United States Court of Appeals
`for the Federal Circuit
`______________________
`
`DDR HOLDINGS, LLC,
`Plaintiff-Appellee,
`
`v.
`
`HOTELS.COM, L.P., CENDANT TRAVEL
`DISTRIBUTION SERVICES GROUP, INC.,
`EXPEDIA, INC., TRAVELOCITY.COM, L.P.,
`SITE59.COM, LLC, INTERNATIONAL CRUISE &
`EXCURSION GALLERY, INC.,
`OURVACATIONSTORE, INC., INTERNETWORK
`PUBLISHING CORPORATION, AND ORBITZ
`WORLDWIDE, LLC,
`Defendants,
`
`AND
`
`NATIONAL LEISURE GROUP, INC. AND
`WORLD TRAVEL HOLDINGS, INC.,
`Defendants-Appellants,
`
`AND
`
`DIGITAL RIVER, INC.,
`Defendant.
`______________________
`
`2013-1505
`______________________
`
`
`1
`
`SAMSUNG-1055
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`

`
`
` 2
`
` DDR HOLDINGS, LLC v. HOTELS.COM, L.P.
`
`Appeal from the United States District Court for the
`Eastern District of Texas in No. 06-CV-0042, Judge J.
`Rodney Gilstrap.
`______________________
`
`Decided: December 5, 2014
`______________________
`
`LOUIS J. HOFFMAN, Hoffman Patent Firm, of Scotts-
`dale, Arizona, argued for plaintiff-appellee. On the brief
`was IAN B. CROSBY, Susman Godfrey LLP, of Seattle,
`Washington.
`
`NORMAN H. ZIVIN, Cooper & Dunham LLP, of New
`York, New York, argued for defendants-appellants, Na-
`tional Leisure Group, Inc., et al. With him on the brief
`was TONIA A. SAYOUR.
`______________________
`
`Before WALLACH, MAYER, and CHEN, Circuit Judges.
`Opinion for the court filed by Circuit Judge CHEN.
`Dissenting opinion filed by Circuit Judge MAYER.
`CHEN, Circuit Judge.
`Defendants-Appellants National Leisure Group, Inc.
`and World Travel Holdings, Inc. (collectively, NLG) ap-
`peal from a final judgment of the United States District
`Court for the Eastern District of Texas entered in favor of
`Plaintiff-Appellee DDR Holdings, LLC (DDR). Following
`trial, a jury found that NLG infringes the asserted claims
`of U.S. Patent Nos. 6,993,572 (the ’572 patent) and
`7,818,399 (the ’399 patent). The jury also found the
`asserted claims of the ’572 and ’399 patents are not inva-
`lid. The district court denied NLG’s renewed motion for
`judgment as a matter of law (JMOL) on, inter alia, nonin-
`fringement and invalidity of the asserted patents. The
`district court subsequently entered a final judgment
`
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`

`DDR HOLDINGS, LLC v. HOTELS.COM, L.P.
`
`3
`
`consistent with the jury’s findings on infringement, validi-
`ty, and damages, and awarded DDR pre- and post-
`judgment interest and costs. We affirm the district
`court’s denial of NLG’s motions for JMOL of noninfringe-
`ment and invalidity of the ’399 patent. Because we con-
`clude that the ’572 patent is anticipated as a matter of
`law, we reverse the district court’s denial of JMOL on the
`validity of the ’572 patent, and remand to the district
`court for further proceedings consistent with our decision.
`I. BACKGROUND
`DDR is the assignee of the ’572 and ’399 patents. The
`’572 and ’399 patents are both continuations of U.S.
`Patent No. 6,629,135 (the ’135 patent), which has a priori-
`ty date of September 17, 1998. Each of these patents is
`directed to systems and methods of generating a compo-
`site web page that combines certain visual elements of a
`“host” website with content of a third-party merchant.
`For example, the generated composite web page may
`combine the logo, background color, and fonts of the host
`website with product information from the merchant.
`’135 patent, 12:46–50.
`The common specification of the patents-in-suit ex-
`plains that prior art systems allowed third-party mer-
`chants to “lure the [host website’s] visitor traffic away”
`from the host website because visitors would be taken to
`the third-party merchant’s website when they clicked on
`the merchant’s advertisement on the host site. Id. at
`2:26–30. The patents-in-suit disclose a system that
`provides a solution to this problem (for the host) by creat-
`ing a new web page that permits a website visitor, in a
`sense, to be in two places at the same time. On activation
`of a hyperlink on a host website—such as an advertise-
`ment for a third-party merchant—instead of taking the
`visitor to the merchant’s website, the system generates
`and directs the visitor to a composite web page that
`displays product information from the third-party mer-
`
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`

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` 4
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` DDR HOLDINGS, LLC v. HOTELS.COM, L.P.
`
`chant, but retains the host website’s “look and feel.” Id.
`at 3:9–21. Thus, the host website can display a third-
`party merchant’s products, but retain its visitor traffic by
`displaying this product information from within a gener-
`ated web page that “gives the viewer of the page the
`impression that she is viewing pages served by the host”
`website. Id. at 2:56–63, 3:20–22.
`Representative claim 13 of the ’572 patent recites:
`13. An e-commerce outsourcing system compris-
`ing:
`a) a data store including a look and feel descrip-
`tion associated with a host web page having a
`link correlated with a commerce object; and
`b) a computer processor coupled to the data store
`and in communication through the Internet
`with the host web page and programmed, upon
`receiving an indication that the link has been
`activated by a visitor computer in Internet
`communication with the host web page, to serve
`a composite web page to the visitor computer
`wit[h] a look and feel based on the look and feel
`description in the data store and with content
`based on the commerce object associated wit[h]
`the link.
`System claim 13 requires that the recited system pro-
`vide the host website with a “link” that “correlate[s]” the
`host website with a “commerce object.” The “commerce
`object” is the product or product catalog of the merchant.
`’135 patent, 3:7–13. After recognizing that a website
`visitor has activated the link, the system retrieves data
`from a “data store” that describes the “look and feel” of
`the host web page, which can include visual elements
`such as logos, colors, fonts, and page frames. Id. at 12:46–
`50. The claimed system then constructs a composite web
`page comprising a “look and feel” based on the look and
`
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`DDR HOLDINGS, LLC v. HOTELS.COM, L.P.
`
`5
`
`feel description in the data store along with content based
`on product information from the associated merchant’s
`product catalog.
`The ’399 patent is directed to a similar system with a
`greater emphasis on a “scalable [computer] architecture”
`to serve “dynamically constructed [web] pages” associated
`with multiple host website and merchant pairs. ’135
`patent, 3:32–36. Representative claim 19 of the ’399
`patent recites:
`19. A system useful in an outsource provider serv-
`ing web pages offering commercial opportuni-
`ties, the system comprising:
`(a) a computer store containing data, for each of a
`plurality of first web pages, defining a plurality
`of visually perceptible elements, which visually
`perceptible elements correspond to the plurality
`of first web pages;
`(i) wherein each of the first web pages belongs
`to one of a plurality of web page owners;
`(ii) wherein each of the first web pages displays
`at least one active link associated with a
`commerce object associated with a buying
`opportunity of a selected one of a plurality of
`merchants; and
`(iii) wherein the selected merchant, the out-
`source provider, and the owner of the first
`web page displaying the associated link are
`each third parties with respect to one other;
`(b) a computer server at the outsource provider,
`which computer server is coupled to the com-
`puter store and programmed to:
`(i) receive from the web browser of a computer
`user a signal indicating activation of one of
`
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`

`
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` 6
`
` DDR HOLDINGS, LLC v. HOTELS.COM, L.P.
`
`the links displayed by one of the first web
`pages;
`(ii) automatically identify as the source page
`the one of the first web pages on which the
`link has been activated;
`(iii) in response to identification of the source
`page, automatically retrieve the stored data
`corresponding to the source page; and
`(iv) using the data retrieved, automatically
`generate and transmit to the web browser a
`second web page that displays: (A) infor-
`mation associated with the commerce object
`associated with the link that has been acti-
`vated, and (B) the plurality of visually per-
`ceptible elements visually corresponding to
`the source page.
`Similar to claim 13 of the ’572 patent, system claim 19
`of the ’399 patent requires that a “data store” hold “visu-
`ally perceptible elements” (or “‘look and feel’ elements”)
`that “visually . . . correspond” to a host web page. The
`host web page must include a link associated with a
`“buying opportunity” with a merchant. Once a visitor
`activates this link, the claimed system generates and
`transmits to the website visitor’s web browser a composite
`web page that includes product information of the mer-
`chant and the “look and feel” of the host website (i.e., “the
`plurality of visually perceptible elements visually corre-
`sponding to the [host web] page”).
`Claim 19 further requires that the data store must
`store “look and feel” descriptions for multiple hosts and
`that each link must be associated with a particular mer-
`chant’s product catalog. Claim 19 also requires that the
`merchant, system operator, and host website be “third
`parties with respect to one another.” When a website
`visitor activates a link associated with a merchant’s
`
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`

`DDR HOLDINGS, LLC v. HOTELS.COM, L.P.
`
`7
`
`product catalog, the claimed system identifies the host
`web page and then transmits a composite web page using
`the proper “look and feel” elements of the host website in
`the data store and the product information from the
`associated merchant.
`The ’572 patent issued on January 31, 2006. On the
`same day, DDR filed suit against NLG, Digital River, Inc.
`(Digital River), and nine other defendants, asserting
`infringement of various claims of the ’135 and ’572 pa-
`tents. NLG is a travel agency that sells cruises in part-
`nership with travel-oriented websites and major cruise
`lines through the Internet. DDR’s suit accused NLG of
`infringing the ’135 and ’572 patents by providing a system
`for cruise-oriented (host) websites that allows visitors to
`book cruises on major cruise lines (merchants). Joint
`Appendix (J.A.) 261. In particular, when a visitor on one
`of these cruise-oriented (host) websites clicks on an adver-
`tisement for a cruise, NLG’s system generates and directs
`the visitor to a composite web page that incorporates “look
`and feel” elements from the host website and product
`information from the cruise line (merchant).
`DDR’s suit was stayed during the pendency of an ex
`parte reexamination of the ’135 and ’572 patents request-
`ed by DDR that was based on prior art identified by the
`defendants. Shortly after the U.S. Patent and Trademark
`Office confirmed the validity of the ’135 and ’572 patents
`and the stay was lifted, the ’399 patent issued on October
`19, 2010. DDR subsequently amended its complaint to
`assert infringement of this patent by several of the de-
`fendants, including NLG.
`During Markman proceedings, the parties stipulated
`to a construction of several terms, including “look and
`feel,” which appears in each of the asserted claims of the
`’572 patent, and “visually perceptible elements,” which
`appears in each of the asserted claims of the ’399 patent.
`J.A. 542. For “look and feel,” the parties agreed to a
`
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`

`
`
` 8
`
` DDR HOLDINGS, LLC v. HOTELS.COM, L.P.
`
`construction of: “A set of elements related to visual ap-
`pearance and user interface conveying an overall appear-
`ance identifying a website; such elements include logos,
`colors, page layout, navigation systems, frames, ‘mouse-
`over’ effects, or others elements consistent through some
`or all of the website.” Id. For “visually perceptible ele-
`ments,” the parties agreed to a construction of: “look and
`feel elements that can be seen.” Id. The defendants,
`however, expressly reserved their rights to argue that
`both the “look and feel” and “visually perceptible ele-
`ments” terms are indefinite, but offered the stipulated
`constructions “in the alternative.” Id.
`Between June 2012 and January 2013, DDR settled
`with all defendants except for NLG and Digital River.
`The case eventually proceeded to a jury trial in October
`2012. At trial, DDR accused NLG and Digital River of
`direct and willful infringement of claims 13, 17, and 20 of
`the ’572 patent, and accused NLG—but not Digital Riv-
`er—of direct and willful infringement of claims 1, 3, and
`19 of the ’399 patent. DDR also accused NLG and Digital
`River of inducing infringement of claim 17 of the ’572
`patent.
`The jury found that NLG and Digital River directly
`infringed the asserted claims of the ’572 patent and that
`NLG directly infringed the asserted claims of the ’399
`patent, but that NLG and Digital River’s infringement
`was not willful. The jury found that NLG and Digital
`River did not induce infringement of claim 17 of the ’572
`patent. The jury also found that the asserted claims were
`not invalid. The jury determined DDR was entitled to
`$750,000 in damages from both NLG and Digital River for
`infringing DDR’s patents.
`At the conclusion of trial, NLG and Digital River re-
`newed motions for JMOL pursuant to Rule 50(b) of the
`Federal Rules of Civil Procedure (FRCP) on several
`grounds. NLG contended the asserted claims of the ’572
`
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`

`DDR HOLDINGS, LLC v. HOTELS.COM, L.P.
`
`9
`
`and ’399 patents are invalid under 35 U.S.C. § 101 be-
`cause the claims are directed to patent-ineligible subject
`matter and invalid under 35 U.S.C. § 112 ¶ 21 because the
`terms “look and feel” and “visually perceptible elements”
`are indefinite. NLG also contended that neither the jury’s
`finding of infringement nor its award of damages was
`supported by substantial evidence. NLG also alleged the
`district court made several unfair and prejudicial eviden-
`tiary rulings.
`Digital River contended that the asserted claims of
`the ’572 patent are invalid as either anticipated under 35
`U.S.C. § 102, obvious under 35 U.S.C. § 103, or indefinite
`under 35 U.S.C. § 112 ¶ 2. Digital River also contended
`that the jury’s finding of infringement was not supported
`by substantial evidence. Digital River moved for a new
`trial pursuant to FRCP 59.
`The district court denied NLG and Digital River’s mo-
`tions for JMOL and Digital River’s FRCP 59 motion for a
`new trial. Over the defendants’ objections, the district
`court awarded DDR an additional $284,404 in prejudg-
`ment interest pursuant to 35 U.S.C. § 284. The district
`court entered a final judgment in favor of DDR, and NLG
`and Digital River timely appealed. NLG and Digital
`River’s appeals were consolidated and fully briefed. Prior
`to oral argument, DDR and Digital River settled, and we
`granted Digital River’s motion to terminate its appeal.
`D.I. 65, 68. NLG’s appeal continued. We have jurisdic-
`tion pursuant to 28 U.S.C. § 1295(a)(1).
`
`
`1 Paragraph 2 of 35 U.S.C. § 112 was replaced with
`newly designated § 112(b) when § 4(c) of the America
`Invents Act (AIA), Pub. L. No. 112-29, took effect on
`September 16, 2012. Because the applications resulting
`in the patents at issue in this case were filed before that
`date, we will refer to the pre-AIA version of § 112.
`
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` 10
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` DDR HOLDINGS, LLC v. HOTELS.COM, L.P.
`
`II. DISCUSSION
`Since the denial of a motion for JMOL is not patent
`law-specific, regional circuit law applies. The Fifth Cir-
`cuit reviews the denial of a JMOL motion de novo. See,
`e.g., Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1248
`(Fed. Cir. 2005). In the Fifth Circuit, JMOL is appropri-
`ate if “the facts and inferences point so strongly and
`overwhelmingly in favor of one party that the court con-
`cludes that reasonable jurors could not arrive at a contra-
`ry verdict.” Id. The Court “must presume that the jury
`resolved all factual disputes in the [prevailing party’s]
`favor.” Transocean Offshore Deepwater Drilling, Inc. v.
`Maersk Drilling USA, Inc., 699 F.3d 1340, 1347 (Fed. Cir.
`2012) (applying Fifth Circuit law to the review of a dis-
`trict court’s grant of JMOL).
`A. Anticipation
`We turn first to the district court’s denial of Digital
`River’s motion for JMOL of invalidity of the ’572 patent
`based on 35 U.S.C. § 102(a). A patent claim is anticipated
`if a single prior art reference expressly or inherently
`discloses every limitation of the claim. See, e.g., Orion IP,
`LLC v. Hyundai Motor Am., 605 F.3d 967, 975 (Fed. Cir.
`2010). Anticipation challenges under § 102 must focus
`only on the limitations actually recited in the claims. See
`Constant v. Adv. Micro-Devices, Inc., 848 F.2d 1560,
`1570–71 (Fed. Cir. 1988) (finding “limitations [] not found
`anywhere in the claims” to be irrelevant to an anticipa-
`tion challenge). Whether a reference discloses a limita-
`tion is a question of fact, and a jury’s findings on
`questions of fact are reviewed for substantial evidence.
`See, e.g., Dawn Equip. Co. v. Ky. Farms Inc., 140 F.3d
`1009, 1014 (Fed. Cir. 1998). Invalidity by anticipation
`must be proven by clear and convincing evidence. See
`Microsoft Corp. v. i4i L.P., 131 S. Ct. 2238, 2242 (2011).
`On appeal, the parties only dispute whether Digital
`River’s prior art Secure Sales System (SSS) satisfies the
`
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`DDR HOLDINGS, LLC v. HOTELS.COM, L.P.
`
`11
`
`“look and feel” limitation; DDR does not dispute that the
`SSS satisfies every other limitation of the ’572 patent’s
`asserted claims. NLG, which adopted Digital River’s
`anticipation challenge to the ’572 patent,2 argues that no
`evidence supports the jury’s finding that the SSS does not
`disclose the “look and feel” limitation, since it showed the
`jury multiple examples of composite web pages generated
`by the SSS with a “look and feel” based on a set of “look
`and feel” elements from the corresponding host website.
`DDR contends that, as the district court determined,
`“it is up to the trier of fact to determine whether the
`combination of elements making up the overall appear-
`
`
`2 Even though Digital River terminated its appeal
`prior to oral argument, it did not do so until after the
`parties had fully completed their briefing. In its own
`briefs, although only in footnotes, NLG incorporated by
`reference Digital River’s arguments on anticipation.
`Appellant’s Br. 43 n.23; Appellant’s Reply Br. 9 n.5. In a
`consolidated case such as here, Rule 28(i) of the Federal
`Rules of Appellate Procedure (FRAP) permits “any party
`[to] adopt by reference a part of another’s brief.” See, e.g.,
`Pozen Inc. v. Par Pharm. Inc., 696 F.3d 1151, 1159 n.3
`(Fed. Cir. 2012); Aventis Pharma Deutschland GmbH v.
`Lupin, Ltd., 499 F.3d 1293, 1294 n.1 (Fed. Cir. 2007).
`Compare Microsoft Corp. v. DataTern, Inc., 755 F.3d 899,
`910 (Fed. Cir. 2014) (co-parties in non-consolidated ap-
`peals cannot use incorporation pursuant to FRAP 28(i) to
`exceed word count limits prescribed by FRAP 32(a)(7)).
`DDR implicitly concedes that NLG has adequately adopt-
`ed Digital River’s anticipation defense as to the ’572
`patent, acknowledging that “[NLG] did not adopt Digital
`River’s anticipation defense or seek to extend it to prove
`anticipation of the ’399 patent, which has claims contain-
`ing extra elements not found in the asserted claims of the
`’572 patent.” Appellee’s Br. 44 n.10 (emphasis added).
`
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`

`
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` 12
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` DDR HOLDINGS, LLC v. HOTELS.COM, L.P.
`
`ance of a website has a similar ‘look and feel’ as compared
`to another website.” DDR Holdings, LLC v. Hotels.com,
`L.P., 954 F. Supp. 2d 509, 517 (E.D. Tex. 2013). DDR
`contends that the jury reviewed substantial evidence that
`Digital River’s SSS did not replicate the host website’s
`“look and feel” in terms of “overall appearance” and that
`the web pages generated by the SSS did not show “corre-
`spondence of overall appearance.” In particular, DDR
`argues that the SSS did not satisfy this limitation since it
`did not replicate a sufficient number of “look and feel”
`elements from the host web page. Appellee’s Br. 45–46.
`We find that the record allows only one reasonable
`finding: clear and convincing evidence establishes that
`Digital River’s prior art SSS anticipates the asserted
`claims of the ’572 patent. The record lacks substantial
`evidence to support the jury’s finding that the asserted
`claims of the ’572 patent are not anticipated. Therefore,
`the district court erred by denying the defendants’ motion
`for JMOL of invalidity of the ’572 patent under 35 U.S.C.
`§ 102(a).
`Digital River’s prior art SSS was operational and sold
`to its first customer by August 12, 1996. J.A. 6618–23.
`By August 1997, more than a year before the filing date of
`the provisional application for the ’135 patent, Digital
`River’s SSS had attracted its 500th customer. J.A. 6257.
`Digital River advertised its SSS as a system for generat-
`ing web pages that allowed website visitors to “purchase
`and download the digital products of their choice,” but
`still “retain[ed] the look and feel of [the host’s] site.” J.A.
`6202 (emphasis added). The SSS was activated when
`visitors on a host’s website clicked a “web site ‘buy’ but-
`ton” hyperlink. J.A. 6320. Digital River’s advertisements
`explained that “[w]hen [website visitor] customers want to
`purchase, they push the ‘buy’ button and are transferred
`immediately and transparently to the Digital River Cen-
`tral Commerce Server.” J.A. 6202. This component of the
`SSS then generated and served composite web pages to
`
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`DDR HOLDINGS, LLC v. HOTELS.COM, L.P.
`
`13
`
`website visitors that incorporated “look and feel” elements
`of the host website and product information associated
`with the host website’s “web store” in a manner that
`“replicate[d] the look and feel of the [host’s] Web site.”
`J.A. 6320 (emphasis added). These “look and feel” ele-
`ments and this product information content were stored
`by Digital River in a data warehouse and retrieved for
`incorporation into the generated composite web page
`based on a correlation with the “buy” button hyperlink on
`the host website. See id. In this way, Digital River’s SSS
`would allow “transaction[s to] take[] place in the selling
`environment [the host website had] created, surrounded
`by the look and feel of [the host website’s] identity. . . .
`There [would be] no sensation [for a website visitor] of
`being suddenly hustled off to another location.” J.A. 6123
`(emphasis added).
`During trial, a Digital River witness testified at
`length on how the SSS generated composite web pages
`with “look and feel” elements from host websites, and
`operated the SSS for the jury. Digital River also showed
`the jury several composite web pages generated by the
`SSS for host websites before the earliest priority date of
`the ’572 patent, including a composite web page that
`incorporated several elements identified in DDR’s patents
`or by DDR’s expert at trial as “look and feel elements”: the
`host website’s logo, background color, and prominent
`circular icons. J.A. 8856–57 (composite web page), 7502
`(host website); see also J.A. 8858–61 (composite web page
`incorporating host website logo, colors, fonts), 6122 (ex-
`ample web page from host website).
`The parties’ stipulated construction of “look and feel”
`requires the generated composite web page to include a
`set of elements from the host website, each of these ele-
`ments being a “look and feel element” described in the
`specification that “convey[s] an overall appearance identi-
`fying a website.” J.A. 542. Consistent with the specifica-
`tion, the stipulated construction defines these “look and
`
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`

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` DDR HOLDINGS, LLC v. HOTELS.COM, L.P.
`
`feel elements” that “convey an overall appearance identi-
`fying a website” to “include logos, colors, page layout,
`navigation systems, frames, ‘mouse-over’ effects, or other
`elements that are consistent through some or all of a
`Host’s website.” Id.; see also ’572 patent, 14:11–14.
`Digital River’s SSS clearly satisfies this limitation. For
`example, Digital River showed the jury a host website
`that included a stylized logo, a particular background
`color, and prominent circular icons. J.A. 7502. The SSS
`generated a prior art composite web page that incorpo-
`rated each of these “look and feel” elements. J.A. 8856–
`57; see also J.A. 6172 (host website) and 6171 (SSS-
`generated prior art composite web page incorporating
`logo, navigational menu, and color “look and feel” ele-
`ments). And as explained above, the SSS was consistent-
`ly promoted and advertised as creating a composite web
`page that retained the “look and feel” of the host website.
`E.g., J.A. 6123, 6202, 6320.
`Both the district court and DDR introduced a limita-
`tion found neither in the ’572 patent’s claims nor the
`parties’ stipulated construction. In particular, the district
`court introduced a requirement that the generated com-
`posite web page have an “overall match” in appearance
`with the host website, beyond what is expressly recited by
`the claims. DDR Holdings, 954 F. Supp. 2d at 517; see
`also Appellee’s Br. 47. There is nothing, however, in the
`parties’ stipulated construction of “look and feel,” the
`claim language, or the specification that requires the
`generated composite web page to match the host website
`or to incorporate a specific number, proportion, or selec-
`tion of the identified “look and feel” elements on a host
`website.
`In order to satisfy this limitation, it is sufficient that
`“look and feel” elements identifying the host website are
`transferred to and displayed on the generated composite
`webpage. For example, independent claim 13 of the ’572
`patent merely requires that the generated composite web
`
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`DDR HOLDINGS, LLC v. HOTELS.COM, L.P.
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`15
`
`page have a “look and feel based on the look and feel
`description in the data store and content based on the
`commerce object associated wit[h] the link.” Independent
`claim 17 requires only that the generated composite web
`page have a “look and feel corresponding to the stored
`look and feel description” of the host website. There is no
`claim language requiring an “overall match” or a specific
`number of “look and feel” elements.
`Further, the common specification explains that “[t]he
`look and feel is captured by selecting an example page
`[from] the host, retrieving the sample page from the host,
`identifying the look and feel elements from the sample
`page, and saving the identified look and feel elements.”
`’572 patent, 14:7–10. Nothing in the common specifica-
`tion suggests that satisfaction of the “look and feel” limi-
`tation requires more than mechanically identifying “look
`and feel elements” from a web page on the host website,
`storing these elements in a data store, and using these
`stored “look and feel elements” to create the “look and
`feel” of the generated composite web page.
`The jury’s determination that the SSS does not antic-
`ipate claims 13, 17, and 20 of the ’572 patent is not sup-
`ported by substantial evidence. Therefore, the district
`court erred by denying the defendants’ motion for JMOL
`of invalidity of the ’572 patent under 35 U.S.C. § 102(a).3
`B. Patent-eligible subject matter
`NLG also contends that the district court erred by
`denying its motion for JMOL that the asserted claims of
`
`3 Neither Digital River nor NLG ever argued that
`the ’399 patent is invalid as anticipated by or obvious over
`prior art. We decline to speculate whether Digital River’s
`prior art SSS, either alone or in combination with other
`prior art, invalidates the ’399 patent under 35 U.S.C.
`§§ 102 or 103.
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` DDR HOLDINGS, LLC v. HOTELS.COM, L.P.
`
`the ’572 and ’399 patents are invalid under 35 U.S.C.
`§ 101. Since the ’572 patent is invalid as anticipated
`under 35 U.S.C. § 102(a), we focus on NLG’s § 101 chal-
`lenge to claims 1, 3, and 19 of the ’399 patent. We con-
`clude, as did the district court, that the asserted claims of
`the ’399 patent clear the § 101 hurdle.
`We review the district court’s determination of patent
`eligibility under 35 U.S.C. § 101 de novo. Dealertrack,
`Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012). In
`Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132
`S. Ct. 1289, 1294 (2012), the Supreme Court set forth an
`analytical framework under § 101 to distinguish patents
`that claim patent-ineligible laws of nature, natural phe-
`nomena, and abstract ideas—or add too little to such
`underlying ineligible subject matter—from those that
`claim patent-eligible applications of those concepts. First,
`given the nature of the invention in this case, we deter-
`mine whether the claims at issue are directed to a patent-
`ineligible abstract idea. Alice Corp. v. CLS Bank Int’l,
`134 S. Ct. 2347, 2355 (2014). If so, we then consider the
`elements of each claim—both individually and as an
`ordered combination—to determine whether the addition-
`al elements transform the nature of the claim into a
`patent-eligible application of that abstract idea. Id. This
`second step is the search for an “inventive concept,” or
`some element or combination of elements sufficient to
`ensure that the claim in practice amounts to “significantly
`more” than a patent on an ineligible concept. Id.
`Distinguishing between claims that recite a patent-
`eligible invention and claims that add too little to a pa-
`tent-ineligible abstract concept can be difficult, as the line
`separating the two is not always clear. At one time, a
`computer-implemented invention was considered patent-
`eligible so long as it produced a “useful, concrete and
`tangible result.” State St. Bank & Trust Co. v. Signature
`Fin. Grp., Inc., 149 F.3d 1368, 1373 (Fed. Cir. 1998)
`(finding a machine that transformed data by a series of
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`DDR HOLDINGS, LLC v. HOTELS.COM, L.P.
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`17
`
`mathematical calculations to a final share price to be
`patent-eligible); see also In re Alappat, 33 F.3d 1526, 1544
`(Fed. Cir. 1994) (en banc). This understanding rested, in
`large part, on the view that such inventions crossed the
`eligibility threshold by virtue of being in the technological
`realm, the historical arena for patented inventions. See,
`e.g., In re Bilski, 545 F.3d 943, 952, 954–56 (Fed. Cir.
`2008) (en banc) (concluding that a patent-eligible process
`must either be “tied to a particular machine or apparatus”
`or transformed into a different state or thing, i.e., the
`“machine-or-transformation test”).
`While the Supreme Court in Bilski v. Kappos noted
`that the machine-or-transformation test is a “useful and
`important clue” for determining patent eligibility, 130 S.
`Ct. 3218, 3227 (2010), it is clear today that not all ma-
`chine implementations are created equal. For example, in
`Mayo, the Supreme Court emphasized that satisfying the
`machine-or-transformation test, by itself, is not sufficient
`to render a claim patent-eligible, as not all transfor-
`mations or machine implementations infuse an otherwise
`ineligible claim with an “inventive concept.” See 132 S.
`Ct. at 1301 (“[S]imply implementing a mathematical
`principle on a physical machine, namely a computer, [i]s
`not a patentable application of that principle.”) (describ-
`ing Gottschalk v. Benson, 409 U.S. 63, 64 (1972)). And
`after Alice, there can remain no doubt: recitation of gener-
`ic computer limitations does not make an otherwise
`ineligible claim patent-eligible. 134 S. Ct. at 2358. The
`bare fact that a computer exists in the physical rather
`than purely conceptual realm “is beside the point.” Id.
`Although the Supreme Court did not “delimit the pre-
`cise contours of the ‘abstract ideas’ category” in resolving
`Alice, 134 S. Ct. at 2356–57, over the course of several
`cases the Court has provided some important principles.
`We know that mathematical algorithms, including those
`executed on a generic computer, are abstract ideas. See
`Benson, 409 U.S. at 64. We know that some fundamental
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` DDR HOLDINGS, LLC v. HOTELS.COM, L.P.
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`economic and conventional business practices are also
`abstract ideas. See Bilski, 130 S. Ct. at 3231 (finding the
`“fundamental economic practice” of hedging to be patent
`ineligible); Alice, 134 S. Ct. at 2356 (same for intermedi-
`ated settlement).
`In some instances, patent-ineligible abstract ideas are
`plainly identifiable and divisible from the generic com-
`puter limitations recited by the remainder of the claim.
`For example, the Supreme Court in Alice determined that
`the claims at issue “simply instruct[ed] the practitioner to
`implement the abstract idea o