HEB Seeks Patent Trial Delay Due To Virus, PTAB, Weather

By Dave Simpson
Law360 is providing free access to its coronavirus coverage to make sure all members of the legal community have accurate information in this time of uncertainty and change. Use the form below to sign up for any of our weekly newsletters. Signing up for any of our section newsletters will opt you in to the weekly Coronavirus briefing.

Sign up for our Trials newsletter

You must correct or enter the following before you can sign up:

Select more newsletters to receive for free [+] Show less [-]

Thank You!

Law360 (March 4, 2021, 10:48 PM EST) -- Grocery store chain HEB asked a Texas federal judge to postpone an in-person jury trial in a patent fight over scan-and-pay technology, citing the COVID-19 pandemic, the state's recent weather crisis and a looming Patent Trial and Appeal Board decision.

HEB Grocery Co. LP asked U.S. District Judge Alan Albright on Wednesday to move the trial from April 19 to May 19, noting that the PTAB is scheduled to issue a decision on one of the two patents asserted by Digital Retail Apps Inc. and is likely to find it invalid, which would streamline the case, cutting down 17 of the 19 claims in the case.

Further, it points to the increased pace of COVID-19 vaccinations, which is expected to continue through April.

"A short delay to the trial schedule past that April inflection point would allow time for significantly more doses to be in the arms of court staff, potential jurors, and the parties' personnel," HEB said.

Finally, the Texas grocery giant pointed to last month's winter storm, which upended the Lone Star State.

On Feb. 14, as the storm struck the state, electricity demand soared, resulting in rolling blackouts. At the height of the outages, more than 4 million people were left without power.

"A modest postponement would provide time for HEB to bounce back toward normal business operations, as they have recently been busy providing major essential services to Texans and their communities despite the burdens of doing so through COVID-19 and Texas's recent extreme weather crisis," it said.

In January, Judge Albright agreed to delay the trial from February to April.

Digital Retail Apps is behind an app called SelfPay, which is marketed as a go-between for customers and point-of-sale systems that are used by retailers. In 2019, Digital Retail Apps filed suit, alleging that an HEB vice president spotted a demonstration of SelfPay's technology at a retail technology conference and requested a demonstration of its features to build a competing product.

Just this week, Judge Albright completed an in-person trial, during which the jury delivered one of the largest patent infringement wins in history to VLSI Technology LLC, finding that Intel infringed all contested claims in two computer chip patents.

The jury's $2.175 billion verdict arrived the day after closing arguments wrapped, with the jury finding that Intel infringed all of the contested claims in both patents.

On Thursday, HEB acknowledged the fact of this trial.

"HEB is well aware that the court was recently able to conduct trial despite the pandemic, and that Governor Abbott has ordered a significant reopening of businesses in Texas," it said. "This motion is not meant to be inconsistent with those efforts, but rather to dovetail with them, since the brief postponement HEB is requesting should help clarify the benefits — and any modified precautions — discovered as a result of the reopening."

The patents-in-suit are U.S. Patent Nos. 9,262,781 and 9,934,506.

Digital Retail Apps is represented by Todd P. Blakely, Robert R. Brunelli, Matthew C. Holohan and Tara K. Hawkes of Sheridan Ross PC.

HEB is represented by Joseph P. Reid, Thomas N. Millikan, Skyler M. Howton and Andrew N. Klein of Perkins Coie LLP.

The case is Digital Retail Apps Inc. v. H-E-B LP, case number 6:19-cv-00167, in the U.S. District Court for the Western District of Texas.

--Additional reporting by Ryan Davis. Editing by Jay Jackson Jr.

For a reprint of this article, please contact reprints@law360.com.

Hello! I'm Law360's automated support bot.

How can I help you today?

For example, you can type:
  • I forgot my password
  • I took a free trial but didn't get a verification email
  • How do I sign up for a newsletter?
Ask a question!