H-E-B Hit With Patent Infringement Suit for H-E-B Go

Tech company charges retailer with patent infringement, breach of contract and unfair competition
Photograph courtesy of H-E-B

The creator of a mobile self-checkout technology company has filed a patent infringement lawsuit in federal court against San Antonio-based H-E-B Grocery Co., charging the retailer with developing its own application for its H-E-B Go app using unlicensed technology, as well as breach of contract and unfair competition.

The complaint from Toronto, Canada-based Digital Retail Apps (DRA) states that “after presenting itself as a potential customer and signing legal documents allowing it in-depth access to DRA’s sample products, H-E-B then launched its own competing product using DRA’s ideas and technology.”

H-E-B did not respond to WGB’s request for a comment regarding the lawsuit, details of which were issued in a statement from DRA, as follows:

  • H-E-B attended a demonstration of the SelfPay app and met with DRA salespeople in early October 2014.
  • H-E-B employees exchanged emails with DRA and its agents concerning SelfPay in mid-October 2014.
  • On Nov. 11, 2015, individuals DRA understood to be an H-E-B mobile application developer and an H-E-B application portfolio manager each ordered SelfPay “trial boxes” for more comprehensive investigations of how SelfPay works. In activating the trial boxes, these individuals signed terms of agreement documents essentially stating they would not use the technology beyond evaluation unless licensed through DRA.
  • On Nov. 12, 2015, in a phone conversation with a DRA salesperson, an H-E-B representative indicated the grocer might participate in a pilot program for SelfPay
  • On Nov. 19, 2015, the individuals associated with H-E-B engaged the SelfPay trial box and made two sample product “purchases.”
  • On Dec. 5, 2017, H-E-B launched its own competing product, having had no further discussions with DRA.

“I didn’t start DRA to litigate; I did it because I wanted to get my ideas and products for cashier-free retail in the market,” Wendy MacKinnon, DRA founder and inventor on the SelfPay patents, said in a statement. “It took a lot of time, skill and hard work to design these products and raise capital to make and market them. We worked with H-E-B in good faith, but their interest in our product was dishonest. They took our ideas for themselves, violating our patents and their contractual obligations to us.”

MacKinnon filed for patent protection of the SelfPay technology—which is marketed to save shoppers time by allowing them to skip the checkout line by using their own mobile devices to scan items, fill a shopping cart and pay for the items in-app using a variety of supported payment methods, such as credit or debit cards, Apple Pay, PayPal and others—in 2012 and 2013 and obtained a U.S. Patent (Nos. 8,720,771 and 9,934,506).


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