ShopKick Inc v. NoVitaz

1. Case Identification

• Case #: IPR2015-00278
• Patent #: 7,962,361
• Filed: November 19, 2014
• Petitioner(s): shopkick, Inc.
• Patent Owner(s): Novitaz
• Challenged Claims: 51-73

2. Patent Overview

• Title: Customer Relationship Management System for Physical Locations
• Brief Description: The ’361 patent discloses methods for in-store marketing that integrate a customer's online activities with their physical store presence. The system identifies a customer in-store via a wireless device, retrieves their profile including online and offline history, and generates an "engagement plan" for use by sales staff to personalize the interaction.

3. Grounds for Unpatentability

Ground 1: Obviousness over Marshall and Ogasawara - Claims 51-53, 56-59, 61-73 are obvious over Marshall in view of Ogasawara.

• Prior Art Relied Upon: Marshall (Application # 2002/0116266) and Ogasawara (Patent 6,513,015).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Marshall taught the core method of independent claim 51: tracking both online ("connections to internet websites") and offline ("visits to stores") customer activities to create an "individual background profile." This profile is used to assign "preferred" status and target sales in physical locations. Marshall also disclosed wirelessly detecting a customer in-store using a handheld device that communicates with sensors to track location. Petitioner contended that Ogasawara taught the missing details, disclosing an electronic shopping system that uses wireless identification (e.g., RFID) to recognize customers upon entry, access their detailed profile (including VIP status and transaction history), and provide this information to sales staff to "provide appropriate shopping advice." Ogasawara’s detailed implementation of in-store customer recognition and profile delivery directly complemented Marshall's broader system.
  • Motivation to Combine: A POSITA would combine Marshall and Ogasawara to enhance the "click and mortar" shopping experience, a common goal in the art. Petitioner argued that Ogasawara’s method of using wireless ID to provide detailed customer profiles to staff was a natural and predictable solution to implement Marshall's goal of enabling store personnel to "easily and readily identify preferred customers" and provide a "very high level of customer service."
  • Expectation of Success: A POSITA would have a reasonable expectation of success because combining the references involved applying known retail technologies (CRM, wireless identification) for their intended and well-understood purposes to improve in-store personalization.

Ground 2: Obviousness over Roslak and Ogasawara - Claims 51-54, 56, 58-65, 67-70 are obvious over Roslak in view of Ogasawara.

• Prior Art Relied Upon: Roslak (Patent 7,010,501) and Ogasawara (Patent 6,513,015).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Roslak, like Marshall, taught a system that bridged online and in-store shopping. Roslak disclosed a personal shopping system using a portable terminal device that could be used at home to create shopping lists via an "Internet web site" and in-store to interact with products. The device included a "position-sensing module" to track the customer's location. Roslak compiled web and in-store interactions into a "shopper profile" to construct a customer "inference engine" that predicts preferences. Petitioner argued that while Roslak taught creating the profile, Ogasawara provided the explicit teaching of providing such profiles to sales staff to identify VIP customers and personalize service, thus teaching the final limitations of the claims.
  • Motivation to Combine: The motivation was to leverage the detailed customer data collected by Roslak's system to improve employee-customer interactions. A POSITA would be motivated to combine Roslak's data-gathering and preference-prediction engine with Ogasawara's system for delivering actionable intelligence to sales staff. This would fulfill the shared objective of using customer data to personalize and enhance the physical retail experience.
  • Expectation of Success: The combination was a predictable integration of a data collection system (Roslak) with a data delivery and utilization system (Ogasawara), both operating in the same field of retail technology with a common goal.

Ground 3: Obviousness over Roslak, Ogasawara, and Marshall - Claims 52, 54, 57, 60, 66, 71-72 are obvious over Roslak in view of Ogasawara and Marshall.

• Prior Art Relied Upon: Roslak (Patent 7,010,501), Ogasawara (Patent 6,513,015), and Marshall (Application # 2002/0116266).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground primarily addressed dependent claims and used Marshall as a secondary reference to supplement the combination of Roslak and Ogasawara. For example, for claim 52 (determining a graphical representation of the customer's location), Petitioner argued that both Marshall and Roslak taught tracking a customer's location via sensors and a position-sensing module, respectively. Combining these teachings made it obvious that the store would have a representation of the customer's location. The combination of all three references was argued to provide a comprehensive teaching of every limitation in the challenged dependent claims.
  • Motivation to Combine: A POSITA would look to the collective teachings of analogous art to solve known problems. Petitioner argued it would have been an obvious design choice to combine Marshall's methods for incentivizing in-store visits and identifying preferred customers with Roslak's portable terminal technology and Ogasawara's staff-facing information delivery system to create a more robust and effective personalized shopping system.
• Additional Grounds: Petitioner asserted additional obviousness challenges against dependent claims 55, 57, and 71 based on combinations including Asthana (a 1994 article on a wireless personalized shopping assistant) and Sorensen (Patent 7,006,982), but relied on similar theories of combining known elements from analogous art to achieve predictable results.

4. Key Claim Construction Positions

• Petitioner argued that the term "engagement plan," which was not explicitly defined in the ’361 patent, should be construed under the broadest reasonable interpretation as "information useful for interacting with a customer." This construction was based on the specification's examples, which included suggestions, customer preferences, incentives, and status levels. Petitioner asserted this broad construction was necessary to encompass the varied types of information disclosed and was consistent with the patent owner's positions in related litigation.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 51-73 of Patent 7,962,361 as unpatentable under 35 U.S.C. §103.