UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`SHOPIFY, INC.,
`Petitioner
`
`v.
`
`DDR HOLDINGS, LLC,
`Patent Owner
`
`
`
`Case IPR2018-01008
`U.S. Patent 9,639,876
`
`
`
`
`PATENT OWNER’S MANDATORY NOTICES
`PURSUANT TO 37 C.F.R. § 42.8
`
`
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`SHOPIFY, INC.,
`Petitioner
`
`v.
`
`DDR HOLDINGS, LLC,
`Patent Owner
`
`
`
`Case IPR2018-01008
`U.S. Patent 9,639,876
`
`
`
`
`PATENT OWNER’S MANDATORY NOTICES
`PURSUANT TO 37 C.F.R. § 42.8
`
`
`
`
`
`
`
`
`
`
`
`
`Case No. IPR2018-01008
`U.S. Patent 9,639,876
`Pursuant to 37 C.F.R. § 42.8(a)(2), Patent Owner, DDR Holdings, LLC
`
`hereby files its Mandatory Notices in connection with the above-captioned Petition.
`
`I.
`
`REAL PARTY-IN-INTEREST
`
`The patent owner is DDR Holdings, LLC.
`
`II. RELATED JUDICIAL OR ADMINISTRATIVE MATTERS
`
`As of the filing date of this notice, related matters are:
`
`A. Another Pending IPR Involving the Patent-at-Issue
`
`The ’876 Patent is the subject of the following co-pending IPR proceeding:
`
`Shopify, Inc. v. DDR Holdings, LLC, Case IPR2018-01011.
`
`B.
`
`Pending Litigations Involving the Patent-at-Issue
`
`The ’876 Patent is at issue in the following pending lawsuits, filed in the
`
`United States District Court in and for the District of Delaware:
`
`DDR Holdings, LLC v. Priceline.com, LLC et al., Case No. 1:17-cv-498-ER
`
`DDR Holdings, LLC v. Booking.com B.V., Case No. 1:17-cv-499-ER
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`DDR Holdings, LLC v. Shopify, Inc., Case No. 1:17-cv-501-ER
`
`These cases have been consolidated under 1:17-cv-498-ER.
`
`1
`
`
`
`Case No. IPR2018-01008
`U.S. Patent 9,639,876
`C. Terminated Litigations Involving the Patent-at-Issue or Related
`
`Patents
`
`The ’876 Patent was at issue in the following lawsuits, filed in the United
`
`States District Court in and for the District of Delaware, and terminated May 9,
`
`2018:
`
`DDR Holdings, LLC v. TicketNetwork, Inc., Case No. 1:17-cv-500-ER
`
`DDR Holdings, LLC v. Travel Holdings, Inc. and Tourico Holidays, Inc.,
`
`Case No. 1:17-cv-502-ER
`
`These cases were also consolidated under 1:17-cv-498-ER but have been
`
`terminated because the parties have settled.
`
`Related U.S. Patents 6,629,135, 6,993,572, and 7,818,399 were at issue in
`
`the following lawsuit, filed in the United States District Court in and for the
`
`Eastern District of Texas, now terminated:
`
`DDR Holdings, LLC v. Hotels.com, L.P. et al., Case No. 2:06-cv-00042-RG.
`
`In 2006, Patent Owner sued six independent companies for infringement of
`
`parent U.S. Patents 6,629,135 and 6,993,572. While the case was ongoing, parent
`
`U.S. Patent 7,818,399, issued (October 19, 2010), and Patent Owner amended its
`
`complaint to assert that patent against five of the six defendants. Four of six
`
`defendants (Expedia, Travelocity, Orbitz, and International Cruise Excursions)
`
`settled in Fall 2012, one week or a few weeks before trial. The case proceeded to
`
`2
`
`
`
`Case No. IPR2018-01008
`U.S. Patent 9,639,876
`trial in October 2012 against two non-settling defendants: Digital River for
`
`infringement of the ‘572 Patent and National Leisure Group, Inc. (NLG) for
`
`infringement of both the ‘572 and ‘399 Patents. Allegations of infringement of the
`
`‘135 Patent were dropped before trial.
`
`Patent Owner received a jury verdict holding the tried claims of the ‘572 and
`
`‘399 Patent infringed and not invalid and judgment as a matter of law that the ’399
`
`Patent was not invalid based on anticipation or obviousness. The infringement
`
`verdict for ‘399 was against NLG only. The district court denied all post-trial
`
`motions seeking to overturn the verdict, DDR Holdings, LLC, v. Hotels.com, L.P.,
`
`954 F. Supp. 2d 509 (E.D. Tex. 2013), and entered judgment for Patent Owner.
`
`Digital River settled in April 2014, while the case was on appeal. In
`
`disposing of the remaining defendant’s appeal (NLG), the Federal Circuit held
`
`certain claims of the ‘572 Patent invalid, while affirming the judgment that the
`
`‘399 Patent was patent-eligible, sufficiently definite, and infringed. DDR Holdings,
`
`LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
`
`While the appeal was pending, U.S. Patent 8,515,825 issued (August 20,
`
`2013), and DDR filed the following related lawsuits in the United States District
`
`Court in and for the Eastern District of Texas, asserting infringement of the ‘825
`
`Patent and also alleging infringement of the above-mentioned patents for activity
`
`by the respective defendants during the post-trial period:
`
`3
`
`
`
`Case No. IPR2018-01008
`U.S. Patent 9,639,876
`DDR Holdings, LLC v. World Travel Holdings, Inc., 2-13-CV-00646-JRG
`
`DDR Holdings, LLC v. Digital River, Inc., 2-13-CV-00647-JRG
`
`The Digital River settlement in April 2014 mentioned above, and a last
`
`settlement, with NLG and its related company WTH in January 2015, terminated
`
`all of the cases discussed in this section.
`
`D.
`
`Proceedings Before the USPTO Involving Related Patents
`
`
`
`The ’876 patent is related to pending application Serial No. 15/582,105
`
`(unexamined) and U.S. Patents 6,629,135, 6,993,572, 7,818,399, 8,515,825, and
`
`9,043,228.
`
`
`
`Select of the above-listed related patents are also the subject of the following
`
`IPR proceedings:
`
`
`
`Priceline.com LLC et al. v. DDR Holdings, LLC - IPR2018-00482 (U.S.
`
`Patent 7,818,399)
`
`
`
`Shopify, Inc. v. DDR Holdings, LLC - IPR2018-01009 (U.S. Patent
`
`9,043,228)
`
`Shopify, Inc. v. DDR Holdings, LLC - IPR2018-01010 (U.S. Patent
`
`8,515,825)
`
`Shopify, Inc. v. DDR Holdings, LLC - IPR2018-01012 (U.S. Patent
`
`9,043,228)
`
`4
`
`
`
`Case No. IPR2018-01008
`U.S. Patent 9,639,876
`Shopify, Inc. v. DDR Holdings, LLC - IPR2018-01014 (U.S. Patent
`
`8,515,825)
`
`III. LEAD AND BACK-UP COUNSEL AND SERVICE INFORMATION
`
`Lead Counsel:
`Louis J. Hoffman, Esq.
`USPTO Req. No. 38,918
`Louis J. Hoffman, P.C.
`7689 East Paradise Lane, Suite 2
`Scottsdale, Arizona 85260
`Ph.: (480) 948-3295
`Email: louis@valuablepatents.com
`
`
`Patent Owner consents
`
`to electronic service and requests
`
`Back-up Counsel:
`Justin J. Lesko, Esq.
`USPTO Req. No. 69,643
`Law Offices of Steven G. Lisa, Ltd.
`7689 East Paradise Lane, Suite 2
`Scottsdale, Arizona 85260
`Ph.: (480) 948-3295
`Email: justinlesko@patentit.com
`
`that all
`
`correspondence
`
`to above-listed counsel be sent
`
`to
`
`the e-mail address
`
`DDR_IPR@valuablepatents.com.
`
`Dated: May 23, 2018
`
`
`
`
`
`
`
`Respectfully submitted,
`
` /Louis J. Hoffman/
`Louis J. Hoffman
`Reg. No. 38,918
`
`LOUIS J. HOFFMAN, P.C.
`7689 East Paradise Lane
`Suite 2
`Scottsdale, Arizona 85260
`(480) 948-3295
`louis@valuablepatents.com
`Lead Counsel for Patent Owner
`
`5
`
`
`
`Case No. IPR2018-01008
`U.S. Patent 9,639,876
`
`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e)(1))
`
`The undersigned hereby certifies that on May 23, 2018, a complete and correct
`
`copy of
`
`the
`
`foregoing PATENT OWNER’S MANDATORY NOTICES
`
`PURSUANT TO 37 C.F.R. § 42.8 was served via electronic mail on the following
`
`counsel of record for Petitioner:
`
`Michael J. McNamara (Reg. No. 52,017)
`MINTZ, LEVIN, COHN, FERRIS,
`GLOVSKY AND POPEO, PC
`One Financial Center
`Boston, MA 02111
`DDR_IPR_Service@mintz.com
`
` /Louis J. Hoffman/
`Louis J. Hoffman, Reg. No. 38,918
`LOUIS J. HOFFMAN, P.C.
`7689 East Paradise Lane, Suite 2
`Scottsdale, Arizona 85260
`louis@valuablepatents.com
`
`
`6
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`
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