DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (2014)
`13 U.S.P.Q.2d 1097
`
`73 F-3'1245
`
`nite States Court 0 Appea s,
`
`Iligita River, Inc., De e11 ant.
`
`3 ac 'groun : Patentee nroug 1t mtrmgement act10n agalnst competltors, a eglng mfrmgement 01 patents re atmg to an e-
`._,
`commerce system an. met 10 provu mg 10sts w1t 1 transparent. context sens1t1ve e-commerce supporte pages.
`
`Shopify Exhibit 1017
`
`Jury returne a ver 1ct agalnst competitors, competitors 11 e
`
`renewe motlons tor Ju gment as a matter of aw (JMOL).
`
`. 11d one competitor moved for a new trial. The United States District Court for the Eastern District of Texas,
`
`I! 954 F.Supp.2d 509, denied motion. Competitors appealed.
`
`‘ tter a
`
`Holdings: he Court of Appeals, Chen, Circuit Judge, held that:
`
`c a1ms 01 one patent were 111va 1 as ant1c1pateo;
`
`.asserted claims of patents were not so manifestly abstract as to render them invalid for failing to claim patentable
`u Ject matter;
`
`atent was not inva 10 for 1n efmiteness; an
`
`[] ustant1a ev1 ence supporte
`
`‘
`
`1rect mtrmgement ny secon competltor.
`
`Affirmed in part, reversed in part, and remanded.
`
`IV ayer, Circuit Ju ge,
`
`e
`
`1ssentmg opinion.
`
`
`13 U.S.P.Q.2d 1097
`
`73 F-3'1245
`
`nite States Court 0 Appea s,
`
`Iligita River, Inc., De e11 ant.
`
`3 ac 'groun : Patentee nroug 1t mtrmgement act10n agalnst competltors, a eglng mfrmgement 01 patents re atmg to an e-
`._,
`commerce system an. met 10 provu mg 10sts w1t 1 transparent. context sens1t1ve e-commerce supporte pages.
`
`Shopify Exhibit 1017
`
`Jury returne a ver 1ct agalnst competitors, competitors 11 e
`
`renewe motlons tor Ju gment as a matter of aw (JMOL).
`
`. 11d one competitor moved for a new trial. The United States District Court for the Eastern District of Texas,
`
`I! 954 F.Supp.2d 509, denied motion. Competitors appealed.
`
`‘ tter a
`
`Holdings: he Court of Appeals, Chen, Circuit Judge, held that:
`
`c a1ms 01 one patent were 111va 1 as ant1c1pateo;
`
`.asserted claims of patents were not so manifestly abstract as to render them invalid for failing to claim patentable
`u Ject matter;
`
`atent was not inva 10 for 1n efmiteness; an
`
`[] ustant1a ev1 ence supporte
`
`‘
`
`1rect mtrmgement ny secon competltor.
`
`Affirmed in part, reversed in part, and remanded.
`
`IV ayer, Circuit Ju ge,
`
`e
`
`1ssentmg opinion.
`
`
`
`DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (2014)
`
`113 U.S.P.Q.2d 1097
`
`West Headnotes (22)
`
`[1]
`
`Federal Courts
`Taking case or question from jury; j udgment as a matter of law
`
`Court of Appeals reviews the denial of a motion for judgment as a matter of law de novo.
`
`1 Cases that cite this headnote
`
`[2]
`
`Federal Civil Procedure
`Weight and Sufficiency of Evidence
`
`Federal Civil Procedure
`Conclusions or inferences from evidence
`
`Federal Civil Procedure
`Evidence
`
`Judgment as a matter of law is appropriate if the facts and inferences point so strongly and overwhelmingly in
`favor of one party that the court concludes that reasonable jurors could not arrive at a contrary verdict.
`
`Cases that cite this headnote
`
`[3]
`
`Federal Courts
`Taking case or question from jury; j udgment as a matter of law
`
`In reviewing the denial of a motion for judgment as a matter of law, Court of Appeals must presume that the
`jury resolved all factual disputes in the prevailing party's favor.
`
`Cases that cite this headnote
`
`[4]
`
`Patents
`Extent of similarity or difference between prior art and claimed invention in general
`
`A patent claim is anticipated if a single prior art reference expressly or inherently discloses every limitation of
`the claim. 35 U.S.C.A. § 102(a).
`
`5 Cases that cite this headnote
`
`[5]
`
`Patents
`Construction of claims and comparison with prior art in general
`
`Anticipation challenges must focus only on the limitations actually recited in the patent claims. 35 U.S.C.A.
`§ 102(a).
`
`7 Cases that cite this headnote
`
`[6]
`
`Patents
`Novelty; a nticipation
`
`Whether a reference discloses a patent claim limitation is a question of fact reviewed for substantial evidence.
`
` © 2018 Thomson Reuters. No claim to original U.S. Government Works.
`
`2
`
`
`
`DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (2014)
`
`113 U.S.P.Q.2d 1097
`
`5 Cases that cite this headnote
`
`[7]
`
`Patents
`Degree of proof
`
`Invalidity of a patent by anticipation must be proven by clear and convincing evidence. 35 U.S.C.A. § 102(a).
`
`3 Cases that cite this headnote
`
`[8]
`
`Patents
`Particular products or processes
`
`Clear and convincing evidence in the record established that competitor's prior art secure sales system
`anticipated the asserted claims of patent relating to an e-commerce system and method providing hosts with
`transparent, context sensitive e-commerce supported pages, and thus patent was invalid as anticipated; like
`the patented system, competitor's system generated webpages that allowed website visitors to purchase and
`download digital products of their choice, but still retained the look and feel of the host's site. 35 U.S.C.A. §
`102(a).
`
`2 Cases that cite this headnote
`
`[9]
`
`Patents
`Patentability and Validity
`
`Court of Appeals reviews the district court's determination of patent eligibility de novo. 35 U.S.C.A. § 101.
`
`3 Cases that cite this headnote
`
`[10]
`
`Patents
`Laws of nature, natural phenomena, and abstract ideas; f undamental principles
`
`To distinguish patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim
`patent-eligible applications of those concepts, courts first determine whether the claims at issue are directed to
`one of those patent-ineligible concepts, and if so, then consider the elements of each claim—both individually
`and as an ordered combination—to determine whether the additional elements transform the nature of the
`claim into a patent-eligible application of that abstract idea. 35 U.S.C.A. § 101.
`
`303 Cases that cite this headnote
`
`[11]
`
`Patents
`Use or operation of machine or apparatus as affecting process; “machine or transformation” test
`
`Recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible. 35
`U.S.C.A. § 101.
`
`175 Cases that cite this headnote
`
`[12]
`
`Patents
`Business methods; I nternet applications
`
`Claims of patents relating to an e-commerce system and method providing hosts with transparent, context
`sensitive e-commerce supported pages, that involved storing and serving webpages having the similar look
`
` © 2018 Thomson Reuters. No claim to original U.S. Government Works.
`
`3
`
`
`
`DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (2014)
`
`113 U.S.P.Q.2d 1097
`
`and feel of another and different webpage, disclosed a specific set of physical linkages that involved a data
`store, server, computer, that together, and through the claimed interconnectivity, accomplished the process
`of displaying composite webpages having the look and feel of the source web page, and therefore the claims
`satisfied the machine-or-transformation test, and were not so manifestly abstract as to render them invalid for
`failing to claim patentable subject matter. 35 U.S.C.A. § 101.
`
`48 Cases that cite this headnote
`
`[13]
`
`Federal Courts
`Intellectual property
`
`Patent indefiniteness is a question of law that Court of Appeals reviews de novo. 35 U.S.C.A. § 112.
`
`3 Cases that cite this headnote
`
`[14]
`
`Patents
`Ambiguity, Uncertainty, or Indefiniteness
`
`Definiteness requirement for patents focuses on whether a patent's claims, viewed in light of the specification
`and prosecution history, inform those skilled in the art about the scope of the invention with reasonable
`certainty; the inquiry trains on the understanding of a skilled artisan at the time of the patent application. 35
`U.S.C.A. § 112.
`
`19 Cases that cite this headnote
`
`[15]
`
`Patents
`Lack of antecedent basis
`
`When a patent claim term depends solely on the unrestrained, subjective opinion of a particular individual
`purportedly practicing the invention, without sufficient guidance in the specification to provide objective
`direction to one of skill in the art, the term is indefinite. 35 U.S.C.A. § 112.
`
`11 Cases that cite this headnote
`
`[16]
`
`Patents
`Particular products or processes
`
`Phrase “look and feel” had an established, sufficiently objective meaning in the art, and thus patent relating to
`an e-commerce system and method providing hosts with transparent, context-sensitive e-commerce supported
`pages, which used such phrase consistent with that meaning was not invalid for indefiniteness. 35 U.S.C.A. §
`112.
`
`7 Cases that cite this headnote
`
`[17]
`
`Patents
`Particular fields of invention
`
`Substantial evidence supported jury's verdict of direct infringement as to the “look and feel” elements of patent
`relating to an e-commerce system and method providing hosts with transparent, context-sensitive e-commerce
`supported pages; jury had published images of all nine website pairs as evidence before it to make the ultimate
`factual determination that the look and feel of the host corresponded to the accused websites, and patentee
`
` © 2018 Thomson Reuters. No claim to original U.S. Government Works.
`
`4
`
`
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`DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (2014)
`
`113 U.S.P.Q.2d 1097
`
`presented expert testimony comparing the website pairs for substantial similarities and listing out the similarities
`in a demonstrative exhibit before the jury.
`
`1 Cases that cite this headnote
`
`[18]
`
`Federal Courts
`Interest
`
`Court of Appeals reviews a district court's award of prejudgment interest for an abuse of discretion.
`
`Cases that cite this headnote
`
`[19]
`
`Interest
`Particular cases and issues
`
`Prejudgment interest should ordinarily be awarded after a finding of patent infringement, absent some
`justification for withholding such an award. 35 U.S.C.A. § 284.
`
`3 Cases that cite this headnote
`
`[20]
`
`Patents
`In general; u tility
`
`US Patent 6,629,135. Cited.
`
`Cases that cite this headnote
`
`[21]
`
`Patents
`In general; u tility
`
`US Patent 6,993,572. Invalid.
`
`Cases that cite this headnote
`
`[22]
`
`Patents
`In general; u tility
`
`US Patent 7,818,399. Infringed.
`
`Cases that cite this headnote
`
`Attorneys and Law Firms
`
`*1248 Louis J. Hoffman, Hoffman Patent Firm, of Scottsdale, AZ, argued for Plaintiff–Appellee. On the brief was Ian
`B. Crosby, Susman Godfrey LLP, of Seattle, WA.
`
`Norman H. Zivin, Cooper & Dunham LLP, of New York, NY, argued for Defendants–Appellants, National Leisure
`Group, Inc., et al. With him on the brief was Tonia A. Sayour.
`
`Before WALLACH, MAYER, and CHEN, Circuit Judges.
`
` © 2018 Thomson Reuters. No claim to original U.S. Government Works.
`
`5
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`
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`DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (2014)
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`113 U.S.P.Q.2d 1097
`
`Opinion
`
`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) appeal 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 invalid. The district court denied NLG's renewed motion for judgment as a matter of law
`(JMOL) on, inter alia, noninfringement and invalidity of the asserted patents. The district court subsequently entered a
`final judgment consistent with the jury's findings on infringement, validity, 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 noninfringement
`and invalidity of the ′399 patent. Because we conclude 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 priority date of September 17, 1998. Each of these patents is directed to
`systems and methods of generating a composite 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 explains that prior art systems allowed third-party merchants 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 creating 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 advertisement
`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 merchant, but retains the host
`website's *1249 “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 generated 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 comprising:
`
`a) a data store including a look and feel description 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
`
` © 2018 Thomson Reuters. No claim to original U.S. Government Works.
`
`6
`
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`DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (2014)
`
`113 U.S.P.Q.2d 1097
`
`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 provide 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 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 serving web pages offering commercial opportunities, 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 computer store and
`programmed to:
`
`(i) receive from the web browser of a computer user a signal indicating activation of one of the links displayed by
`one of the first web pages;
`
`*1250 (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) information associated with the commerce object associated with the link that has been activated, and (B) the
`plurality of visually perceptible 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 “visually
`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 merchant and the “look and feel” of the host website (i.e., “the plurality of visually perceptible
`elements visually corresponding to the [host web] page”).
`
` © 2018 Thomson Reuters. No claim to original U.S. Government Works.
`
`7
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`DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (2014)
`
`113 U.S.P.Q.2d 1097
`
`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 merchant'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 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 patents. NLG is a travel
`agency that sells cruises in partnership 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 advertisement 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 requested 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 defendants, 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 *1251 construction
`of: “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 others
`elements consistent through some or all of the website.” Id. For “visually perceptible elements,” 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 elements” 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 River—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 renewed 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 and ′399 patents
`are invalid under 35 U.S.C. § 101 because the claims are directed to patent-ineligible subject matter and invalid under
`35 U.S.C. § 112 ¶ 2 1 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 evidentiary rulings.
`
` © 2018 Thomson Reuters. No claim to original U.S. Government Works.
`
`8
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`DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (2014)
`
`113 U.S.P.Q.2d 1097
`
`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 motions 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 prejudgment 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 *1252 jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).
`
`II. DISCUSSION
`
` Since the denial of a motion for JMOL is not patent law-specific, regional circuit law applies. The
` [3]
` [2]
`[1]
`Fifth Circuit 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 appropriate if “the facts and inferences point so strongly and
`overwhelmingly in favor of one party that the court concludes that reasonable jurors could not arrive at a contrary
`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 district 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
` [7]
` [6]
` [5]
`[4]
`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 anticipation challenge). Whether a reference discloses a limitation 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., ––– U.S. ––––, 131 S.Ct. 2238, 2242, 180 L.Ed.2d 131 (2011).
`
`On appeal, the parties only dispute whether Digital River's prior art Secure Sales System (SSS) satisfies the “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.
`
`*1253 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 appearance 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 “correspondence of overall
`
` © 2018 Thomson Reuters. No claim to original U.S. Government Works.
`
`9
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`DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (2014)
`
`113 U.S.P.Q.2d 1097
`
`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
`[8]
`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 generating 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’ button” 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 Central Commerce Server.” J.A. 6202. This component of the SSS then generated and served composite web pages
`to 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” elements 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 *1254 page incorporating host website logo,
`colors, fonts), 6122 (example 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 elements being a “look and feel element” described in the specification
`that “convey[s] an overall appearance identifying a website.” J.A. 542. Consistent with the specification, the stipulated
`construction defines these “look and feel elements” that “convey an overall appearance identifying 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 incorporated 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” elements). And as explained above, the SSS
`was consistently 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 limitation found neither in the ′ 572 patent's claims nor the parties'
`stipulated construction. In particular, the district court introduced a requirement that the generated composite web
`page have an “overall match” in appearance with the host website, beyond what is expressly recited by the claims.
`
` © 2018 Thomson Reuters. No claim to original U.S. Government Works.
`
`10
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`DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (2014)
`
`113 U.S.P.Q.2d 1097
`
`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 selection 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 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,
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