Hanshow America Inc v. SES imagotag SA

1. Case Identification

• Case #: IPR2024-00189
• Patent #: 10,674,340
• Filed: November 14, 2023
• Petitioner(s): Hanshow America Inc., Hanshow Technology Co., Ltd.
• Patent Owner(s): SES-imagotag Inc.
• Challenged Claims: 1-9

2. Patent Overview

• Title: Method and System for Communicating Spatially Localized Information to a Mobile Terminal
• Brief Description: The ’340 patent discloses a method and system for providing consumers with spatially localized information within a sales area. The system uses a central server with a planogram that associates unique identifiers of radio-frequency peripherals (e.g., electronic shelf labels) with specific vertical and horizontal locations, enabling a mobile terminal to determine its position and receive relevant information via near-field communication.

3. Grounds for Unpatentability

Ground 1: Obviousness over Fujiwara - Claims 1-9 are obvious over Fujiwara.

• Prior Art Relied Upon: Fujiwara (Japan Patent Application Publication No. 2008-77131A).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Fujiwara discloses all elements of the challenged claims. Fujiwara describes a collaborative system with a store server (central server), mobile terminal, and electronic shelf labels (radio-frequency peripherals) containing IC tags. The server maintains a database (planogram) linking shelf label IDs (unique identifiers) to product and location information (vertical and horizontal positions on a shelf). A mobile terminal reads a tag, sends the ID to the server, and receives location-specific information. Petitioner contended that the only notable difference is Fujiwara’s use of a generic IC tag system with a communication range of "several to several tens of centimeters," whereas the claims require near-field communication with a range of less than twenty centimeters.
  • Motivation to Modify: Petitioner asserted a person of ordinary skill in the art (POSITA) would be motivated to implement Fujiwara’s IC tags using well-known, standardized Near Field Communication (NFC) technology. This modification would improve the precision of product locating, enhance security, and reduce interference, which were known benefits of NFC at the time.
  • Expectation of Success: A POSITA would have a high expectation of success in substituting a standard NFC protocol for Fujiwara's disclosed communication method, as it was a mere application of a known technology to achieve predictable results.

Ground 2: Obviousness over Fujiwara in view of Arntzen - Claims 1-9 are obvious over Fujiwara in combination with Arntzen.

• Prior Art Relied Upon: Fujiwara (Japan Patent Application Publication No. 2008-77131A) and Arntzen (WO 2010/082835A1).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Arntzen explicitly teaches the modifications a POSITA would have found obvious to make to Fujiwara. Arntzen discloses a system of electronic shelf labels that use NFC for short-range communication (<4 cm) with handheld units (mobile terminals) and radio frequency (RF) communication (e.g., ZigBee) for communication with a central server.
  • Motivation to Combine: A POSITA would combine Arntzen’s teachings with Fujiwara's system to gain the express advantages disclosed by Arntzen. Arntzen teaches that NFC provides inherent security and user control for short-range interactions, while RF communication for the back-end system offers cost reduction, easy installation, and centralized control compared to infrared systems. This provides a clear reason to implement Arntzen’s NFC and RF technologies into Fujiwara's analogous system.
  • Expectation of Success: The combination involved implementing known communication standards into Fujiwara’s system architecture to achieve the predictable benefits explicitly taught by Arntzen.

Ground 3: Obviousness over Bandy in view of Fowler - Claims 1-5 and 8-9 are obvious over Bandy in combination with Fowler.

• Prior Art Relied Upon: Bandy (Application # 2007/0024436A1) and Fowler (Application # 2008/0231228A1).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner asserted that Bandy teaches a foundational system where a mobile terminal reads an RFID tag on an item, sends the tag’s unique identifier to a merchant's computer system (central server), and receives item-related information. Bandy's disclosure of location data is general. Fowler supplements this by teaching a "media enhanced shopping cart" system that uses a detailed planogram associating anchor RFID tags with specific, known vertical and horizontal locations on store shelves. Fowler’s system uses these tags to determine the cart's location and provide location-based advertising and directions.
  • Motivation to Combine: A POSITA would be motivated to enhance Bandy’s basic information retrieval system with Fowler’s more sophisticated planogram and location-determination capabilities. This combination would directly serve Bandy’s stated objective of "improving an interface between customers and products" by providing more precise and useful location data, such as routing information to a product, which Fowler explicitly teaches.
  • Expectation of Success: A POSITA would have a high expectation of success, as the combination involves integrating a known, superior location-tracking subsystem (from Fowler) into a compatible base system (from Bandy) to predictably enhance its functionality.

• Additional Grounds: Petitioner asserted that claims 1-5 and 8-9 are also obvious over Bandy, Fowler, and Arntzen, where Arntzen provides further express motivation for implementing the NFC technology that a POSITA would have already found obvious to use in the Bandy/Fowler system.

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under Fintiv, noting that the parallel district court litigation is in its early stages, the court has a record of granting stays pending IPR, and Petitioner stipulated not to pursue the same invalidity grounds in district court if the IPR is instituted.
• Petitioner also argued that denial under 35 U.S.C. §325(d) is unwarranted. Although Fujiwara was cited during prosecution, the Examiner only initialed it on an Information Disclosure Statement (IDS) and did not substantively apply it against the claims or provide any analysis, meaning the art and arguments in the petition were not previously considered.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-9 of the ’340 patent as unpatentable.