Staples Resolve Patent Suit with Pinpoint

Case Filed: Feb 21, 2012

Case Closed: Jan 22, 2014

Court: Illinois Northern District Court

Judge: Andrea R. Wood

Case Summary:

A patent infringement case was filed by Pinpoint against Staples, a large office supply chain store alleging that their patents covering personalization via the Internet, mobile content delivery, electronic billboards and retail kiosks were infringed. The patents involved in this suit were:

•    US5754938 entitled Pseudonymous server for system for customized electronic identification of desirable objects, issued on May 19, 1998
•       US7853600 entitled System and method for providing access to video programs and other data using customer profiles, issued on Dec 14, 2010
•      US8056100 entitled System and method for providing access to data using customer profiles, issued on Nov 08, 2011

The patents are scheduled to expire[i] by Nov 29, 2014 and are currently assigned[ii] to Pinpoint (source: MaxVal’s Assignment Database and face page).

As per the complaint, Staples owns and operates the website www.staples.com where customers can create user accounts with a feature called “Favorites List.” Using this feature, information can be collected on individual customers to provide deals that suit them and emails are sent to its customers including deals Staples selects for those specific customers.  Pinpoint alleged that by operating the website www.staples.com, which includes features for creating customer profiles and emailing Staples-selected deals to specific customers, the defendant infringes the ‘938, ‘600 and ‘100 patents. As is to be expected, the lawsuit sought damages plus interest for infringement.

Pinpoint is a privately held Texas-based company that owns patented and patent pending technology solutions worldwide, relating to profiling and targeting, customer relationship management, personalization, data mining, user data privacy, data pre-fetching, location-aware wireless devices and other solutions relevant to electronic content delivery.

In Aug 2013, an in-person settlement conference was held. However, the parties were unable to reach agreement. Later, in Jan 2014, a stipulation of dismissal was filed referring all matters relating to the case as concluded. Considering the parties’ stipulation, the Court ordered each claim be dismissed with prejudice with no charges imposed.

See 1:12-cv-01198 for more details. To get alerts on cases filed/closed, subscribe to our Litigation Alerts.

* Expected expiration date using Patent Term Estimator, use our free tool or download our free Android app on Google Play Store.  

---

[i] Expected expiration date. Patent Term Estimator is a free web-based tool that automatically calculates patent terms and expiration dates for U.S. utility patents.

[ii] MaxVal offers Patent Assignment Alert service where subscribers receive email alerts when assignments relating to target applications, patents or entities of interest are recorded.