`571.272.7822
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`Paper 35
`Entered: February 14, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SHOPIFY, INC., PRICELINE.COM LLC, and BOOKING.COM B.V.,
`Petitioner,
`
`v.
`
`DDR HOLDINGS, LLC,
`Patent Owner.
`____________
`
`IPR2018-010081
`Patent 9,639,876 B1
`____________
`
`
`
`Before CARL M. DEFRANCO, PATRICK M. BOUCHER, and
`ALYSSA A. FINAMORE, Administrative Patent Judges.
`
`FINAMORE, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining No Challenged Claims Unpatentable
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`1 Priceline.com v. DDR Holdings, LLC, IPR2019-00435 (PTAB filed
`Dec. 14, 2019) has been joined to this proceeding. Paper 26. In view of this
`joinder, the Board has adjusted the time period for issuing a final
`determination. Paper 34; see also 35 U.S.C. § 316(a)(11); 37 C.F.R.
`§ 42.100(c).
`
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`IPR2018-01008
`Patent 9,639,876 B1
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`
`INTRODUCTION
`I.
`Shopify, Inc. filed a Corrected Petition (Paper 10, “Pet.”) requesting
`inter partes review of claims 1–5, 7, 8, and 11–18 of U.S. Patent
`No. 9,639,876 B1 (“the ’876 patent”). Pet. 1. On November 15, 2018, we
`instituted trial. Paper 12 (“Inst. Dec.”).
`After institution, DDR Holdings, LLC (“Patent Owner”) filed a
`Response. Paper 21 (“PO Resp.”). Shopify, Inc. filed a Reply to Patent
`Owner’s Response. Paper 23 (“Reply”). Patent Owner filed a Sur-reply.
`Paper 25 (“Sur-reply”).
`On June 10, 2019, we granted a Motion for Joinder by Priceline.com
`LLC and Booking.com B.V. in IPR2019-00435. Paper 26. As a result,
`Shopify, Inc., Priceline.com LLC, and Booking.com B.V. (collectively
`“Petitioner”) are challenging the claims of the ’876 patent in this proceeding.
`An oral hearing was held on July 25, 2019. A transcript of the hearing
`has been entered into the record. Paper 33 (“Tr.”).
`We issue this Final Written Decision pursuant to 35 U.S.C. § 318(a).
`For the reasons that follow, we conclude Petitioner has not demonstrated
`that claims 1–5, 7, 8, and 11–18 of the ’876 patent are unpatentable by a
`preponderance of the evidence.
`
`
`BACKGROUND
`II.
`A. Real Parties in Interest
`Petitioner identifies Shopify, Inc., Priceline Group Inc., Priceline.com
`LLC, Priceline Partner Network, Booking.com B.V., Booking.com Holding
`B.V., Priceline.com Bookings Acquisition Co., Ltd., Priceline.com
`International Ltd., Priceline.com Holdco U.K. Ltd., and Priceline.com
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`Europe Holdco, Inc. as real parties in interest. Pet. 1; Priceline.com LLC v.
`DDR Holdings, LLC, IPR2019-00435, Paper 3 at 1 (PTAB Dec. 14, 2018)
`(Petition in joined proceeding). Patent Owner identifies only itself as a real
`party in interest. Paper 4, 1.
`
`
`B. Related Matters
`The parties identify the following five proceedings from the U.S.
`District Court for the District of Delaware: (1) DDR Holdings, LLC v.
`Priceline.com LLC, No. 1:17-cv-498-ER (D. Del. filed May 2, 2017);
`(2) DDR Holdings, LLC v. Booking.com B.V., No. 1:17-cv-499-ER (D. Del.
`filed May 2, 2017); (3) DDR Holdings, LLC v. TicketNetwork, Inc.,
`No. 1:17-cv-500-ER (D. Del. dismissed May 9, 2018); (4) DDR Holdings,
`LLC v. Shopify, Inc., No. 1:17-cv-501-ER (D. Del. filed May 2, 2017); and
`(5) DDR Holdings, LLC v. Travel Holdings, Inc., No. 1:17-cv-502-ER
`(D. Del. dismissed May 9, 2018). Pet. 1–2; Paper 4, 1–2. Patent Owner
`indicates that these five proceedings have been consolidated under
`No. 1:17-cv-498-ER. Paper 4, 1–2.
`The parties also identify DDR Holdings, LLC v. Hotels.com, L.P.,
`954 F.Supp.2d 509 (E.D. Tex. 2013), as well as the corresponding appeal,
`DDR Holdings, LLC v. Hotels.com. L.P., 773 F.3d 1245 (Fed. Cir. 2014).
`Pet. 2–3; Paper 4, 2–3. Patent Owner additionally identifies DDR Holdings,
`LLC v. World Travel Holdings, Inc., No. 2:13-cv-00646-JRG (E.D. Tex.
`filed Aug. 20, 2013) and DDR Holdings, LLC v. Digital River, Inc.,
`No. 2:13-cv-00647-JRG (E.D. Tex. filed Aug. 20, 2013). Paper 4, 3–4.
`The parties further identify the following reexamination proceedings:
`Ex parte DDR Holdings, LLC, No. 2009-013987 (BPAI 2010) and Ex parte
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`DDR Holdings, LLC, No. 2009-013988 (BPAI 2010). Pet. 3–4; Paper 19,
`5–6. Patent Owner also identifies: U.S. Patent Application Serial
`No. 15/582,105 (issued as U.S. Patent No. 10,304,121 B1); U.S. Patent
`No. 6,629,135 B1; U.S. Patent No. 6,993,572 B2; U.S. Patent
`No. 7,818,399 B1; U.S. Patent No. 8,515,825 B1; and U.S. Patent
`No. 9,043,228 B1. Paper 4, 4; Paper 22, 1.
`Furthermore, the parties identify related proceedings before the Board.
`Namely, the parties identify Priceline Group Inc. v. DDR Holdings, LLC,
`IPR2018-00482 (PTAB filed Jan. 16, 2018). Pet. 4; Paper 4, 4. Patent
`Owner also identifies the following eleven Board proceedings: (1) Shopify,
`Inc. v. DDR Holdings, LLC, IPR2018-01009 (PTAB filed May 3, 2018);
`(2) Shopify, Inc. v. DDR Holdings, LLC, IPR2018-01010 (PTAB filed
`May 4, 2018); (3) Shopify, Inc. v. DDR Holdings, LLC, IPR2018-01011
`(PTAB filed May 2, 2018); (4) Shopify, Inc. v. DDR Holdings, LLC,
`IPR2018-01012 (PTAB filed May 2, 2018); (5) Shopify, Inc. v. DDR
`Holdings, LLC, IPR2018-01014 (PTAB filed May 2, 2018);
`(6) Priceline.com v. DDR Holdings, LLC, IPR2019-00435 (PTAB filed
`Dec. 14, 2019); (7) Priceline.com v. DDR Holdings, LLC, IPR2019-00436
`(PTAB filed Dec. 14, 2019); (8) Priceline.com v. DDR Holdings, LLC,
`IPR2019-00437 (PTAB filed Dec. 14, 2019); (9) Priceline.com v. DDR
`Holdings, LLC, IPR2019-00438 (PTAB filed Dec. 14, 2019);
`(10) Priceline.com v. DDR Holdings, LLC, IPR2019-00439 (PTAB filed
`Dec. 14, 2019); and (11) Priceline.com v. DDR Holdings, LLC,
`IPR2019-00440 (PTAB filed Dec. 14, 2019). Paper 4, 1, 4–5; Paper 19, 5.
`
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`C. The ’876 Patent (Ex. 1001)
`The ’876 patent relates to an affiliate commerce system for
`co-marketing on the Internet. Ex. 1001, 2:64–66. As described in the
`’876 patent, an affiliate program is a commercial arrangement between an
`owner of an Internet commerce website, like Amazon.com, and a third-party
`website owner. Id. at 2:23–30. More specifically, the owner of the Internet
`commerce website lets the third-party website owner promote a subset of its
`goods, e.g., ten books selected by the website owner from Amazon.com’s
`millions of books, on the third party’s website. Id.
`These affiliate programs generate revenue for the third-party website
`owners, i.e., affiliates, but there is a greater benefit to the owners of the
`Internet commerce websites. Id. at 2:31–38. According to the ’876 patent:
`Not only do these sites benefit from the marketing resources of
`the affiliate operators, they are also able to lure the visitor traffic
`away from the affiliate. Once a visitor clicks on an affiliate ad
`and enters an online store, that visitor has left the affiliate’s site
`and is gone. . . . No alternatives have been able to address a
`fundamental drawback of the affiliate programs—the loss of the
`visitor to the vendor.
`Id. at 2:38–47.
`The disclosed invention provides the same benefits as traditional
`affiliate programs, but without the restrictive limitation of losing visitors.
`Id. at 2:66–3:8. In particular, the invention enables a website host to control
`the customer experience before, during, and after a purchase transaction. Id.
`at 3:1–3. As set forth in the ’876 patent:
`According to the present invention the look and feel of
`each participating Host is captured and stored. Hosts may include
`links to selected products or product categories within pages
`residing on the Hosts’ website. Upon actuation of such a link by
`a visitor of the Host website, a page is presented to the visitor
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`incorporating a replica of the Host’s look and feel directed to the
`sale of the selected products or product categories.
`Id. at 3:18–25.
`Furthermore, an outsource provider may be used to capture the look
`and feel of a host’s website and generate pages that replicate the host’s look
`and feel. Id. at 3:26–34. Namely, the ’876 patent explains:
`The look and feel of a host is captured and stored by
`receiving an identification of an example page of a target host.
`The identified page is retrieved. The look and feel elements of
`the page are identified, and these elements are stored for future
`use in generating outsourced transparent pages, pages served by
`a server other than the host but with the host’s look and feel. Such
`pages give the viewer of the page the impression that she is
`viewing pages served by the host.
`
`Id.
`
`The ’876 patent further explains that there are three main parties in the
`outsourced e-commerce relationship, excluding the end consumer:
`merchants, hosts, and the e-commerce outsource provider. Id.
`at 22:66–23:2. However, there may be only two parties where one party
`plays the dual rule of host and merchant. Id. at 23:2–3.
`In a typical transaction process, a customer visits a host’s website and
`becomes interested in a product offered. Id. at 24:15–20. The customer
`selects the item she wishes to purchase by clicking a product image or
`similar link, taking her to dynamically generated web pages which retain the
`look and feel of the referring host and are served by the e-commerce
`outsource provider. Id. at 24:21–26. After browsing through and selecting
`certain offered products, the customer initiates the checkout procedure,
`never leaving the host’s website. Id. at 24:27–36. A secure checkout
`interface appears, which is similarly consistent in look and feel with the
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`host’s referring website, and the customer provides billing and shipping
`information. Id. at 24:37–42. Once the payment is authorized, the customer
`is returned to another section of the host’s website, possibly the page in
`which the offer was placed. Id. at 24:43–46. The outsource provider passes
`the order to the merchant, and the merchant receives and logs the order
`before assembling and shipping the order to the customer. Id. at 24:47–53.
`The outsource provider also periodically remits payment to the merchant for
`filled orders and remits payment to hosts for commissions earned. Id.
`at 24:54–57.
`
`
`D. Challenged Claims
`Petitioner challenges claims 1–5, 7, 8, and 11–18 of the ’876 patent.
`Pet. 1. Claims 1 and 11 are independent. Ex. 1001, 27:37–28:2,
`28:59–29:26. Independent claim 1, reproduced below, is illustrative.
`1. A method of serving commerce information of an
`outsource provider in connection with host web pages offering
`commercial opportunities, the method comprising:
`with a computer system of an outsource provider:
`upon receiving over the Internet an electronic request
`generated by an Internet-accessible computing
`device of a visitor in response to selection of a
`uniform resource locator (URL) within a source
`web page that has been served to the visitor
`computing device when visiting a website of a host
`that is a third party to the outsource provider,
`wherein the URL correlates the source web page
`with a commerce object associated with at least one
`buying opportunity of a merchant that is a third
`party to the outsource provider,
`automatically serving to the visitor computing device first
`instructions directing the visitor computing device
`to display commerce object information associated
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`with the commerce object associated with the URL
`that has been activated, which commerce object
`includes at least one product available for sale
`through the computer system of the outsource
`provider after activating the URL;
`wherein the commerce object information is displayed to
`the visitor computing device on a composite web
`page visually corresponding to the source web page;
`wherein the visual correspondence relates to overall
`appearance of the composite web page as compared
`to the source web page, but excluding the commerce
`object information and the URL; and
`the visitor
`wherein second
`instructions directing
`computing device to download data defining the
`overall appearance of the composite web page are
`accessible to the visitor computing device through
`the Internet.
`
`Id. at 27:37–28:2.
`
`
`E. References and Evidence
`Petitioner relies on the following references in asserting claims 1–5, 7,
`8, and 11–18 of the ’876 patent are unpatentable (Pet. 5):
`
`Reference
`
`Moore et al., US 6,330,575 B1, issued Dec. 11, 2001
`(“Moore”)
`
`First Virtual Seller Programs web page (June 1997),
`First Virtual InfoHaus Guide web page (June 1997),
`and First Virtual InfoHaus HelpMeister (June 1997)
`(collectively “the InfoHaus Documents”)
`
`Exhibit No.
`
`1010
`
`1014, 1015, and
`1016, respectively
`
`Peter Loshin, Selling Online with . . . First Virtual
`Holdings Inc. (1996) (“Loshin”)
`
`1013
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`Additionally, the parties rely on testimonial evidence. Namely,
`Petitioner submits a Declaration of Michael Shamos, Ph.D. Ex. 1002.
`Patent Owner deposed and cross-examined Dr. Shamos, and submits a
`transcript of this deposition. Ex. 2027. Patent Owner relies on a Declaration
`of Arthur M. Keller, Ph.D. Ex. 2025. There is no cross-examination
`testimony of Dr. Keller in the record.
`
`
`F. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability (Pet. 5):
`
`35 U.S.C. § Reference(s)/Basis
`Claims Challenged
`Loshin
`1–5, 7, 8, 11–13, 16–18 102(b)2
`
`1, 7, 11, 16, 17
`
`103(a)
`
`Loshin, the InfoHaus Documents
`
`1–5, 7, 8, 11–15, 17–18 103(a)
`
`Loshin, Moore
`
`
`
`III. ANALYSIS
`A. Level of Ordinary Skill in the Art
`Petitioner asserts a person of ordinary skill in the art “would need to
`have an undergraduate degree in computer science or a related field, or
`equivalent experience, and, in addition, at least one year of experience with
`Web user-interface design, electronic catalogs and online payment
`processing.” Pet. 8. Patent Owner does not provide its own explanation of
`the level of ordinary skill in the art, nor does Patent Owner oppose
`Petitioner’s proffered level of ordinary skill in the art. Patent Owner’s
`
`
`2 Petitioner asserts Loshin is prior art under 35 U.S.C. § 102(b). Pet. 6.
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`declarant, Dr. Keller, testifies that he has “no material substantive dispute”
`with Dr. Shamos’s formulation defining the level of ordinary skill, which is
`identical to Petitioner’s proposal. See Ex. 2025 ¶ 18; Ex. 1002 ¶ 58. Upon
`consideration of the record, including Loshin, the InfoHaus Documents, and
`Moore, we agree with and adopt Petitioner’s proposed explanation of the
`level of ordinary skill in the art.
`
`
`B. Claim Construction
`We interpret the claims of an unexpired patent using the broadest
`reasonable interpretation in light of the specification. 37 C.F.R. § 42.100(b)
`(2017); see also Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 2131, 2144–46
`(2016) (upholding the use of the broadest reasonable interpretation
`standard).3 Under this standard, a claim term generally is given its ordinary
`and customary meaning, as would have been understood by one of ordinary
`skill in the art in the context of the entire disclosure. In re Translogic Tech.,
`Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Furthermore, “only those terms
`need be construed that are in controversy, and only to the extent necessary to
`resolve the controversy.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
`F.3d 795, 803 (Fed. Cir. 1999).
`
`
`3 The Petition in this proceeding was filed on May 3, 2018, prior to the
`effective date of the rule change that replaces the broadest reasonable
`interpretation standard with the federal court claim interpretation standard.
`See Changes to the Claim Construction Standard for Interpreting Claims in
`Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg.
`51340 (Oct. 11, 2018) (codified at 37 C.F.R. § 42.100(b) (2019)) (amending
`37 C.F.R. § 42.100(b) effective Nov. 13, 2018).
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`1. “merchant,” “host,” “commerce object,” “commission,” and
`“outsource provider”
`Petitioner proposes constructions for the following claim terms:
`“merchants,” “host,” “commerce object,” and “commission.” Pet. 9–11.
`Patent Owner proposes constructions for “merchant,” “commerce object,”
`“outsource provider,” and “host.” PO Resp. 6–7. None of these terms,
`however, requires an express construction to determine whether Petitioner
`has shown the challenged claims to be unpatentable.
`2. “the visual correspondence relates to overall appearance of the
`composite web page as compared to the source web page”
`In the Decision on Institution, we instructed the parties to propose
`constructions for this claim limitation. Inst. Dec. 33–34 (“[W]e expect the
`parties to take positions with respect to the construction of the phrase
`‘relates to overall appearance.’”). In response to our instruction, Patent
`Owner argues “explicit claim construction is not required, because the claim
`language itself provides guideposts,” such as the exclusion of the commerce
`object information and the URL. PO Resp. 8 (footnote omitted). Patent
`Owner also argues that the dependent claims, claims from related patents,
`the Specification and file history of the ’876 patent, and determinations
`made during the district court litigation as to which websites do and do not
`have a corresponding overall visual appearance provide guidance as to how
`to achieve the recited visual correspondence. Id. at 8–12 (citations omitted).
`Patent Owner further argues this limitation embodies what the Federal
`Circuit, in DDR Holdings, LLC v. Hotels.com L.P., 773 F.3d 1245 (Fed. Cir.
`2014), determined to be missing from the claims of U.S. Patent
`No. 6,993,572 B2 (“the ’572 patent), to which the ’876 patent claims
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`priority. Id. at 4; Sur-reply 2–6; Tr. 37:12–38:25. More specifically, Patent
`Owner maintains:
`In the same decision, the Federal Circuit invalidated
`certain claims of the grandparent ’572 patent as anticipated by
`Digital River systems, because the ’572 patent’s claims did not
`contain “a requirement that the generated composite web page
`have an ‘overall match’ in appearance with the host website.”
`773 F.3d at 1254. Patent Owner obtained this patent to cure that
`omission, and this patent has such an “overall match” claim
`limitation.
`PO Resp. 4; see also Tr. 38:24–25 (“There is no difference between
`corresponding overall appearance and overall match.”). According to Patent
`Owner, the Federal Circuit acknowledged that the jury reviewed substantial
`evidence that Digital River’s systems do not replicate the host website’s look
`and feel in terms of overall appearance, and found that such correspondence
`is not required by the claims of the ’572 patent. Sur-reply 3–4.
`Petitioner disagrees that this limitation requires an “overall match,”
`and instead asserts that it relates to “look and feel.” Reply 5–7; see also
`Tr. 20:17–20 (“We don’t believe that construction of overall appearance is
`necessary. The Federal Circuit construed look and feel to mean overall
`appearance. That was the plain language of it.”). Petitioner additionally
`contends “overall appearance” should be construed as “appearance taken as
`a whole.” Reply 7.
`We agree with Petitioner that this limitation means look and feel. The
`written description of the ’876 patent does not use the terms “visual
`correspondence” or “overall appearance.” The Specification does use the
`word “corresponding” in regard to “look and feel,” namely:
`The processor performs the tasks of capturing a look and feel
`description associated with a host website, storing the captured
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`look and feel description in the data store, providing the host
`website with a link that link correlates the host website with a
`commerce object for inclusion within a page on the host website
`and which, when activated, causes the processor to serve an
`e-commerce supported page via the communication link with a
`look and feel corresponding to the captured look and feel
`description of the host website associated with the provided link
`and with content based on the commerce object associated with
`the provided link.
`Ex. 1001, 4:61–5:5 (emphasis added). Thus, in the context of the disclosure,
`“the visual correspondence relates to overall appearance of the composite
`web page as compared to the source web page” means the composite web
`page has the look and feel of the source web page.
`Furthermore, we disagree with Patent Owner that the Federal Circuit
`determined the language of this claim limitation cures the shortcoming of the
`claims of the ’572 patent by requiring an overall match between the web
`pages. In DDR Holdings, the Federal Circuit considered the parties’
`stipulated construction for the term “look and feel” in the claims of the
`’572 patent. The parties stipulated the construction of “look and feel” means
`“[a] set of elements related to visual appearance and user interface conveying
`an overall appearance identifying a website; such elements include logos,
`colors, page layout, navigation systems, frames, ‘mouse-over’ effects, or
`other[] elements consistent through some or all of the website.” DDR
`Holdings, 773 F.3d at 1250–51 (emphasis added). In overturning the jury’s
`finding that Digital River’s systems do not anticipate the claims of the
`’572 patent, the court determined the district court improperly introduced an
`“overall match” requirement into the claims. Id. at 1254. Specifically, the
`court held
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`in
`is nothing, however,
`[t]here
`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 selection of the identified “look and feel” elements
`on a host website.
`Id. (emphasis added).
`This limitation of the ’876 patent is similar to the stipulated
`construction of “look and feel.” See PO Resp. 8 n.4 (explaining the claim
`language is derived from the stipulated construction of “look and feel”
`(citation omitted)). In particular, both refer to “overall appearance.” Given
`the court explicitly opined that the stipulated construction of “look and feel”
`does not require an overall match, this corresponding limitation of the
`’876 patent does not make up for the lack of an overall match, but instead
`similarly does not require an overall match.
`
`
`
`C. Anticipation by Loshin
`Petitioner challenges claims 1–5, 7, 8, 11–13, and 16–18 of the
`’876 patent under 35 U.S.C. § 102(b) as anticipated by Loshin. Pet. 11–34;
`Reply 2–21. In contrast, Patent Owner argues Loshin does not disclose
`every limitation of the claims. PO Resp. 12–29; Sur-reply 8–19. We begin
`our analysis with a brief summary of Loshin, and then address the parties’
`contentions.
`1. Loshin (Ex. 1013)
`Loshin describes First Virtual’s InfoHaus service, which is a hosting
`service that enables sellers to sell their information products without having
`to own their own Internet servers. Ex. 1013, 103, 105, 214. More
`specifically, “InfoHaus is a Web server that customers can browse through,
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`and that merchants can load with their store information and information
`products over the Internet.” Id. at 216.
`Figure 7-1, reproduced below, shows a typical offering on InfoHaus.
`
`
`
`Figure 7-1 shows the InfoHaus News e-mailing list. Ex. 1024.4 According
`to Loshin:
`Nothing can happen until a merchant sets up an Internet
`storefront for consumers to browse and buy from. This page
`includes a description of the product as well as the product’s
`price. There is also a link from the offering screen to a
`
`
`4 As Exhibit 1024, Petitioner submits higher quality scans of the figures of
`Loshin included in the Petition.
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`transaction page with forms for the consumer to fill in with
`required information.
`Ex. 1013, 195. Once a consumer decides to purchase a product, the
`consumer needs to follow the link associated with the image of the $20 bill
`shown on the InfoHaus web page depicted in Figure 7-1. Id. Following the
`link results in an order page shown in Figure 7-2, reproduced below.
`
`Figure 7-2 shows an order page. Ex. 1024. On the order page, a consumer
`enters a First Virtual Account ID (VirtualPIN) and an e-mail address for
`delivery of the subscription and then clicks on the “BUY” button. Ex. 1013,
`195. The merchant then can submit the transaction to First Virtual for
`completion. Id.
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`2. Discussion
`a. Independent claim 1
`In asserting that Loshin anticipates independent claim 1, Petitioner
`identifies specific portions of Loshin that allegedly disclose each limitation
`of the claim. Pet. 14–24. Beginning with the preamble, independent claim 1
`recites “[a] method of serving commerce information of an outsource
`provider in connection with host web pages offering commercial
`opportunities.” Ex. 1001, 27:37–39. Petitioner contends Loshin discloses
`an outsource provider, First Virtual, serving web pages offering commercial
`opportunities via its InfoHaus service, which allows sellers to sell their
`information products without having to own their own Internet servers.
`Pet. 14 (citing Ex. 1013, 103, 126–27, 207; Ex. 1002 ¶ 84).
`Independent claim 1 further recites a plurality of steps performed
`“with a computer system of an outsource provider.” Ex. 1001, 27:40. For
`this, Petitioner asserts Loshin teaches an outsource provider, First Virtual,
`serving web pages via InfoHaus, a web server. Pet. 15 (citing Ex. 1013,
`127, 216–17, 238–39; Ex. 1002 ¶ 85).
`Independent claim 1 recites the step of
`upon receiving over the Internet an electronic request generated
`by an Internet-accessible computing device of a visitor in
`response to selection of a uniform resource locator (URL)
`within a source web page that has been served to the visitor
`computing device when visiting a website of a host that is
`a third party to the outsource provider.
`Ex. 1001, 27:41–47. Petitioner argues Loshin discloses a sample purchase
`conducted via InfoHaus, whereby a buyer activates a link on a host web
`page, namely the Darren New InfoHaus Page shown in Figure 7-1. Pet. 15
`(citing Ex. 1013, 194–96, Fig. 7-1; Ex. 1002 ¶ 87). Petitioner also asserts
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`Loshin teaches that the host, Darren New, is a third party to the outsource
`provider, First Virtual. Id. at 16 (citing Ex. 1013, 103, 126–27; Ex. 1002
`¶ 88).
`Independent claim 1 further recites “wherein the URL correlates the
`source web page with a commerce object associated with at least one buying
`opportunity of a merchant that is a third party to the outsource provider.”
`Ex. 1001, 27:47–50. According to Petitioner, Loshin discloses the URL,
`http://www.infohaus.com/access/subscription/Darren_New/Infohaus_News,
`which correlates the source web page, http://www.infohaus.com/access/
`subscription/Darren_New, with a commerce object, subscription to
`Darren_New/InfoHaus_News. Pet. 17 (citing Ex. 1013, 195–96, Figs. 7-1,
`7-2; Ex. 1002 ¶ 89). Petitioner again asserts that Loshin teaches Darren
`New, the host and merchant, is a third party to the outsource provider, First
`Virtual. Id. (citing Ex. 1013, 103, 126–27; Ex. 1002 ¶¶ 90–91).
`Independent claim 1 also recites the step of
`automatically serving to the visitor computing device first
`instructions directing the visitor computing device to
`display commerce object information associated with the
`commerce object associated with the URL that has been
`activated, which commerce object includes at least one
`product available for sale through the computer system of
`the outsource provider after activating the URL.
`Ex. 1001, 27:51–58. According to Petitioner, Loshin discloses that once the
`link on the host’s web page is activated, the order page shown in Figure 7-2
`is automatically loaded. Pet. 18 (citing Ex. 1013, 195–96, Figs. 7-1, 7-2;
`Ex. 1002 ¶ 94). Petitioner argues the page contains instructions directing a
`buyer’s computer to display information relating to the commerce object,
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`namely the price, start date, and number of issues. Id. (citing Ex. 1013,
`195–96, 227–32, Fig. 7-2; Ex. 1002 ¶ 94).
`
`Independent claim 1 further recites the commerce object information
`is displayed on a composite web page that visually corresponds to the source
`web page. Namely, independent claim 1 recites:
`wherein the commerce object information is displayed to the
`visitor computing device on a composite web page
`visually corresponding to the source web page;
`wherein the visual correspondence relates to overall appearance
`of the composite web page as compared to the source web
`page, but excluding the commerce object information and
`the URL.
`Ex. 1001, 27:59–65. Petitioner argues that Loshin discloses these
`limitations because the web pages shown in Figures 7-1, 7-2, and 7-3 have a
`similar appearance. Pet. 18–22 (citing Ex. 1013, 194–96, Figs. 7-1, 7-2, 7-3;
`Ex. 1002 ¶¶ 95–96, 99–102). Petitioner also asserts Loshin teaches these
`limitations because it discloses personalizing web pages for individual
`sellers to provide visual correspondence (id. at 19, 22–23 (citing Ex. 1013,
`196–98, 238–39, 252–53, Figs. 7-5, 9-2, 9-3; Ex. 1002 ¶¶ 97, 102)), as well
`as using default pages which would visually correspond to each other (id. at
`19, 23 (citing Ex. 1013, 218–27, 228–39, Figs. 8–9; Ex. 1002 ¶¶ 98, 103)).
`
`Lastly, independent claim 1 recites “wherein second instructions
`directing the visitor computing device to download data defining the overall
`appearance of the composite web page are accessible to the visitor
`computing device through the Internet.” Ex. 1001, 27:59–28:2. Petitioner
`argues that Loshin teaches serving web pages that include retrieved data that
`visually corresponds to the source web page. Pet. 23 (citing Ex. 1013,
`249–51; Ex. 1002 ¶¶ 104–105). More specifically, Petitioner asserts
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`Loshin’s web pages contain HTML, which describes the visual appearance
`of the pages and provides for the display of trademarks and images related to
`the company controlling the web page. Id. at 23–24 (citing Ex. 1013, 198,
`238–39, 252–53; Ex. 1002 ¶ 105).
`Patent Owner argues Loshin does not anticipate independent claim 1
`because it does not disclose a source web page served while visiting the
`website of a host that is a third party to the outsource provider.
`PO Resp. 12–16; Sur-reply 14–16. Patent Owner also argues Loshin does
`not teach a visual correspondence of overall appearance between the
`composite web page and the source web page. PO Resp. 16–24;
`Sur-reply 8–13.
`i. “a source web page that has been served to the visitor
`computing device when visiting the website of a host that is a
`third party to the outsource provider”
`Patent Owner asserts Petitioner has not demonstrated the Darren New
`storefront web page shown in Figure 7-1 is served when visiting the website
`of a host that is a third party to the outsource provider as this claim
`limitation requires because the web page shown in Figure 7-1 and the web
`page shown in Figure 7-2 are located on the same server, namely First
`Virtual’s server for the infohaus.com domain. PO Resp. 13 (citing Ex. 2025
`¶ 53). Patent Owner further asserts “[n]o embodiment in Loshin teaches the
`two sites being on different servers.” Id. at 16 (citing Ex. 2025 ¶ 54;
`Ex. 2027, 208:5–10).
`In reply, Petitioner contends the limitation at issue does not require
`two different servers. Tr. 69:18–20 (“[T]here is nothing in the claim
`language of the asserted patents that requires separate servers to be the first
`website and the second website.”). We agree with Petitioner to the extent
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