PTAB

IPR2024-00208

Hanshow America Inc v. SES imagotag SA

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Key Events
Petition

1. Case Identification

2. Patent Overview

  • Title: Method and System for Managing a Planogram
  • Brief Description: The ’709 patent relates to a method and system for updating a planogram, which contains association data between articles and their locations in a retail area. The invention specifically addresses updating the planogram to reflect the addition of a new shelf label on a retail shelf.

3. Grounds for Unpatentability

Ground 1: Obviousness over Wu - Claims 1-5, 10, 11-15, and 20 are obvious over Wu.

  • Prior Art Relied Upon: Wu (Patent 9,378,513).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Wu discloses all elements of the challenged claims. Wu teaches an "electronic shelf label (ESL) updating method" using a system with a "controlling device" (computer system) and a "deploying device" (reading device). This system updates a "label location table" (the claimed planogram) when a new ESL is added. The method involves the deploying device acquiring the label identifier of the new ESL and an adjacent, already-installed ESL. This constitutes the claimed "sequence of label identifiers." The system then uses the known location of the adjacent ESL to determine the location of the new ESL via extrapolation or interpolation and updates the planogram accordingly.
    • Motivation to Combine (for §103 grounds): Petitioner contended that even if different aspects of Wu's disclosure are considered separate embodiments (e.g., the ESL installing method vs. the ESL updating method), a person of ordinary skill in the art (POSITA) would be motivated to combine them. The methods involve the same system components and are complementary, serving the common purpose of managing ESLs. Combining them would be a simple application of known techniques to achieve predictable results.
    • Expectation of Success: A POSITA would have had a high expectation of success, as the combination involves integrating complementary features disclosed within a single reference to achieve the system's intended and predictable function.

Ground 2: Obviousness over Wu and Chaves - Claims 1-6, 10, 11-16, and 20 are obvious over Wu in combination with Chaves.

  • Prior Art Relied Upon: Wu (’513 patent) and Chaves (Application # 2009/0231135).
  • Core Argument for this Ground:
    • Prior Art Mapping: Wu provided the foundational system for updating a planogram, as detailed in Ground 1. Chaves taught a system for use in a "retail environment" that employs a mobile RFID reader to acquire a sequence of RFID tag IDs from items on a shelf and transmit them to an enterprise system to simplify "planogram compliance." Petitioner asserted this combination addresses the limitations of claims 6 and 16, which recite fitting each electronic shelf label with a "radiofrequency peripheral" and acquiring identifiers via radiofrequency communication.
    • Motivation to Combine: A POSITA would combine Wu's ESL management system with Chaves's RFID technology to improve Wu's system. The motivation would be to realize the well-known benefits of RFID in a retail setting, such as improved efficiency, standardized components, and enhanced reliability for acquiring label identifiers. This constitutes a predictable substitution of one known communication method for another known, advantageous method to perform the same function.
    • Expectation of Success: A POSITA would have a reasonable expectation of success, as implementing RFID technology for tag identification in retail environments was a conventional and well-understood practice.

Ground 3: Obviousness over Wu, Itou, and Auclair - Claims 1-5, 7-9, 10, 11-15, and 17-20 are obvious over Wu in combination with Itou and Auclair.

  • Prior Art Relied Upon: Wu (’513 patent), Itou (Application # 2017/0293959), and Auclair (Application # 2013/0325638).

  • Core Argument for this Ground:

    • Prior Art Mapping: This combination targeted claims requiring a "displacement measuring member" and determination of displacement or characteristic dimensions (claims 7-9 and 17-19). While Wu provided the base system, Itou taught an ESL management system that uses a portable terminal with a camera to recognize ESLs and products from an image and "calculate[] the distance between" them. Auclair disclosed a method of updating a planogram using quantitative geometrical information, such as the "position of the product on this shelf and the length...the product occupies." Together, Itou and Auclair taught using a reading device to make quantitative measurements of distance and dimension to update a planogram.
    • Motivation to Combine: A POSITA would be motivated to modify Wu's system with the teachings of Itou and Auclair to improve the accuracy of locating new ESLs. Wu's method of mathematical interpolation would be more precise and furnish more useful data for planogram management by using the quantitative, real-world measurements taught by Itou and Auclair, rather than just ordinal positioning. This modification would be a straightforward integration of known measurement techniques (camera-based distance calculation) into Wu’s handheld reading device (disclosed as a smartphone or tablet PC).
    • Expectation of Success: A POSITA would have a high expectation of success in integrating these features, as modern smartphones (as disclosed by Wu) were known to have cameras and processing capabilities sufficient to perform the distance and dimension measurements taught by Itou and Auclair.

  • Additional Grounds: Petitioner asserted an additional obviousness challenge (Ground 4) against claims 1-5, 10, 11-15, and 20 based on Wu in combination with Fujiwara (Japan Patent Application Publication No. 2008-77131A), which also taught a system using IC tags and a reader to collectively read and transmit shelf label IDs to a store server.

4. Arguments Regarding Discretionary Denial

  • §314(a) (Fintiv): Petitioner argued against discretionary denial under Fintiv, stating that the parallel district court litigation is in its early stages, with a Markman hearing not scheduled until August 2024. Petitioner also stipulated that it would not pursue in district court any ground raised or that could have been reasonably raised in the IPR, should the petition be instituted.
  • §325(d): Petitioner contended that denial under §325(d) is inappropriate because the primary reference, Wu, while identified in an IDS during prosecution, was never substantively discussed, applied against the claims, or otherwise evaluated by the Examiner.

5. Relief Requested

  • Petitioner requests institution of an IPR and cancellation of claims 1-20 of the ’709 patent as unpatentable.