Best Buy Co Inc v. Driessen James

1. Case Identification

• Case #: IPR2021-00198
• Patent #: 10,304,052
• Filed: November 12, 2020
• Petitioner(s): Best Buy Co., Inc., Target Corporation, and Walmart, Inc.
• Patent Owner(s): James L. Driessen
• Challenged Claims: 1-20

2. Patent Overview

• Title: Retail Point of Sale (RPOS) Apparatus for Internet Merchandising
• Brief Description: The ’052 patent discloses systems and methods for selling access to online products via physical retail stores. A consumer purchases a physical access card or voucher at a retail point-of-sale, which is associated with a preselected and itemized online product (either downloadable media or physical merchandise), and then uses information on the card to access that specific product online.

3. Grounds for Unpatentability

Ground 1: Claims 1-20 are obvious over NetPack in view of Boyle.

• Prior Art Relied Upon: NetPack (archived website pages from October 1999) and Boyle (WO 2000/17796).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that NetPack alone renders the claims obvious. NetPack described a system where cards purchased in a retail store enabled the download of a preselected product, such as a software application (“Chat Pack”) or an e-book. These cards, part of a "Special Application Package (SAP)," were designed to allow Internet products to be purchased in a retail environment and downloaded later. Petitioner contended this system met the core limitations of independent claims 1, 14, and 19, including providing a physical access card at a retail establishment for a preselected, itemized downloadable product. Boyle was introduced to provide additional implementation details for a highly similar retail-sold webcard system.
  • Motivation to Combine: Petitioner asserted a person of ordinary skill in the art (POSA) would combine NetPack and Boyle for several reasons. First, both references addressed the same problem—selling online access at retail locations—and had complementary teachings. Second, NetPack lacked certain implementation details (e.g., security mechanisms for access codes) that were explicitly taught by Boyle, such as using a scratch-off field to conceal an account number. A POSA implementing NetPack's system would have looked to a reference like Boyle to supply these known and beneficial features.
  • Expectation of Success: A POSA would have had a reasonable expectation of success in combining the teachings because the underlying e-commerce technologies were well-known and the systems described in both references were highly similar.

Ground 2: Claims 1-20 are obvious over Tori Amos.

• Prior Art Relied Upon: Tori Amos (a press release published by Business Wire on April 9, 1998).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that the Tori Amos reference, a single piece of prior art, disclosed all elements of the challenged claims. The reference described a promotion where consumers who purchased a specific Tori Amos CD at a Tower Records retail store received a collectible postcard at the time of purchase. This postcard contained a "unique access code" and instructions for downloading a preselected bonus music track ("Merman") from a specific website. Petitioner contended this directly maps to the claimed system: the postcard is the "physical access CARD," the purchase occurs at a "retail point of sale establishment," and the bonus track is the "preselected and itemized...downloadable media material object product." The website provided on the card was argued to be the "Internet transaction location."
  • Key Aspects: For dependent claims reciting features like a scratch-off code, bar code, or magnetic strip, Petitioner argued these were obvious modifications. A POSA would have understood that a "unique access code" could be implemented using any number of well-known, conventional techniques to convey or secure the code, representing simple design choices with predictable results.

• Additional Grounds: Petitioner asserted additional obviousness challenges. Ground 2 argued claims 8 and 10 are obvious over NetPack in view of Vaidya, a 1995 conference paper. Vaidya was cited for its teachings on common access card features, such as the use of paper or plastic substrates, which Petitioner argued a POSA would have been motivated to apply to NetPack's system as a simple design choice. Ground 4 argued claims 5-6 and 9-11 are obvious over Tori Amos in view of Vaidya. This ground asserted a POSA would have been motivated to add the security features taught by Vaidya (e.g., bar codes, magnetic stripes, smart cards) to the basic postcard system of Tori Amos to enhance security.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny the petition under 35 U.S.C. §314(a). The petition was asserted to be the first challenge to the ’052 patent. It presented prior art and arguments—specifically, art teaching cards for preselected products—that were not before the examiner during prosecution, overcoming the primary distinction the Patent Owner made over the previously cited art. Furthermore, Petitioner stated that the parallel district court litigation was in its infancy, with no scheduling order, discovery, or claim construction having occurred, meaning an IPR would be an efficient alternative.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-20 of Patent 10,304,052 as unpatentable.