ShopKick Inc v. NoVitaz

1. Case Identification

• Case #: IPR2015-00277
• Patent #: 7,962,361
• Filed: November 19, 2014
• Petitioner(s): shopkick, Inc.
• Patent Owner(s): Novitaz, Inc.
• Challenged Claims: 1-50

2. Patent Overview

• Title: Customer Relationship Management System for Physical Locations
• Brief Description: The ’361 patent relates to a system for in-store marketing that extends web-based customer relationship management (CRM) to physical retail locations. The system wirelessly identifies a customer upon store entry, retrieves their profile including online and offline behavior, and provides an "engagement plan" to sales staff to facilitate a personalized sales interaction.

3. Grounds for Unpatentability

Ground 1: Obviousness over Marshall and Ogasawara - Claims 1-18, 20-22, 24-25, 27-36, 38-45, and 47-50 are obvious over Marshall in view of Ogasawara.

• Prior Art Relied Upon: Marshall (Application # 2002/0116266), Ogasawara (Patent 6,513,015).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Marshall taught a method of tracking and rewarding customer activities across both online and in-person settings. Marshall’s system created an "individual background profile" by storing events like website views and store visits. This profile was then used to identify "preferred customers" in-store using handheld devices that communicated with sensors, and to provide targeted sales information to personnel. Petitioner contended this system met most limitations of claim 1. Ogasawara was introduced to supplement Marshall by teaching a more explicit system for wirelessly identifying customers (using RFID) and providing detailed customer profiles—including demographics and transaction history—to staff for personalized service and cross-selling recommendations.
  • Motivation to Combine: A POSITA would combine Marshall's system for tracking integrated online/offline behavior with Ogasawara's more advanced wireless identification and detailed profiling techniques. The combination would serve the shared goal of both references: enhancing the personalization of in-store customer service by leveraging customer data more effectively.
  • Expectation of Success: The integration of known CRM data collection methods (Marshall) with established wireless identification and data delivery technologies (Ogasawara) was a predictable path to improving in-store marketing, with a high expectation of success.

Ground 2: Obviousness over Roslak and Ogasawara - Claims 1, 4-16, 21-22, 24-25, 27, 30-36, 39-40, 43-45, 47, and 49 are obvious over Roslak in view of Ogasawara.

• Prior Art Relied Upon: Roslak (Patent 7,010,501), Ogasawara (Patent 6,513,015).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner asserted that Roslak disclosed a personal shopping system using a portable terminal to track customer interactions both online (via an internet portal) and in-store (via bar code scanning). Roslak stored these interactions in a personalized "shopper profile" to tailor product offerings. While Roslak taught that its portable terminal could alert store personnel to a customer's location, it did not explicitly state that the shopper profile itself was provided to staff. Petitioner argued that Ogasawara remedied this by being replete with teachings of providing comprehensive customer profiles directly to employees to enable personalized interactions.
  • Motivation to Combine: A POSITA would be motivated to enhance Roslak’s system by incorporating Ogasawara's explicit teaching of providing the generated "shopper profile" to store personnel. This combination would allow staff, who are alerted to a customer's presence by Roslak’s system, to access the data needed to provide the targeted, personalized service that was the central goal of both prior art references.
  • Expectation of Success: Combining Roslak's data collection and location-alerting system with Ogasawara's established method for delivering customer profiles to staff represented a simple and predictable design choice to achieve a more effective in-store sales system.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations including Marshall or Roslak with Asthana (an IEEE article on personalized shopping), Hudda (an application on wireless shopping devices), and Sorensen (a patent on analyzing shopper behavior). These grounds relied on similar theories of combining a base CRM system with secondary references that taught specific features like location-based cross-selling or detailed path analysis.

4. Key Claim Construction Positions

• Petitioner proposed that the term "engagement plan" should be construed under the broadest reasonable interpretation as "information useful for interacting with a customer." This construction was argued to be consistent with the ’361 patent's specification, which provides diverse examples including suggestions, strategies, customer preferences, cross-selling information, and incentives. Petitioner asserted this broad construction was critical to show that the "individual background profile" of Marshall and the "shopper profile" of Roslak met this claim limitation.

5. Relief Requested

• Petitioner requests institution of an inter partes review of claims 1-50 of the ’361 patent and cancellation of these claims as unpatentable.