Case 1:17-cv-00498-ER Document 69 Filed 06/05/18 Page 1 of 2 PageID #: 1036
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`DDR HOLDINGS, LLC
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`v.
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`PRICELINE.COM, LLC, et al.
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`CIVIL ACTION NO. 17-498 (lead case)
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`ORDER
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`AND NOW, this 5th day of June, 2018, upon consideration of the motions for
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`judgment on the pleadings filed by Defendants Priceline.com and Booking.com (ECF No. 21)
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`and by Shopify (ECF No. 30), and the responses and replies thereto (ECF Nos. 42, 51, & 52), it
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`is hereby ORDERED that the request for oral argument is DENIED and the motions are
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`DENIED.1
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`1
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`The Court concludes that under step 2 of the Alice Corp. Pty Ltd. v. CLS Bank
`Int’l, 134 S. Ct. 2347 (2014) analysis, the three patents at issue are similar enough to ‘399 that
`they share the same inventive concept found by the Federal Circuit Court of Appeals in DDR
`Holdings, LLC v. Hotels.com, LP, 773 F.3d 1245 (Fed. Cir. 2014) regarding ‘399, and, thus, are
`directed to patentable material.
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`Regarding ‘399, the Federal Circuit court found that its claims “address the problem of
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`retaining website visitors that, if adhering to the routine, conventional functioning of Internet
`hyperlink protocol, would be instantly transported away from a host’s website after ‘clicking’ on
`an advertisement and activating a hyperlink,” DDR Holdings, 773 F.3d 1257, and that the patent
`addresses the “challenge of retaining control over the attention of the customer in the context of
`the Internet.” Id. at 1258.
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`The three patents at issue, even though their claims do not specify how the composite
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`web pages are generated and allow the host and the merchant to be the same entity, still address
`the issue of retaining control over the customer’s attention through the use of a composite page
`provided by the third party outsource provider. The patents allow the host to control the attrition
`of internet traffic away from its site. Whether the visitor would otherwise be directed to another
`site owned by the host or one owned by a third party, the patented methods allow the host to
`prevent visitors from being “instantly transported away” to another website.
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`Regarding the inventive concept that saved ‘399 from being too abstract, the Federal
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`Circuit court found that the claims “do not attempt to preempt every application of the idea of
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`DDR Holdings, LLC - Ex. 2003
`Shopify, Inc. v. DDR Holdings, LLC
`IPR2018-01008
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`Case 1:17-cv-00498-ER Document 69 Filed 06/05/18 Page 2 of 2 PageID #: 1037
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`It is hereby further ORDERED that pursuant to the February 9, 2018 stipulation
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`staying portions of the scheduling order (ECF No. 58), no later than June 27, 2018, the parties
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`shall meet, confer, and file a joint status report informing the Court as to whether they believe
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`that the stay should be lifted (and the reasons therefor), and if so, a proposed amended
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`scheduling order.
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`AND IT IS SO ORDERED.
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`/s/ Eduardo C. Robreno
`EDUARDO C. ROBRENO, J.
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`increasing sales by making two web pages look the same,” and instead, “recite a specific way to
`automate the creation of a composite web page by an ‘outsource provider’ that incorporates
`elements from multiple sources in order to solve a problem faced by websites on the Internet.”
`Id. at 1259.
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`The three patents at issue here do the same, even though they do not specify that the
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`outsource provider generates the composite page. This detail is not essential to the above
`description of the inventive concept in ‘399. Instead, even without specifying how the composite
`pages are generated, the patents still describe the automated delivery of the page by an outsource
`provider that incorporates the look and feel of the host site with the details of the merchant’s
`product.
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`The Federal Circuit court continued its step 2 Alice analysis by finding that the claims of
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`‘399 “do not merely recite the performance of some business practice known from the pre-
`Internet world along with the requirement to perform it on the Internet. Instead, the claimed
`solution is necessarily rooted in computer technology in order to overcome a problem
`specifically arising in the realm of computer networks” (i.e., the instantaneous loss of visitors).
`Id. at 1257. Similarly, the court found that “[i]nstead of the computer network operating in its
`normal, expected manner by sending the website visitor to the third-party website that appears to
`be connected with the clicked advertisement, the claimed system generates and directs the visitor
`to the above-described hybrid web page that presents product information from the third-party
`and visual ‘look and feel’ elements from the host website.” Id. at 1258-59.
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`Again, while these descriptions mention that the merchant is a third party to the host and
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`that the outsource provider generates as well as sends the visitor the composite web page, these
`two facts were not critical to the court’s analysis of ‘399. Even without them, the problem and
`basic solution detailed by all four patents remains the same.
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`In that the Court concludes that the three patents at issue share the same inventive
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`concept as ‘399, it denies Defendants’ motions for judgment on the pleadings.
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