Lightspeed Commerce Inc v. CloudofChange LLC

1. Case Identification

• Case #: IPR2022-01143
• Patent #: 11,226,793
• Filed: June 13, 2022
• Petitioner(s): Lightspeed Commerce Inc.
• Patent Owner(s): CloudOfChange, LLC
• Challenged Claims: 1-4, 7-28, and 31-44

2. Patent Overview

• Title: Web-Based Point of Sale Builder System
• Brief Description: The ’793 patent discloses a method and system for building and modifying point-of-sale (POS) terminal screens. The invention purports to improve upon prior manual coding methods by allowing users to access screen design software on a networked server via the Internet to create or modify POS screens, which are then configured based on transaction data received from the POS terminals.

3. Grounds for Unpatentability

Ground 1: Obviousness over Woycik - Claims 1-4, 7-28, and 31-44 are obvious over Woycik.

• Prior Art Relied Upon: Woycik (Application # 2007/0265935).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Woycik, which discloses a web-based administrative tool for building and editing user interfaces for self-service POS kiosks, teaches all limitations of the challenged claims. Woycik's central server communicates with POS terminals over the Internet and receives information from an administrative tool (a POS builder interface) to create and modify interactive menu screens. This tool allows an administrator to edit items, menus, and display buttons (display interfaces). Further, Woycik’s server receives transaction information from the POS terminals (e.g., customer order history, item selections, loyalty information) and uses this "further information" to dynamically configure the POS screens, such as by allowing returning customers to quickly reorder past items. Petitioner contended the various types of information required by the claims, such as item/customer updates, tax, and promotion information, are all disclosed as being used by Woycik's system.
  • Motivation to Combine (for §103 grounds): As a single-reference ground, the argument was that Woycik alone discloses all claimed elements, and any minor variations would have been obvious implementations to a Person of Ordinary Skill in the Art (POSITA).
  • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success in implementing the claimed system based on Woycik’s detailed disclosure of a functionally identical web-based POS builder system.

Ground 2: Obviousness over Tengler - Claims 1-4, 7-28, and 31-44 are obvious over Tengler.

• Prior Art Relied Upon: Tengler (Application # 2005/0049921).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Tengler discloses a restaurant order processing system with a "user interface designer" that functions as a POS builder. This designer allows managers to remotely edit the user interface of register and self-service applications. Tengler's server receives information from this builder interface to configure POS terminals and also receives "further information" from the terminals regarding transactions, such as items ordered, customer images, and order history. The system then modifies POS screens based on this information, for example, by adding items to an order or displaying a customer's photo with their order details. Petitioner argued that Tengler discloses the use of all categories of information recited in the claims, including item add/update, discount, promotion, tax, employee, and customer information.
  • Motivation to Combine (for §103 grounds): While primarily a single-reference ground, Petitioner argued a POSITA would be motivated to implement Tengler's system using the Internet to connect a central server to multiple restaurant locations. This would facilitate Tengler’s disclosed capability for "enterprise management of multiple restaurants" by creating a centralized point of control for updating menus and aggregating sales data, which was an efficient and well-understood practice.
  • Expectation of Success (for §103 grounds): A POSITA would have expected success in this implementation, as using the Internet for remote management of distributed systems was routine at the time of the invention.

4. Key Claim Construction Positions

• "wherein the further information... comprises one or more of...": Petitioner argued this limitation is met if any of the enumerated information types (e.g., customer add/update, loyalty point information) is found in either the "information used for creating or modifying" the screens or the "further information regarding" transactions, or a combination of both.
• "creating or modifying functionality of the one or POS terminals" (claim 44): Petitioner proposed this phrase is broader than simply creating/modifying screens. It asserted a POSITA would understand that modifying POS screens and buttons is a subset of modifying terminal functionality, as it directly changes how the terminal operates and responds to user input.

5. Arguments Regarding Discretionary Denial

• §314(a) (Fintiv Factors): Petitioner argued against discretionary denial under Fintiv, stating that the parallel district court litigation was in its infancy. The ’793 patent had issued only five months prior to the petition filing, discovery had not commenced, and the trial was tentatively scheduled for late 2023. Petitioner also noted that the IPR challenges significantly more claims (40) than are asserted in the litigation (9), promoting system efficiency. To mitigate overlap, Petitioner stipulated it would not pursue in court any invalidity grounds raised or reasonably available in the IPR.
• §325(d) (Same or Substantially the Same Art or Arguments): Petitioner contended that denial under §325(d) was improper. Although Woycik and Tengler were listed on the face of the ’793 patent, Petitioner asserted they were not meaningfully considered during prosecution. Woycik was allegedly not applied in any rejection, and Tengler was cited only in a limited fashion against different, non-challenged claims. Therefore, the petition presented new arguments on non-cumulative art that the Examiner had not previously evaluated.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-4, 7-28, and 31-44 of the ’793 patent as unpatentable.