, a significant trend in retail technology (’933 Patent, col. 13:40-50).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶28).
- Essential elements of Claim 1 include:
- A method using a plurality of devices, including a mobile device, that communicate with each other.
- At least one device is a user interface and at least one is an information storage device.
- The storage device includes product location and "additional product-related information," including price, availability, cross-referential links, and information on a customer's "past location inquiry."
- The method includes receiving an input signal, querying the storage device, and providing a responsive product location information signal.
- The resulting output signal provides "at least one suggestion to the customer in accordance with one or more preferences of the customer."
U.S. Patent No. 9,489,690 - “Apparatus and method for providing product location information to customers in a store,” issued November 8, 2016
- Patent Identification: U.S. Patent 9,489,690, "Apparatus and method for providing product location information to customers in a store," issued November 8, 2016 (Compl. ¶6).
- Technology Synopsis: The patent describes a method for providing in-store product location information using a plurality of devices, including a mobile device and an information storage device. The method involves processing a product location inquiry from a user, querying a database, and providing an output signal that includes location information for the searched product and a suggestion for at least one other related product (’690 Patent, Abstract; col. 15:15-46).
- Asserted Claims: Independent claim 1 (Compl. ¶45).
- Accused Features: The complaint alleges that the Staples mobile application and website use a mobile phone and an information storage device to receive a product inquiry, query a database for location and other information, and provide an output with a cross-referential suggestion (e.g., "Recommended Products") (Compl. ¶¶48-51, 60-61).
U.S. Patent No. 9,990,670 - “Apparatus and method for providing product location information to customers in a store,” issued June 5, 2018
- Patent Identification: U.S. Patent 9,990,670, "Apparatus and method for providing product location information to customers in a store," issued June 5, 2018 (Compl. ¶7).
- Technology Synopsis: The patent describes a method using an information storage device in communication with at least one other device, which is or includes a mobile device with a user interface. The method involves receiving and processing a product location inquiry signal and providing a responsive output signal that includes location information and a cross-referential link to another product (’670 Patent, Abstract; col. 15:58-col. 16:10).
- Asserted Claims: Independent claim 1 (Compl. ¶65).
- Accused Features: The complaint alleges that the Staples mobile application and website use an information storage device (database) in communication with a mobile device to receive inquiries, query the database, and provide results that include the product's location and links to "Recommended Products" (Compl. ¶¶68-71, 80-81).
III. The Accused Instrumentality
Product Identification
- Staples's mobile phone application and website (collectively, the "Accused Products") (Compl. ¶84).
Functionality and Market Context
- The Accused Products allow a user to search for an item and receive information about its price and location within a specific Staples retail store, identified by aisle and bay number (Compl. ¶¶18, 19). The complaint provides a screenshot of the mobile app showing search results for "Epson Printer," listing various models with their prices and specific in-store aisle and bay locations (Compl. p. 4). The application also presents "Recommended Products" in a cross-referential manner, as shown in a screenshot of a product detail page (Compl. ¶20; Compl. p. 5). A further screenshot shows a store map interface that provides a routed list of items for a customer (Compl. p. 8).
- The complaint alleges these functionalities have been active since at least 2016 but does not provide further details on the products' commercial importance or market position (Compl. ¶84).
IV. Analysis of Infringement Allegations
’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 ... wherein at least some of the communication is wireless communication. | The Staples mobile application on a user's phone communicates wirelessly with a "hub" (Staples's backend servers and database) to obtain product information. | ¶¶17, 23, 24 | col. 8:31-40 |
| the hub further is capable of accessing at least one database which includes both product location information and additional product-related information. | The hub accesses a database that contains product location information (e.g., aisle, bay) and additional information (e.g., price). | ¶¶17, 18 | col. 5:30-37 |
| information linking the product with another product in a cross-referential manner; | The application displays "Recommended Products," which links the currently viewed product to other products. | ¶¶19, 20 | col. 17:54-58 |
| periodically engaging in the communication with each of the user interfaces ... receiving inquiry signals from the user interfaces; querying the database ... and providing information signals in response to the inquiry signals | The mobile app receives search requests (inquiry signals) from users, which causes a query of the database, and provides results (information signals) back to the user's phone. | ¶¶21, 22 | col. 12:4-26 |
’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 ... at least one of the devices includes at least one information storage device, | The system uses a customer's mobile device running the Staples app in communication with an information storage device (Staples's inventory database). | ¶¶30, 31 | col. 13:40-45 |
| the at least one information storage device includes ... information linking the product with another product in a cross-referential manner, and further information concerning at least one past location inquiry of a customer. | The app provides "Recommended Products" (cross-referential linking) and "remembering" the customer's selected store ("past location inquiry"). | ¶¶32, 33 | col. 14:15-20 |
| providing a product location information signal ... 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 "Recommended Products" to customers, with the complaint alleging this is in accordance with customer preferences. | ¶¶40, 41 | col. 14:12-20 |
Identified Points of Contention
- Scope Question: For the ’260 Patent, a dispute may arise over the meaning of "periodically engaging" in communication. The complaint describes a standard user-initiated, on-demand search. The question for the court will be whether this on-demand model meets the "periodically" limitation, or if that term requires a more automated, time-based communication (e.g., a background data push) from the hub to the user interface.
- Technical Question: For the ’933 Patent, a key question will be what evidence supports the allegation that the "Recommended Products" are based on "preferences of the customer." The complaint does not specify how these recommendations are generated. The analysis will depend on whether the feature is a generic, context-based suggestion (e.g., ink for a printer) or if it is personalized based on a specific customer's tracked behavior, as the patent specification appears to contemplate (’933 Patent, col. 14:12-34).
V. Key Claim Terms for Construction
The Term: "hub" (’260 Patent, Claim 15)
- Context and Importance: The definition of "hub" is central to identifying the server-side architecture of the claimed system. The complaint alleges Staples's backend servers and database constitute the "hub."
- Intrinsic Evidence for a Broader Interpretation: The specification defines the hub as a "central computer database (or other information source)," which may support an interpretation that covers any backend server system, including modern distributed architectures (’260 Patent, col. 5:30-33).
- Intrinsic Evidence for a Narrower Interpretation: Embodiments in the patent depict a singular "Central Hub 330," which could support a narrower construction requiring a more discrete, centralized component rather than a logically distributed backend system (’260 Patent, Fig. 3).
The Term: "preferences of the customer" (’933 Patent, Claim 1)
- Context and Importance: Infringement of the "suggestion" limitation hinges on this term. Practitioners may focus on this term because it determines whether a generic recommendation infringes or if a higher degree of personalization is required.
- Intrinsic Evidence for a Broader Interpretation: The patent suggests that preferences can be derived from the product inquiries themselves, which could support a view that any contextually relevant suggestion (e.g., related items) is based on an implied preference (’933 Patent, col. 14:15-20).
- Intrinsic Evidence for a Narrower Interpretation: The specification describes tailoring suggestions based on a customer's "standard purchases," "earlier visits," or an identified "customer profile," suggesting a requirement for tracking and analysis of a specific customer's history, a potentially narrower meaning than generic recommendations (’933 Patent, col. 14:21-34).
VI. Other Allegations
Willful Infringement
- The complaint alleges that Staples's infringement was willful and that its conduct shows a "lack of the required duty to avoid infringement," seeking enhanced damages and attorneys' fees as a result (Compl. ¶¶84-86). The complaint does not, however, plead specific facts to support this claim, such as allegations of pre-suit knowledge of the patents-in-suit.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim construction: can the term "periodically engaging," as used in the ’260 patent, be construed to cover the on-demand, user-initiated request-response model of the accused application, or does it require a more automated, system-driven communication schedule?
- A key evidentiary question will be one of technical implementation: what is the actual algorithm driving the "Recommended Products" feature in the accused system? The case may turn on whether discovery shows it provides suggestions based on specific "preferences of the customer" as required by the ’933 patent, or if it provides only generic, non-personalized suggestions that may fall outside the claim's scope.
- Given the 1999 priority date, a central validity question may arise regarding whether the claims are directed to a patent-eligible abstract idea under 35 U.S.C. § 101. The defense may argue that the patents simply claim the abstract idea of finding a product in a store using generic computer components, raising the question of whether the claims contain a sufficient "inventive concept" to be patentable.