trolley
13 November 2013Patents

Wal-Mart latest company accused in shopping trolley patent battle

US-owned supermarket chain Wal-Mart has become the latest company facing a patent infringement lawsuit over a popular method for emailing online shoppers.

The global retailer has been accused of infringing a patent which may help companies contact shoppers when they have abandoned or delayed purchasing items in their online shopping cart, a virtual trolley where items are stored.

The complaint centres on US patent number 5,603,054, which is owned by Delaware-based  UbiComm.

The patent, a “method for triggering selected machine event when the triggering properties of the system are met and the triggering conditions of an identified user are perceived,” was originally filed by Xerox Corporation in 1994 and issued in 1997.

It was assigned to UbiComm, believed to be a non-practising entity, earlier this year, which has since filed more than 30 lawsuits asserting it against companies including eBay and Victoria’s Secret.

“This type of activity is a hot topic in the US and there is proposed legislation to change litigation in a manner which is unfavourable to the patent troll [a pejorative term for non-practising entity] method,” said James Kulbaski, partner at Oblon Spivak McClelland Maier & Neustadt LLP.

The complaint, filed at the US District Court for the District of Delaware, accuses the supermarket of infringement throughout the US via several of its websites.

“Without license or authorisation, Wal-Mart has directly infringed and continues to directly infringe one or more claims of the patent in this judicial district and elsewhere in the US at least by making and/or using one or more websites, including but not limited to, www.walmart.com,” it says.

Shopping cart abandonment emails act as a way of companies attempting to re-engage prospective customers.

The complaint adds: “Wal-Mart sends such reminder emails to online shoppers on its website(s) who delay purchasing items in their shopping carts or who abandon their shopping carts. Such acts constitute infringement ….

“Because of Wal-Mart’s infringement of the ‘054 Patent, UbiComm has suffered damages and will continue to suffer damages in the future.”

UbiComm is seeking damages and legal fees and Kulbaski said that the accused companies may be more inclined to pay rather than challenge the patent’s validity.

“It would be typical in these types of situations for there to be a validity challenge filed at the US Patent and Trademark Office (USPTO) as an attempt to stave off litigation,” Kulbaski said, “however no challenge has been made as yet.

“It could be that the pay-out cost is reasonably low that it’s not worth taking on a challenge at the USPTO and it would rather pay the fine and get out of it. There is also no guarantee the office will find to be invalid.”

Wal-Mart, which was founded in 1962, has more than 8,000 stores worldwide and more than 3,000 in the US.

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