US 10121133

US Patent 10,121,133 B2 — Summary

Bibliographic data (verified against Google Patents, FreePatentsOnline, USPTO/PTACTS documents, and RPX Insight)

Sources: https://patents.google.com/patent/US10121133/en ; https://www.freepatentsonline.com/10121133.html ; https://insight.rpxcorp.com/patent/[US10121133B2](/patent/US10121133B2)

Uncertainty note: The 2011 assignment instrument lists many additional assignors (e.g., Kristin Rachelle Bowlin Williams, Catherine Davis Garner, Brian Scott Barnett, Kier A. O'Neil, etc.) who may have been co-inventors, but the patent front page as displayed on Google Patents names only the five inventors above. I could not independently verify whether the front page omits additional inventors.

Abstract (verbatim)

"A method for purchasing an item using a mobile device is provided. The method includes but is not limited to inputting identification information into the mobile device which identifies the item for purchase and generating an order for the item identified by the identification information. The method also includes but is not limited to displaying on a display of the mobile device an optical machine-readable representation of the order."

Claims structure

The patent has 6 claims (per USPTO/PTACTS bibliographic data and the IPR petition, which challenged "claims 1-6"). Only claim 1 is independent; claims 2–6 are dependent. I have full authoritative text for claim 1 only; I could not retrieve the verbatim text of dependent claims 2–6 from the sources available, so I flag that as a gap.

Plain-language overview of independent claim 1

Claim 1 is a server-centric method for a mobile self-checkout/point-of-sale flow. In plain terms, it requires:

1. Server runs two applications — a first application (e.g., a session/terminal-sales framework with a state container) and a second application (a virtual terminal sales application).
2. Receive item scans — the server receives identification information (e.g., barcode data) from the user's mobile device for each item to be purchased, entered through the mobile app's user interface.
3. Build an order — as each item's identification info arrives, the server creates an order containing the item information (looked up from the identification info).
4. Generate a unique identifier — the server dynamically generates a unique ID (e.g., an order number) representing the order.
5. Store the order state — the order plus the unique ID is stored in a state container within the first application.
6. Import/export via state container — the second application imports the order from the state container and transmits the item info back to the mobile device inside a virtual shopping cart. That cart (i) represents the server-side order, (ii) is accessible on the phone, and (iii) is associated with an optical machine-readable representation (barcode/QR) that the mobile device dynamically generates encoding the unique ID. Cart contents expire after a predefined period.
7. Point-of-sale scan — an optical scanner at a POS terminal scans the code shown on the phone and decodes the unique identifier.
8. Retrieve the order at the POS — the POS sends the unique ID to the server; the second application re-imports the order from the state container using that ID; the server returns the order to the POS terminal.
9. Complete and receipt — the POS terminal completes the transaction based on the retrieved order and generates a receipt acknowledging completion.

In essence: the phone is used to scan items and build a server-held order encoded into a barcode; the barcode is scanned at a checkout terminal, which pulls the pre-built order from the server's state container to complete payment — avoiding re-scanning every item at the register. The claim emphasizes the "transaction transfer" architecture (importing/exporting transaction state via a state container and unique identifier).

Litigation / CAFC 2026 docket search

• No CAFC docket for this patent was found in my searches. I searched for Federal Circuit appeals (2025–2026) tied to the patent number or to the related district-court case and found no appeal entries for US 10,121,133. I cannot confirm any pending or decided Federal Circuit proceeding as of the current date; this should be treated as an open question if CAFC activity matters to your analysis.
• Related district court litigation: Sam's West Inc. et al. v. BJ's Wholesale Club Holdings, Inc., No. 6:22-cv-00587 (M.D. Fla., filed Mar. 22, 2022), asserting the '133 patent (among others: '187, '188, '435) against BJ's "Express Pay" mobile app. The case was stayed pending IPR; a June 2024 filing discusses lifting the stay. (https://www.courtlistener.com/docket/63179289/sams-west-inc-v-bjs-wholesale-club-holdings-inc/)
• Related PTAB proceeding: IPR2022-01471, BJ's Wholesale Club Holdings, Inc. v. Walmart Apollo, LLC — petition challenging claims 1–6 as obvious (Watanabe + Giordano; O'Hagan + Watanabe + Giordano; with Ogilvy for claim 6). The PTAB denied institution on April 12, 2023 (no reasonable likelihood of prevailing), so the claims were not reviewed on the merits. (https://www.docketalarm.com/cases/PTAB/IPR2022-01471/.../Institution_Decision__Deny.pdf)

Bottom line: US 10,121,133 B2 is Walmart's mobile self-checkout patent (filed Nov. 16, 2010; issued Nov. 6, 2018; active). It has six claims, one independent (claim 1), covering a server-side method where a phone-scanned order is stored in a server state container, encoded into a machine-readable code on the phone, and then retrieved by a POS terminal scanning that code to complete the transaction. I could not verify the exact text of dependent claims 2–6, and I found no CAFC 2026 docket for this patent number.

Based on my searches (which included the Unified Patents portal data referenced on the Google Patents page, the Stanford NPE Litigation Database, CourtListener/PACER-sourced dockets, and PTAB databases), here is what is known about litigation involving US Patent No. 10,121,133 ("Method for self-checkout with a mobile device," issued Nov. 6, 2018). I found one district court case and one PTAB IPR proceeding specifically naming the '133 patent. I did not find any CAFC appeal specific to the '133 patent (the IPR on it was never instituted).

1. District Court: Sam's West, Inc. and Walmart Apollo, LLC v. BJ's Wholesale Club Holdings, Inc.

• Plaintiffs: Sam's West, Inc. and Walmart Apollo, LLC (the current assignee of the '133 patent)
• Defendant: BJ's Wholesale Club Holdings, Inc.
• Jurisdiction / Venue: U.S. District Court for the Middle District of Florida, Orlando Division
• Case Number: 6:22-cv-00587-WWB-RMN (originally 6:22-cv-00587-WWB-DAB; later reassigned to Magistrate Judge Robert M. Norway)
• Filing Date: March 22, 2022
• Cause of Action: Patent infringement under 35 U.S.C. § 271 (direct, induced, and contributory infringement); jury demanded
• Judge: District Judge Wendy W. Berger
• Patents in Suit: The '133 patent was asserted along with other Walmart family patents, including U.S. Patent Nos. 10,368,187; 10,368,188; a '435 patent; and (per the docket data) 10,803,435.
• Accused Product: BJ's "Express Pay" mobile checkout application (per the complaint and briefing).

Procedural history / current status (as of the latest docket entries I could verify, into early 2026):

• The case was stayed in part on November 21, 2022, pending the PTAB's institution decisions on BJ's IPR petitions.
• BJ's filed IPR2022-01471 challenging claims 1–6 of the '133 patent (see below), but the PTAB denied institution on April 12, 2023 — so the '133 patent was not subject to a PTAB merits review.
• The PTAB did institute and issue Final Written Decisions on five IPRs covering the other asserted patents (three on the '435 patent — all challenged claims found unpatentable — and two on the '187 and '188 patents — no challenged claims found unpatentable). Sam's timely appealed the '435-patent IPR decisions to the Federal Circuit.
• On June 12, 2024, BJ's moved to lift the stay (ECF No. 139); Sam's opposed on June 26, 2024 (ECF No. 141). As of the March 25, 2025 joint status report, the Court had not yet ruled on the motion to lift the stay.
• The CourtListener docket shows continuing status reports and activity through at least late 2025 / January 2026 (e.g., pro hac vice appearances and attorney withdrawals), indicating the case was still pending — with no final judgment or verdict identified in the available records.

2. PTAB: BJ's Wholesale Club Holdings, Inc. v. Walmart Apollo, LLC, IPR2022-01471

• Petitioner: BJ's Wholesale Club Holdings, Inc.
• Patent Owner / Respondent: Walmart Apollo, LLC
• Proceeding: IPR2022-01471
• Filing Date: August 29, 2022
• Patent: US 10,121,133 (Application No. 12/947,545)
• Claims Challenged: Claims 1–6
• Institution Decision Date: April 12, 2023
• Outcome / Status: Institution Denied (not instituted on the merits); the proceeding was terminated. Administrative Judges: Mitchell G. Weatherly, Neil T. Powell, Arthur M. Peslak. A petitioner's request for refund of post-institution fees was filed in 2024, consistent with non-institution.

Other potential litigation (to be clear about limitations)

• The Google Patents "Family has litigation" indicator and Darts-ip family record refer to the first worldwide family litigation, which corresponds to the Florida Middle District case above (per the Unified Patents litigation link to case 6:22-cv-00587).
• The Stanford NPE Litigation Database lists two entries for patent 10121133, both titled "Sam's West Inc. et al v. ..." — the search results were truncated, so I could not fully confirm whether the second entry is a separate action or a duplicate/related docket entry. I did not find any other distinct district court case or PTAB proceeding naming the '133 patent in my searches.
• The broader Walmart self-checkout patent family (e.g., 10,803,435; 11,853,988; 11,961,061; 12,412,164) may have its own litigation, but those are different patent numbers and outside the scope of your question about 10,121,133 specifically.

Summary

If you need the precise current docket text (e.g., the last few 2025–2026 entries on the district court docket), I'd recommend pulling the case directly from PACER or CourtListener, since my search snapshots were not fully up to date on the most recent filings.

Proceedings overview

The USPTO Open Data Portal (ODP) ingest shows zero AIA trial proceedings for US 10121133, but web search (and Google Patents' own metadata) surfaces one proceeding the ODP hasn't indexed yet: IPR2022-01471, filed by BJ's Wholesale Club Holdings, Inc. v. Walmart Apollo, LLC — status: institution denied (not instituted on the merits). Net result: no claims invalidated, no settlement, no active trial — all six claims (1–6) of the '133 patent remain in force, and the only PTAB challenge was rejected at the threshold. For a defendant, that is a negative signal: the patent is "hardened" against the exact art BJ's ran, and an IPR-based invalidity defense built on Watanabe/Giordano/O'Hagan/Ogilvy will be an uphill fight — though, because no trial was instituted, no § 315(e) estoppel attaches and those grounds can still be re-litigated in district court.

IPR2022-01471 — BJ's Wholesale Club Holdings, Inc. v. Walmart Apollo, LLC

• Type: Inter Partes Review
• Filed: 2022-08-29
• Status: Institution Denied — "Not Instituted - Merits" (per Google Patents/Unified Patents case metadata). Plain-English gloss: the Board never started a trial; the petition died at the institution stage.
• Judge panel: Neil T. Powell, Mitchell G. Weatherly (author of the Decision), Arthur M. Peslak — Administrative Patent Judges.
• Petition grounds (all claims 1–6 challenged, i.e., the entire patent; all under 35 U.S.C. § 103):
  • Claims 1–5: obviousness over Watanabe (US 2008/0228591) + Giordano (US 2008/0011825)
  • Claim 6: obviousness over Watanabe + Giordano + Ogilvy (US 2009/0099961)
  • Claims 1–5: obviousness over O'Hagan (US 2002/0145038) + Watanabe + Giordano
  • Claim 6: obviousness over O'Hagan + Watanabe + Giordano + Ogilvy
• Institution decision: Denied, 2023-04-12 (Paper 7). The panel held BJ's failed to show a reasonable likelihood of prevailing on any of the six challenged claims (35 U.S.C. § 314(a)). Core reasoning: the primary combinations do not disclose the claim limitations that carried the patent through an eight-year, nine-office-action prosecution — specifically (i) "a state container within the first application on the server," (ii) "importing, by the second application, the order from the state container," and (iii) "importing, by the second application, the order using the dynamically generated unique identifier from the state container." The panel flagged that BJ's resorted to a fabricated "ST113.5" importing step not disclosed by Watanabe, and a made-up "application storage area" to try to show the claimed "state container within the first application." Because the merits failed, the Board expressly declined to reach Walmart's alternative § 325(d) (cumulative-art) argument: "Because we have determined that Petitioner fails to demonstrate a reasonable likelihood of establishing that any claim of the '133 patent is unpatentable, we need not reach Patent Owner's argument that we should exercise discretion under 35 U.S.C. § 325(d) to deny the Petition." (PTACTS decision document; DocketAlarm PDF; IPVerse case page)
• Final Written Decision: None. No trial was instituted, so no FWD exists and no claim was canceled or formally sustained on the merits.
• Settlement / termination: No settlement. The proceeding terminated on the institution denial; BJ's later filed a request for refund of post-institution fees (2024-04-02), which the Board approved (2024-04-05) — a procedural tail, not a merits event.
• Appeal: None, and none is possible — a denial of institution is statutorily non-appealable under 35 U.S.C. § 314(d). No Federal Circuit docket exists for this proceeding.
• Defensive value: This helps Walmart, not a defendant. The Board's decision is now public, citable authority that the four art references BJ's deployed do not render claims 1–6 obvious — so a defendant hoping to reuse that same art in a new IPR faces a near-certain repeat denial (and a § 325(d) problem), and a district court will treat the Board's reasoning as persuasive. The one silver lining: because there was no institution, there is no § 315(e) estoppel — BJ's (or any defendant) can still raise Watanabe/Giordano/O'Hagan/Ogilvy in district court, just without the benefit of a Board merits finding.

Strategic summary

Claims: CANCELED / SUSTAINED / UNTESTED. Nothing has been canceled. The IPR petition challenged the complete claim set — claims 1–6 — and the Board denied institution on all of them. So all six claims (claim 1, the independent method claim, plus dependent claims 2–6) remain in force and formally UNTESTED by an FWD, though the specific art BJ's raised was effectively vetted and rejected at the institution stage. A defendant cannot point to any PTAB cancellation; the patent's enforceability is intact through its anticipated expiration (2030-11-16).

Estoppel landscape. No estoppel exists against anyone. Section 315(e) estoppel attaches only after a final written decision following institution, and there was no institution here. That means the § 103 grounds BJ's raised (Watanabe, Giordano, O'Hagan, Ogilvy, and any combinations) remain fully available to a defendant in district court or in a fresh, better-pled petition. The practical caveat: the Board already found those specific combinations not reasonably likely to succeed and criticized BJ's reliance on invented annotations ("ST113.5"), so a repeat petition on the same art would face both weak merits and § 325(d) discretion. A defendant's better play is new art — particularly art disclosing a server-side "state container" from which a second application imports an order using a dynamically generated unique identifier, which is the limitation gap that sank BJ's.

Pattern signals. One proceeding, one petitioner: BJ's, a direct retail competitor (not an NPE or defensive aggregator), filed this IPR as a counter-move to Walmart's own infringement suit — Sam's West, Inc. et al. v. BJ's Wholesale Club Holdings, Inc., No. 6:22-cv-00587 (M.D. Fla., filed 2022-03-22) — where the '133 patent is asserted. The "Unified Patents" label on the Google Patents metadata for IPR2022-01471 is data attribution only ("Unified Patents PTAB Data" is the dataset licensee); Unified Patents was not the petitioner. Walmart defended the IPR aggressively (exhaustive preliminary response, updated mandatory notices, dictionary and Ex parte Burns exhibits), and won a clean threshold kill. There is no pattern of serial IPRs on this patent, and no indication Walmart has had to defend it at trial before the Board.

Recommended next steps

• No claims were invalidated — you cannot point a client to an FWD or a cancellation. If you are a defendant facing assertion of the '133 patent, the operative document is the 2023-04-12 Institution Decision denying IPR2022-01471 (PTACTS / DocketAlarm PDF). Use it diagnostically: it maps the exact claim limitations the Board found missing from the primary art (state container within the first application; importation of the order from the state container; importation using the dynamically generated unique identifier). Any new validity theory must address those gaps head-on.
• No active PTAB proceeding exists, so there are no institution-deadline, oral-hearing, or FWD milestones to track. If you file a new petition, remember the statutory clock: PTAB has one year from institution to a final decision, and institution decisions issue within roughly six months of the petition — but expect § 325(d) and the prosecution history (nine office actions) to loom large given this patent's "thorough and searching" examination.
• Coordinate with the parallel district litigation. The live fight on this patent is in Sam's West, Inc. et al. v. BJ's Wholesale Club Holdings, Inc., 6:22-cv-00587 (M.D. Fla.), where the district court has already grappled with stay-pending-IPR law in this very case. Because the IPR was denied, the litigation is the only forum left to contest validity, and there is no estoppel bar to re-raising the IPR art there.
• Watch the family, not just this patent. The '133 patent is the parent of continuations/divisionals that remain active and litigated — US 10,803,435, US 11,853,988, US 11,961,061, and US 12,412,164 (plus US 2025/0390856 A1). Each of those is a separate, separately enforceable asset; a validity strategy that clears only the '133 patent leaves the family exposed.
• Absence signal, read correctly: "No PTAB activity on file" from ODP is an indexing gap, not a fact — IPR2022-01471 exists and was denied. The accurate signal is the opposite of "unasserted": Walmart is affirmatively enforcing this patent in federal court, and the one challenge filed against it failed at institution, making the patent stronger, not weaker, as an assertion weapon.

Inventors

Named inventors on US 10121133 (per the issued patent and the complaint in Sam's West Inc. et al. v. BJ's Wholesale Club Holdings, Inc., 6:22-cv-00587, M.D. Fla.):

• David Martin Nelms — Bentonville, AR (Walmart/Sam's Club employee at time of filing)
• Jason Richard Todd — Bentonville, AR (Walmart)
• Timothy Wayne Webb — Rogers, AR (Walmart)
• Philip Wayne Marbut — noted as deceased in the 2022 complaint
• Douglas Jahe Ryner — Cave Springs, AR (Walmart)

All five were employees of Wal-Mart Stores, Inc. (Walmart/Sam's Club, headquartered in Bentonville, AR) at the time of filing — the same region as Walmart's home office. The recorded 2011-03-01 assignment of assignors' interest additionally names ~19 other individuals (Kieffer, O'Neil, Gilliam, VonBose, Gocio, etc.) — co-inventors on related family applications bundled into the same assignment batch, not extra inventors on this patent. No unusual post-filing departure pattern is evident.

Original assignee

• Entity named on the issued patent: Walmart Apollo, LLC (shown on the issued patent and in current USPTO/Google Patents records). Note: Google Patents' "Application filed by Walmart Apollo LLC" line is a current-assignee display artifact; the actual filer was Wal-Mart Stores, Inc.
• Original assignee of record (2011): Wal-Mart Stores, Inc., which received the inventors' rights by assignment recorded 2011-03-01.
• Product embodying the claims: Yes — Walmart/Sam's Club ships the claimed technology as Sam's Club "Scan and Go" (the complaint itself states: "Sam's Club's Scan and Go technology is one such example of Walmart's ability to innovate," ¶47).
• Line of business: World's largest retailer (Walmart Inc. / Sam's Club warehouse clubs).
• Current status: Operating. Walmart Apollo, LLC is Walmart's wholly-owned IP-holding subsidiary; Walmart Inc. is a solvent, publicly traded operating company.

Assignment timeline

I could not verify reel/frame numbers or correspondent-of-record names from the sources available to me in this session (USPTO Assignment Center pages were not directly retrievable; the Google Patents legal-events feed gives recording dates but not reel/frame). Per the instruction not to fabricate, I list only what is verifiable: the two recorded conveyances reflected in the Google Patents legal-event record and confirmed by the litigation record ("Walmart Apollo, LLC is the current owner by assignment" — Complaint ¶40 et seq.). Both links in this chain are intra-Walmart conveyances; there are no third-party assignments.

• 2011-03-01 (recorded) — Reel/frame not verifiable from available sources

  • Conveyance: Assignment of Assignors' Interest
  • Assignor: David Martin Nelms, Jason Richard Todd, Timothy Wayne Webb, Philip Wayne Marbut, Douglas Jahe Ryner (plus ~19 additional co-inventors on the family: Bowlin Williams, Garner, Letts, Salmon, Barnett, Leonhardt, Phillips, White, VonBose, Kieffer, Carmon, O'Neil, Gilliam, Irvin, Gocio, Rector, et al.)
  • Assignee: Wal-Mart Stores, Inc.
  • Correspondent: not verifiable from available sources
  • Context: Standard inventors-to-employer assignment shortly after the 2010-11-16 filing.

• 2018-03-31 (recorded) — Reel/frame not verifiable from available sources

  • Conveyance: Assignment
  • Assignor: Wal-Mart Stores, Inc.
  • Assignee: Walmart Apollo, LLC
  • Correspondent: not verifiable from available sources
  • Context: Internal corporate reorg — Wal-Mart Stores, Inc. transferred its patent portfolio (including this patent, which issued 2018-11-06) to its wholly-owned IP subsidiary, Walmart Apollo, LLC. No change in economic ownership.

No post-2018 assignments are recorded; Walmart Apollo, LLC remains the owner (confirmed by the 2022 complaint, which pleads Walmart Apollo LLC as current owner of each asserted patent).

Timeline diagram

timeline
    title Ownership of US 10121133
    2010 : Filed by Wal-Mart Stores Inc
    2011 : Inventors assign to Wal-Mart Stores
    2018 : Patent issued
         : Transferred to Walmart Apollo LLC
    2022 : Suit filed vs BJs Wholesale Club

NPE / troll-pattern signals

1. Shell-entity transfer — not present. The only LLC in the chain is Walmart Apollo, LLC, Walmart's wholly-owned IP subsidiary created by internal corporate reorg (recorded 2018-03-31), not an arms-length transfer to a licensing-only shell. Walmart Apollo asserts alongside the operating entity Sam's West, Inc. (the Sam's Club operating company) in 6:22-cv-00587, and the underlying technology is shipped as Sam's Club Scan & Go.

2. Known asserter in the chain — not present. Walmart Apollo, LLC does appear in the Stanford NPE Litigation Database (npe.law.stanford.edu/party/walmart-apollo-llc), but it is categorized there as "8 – Product company," i.e., explicitly not an NPE. It is not on the Acacia/Marathon/IV/IPNav/Wi-LAN/Mosaid/Vringo/Pendrell/Round Rock/Spangenberg-type asserter lists.

3. Repeat correspondent across the chain — unclear / insufficient data. Correspondent-of-record names could not be retrieved from the available sources. There is no evidence of a repeat-player NPE-recording attorney. The only recorded conveyance attorneys would be Walmart's own outside counsel (DLA Piper appears as litigation counsel), which is consistent with operating-company patent work.

4. Cascading transfers — not present. Exactly two conveyances, seven years apart (2011-03-01 and 2018-03-31), both within the Walmart corporate family. No chained LLCs, no rapid-fire transfers.

5. Pre-litigation transfer — not present. The Walmart Apollo transfer was recorded 2018-03-31, roughly four years before the first suit naming this patent (filed 2022-03-22, 6:22-cv-00587). Not a venue/standing-arrangement transfer timed to litigation.

6. Bankruptcy fire-sale — not present. Wal-Mart Stores, Inc. has never been in Chapter 7/11; this is not a Kodak/Nortel/Polaroid-type estate sale.

7. Privateering — not present. Walmart asserts directly through its own entities (Sam's West + Walmart Apollo) against a direct competitor (BJ's Wholesale Club, over its "ExpressPay" mobile-checkout app), with DLA Piper as counsel. No NPE intermediary is asserting on Walmart's behalf.

8. Defensive aggregator (anti-NPE) — not present. The chain terminates at Walmart Apollo, LLC (an operating company's subsidiary); there is no RPX, AST, LOT Network, Unified Patents, or OIN involvement. (The PTAB matter IPR2022-01471 was a defendant-filed validity challenge tied to the BJ's litigation; it was not instituted.)

Verdict

Operating-company assertion.

Walmart's entities — Sam's West, Inc. and Walmart Apollo, LLC — filed suit against direct competitor BJ's Wholesale Club on 2022-03-22 (6:22-cv-00587, M.D. Fla.), asserting US10121133 against BJ's ExpressPay mobile self-checkout app, and Walmart itself ships the claimed technology as Sam's Club Scan & Go. The entire recorded chain is intra-Walmart: inventors → Wal-Mart Stores, Inc. (recorded 2011-03-01) → Walmart Apollo, LLC (recorded 2018-03-31), with no shell LLC, no third-party NPE, no pre-suit transfer, and no defensive aggregator — the Stanford NPE database itself classifies Walmart Apollo as a product company.

Verify at the USPTO Assignment Center: https://assignmentcenter.uspto.gov/ (search by patent number 10121133 or application 12/947,545; alternate index at https://assignment.uspto.gov/patent/index.html).

Prior Art Analysis — U.S. Patent No. 10,121,133 B2 ("Method for Self-Checkout with a Mobile Device")

1. Target patent verification (ID handled literally)

• Patent No.: US 10,121,133 B2 (also cited as 10121133)
• Title: Method for self-checkout with a mobile device
• Inventors: David Martin Nelms, Jason Richard Todd, Timothy Wayne Webb, Philip Wayne Marbut, Douglas Jahe Ryner
• Assignee: Walmart Apollo, LLC (formerly Wal-Mart Stores, Inc.)
• Application: US 12/947,545, filed Nov. 16, 2010 (provisional 61/392,908, filed Oct. 13, 2010)
• Grant date: Nov. 6, 2018
• Status: Active; anticipated expiration 2030-11-16 (per Google Patents)

ID-confusion note: A search for "10121133" also surfaces DE 10121133 A (Rodenstock GmbH, spectacle-lens production, filed 2001-04-30). That is a different document in a different national series and is not the target patent. Per your instruction, I am not treating it as relevant.

2. Source of the citation list

The front-page "References Cited" for US 10,121,133 B2 was located via:

• The granted-patent PDF reproduced as Exhibit 1006 in IPR2022-00233 (Docket Alarm mirror, US010121133B2), and
• FreePatentsOnline (freepatentsonline.com/10121133.html).

I could not retrieve the complete USPTO front page in one pass, so the list below is the most complete set I verified across those sources. A handful of entries are flagged where the title/assignee could not be confirmed with high confidence.

3. References Cited on the face of US 10,121,133 B2

A. U.S. patents most relevant to the claimed mobile self-checkout concept

1. US 5,918,211 — Sloane — "Method and apparatus for promoting products and influencing consumer purchasing decisions at the point-of-purchase"

• Published/issued: June 29, 1999
• Description: A handheld device carried by a shopper reads product identifiers (e.g., barcodes) at the point of purchase, retrieves product/promotional information, and can generate an order or purchase list, communicating with a central system.
• Potential §102 anticipation: This is the closest single reference to the independent method claim (claim 1 concept: inputting identification information → generating an order → displaying order-related information on the mobile device). Sloane discloses input of identification information and order generation, but the specific optical machine-readable representation of the order displayed on the device is not clearly disclosed; Sloane is therefore strongest against dependent claims directed to scanning, item-information retrieval, and cart/order generation rather than the full claim 1.

2. US 5,923,735 — Swartz — "Self-service checkout system utilizing portable self-checkout communications terminal"

• Issued: July 13, 1999
• Description: A portable self-checkout terminal scans items in a store, accumulates a transaction, communicates with a host/checkout system, and supports self-service payment — essentially a precursor to the entire mobile self-checkout workflow.
• Potential §102 anticipation: Strong candidate against claim 1 and the independent digital-camera/capture method claim, including item identification input, order generation, and checkout/payment communication. The "optical machine-readable representation of the order" limitation is the main gap.

3. US 6,131,814 — Swartz — "Arrangement for and method of expediting commercial product transactions at a point-of-sale site"

• Issued: October 17, 2000
• Description: Portable optical-reading terminals expedite checkout by reading product codes and communicating with point-of-sale equipment, reducing per-item scanning at the register.
• Potential §102 anticipation: Relevant to claim 1 and dependent claims covering scanning identification information and transmitting it to a remote/server system. Less likely to reach the payment-transmission or machine-readable-representation limitations.

4. US 6,837,436 — Swartz et al. — "Consumer interactive shopping system"

• Issued: January 4, 2005 (published as US 2003/0132298 A1 on July 17, 2003)
• Description: A consumer interactive shopping system using portable terminals with shopping lists, barcode scanning, product-information retrieval, and order/purchase processing — very close to the mobile shopping-cart and order-generation features of the patent.
• Potential §102 anticipation: Strong against the virtual shopping cart / order-generation claims (dependent claims on generating a virtual cart containing retrieved item information) and the computer-readable-medium claims for purchasing with a camera. The remote-server payment acceptance and receipt display may not be fully disclosed.

5. US 5,689,101 — Kikuchi — point-of-sale terminal (assigned to Fujitsu; * = cited for a POS-terminal limitation)

• Issued: November 18, 1997
• Description: A point-of-sale terminal with product-code reading and transaction processing.
• Potential §102 anticipation: Relevant to claims reciting tendering payment / POS terminal interaction, including the claim elements involving a point-of-sale terminal scanning a machine-readable representation to complete checkout.

6. US 6,018,397 — Cloutier et al. — "Digital image processing with indication to user of hardcopy output image quality"

• Issued: January 25, 2000
• Description: Digital-image capture/processing with user feedback — cited on the camera/OCR side of the disclosure.
• Potential §102 anticipation: Relevant only to dependent claims directed to capturing and analyzing an image of an identifying portion of an item (image capture/analysis); it does not address order generation or payment.

7. US 5,736,721 — Swartz — checkout/display device patent

• Issued: April 7, 1998
• Description: Swartz-family checkout device (title/assignee not fully verified from the sources retrieved).
• Potential §102 anticipation: Likely relevant to claim 1 and scanning/order claims; flagged as lower-confidence on exact disclosure.

8. US 5,804,807 — Murrah et al. — portable data-collection/scanning device

• Issued: September 8, 1998
• Description: Portable data-collection terminal (title not fully verified).
• Potential §102 anticipation: Relevant to dependent claims on scanning identification information into the mobile device.

9. US 5,825,002 — Roslak — point-of-sale system

• Issued: October 20, 1998 (related: US 5,979,753, issued November 9, 1999; US 6,367,694, issued April 9, 2002 — all Roslak POS/checkout systems)
• Description: Retail point-of-sale / checkout systems with scanning and transaction processing.
• Potential §102 anticipation: Relevant to claims involving checkout, tender, and server-side order processing; less relevant to the camera-capture and VTSA claims.

10. US 5,979,757 — Tracy et al. (issued November 9, 1999) and US 6,550,672 — Tracy et al. (issued April 22, 2003)

• Description: Interactive shopping-cart/display terminal systems (titles not fully verified).
• Potential §102 anticipation: Relevant to dependent claims on displaying cart contents / item information on the mobile device.

11. US 5,055,660 — Bertagna et al. (issued October 8, 1991) — early barcode-reading device; relevant to scanning-limitation claims.
12. US 5,457,307 — Dumont (issued October 10, 1995) — portable self-service checkout terminal; relevant to claim 1 and the self-checkout method claims.
13. US 5,489,773 — Kumar (issued February 6, 1996) — scanner/reader device; relevant to scanning dependent claims.
14. US 5,978,772 — Mold (issued November 2, 1999) — transaction/checkout related (title not verified).
15. US 6,197,206 — Matsumori (issued March 6, 2001) — POS/terminal related (title not verified).
16. US 6,354,496 — Murphy et al. (issued March 12, 2002) — checkout/terminal related (title not verified).
17. US 6,382,357 — Morrison et al. (issued May 7, 2002) — terminal/checkout related (title not verified).
18. US 6,507,279 — Loof (issued January 14, 2003) — wireless shopping-cart/assistant system; relevant to mobile shopping claims.
19. US 6,571,218 — Sadler (issued May 27, 2003) — transaction-processing related (title not verified).

B. Foreign patent reference

EP 1 120 071 (appears twice on the front page: August 2001 and April 2004 entries)

• Description: Title could not be verified from the sources retrieved; the dual listing typically reflects A1 publication (2001) and B1 grant (2004).
• Potential §102 anticipation: Without the title/spec I cannot responsibly map it to specific claims. Flagged as unverified.

C. Non-patent literature

Hhappe, Inc., "Shop-a-Stock — Grocery Shopping – A Whole New Way!" (2009–2010) (accessed Aug. 12, 2010; cited on the face of the patent)

• Description: A mobile/online grocery-shopping service in which customers build orders with scanning/selection tools before or during shopping — cited by the applicant as background on mobile shopping.
• Potential §102 anticipation: Because it is dated 2009–2010, it predates the Oct. 13, 2010 priority date and could be used against claim 1 and cart/order-generation claims if its public disclosure is corroborated (the URL in the citation is http://www.shop-a-stock.com).

4. Which claims are most exposed

The issued claim text was not included in the materials provided, so exact claim-number mapping below is inferred from the independent claim concepts stated in the patent's Summary/Abstract (confirmed as the claim themes of this family):

5. Litigation context (for completeness)

• IPR2022-01471 (Unified Patents) was filed against this patent and was not instituted (merits) — so no PTAB-instituted §102/§103 grounds exist for 10121133.
• A related district-court case was filed in the Florida Middle District Court (6:22-cv-00587).
• The continuation US 10,803,435 B2 was challenged in IPR2022-01528 (BJ's Wholesale Club), where the petition asserted §102 anticipation by "Keith" and §103 over "Hanson + Keith" — but that concerns the '435 continuation patent, not the '133 patent analyzed here.

6. Caveats / confidence statement

• The complete "References Cited" list could not be retrieved in a single authoritative pull; entries marked "not fully verified" are included because they appeared in the front-page snippet (Docket Alarm / FreePatentsOnline) but I could not confirm their titles/assignees from a second source. I have not fabricated titles for those.
• Because the full granted claim text was not in the provided materials, my claim mapping is based on the patent's Summary and the family's known claim themes. Verify against the actual PDF before relying on any §102 position.
• The EP 1 120 0071 entry is unverified as to title; do not cite it substantively without pulling the document.

Bottom line: The most relevant §102 prior art on the face of the patent is Sloane '211, Swartz '735, Swartz '814, and Swartz '436 / 2003/0132298, with the Hhappe Shop-a-Stock NPL being the only citation that clearly predates the priority date while describing a modern mobile shopping/order workflow. The VTSA/transaction-state claims are the least exposed by the cited art.

I'll research the prior art cited against US10121133 and the related PTAB/IPR record, since the patent text you provided doesn't include the "Prior Art" (References Cited) section.

Let me dig into the specific cited references and the PTAB petition record.

The IPR petition record (IPR2022-01471, BJ's Wholesale Club v. Walmart Apollo, institution denied) identifies the key asserted references. Let me pull the claims and the PTAB's reasoning on those references.

Obviousness Analysis — US 10121133 B2 ("Method for self-checkout with a mobile device")

Preliminary note on the prior art record

The patent text supplied in your message does not reproduce the "References Cited" portion of the Google Patents page, so I reconstructed the relevant prior-art record from (a) the Google Patents family/litigation data you supplied, and (b) the complete PTAB docket for IPR2022-01471, BJ's Wholesale Club Holdings, Inc. v. Walmart Apollo, LLC (filed Aug. 29, 2022; institution denied Apr. 12, 2023). One correction to the page data: the "Petitioner: Unified Patents PTAB Data" line is a data-source attribution; the actual petitioner was BJ's Wholesale Club Holdings, Inc., and the IPR arose out of Sam's West, Inc. et al. v. BJ's Wholesale Club Holdings, Inc., 6:22-cv-00587 (M.D. Fla.). Claims 1–6 were challenged; none were instituted.

The asserted prior art (from the IPR2022-01471 petition)

These are the only references meaningfully "on the record" against the patent, and they map directly to the claimed method of maintaining and conducting a "virtual transaction" (the fourth independent statutory category in the patent — a computer-readable medium whose instructions access a session of a "virtual terminal sales application" upon receiving a POS message, load transaction state information, and process it).

The combinations asserted in IPR2022-01471

1. Ground 1 — Watanabe + Giordano → claims 1–6.
2. Ground 2 — O'Hagan + Watanabe + Giordano → claims 1–5; + Ogilvy → claim 6.

The petition's theory, per the Institution Decision, was essentially:

• Watanabe discloses a mobile terminal sending a "shopping command" to a merchandise server whose CPU (81) processes the command, looks up merchandise information, stores it in a purchase information list, and transmits merchandise information back to the mobile terminal — i.e., the claimed POS-message-driven, server-side transaction state.
• Giordano supplies the wireless/mobile retail transaction environment (scanning/browsing items with a handheld device).
• O'Hagan supplies the "first application" (a main program / POS application) and session-oriented transaction handling.
• Ogilvy supplies the electronic receipt/payment-confirmation feature relevant to claim 6.
• The combination, petitioner argued, would render obvious a pooled-session architecture in which a second application (the "virtual terminal sales application") imports an order identified by a unique identifier from a "state container," processes it, and exports updated transaction state — the "transaction transfer" feature the specification contrasts with static suspend/retrieve.

Motivation to combine (the Graham/KSR analysis)

A PHOSITA (a software/systems engineer designing retail POS infrastructure, circa 2010) would have had strong, articulable reasons to combine these references:

1. Known problem, known solution space. The patent's own Background concedes the industry problem: checkout lines and per-item re-scanning at cashier/SCO stations. Mobile-scan-and-pay systems (Watanabe, Giordano) and computerized POS systems (O'Hagan) were both well-known. Combining a mobile self-scan front end with an existing POS/terminal back end is the textbook "known technique" applied to a "known method ready for improvement" (KSR).

2. Server-side efficiency / scalability. The specification's stated benefit of transaction transfer (import state → process → export state → free the VTSA session) is that a limited pool of virtual terminals can serve hundreds of users. A PHOSITA designing a server to support many concurrent mobile shoppers would naturally be motivated to pool scarce application sessions rather than statically bind one session per user — the exact reason the PTAB noted the "importing" step was "not a trivial one" for the claimed invention.

3. Interchangeable components. Watanabe's merchandise server and O'Hagan's POS main program both manage transaction state; substituting one session-management paradigm (O'Hagan's) into Watanabe's mobile-shopping flow, with Giordano supplying the handset-side scanning, involves no new principle, only predictable re-arrangement.

4. Standard POS message formats. Both Watanabe (shopping commands) and O'Hagan (POS terminal messages) operate on structured purchase messages; the patent itself describes POS messages as "Point of Sale Business Component messages" of the type used by IBM Self Checkout Systems — i.e., known message formats a PHOSITA would reuse.

Why the identified combinations fail to render the claims obvious (PTAB's holding)

Despite the facial appeal of the combinations, the Board denied institution, and its analysis is directly instructive for any § 103 assessment:

1. Missing limitation: "importing, by the second application, the order from the state container." Petitioner mapped Watanabe's nonvolatile memory 83 / "areas" 87–89 to the claimed "state container," and contended that at Watanabe's step ST113.5 the "second application" retrieves "purchased merchandise information" from an application storage area. But Watanabe's Figure 29 as actually disclosed goes ST111 (obtain merchandise ID) → ST112 (look up name/price) → ST113 (store in purchase information list 85L) → ST114 (transmit to the mobile terminal) — with no intermediate retrieval step. The expert (Dr. Shamos) added step ST113.5 to an annotated figure "without citing any objective evidence," and the Board found his testimony "inconsistent with Watanabe's express disclosure." The importing step, the Board emphasized, is the feature that enables the scalability benefit of the claimed invention — it cannot be supplied by ipse dixit.

2. Missing limitation: "state container within the first application." On the O'Hagan-based ground, petitioner identified O'Hagan's "main program" as the claimed "first application," but failed to show that the combined teachings describe a state container within that first application. The Board found this element likewise unproven.

3. Dependent claims fall with claim 1. Because claims 2–6 depend ultimately from claim 1, and the Board found no reasonable likelihood of proving claim 1 obvious on either ground, all challenged claims survived.

4. No objective evidence to fill the gap. The Board's decision repeatedly faulted the petition for relying on attorney/expert argument rather than express or inherent disclosure — a reminder that a § 103 case needs the reference itself to teach (or at least strongly suggest) the missing structural element, not just a "would have been obvious to try" gloss.

Bottom line

• Strongest prima facie combination: Watanabe (server-side mobile shopping command processing and stored transaction data) + Giordano (wireless retail purchase) + O'Hagan (POS session application) [+ Ogilvy for claim 6's receipt/payment aspects] — this is the combination a PHOSITA would most naturally assemble to arrive at a mobile self-checkout system with a virtual terminal back end.
• The dispositive weakness: the specific transaction-transfer architecture — a second application importing an order (with item information and a dynamically generated unique identifier) from a state container, then exporting updated state to free a pooled session — is not shown in Watanabe, and the Board expressly rejected the expert's reconstructed step ST113.5. The motivation to combine is real; the disclosure needed to prove the combination renders the claimed architecture obvious is not.
• Practical takeaway: any credible § 103 challenge to US 10121133 B2 needs a reference that discloses state import/export between pooled POS application sessions (or inherency evidence for that behavior), plus a clear articulation of why a PHOSITA would implement transaction transfer rather than static session binding. On the existing record, the PTAB has already held that the Watanabe/Giordano and O'Hagan/Watanabe/Giordano(/Ogilvy) combinations do not meet that bar.

Caveat: I did not have the full text of claims 1–6 in the materials provided (the message ends mid-description), so the claim elements quoted above are reconstructed from the PTAB Institution Decision (e.g., "importing, by the second application, the order from the state container," "state container within the first application," "dynamically generated unique identifier"). The dependent-claim specifics (2–6) should be verified against the issued claim set before relying on this analysis for litigation or prosecution positions.