DCT
3:23-cv-00498
Innovaport LLC v. Walmart Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Innovaport LLC (Wisconsin)
- Defendant: Walmart Inc. (Arkansas)
- Plaintiff’s Counsel: BOYLE FREDRICKSON, S.C.
- Case Identification: 3:23-cv-00498, W.D. Wis., 07/21/2023
- Venue Allegations: Venue is based on Walmart's operation of retail stores within the Western District of Wisconsin, where the allegedly infringing systems are used.
- Core Dispute: Plaintiff alleges that Defendant’s mobile application and website infringe four patents related to systems for providing in-store product location information to customers.
- Technical Context: The technology concerns electronic systems, including mobile applications, that allow retail shoppers to search for products and receive information about their location, price, availability, and related items.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendant with pre-suit notice of the patents-in-suit via a letter to outside counsel and a LinkedIn message, which may form the basis for the willfulness allegations.
Case Timeline
| Date | Event |
|---|---|
| 1999-10-09 | Earliest Priority Date for all Patents-in-Suit |
| 2014-07-08 | U.S. Patent 8,775,260 Issues |
| 2014-07-22 | U.S. Patent 8,787,933 Issues |
| c. 2016 | Alleged First Infringing Use of Accused Products |
| 2016-11-08 | U.S. Patent 9,489,690 Issues |
| 2018-06-05 | U.S. Patent 9,990,670 Issues |
| 2023-07-21 | 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"
- Patent Identification: 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 describes the difficulty and frustration shoppers experience trying to locate specific products in large, modern retail stores, noting that store signs are often inadequate and asking employees is inefficient for both the shopper and the employee (’260 Patent, col. 1:30-2:4).
- The Patented Solution: The invention proposes a system of user interfaces fixed within a store, such as kiosks at the ends of aisles, that are connected to a "central hub" containing a database of inventory information (’260 Patent, Abstract; col. 5:11-20). A customer can use an interface to inquire about a product, and the system queries the database to provide its location and other related information, such as price or availability, back to the customer (’260 Patent, col. 5:56-6:4).
- Technical Importance: The technology aimed to solve a pervasive problem in large-format retail by creating a convenient, networked system for customers to access detailed, real-time inventory and location data without relying on employees (’260 Patent, col. 2:60-65).
Key Claims at a Glance
- The complaint asserts independent claim 15 (Compl. ¶14).
- The essential elements of claim 15, a method, include:
- Providing a "hub" that is indirectly in communication with a plurality of user interfaces and can access at least one database.
- The database includes both product location information and "additional product-related information" (e.g., quantity, price, availability, and cross-referential links to other products).
- Periodically communicating with the user interfaces, which includes receiving inquiry signals, querying the database, and providing responsive information signals.
- The communication between the hub and user interfaces is, at least in part, wireless.
- The complaint reserves the right to assert additional claims (Compl. ¶14).
U.S. Patent 8,787,933 - "Apparatus and method for providing product location information to customers in a store"
- Patent Identification: 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: As with the '260 Patent, this patent addresses the inefficiency of finding products in large stores (’933 Patent, col. 1:35-45).
- The Patented Solution: The invention describes a method using a plurality of communicating devices, including a mobile device, to provide product location information (’933 Patent, Abstract). A key feature is an information storage device that contains not only product location and cross-sell information but also data concerning "at least one past location inquiry of a customer," allowing the system to provide suggestions based on a customer's preferences (’933 Patent, col. 14, claim 1).
- Technical Importance: The patent extends the core concept to mobile devices and introduces personalization by storing and leveraging a customer's past inquiry history, anticipating the shift toward mobile-centric, personalized retail experiences (’933 Patent, col. 13:51-67).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶28).
- The essential elements of claim 1, a method, include:
- Providing a plurality of devices, including a mobile device, which are in communication.
- One device includes a user interface, and another includes an information storage device.
- The storage device includes product location information and additional information, including quantity, price, availability, cross-referential links, and "information concerning at least one past location inquiry of a customer."
- Receiving an input signal from the user interface, querying the storage device, and providing a responsive information signal.
- The user interface provides an output signal with at least one suggestion based on the customer's preferences, which are derived in part from the "further information" (e.g., past inquiries).
- The complaint reserves the right to assert additional claims (Compl. ¶28).
U.S. Patent 9,489,690 - "Apparatus and method for providing product location information to customers in a store"
- 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.
- Technology Synopsis: This patent discloses a method for providing in-store product location information using a plurality of devices, including a mobile device, a user interface, and an information storage device containing a database. The method involves processing a product location inquiry received via the user interface to generate a signal, querying the database for location and other product information, and providing an output signal with the location and at least one product suggestion.
- Asserted Claims: At least independent claim 1 (Compl. ¶45).
- Accused Features: The complaint alleges that the Walmart mobile app (on a mobile device) and its backend servers (an information storage device) work together to receive a search query, process it, query a database, and return results showing product location and cross-sell recommendations like "Frequently Bought Together" (Compl. ¶¶49, 51, 61).
U.S. Patent 9,990,670 - "Apparatus and method for providing product location information to customers in a store"
- 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.
- Technology Synopsis: This patent describes a method centered on an information storage device (with a database) that is configured for indirect communication with at least one other device that includes a user interface, where at least one of the devices is mobile. The method involves receiving and processing an inquiry signal, querying the database for product location and cross-referential information, and providing a responsive output signal that enables product suggestions.
- Asserted Claims: At least independent claim 1 (Compl. ¶65).
- Accused Features: The complaint alleges that Walmart's inventory database (information storage device) indirectly communicates with a customer's mobile phone to process searches (inquiry signals) and provide responsive signals that display product location and suggestions for other items (Compl. ¶¶69, 71, 81).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are Walmart Inc.’s mobile phone application and website (collectively, "Accused Products") (Compl. ¶84).
Functionality and Market Context
- The Accused Products allow customers to search for specific items and view information about them within a selected retail store (Compl. ¶11). The functionality includes displaying the product's price, its availability (e.g., "In stock"), and its specific in-store location, such as an aisle number (Compl. ¶¶18, 20). A screenshot in the complaint shows search results for "toothbrush" indicating price, availability, and an "Aisle G15" location (Compl. p. 5).
- The system provides cross-referential product information by suggesting related items under headings like "Frequently bought together" and "More items to consider" (Compl. ¶¶20, 33). A visual from the complaint depicts this cross-selling functionality (Compl. p. 7).
- For some products, the application can display the item's location visually on a map of the selected store (Compl. p. 17, 25).
- The complaint alleges that Walmart provides these Accused Products to its customers, who use them to locate products within Walmart's physical stores (Compl. ¶¶1, 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, and that is capable of accessing at least one database... | The Walmart mobile app (user interface) communicates with a "hub" (Walmart's backend servers) that accesses a database containing product and inventory information (Compl. ¶¶17-18). | ¶17-18 | col. 5:11-16 |
| ...the at least one database including both product location information and additional product-related information... linking the product with another product in a cross-referential manner... | The database is alleged to contain product location ("Aisle G15"), price, and availability, and links products to others via features like "Frequently Bought Together" (Compl. ¶¶19-20). A screenshot shows these cross-sell recommendations (Compl. p. 7). | ¶19-20, 22 | col. 10:20-24 |
| ...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 system receives search requests (inquiry signals) from the app, queries the database, and provides responsive information (price, location, availability) back to the app (Compl. ¶22). A visual shows the app displaying search results for "toothbrush" (Compl. p. 5). | ¶22 | col. 8:1-10 |
| ...wherein at least some of the communication is wireless communication. | The mobile application communicates with the hub wirelessly to obtain search results and product information (Compl. ¶24). | ¶24 | col. 5:21-24 |
- Identified Points of Contention:
- Scope Questions: The patent repeatedly describes a "central hub" and user interfaces "fixed within the store" (’260 Patent, Abstract; col. 5:14), which may suggest a centralized, on-premises architecture. A central question will be whether the term "hub" can be construed to read on Walmart's presumably distributed, cloud-based server infrastructure that communicates with a user's mobile phone, which is not "fixed within the store."
- Technical Questions: The complaint alleges that the mobile app communicates with a "hub" (Compl. ¶18), but provides no specific evidence on the architecture of Walmart's backend systems. The technical implementation of Walmart's servers and databases will be a key factual issue in determining if they meet the "hub" limitation.
’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... in communication with one another... at least one information storage device... | The system uses a plurality of devices: the customer's mobile device and an "information storage device" (Walmart's servers/database) that communicate with each other (Compl. ¶¶30-31). | ¶30-31 | col. 5:35-47 |
| ...the at least one information storage device includes... information concerning at least one past location inquiry of a customer. | The complaint alleges this is met because the mobile app "remembers" the customer's selected or local store, which it characterizes as information concerning a past location inquiry (Compl. ¶33). | ¶33 | col. 13:51-58 |
| ...querying the information storage device to obtain portions of the product location information and the additional product-related information in response to the input signal. | A search inquiry on the app queries the information storage device to obtain product location (e.g., aisle number) and other information (e.g., price, availability) (Compl. ¶37). A screenshot shows the results of such a query (Compl. p. 11). | ¶36-37 | col. 8:1-6 |
| ...the output signal provides at least one suggestion to the customer in accordance with one or more preferences of the customer... obtained at least in part based upon the further information. | The app suggests other products to customers, and the complaint alleges these suggestions are based on preferences derived from "further information," which is alleged to include location data or the selected store (Compl. ¶¶40-41). | ¶40-41 | col. 13:13-24 |
- Identified Points of Contention:
- Scope Questions: A principal issue will be the construction of "information concerning at least one past location inquiry of a customer." The complaint's theory is that remembering a user's store preference satisfies this limitation. The defense may argue this requires storing a prior search for a specific product, not just a general store setting, raising the question of whether the functionality is equivalent.
- Technical Questions: What evidence demonstrates that the product "suggestions" provided by the Walmart app are based on "preferences... obtained at least in part based upon the further information" (such as past inquiries), as the claim requires, versus being based on general popularity, advertising placements, or the current search term alone?
V. Key Claim Terms for Construction
Term: "hub" (’260 Patent, Claim 15)
Context and Importance
- The architectural configuration of the accused system is central. Practitioners may focus on this term because the patent's specification consistently refers to a "central hub," often in the context of fixed, in-store interfaces, while the accused system involves users' personal mobile devices communicating wirelessly with what is likely a distributed, cloud-based server network. The definition of "hub" will determine if this architectural difference creates a non-infringement defense.
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: The patent states that the "central hub" is a "central computer database (or other information source) in which information regarding the location of... items... is stored" (’260 Patent, col. 5:30-34), which a plaintiff may argue defines the term functionally as any centralized information repository, regardless of its specific hardware or network topology.
- Evidence for a Narrower Interpretation: A defendant may point to the consistent use of the modifier "central" and the depiction in Figure 1 of a distinct, singular "central hub 130" connected in a hub-and-spoke manner to in-store interfaces (’260 Patent, Fig. 1; col. 5:14) to argue the term is limited to a physically or logically centralized system, not a geographically distributed cloud service.
Term: "information concerning at least one past location inquiry of a customer" (’933 Patent, Claim 1)
Context and Importance
- This limitation requires the system to store a specific type of historical data. The infringement allegation hinges on whether the accused app's function of remembering a user's preferred store meets this requirement. This term's construction is critical because it appears to be a primary point of difference between the patent's disclosure and the accused functionality as described in the complaint.
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: A plaintiff might argue that a user setting a "home store" is a form of standing inquiry about the location of all products, and therefore "remembering" the store constitutes storing information "concerning" a past inquiry. The claim uses the word "concerning," which can support a broad relational link.
- Evidence for a Narrower Interpretation: The specification describes storing and processing "product location inquiries input by customers" to "obtain information regarding customer preferences" (’933 Patent, col. 13:51-58). A defendant may argue this context limits the claim term to storing data about a customer's search for a specific product (e.g., "Where is the milk?"), not merely a general setting like their preferred shopping location.
VI. Other Allegations
Indirect Infringement
- The complaint does not plead separate counts for indirect infringement. However, it alleges that Walmart "provided the Accused Products to customers" (Compl. ¶84), which is an act that could potentially support an inducement theory, although the factual basis for intent to induce is not explicitly developed beyond the general willfulness allegations.
Willful Infringement
- The complaint alleges willful infringement for all four patents (Compl. ¶¶ 13, 27, 44, 64). The alleged basis is pre-suit knowledge of the patents stemming from a letter and a LinkedIn message sent to Walmart's counsel (Compl. ¶13, Ex. E, F).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of architectural scope: can the term "hub," which the patent specification describes as a "central hub" connected to fixed in-store interfaces, be construed to cover the modern, distributed, cloud-based server infrastructure that communicates with customers' personal mobile devices?
- A key evidentiary question will be one of functional scope: does the accused application's feature of "remembering" a user's preferred store meet the specific claim limitation of storing "information concerning at least one past location inquiry of a customer," or is there a fundamental mismatch between the claimed functionality and the accused implementation?
- The resolution of these questions regarding claim construction and the factual characterization of the accused system's operation will likely be determinative of the infringement outcome for the lead patents.