Hanshow America Inc v. SES imagotag GmbH

1. Case Identification

• Case #: IPR2024-00188
• Patent #: 11,405,669
• Filed: November 13, 2023
• Petitioner(s): Hanshow America Inc. and Hanshow Technology Co., Ltd.
• Patent Owner(s): SES-Imagotag GMBH
• Challenged Claims: 1-15

2. Patent Overview

• Title: Video Playback System and Use of the System
• Brief Description: The ’669 patent discloses a video playback system for synchronizing video across multiple playback devices, such as those used on retail shelf rails. The system enables devices to communicate playback progress data with each other to maintain synchronization and to display product information via virtual electronic shelf labels that overlap with the video content.

3. Grounds for Unpatentability

Ground 1: Claims 1-15 are obvious over Swafford in view of Masumoto.

• Prior Art Relied Upon: Swafford (Application # 2016/0134930) and Masumoto (Application # 2017/0134690).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Swafford discloses a merchandising system with continuous electronic displays embedded along product shelves capable of showing streaming video and product information. While Swafford teaches displaying video across multiple screens, it does not explicitly disclose the claimed method of inter-device communication for synchronization. Masumoto was argued to supply this missing element, as it describes a multi-display apparatus where individual displays communicate directly with each other, transmitting playback progress data (e.g., frame numbers) to detect and correct synchronization errors. The combination of Swafford’s retail display environment with Masumoto’s synchronization logic allegedly renders the limitations of independent claim 1 obvious.
  • Motivation to Combine: A POSITA would combine Swafford and Masumoto because they share the common goal of synchronizing video across multiple displays. Petitioner asserted that a POSITA would look to Masumoto's specific inter-device communication method as a known and effective solution to implement the "simultaneously output" functionality described in Swafford, particularly to ensure robust synchronization in a system of independent shelf-edge displays.
  • Expectation of Success: Petitioner contended that success was expected due to the predictable nature of implementing Masumoto’s synchronization software logic on Swafford’s hardware. Both systems utilize conventional display technology (e.g., LCDs), making the integration of Masumoto's frame-comparison technique into Swafford’s system a routine design choice.

Ground 2: Claims 1-15 are obvious over Masumoto, Kipp, and Takashi.

• Prior Art Relied Upon: Masumoto (Application # 2017/0134690), Kipp (Application # 2017/0171577A1), and Takashi (JP Application # 2011-76222A).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground uses Masumoto as the base system teaching synchronized playback across multiple displays via inter-device communication. Kipp was argued to add the concept of synchronizing segmented video streams, including advertisements, across playback devices that operate independently of a central server's clock. This addresses the need for robust synchronization in commercial environments like retail stores. Takashi was argued to teach the specific application claimed: an electronic shelf-edge display system where a smaller display portion shows text-based product and price information (a virtual electronic shelf label) while a larger, integrated display portion shows related images or commercial video.
  • Motivation to Combine: Petitioner argued a POSITA would be motivated to combine these references to create a comprehensive, synchronized in-store advertising system. A POSITA would start with Masumoto's core synchronization technology, improve its robustness for a commercial setting using Kipp's teachings on independent device synchronization and ad streaming, and then apply this combined system to the specific retail context taught by Takashi, which integrates product data and video on a single shelf-edge unit. This combination addresses the well-recognized need for dynamic, synchronized video advertising at the point of sale.
  • Expectation of Success: Success would be expected because the combination represents the application of known technologies for their intended purposes. Combining Masumoto's synchronization with Kipp's ad-streaming framework and Takashi's retail display format was presented as a predictable integration of complementary technologies to achieve a common commercial goal.

4. Arguments Regarding Discretionary Denial

• §314(a) (Fintiv): Petitioner argued against discretionary denial under Fintiv, stating that the parallel district court litigation is in a very early stage, the presiding district has a record of granting stays pending IPR, and Petitioner stipulated it would not pursue the same grounds in district court if the IPR is instituted.
• §325(d): Petitioner argued denial under §325(d) is unwarranted because none of the prior art references asserted in the petition were substantively considered or applied by the Examiner during the original prosecution of the ’669 patent.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-15 of the ’669 patent as unpatentable.