`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`SHOPIFY, INC.,
`Petitioner
`
`v.
`
`DDR HOLDINGS, LLC,
`Patent Owner
`
`
`Case IPR2018-01011
`U.S. Patent 9,639,876
`
`Case IPR2018-01012
`U.S. Patent 9,043,228
`
`Case IPR2018-01014
`U.S. Patent 8,515,825
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`

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`Page i Case Nos. IPR2018-01011, 12 & 14
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`U.S. Patents 8,515,825,
`9,043,228 & 9,639,876
`
`TABLE OF CONTENTS
`Issues addressed ......................................................................................................... 1
`
`Argument.................................................................................................................... 2
`
`I. Overview of DDR patents, challenged claims, and file histories. ....................... 2
`
`II. The Petitions offer no reason for instituting IPRs to reconsider prior art
`
`addressed during examination and litigation. .......................................................... 13
`
`A. The examiner thoroughly considered the relied-upon art. ............................. 13
`
`B. The Petitions conceal the duplication and fail to explain why the Board
`
`should undertake a fresh consideration. ...................................................... 17
`
`C. The Petitions ignore “informative” rulings placing the burden on
`
`Petitioner to justify re-evaluation of previously considered art. ................. 18
`
`III. None of the references disclose corresponding “overall appearance”
`
`between a host and an outsource provider page, as claimed. .................................. 23
`
`A. Construction of key terms. ............................................................................. 24
`
`1. “Merchant” ..................................................................................................25
`
`2. “Commerce object” .....................................................................................25
`
`3. “Outsource provider” ..................................................................................27
`
`4. “Host/owner” ...............................................................................................28
`
`B. Ground 1: Digital River does not obviate the claims. .................................... 28
`
`C. Ground 2: Moore does not anticipate the claims. ........................................... 33
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`

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`Page ii Case Nos. IPR2018-01011, 12 & 14
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`U.S. Patents 8,515,825,
`9,043,228 & 9,639,876
`D. Ground 3: Adding Arnold to Moore does not obviate the claims. ................. 37
`
`E. Ground 4: The combination of Moore and the Digital River Publications
`
`does not obviate the claims. ........................................................................ 37
`
`IV. The Board should not institute an IPR proceeding. ........................................... 38
`
`
`
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`
`
`

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`Page iii Case Nos. IPR2018-01011, 12 & 14
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`U.S. Patents 8,515,825,
`9,043,228 & 9,639,876
`
`TABLE OF AUTHORITIES
`Cases
`Becton Dickinson & Co. v. B. Braun Mesungen AG, IPR2017-01586, Paper
`8 (Bd. App. Dec. 15, 2017) (informative) ............................................................19
`Cultec, Inc. v. StormTech LLC, IPR2017-00777, Paper No. 7 (Bd. App. Aug.
`22, 2017) (informative) .........................................................................................21
`DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) ..... passim
`DDR Holdings, LLC v. Hotels.com, L.P., 954 F. Supp. 2d 509 (E.D. Tex.
`2013) .......................................................................................................... 2, 23, 29
`Harmonic Inc. v. Avid Tech, Inc., 815 F.3d 1356 (Fed. Cir. 2016) .........................13
`Hospira, Inc. v. Genentech, Inc., IPR2017-00739, Paper No. 16 (Bd. App.
`July 27, 2017) ........................................................................................................33
`Nu Mark LLC v. Fontem Holdings 1, B.V., IPR201601309, Paper 11 (Bd.
`App. Dec. 15, 2016) ....................................................................................... 21, 22
`Unified Patent, Inc. v. Berman, IPR2016-01571, Paper 10 (Bd. App. Dec.
`14, 2016) (informative) .................................................................................. 18, 20
`Statutes
`35 U.S.C. § 313 .......................................................................................................... 1
`35 U.S.C. § 314(a) ........................................................................................... passim
`35 U.S.C. § 325(d) .................................................................................. 1, 13, 19, 33
`Other Authorities
`37 C.F.R. § 42.107(b) ................................................................................................ 1
`Rules
`Trial Practice Guide, 77 Fed. Reg. 48756 (Aug. 14, 2012) ....................................33
`Treatises
`R. Lee, “The PTAB Establishes Standards for Exercising Discretion to Deny
`Institution Under § 314(a) and § 325(d),” Buchanan PTAB Report (Oct.
`27, 2017) ...............................................................................................................19
`
`
`
`
`

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`Page iv Case Nos. IPR2018-01011, 12 & 14
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`U.S. Patents 8,515,825,
`9,043,228 & 9,639,876
`
`Description
`
`TABLE OF EXHIBITS
`Ex. No.
`2001 U.S. Patent 6,993,572
`2002 U.S. Patent 7,818,399
`2003 D. Del. decision denying motion to dismiss
`2004
`File history of S.N. 12/906,979 (issued as U.S. Patent 8,515,825)
`2005
`File history of S.N. 13/970,515 (issued as U.S. Patent 9,043,228)
`2006
`File history of S.N. 14/719,009 (issued as U.S. Patent 9,639,876)
`2007
`List of Digital River references of record
`2008 Compendium of Digital River references of record
`2009
`[Reserved]
`2010 Moore-related charts from IDSs
`2011 Arnold-related charts from IDSs
`2012 Memorandum Opinion and Order denying JMOL and new trial motions,
`Case No. 2:06-CV-00042-DF-CMC, June 20, 2013
`2013
`[Reserved]
`[Reserved]
`2014
`2015 Claim Construction Order, Case No. 2:06-CV-00042-DF-CMC,
`November 21, 2011
`2016
`[Reserved]
`2017 Opinion & Order denying Digital River’s Motion for Summary
`Judgment, Case No. 2:06-CV-00042-DF-CMC, October 3, 2012
`[Reserved]
`2018
`[Reserved]
`2019
`[Reserved]
`2020
`2021 Demonstrative exhibit showing where relied-on quotes from uncited
`Digital River exhibits are present in cited Digital River art of record
`[Reserved]
`[Reserved]
`
`2022
`2023
`
`

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`Page 1 Case Nos. IPR2018-01011, 12 & 14
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`U.S. Patents 8,515,825,
`9,043,228 & 9,639,876
`
`Issues addressed
`
`Pursuant to 35 U.S.C. § 313 and 37 C.F.R. § 42.107(b), Patent Owner
`
`presents this Consolidated Preliminary Response to demonstrate that the Board
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`should not institute an Inter Partes Review (“IPR”) on any of these three Petitions,
`
`which address three related patents (U.S. Patent 9,639,876 is a continuation of U.S.
`
`Patent 9,043,228, which is a continuation of U.S. Patent 8,515,825) and which urge
`
`identical “grounds” for invalidation, using the same exhibits and exhibit numbers.
`
`Because the issues are so related, copies of this Consolidated Preliminary
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`Response is being filed in all three case numbers, in identical form, so the Board
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`need not worry about reading multiple versions. Three other Petitions, filed by the
`
`same Petitioner at the same time, offer different grounds to invalidate the same
`
`three patents, Patent Owner responds to those in a separate consolidated paper.
`
`This paper shows why the Board should not institute any of the IPRs for
`
`either of two reasons:
`
`1.
`
`The Petitions propose “grounds” that rely on the most significant
`
`references considered by the examiner during original prosecution, which occurred
`
`in parallel with or after earlier litigation. Because the Petitions thus present “the
`
`same or substantially the same prior art or arguments,” the Board should deny
`
`institution under 35 U.S.C. §§ 314(a) or 325(d).
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`

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`Page 2 Case Nos. IPR2018-01011, 12 & 14
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`U.S. Patents 8,515,825,
`9,043,228 & 9,639,876
`The Petitions fail to meet the burden of showing “a reasonable
`
`2.
`
`likelihood that the petitioner would prevail” (35 U.S.C. § 314(a)) in demonstrating
`
`that the challenged patent claims are anticipated or obvious, because the Petitions
`
`fail to demonstrate that any of the relied-upon references disclose at least one key
`
`limitation of the inventions defined by each challenged independent claim.
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`Because the situation is so clear, Patent Owner does not address the Petitions’
`
`challenges to other elements or dependent claims (but reserves the right to do so).
`
`Argument
`
`I.
`
`Overview of DDR patents, challenged claims, and file histories.
`
`The challenged patents are continuations of a parent patent (U.S. Patent
`
`7,818,399, Ex. 2002) that survived a hotly contested multi-party trial and appeal to
`
`the Federal Circuit, yielding an often-cited decision on 35 U.S.C. § 101. DDR
`
`Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258-59 (Fed. Cir. 2014).
`
`The first of the three patents challenged here issued after DDR won the
`
`district court trial in connection with both the parent and a grandparent patent (U.S.
`
`Patent 6,993,572, Ex. 2001) having the same specification, and after the examiner
`
`considered all prior art cited by six independent defendants in that case. DDR
`
`Holdings, LLC v. Hotels.com, L.P., 954 F. Supp. 2d 509 (E.D. Tex. 2013) (Ex.
`
`2012). The second of the challenged patents issued after and as a result of DDR’s
`
`2014 win defending the parent patent on appeal. The third patent issued last year.
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`

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`Page 3 Case Nos. IPR2018-01011, 12 & 14
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`U.S. Patents 8,515,825,
`9,043,228 & 9,639,876
`All five of the patents – the three challenged here, the parent ‘399 patent,
`
`and the grandparent ‘572 patent – share a common specification, originally filed on
`
`September 17, 1999.1 This preliminary response cites the specification of the
`
`parent ‘399 patent, Ex. 2002, which is the one discussed by the Federal Circuit.
`
`All five of these related DDR patents refer to a claimed system and method
`
`designed to improve on known “affiliate programs.” See, e.g., parent ‘399 patent,
`
`2:12-53. Affiliate programs involve a “host” computer that in effect advertises a
`
`product sold by a third-party merchant (e.g., Amazon.com, id., 2:30), thus helping
`
`the merchant sell product, in exchange for compensation. The patent claims thus
`
`refer to an “outsource provider” between the “host” (e.g., affiliate) and a
`
`“merchant” selling product. The patent claims clarify that, despite selling a
`
`merchant’s product elsewhere, visual elements of a host’s website remain visible to
`
`the consumer. The “outsource provider” facilitates that result.
`
`More specifically: The challenged independent claims refer to apparatus and
`
`methods using an “outsource provider” server that, in response to selection of a
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`URL on a “source” web page, serves automatically (see ‘825 Patent, claim 1, part
`
`(b)) a generated “composite web page” containing (i) information related to a
`
`merchant’s product and (ii) “visually perceptible elements” that “visually
`
`1 There is an earlier provisional, filed September 17, 1998, which provides a
`priority date for most claims, including all independent claims, but explicit
`comparison of the provisional and regular specifications is not needed for purposes
`of this preliminary response.
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`

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`Page 4 Case Nos. IPR2018-01011, 12 & 14
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`U.S. Patents 8,515,825,
`9,043,228 & 9,639,876
`correspond[] to the source web page” (‘825 Patent, claim 1, part (ii)). Parallels to
`
`these core limitations appear in each of the other challenged independent claims,
`
`‘825 Patent, claim 11 (apparatus counterpart), ‘825 Patent, claim 17 (method claim
`
`with added limitation about “instructions direct[ing] the visitor computer to
`
`download data defining the visually perceptible elements”), ‘228 Patent, claim 1
`
`(specifies types of “elements”), ‘228 Patent, claim 9 (apparatus counterpart), ‘876
`
`Patent, claim 1 (serving instructions to cause the visitor computer to display the
`
`page), ‘876 Patent, claim 11 (apparatus counterpart).
`
`As the Federal Circuit found in determining that the claims of the parent
`
`‘399 patent contained an “inventive concept”: “[T]he claims at issue here specify
`
`how interactions with the Internet are manipulated to yield a desired result—a
`
`result that overrides the routine and conventional sequence of events ordinarily
`
`triggered by the click of a hyperlink. Instead 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
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`that presents product information from the third-party and visual ‘look and feel’
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`elements from the host website.” DDR Holdings, LLC v. Hotels.com, L.P., 773
`
`F.3d 1245, 1258-59 (Fed. Cir. 2014).
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`

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`Page 5 Case Nos. IPR2018-01011, 12 & 14
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`U.S. Patents 8,515,825,
`9,043,228 & 9,639,876
`The Federal Circuit noted that the invention was designed to solve a problem
`
`with prior art Internet-based techniques applicable to affiliate programs: The “loss
`
`of eyeballs” when a person switched away from a host website participating in a
`
`standard affiliate program: “The [parent ’399 patent’s] claims address the problem
`
`of 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, 773 F.3d at 1257.
`
`The Federal Circuit also held that “these claims stand apart because they 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.” 773 F.3d
`
`at 1257. Non-Internet concepts “did not have to account for the ephemeral nature
`
`of an Internet ‘location’ or the near-instantaneous transport between these locations
`
`made possible by standard Internet communication protocols, which introduces a
`
`problem that does not arise in the ‘brick and mortar’ context.” 773 F.3d at 1258.
`
`Recently, in the course of denying Petitioner’s motion to dismiss on Section
`
`101 grounds, a district court held that the same “inventive concept” found by the
`
`Federal Circuit with respect to the parent ‘399 patent equally applies to the three
`
`patents challenged by these Petitions. Ex. 2003.
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`

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`Page 6 Case Nos. IPR2018-01011, 12 & 14
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`U.S. Patents 8,515,825,
`9,043,228 & 9,639,876
`All five of the related DDR patents require three parties – namely a “host”
`
`(owner of first web page), a “outsource provider,” and a “merchant” (plus the
`
`customer doing the clicking of course). The parent ‘399 patent’s claims require all
`
`three of those parties to be distinct from one another. The claims of the other four
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`patents – namely the grandparent ‘572 patent and the three patents at issue here –
`
`require the “outsource provider” to be different from the “host” and also different
`
`from the “merchant,” but the “host” and the “merchant” could be the same entity.
`
`The district court ruled that the claims of the grandparent ‘572 patent could cover a
`
`situation where the “host” and the “merchant” were the same entity. Ex. 2017.
`
`In the same decision addressing Section 101, the Federal Circuit invalidated
`
`certain claims of the grandparent ‘572 patent as anticipated by the primary
`
`reference used in the current Petitions, namely Digital River art.2 DDR, 773 F.3d at
`
`1252-55. The Federal Circuit mainly used this reasoning: “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.”
`
`DDR, 773 F.3d at 1254.
`
`
`2 Digital River itself filed briefs in that appeal, but it settled before oral argument
`by paying the judgment against it and buying an ongoing license from DDR.
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`

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`Page 7 Case Nos. IPR2018-01011, 12 & 14
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`U.S. Patents 8,515,825,
`9,043,228 & 9,639,876
`However, as shown in the file histories, discussed next, in considering the
`
`applications that issued as the patents challenged here, the examiner decided
`
`explicitly that the arguments that Digital River and its co-defendants had made
`
`against the grandparent ‘572 patent did not apply to these claims. The examiner
`
`reached this conclusion despite understanding that, like the grandparent ‘572
`
`patent, each of the three applications had claims that could cover a situation where
`
`the “host” and the “merchant” were the same entity.
`
`The file histories of the three patents-at-issue are attached as Exhibits 2004,
`
`2005, and 2006.
`
`Prosecution resulting in the challenged ‘825 Patent: In application Serial No.
`
`12/906,979, which eventually issued as the ‘825 Patent, after some back-and-forth
`
`addressing various art references, the examiner issued on May 31, 2013, a Notice
`
`of Allowance. Ex. 2004 at 85-95. A month later, applicant filed a Supplemental
`
`Information Disclosure Statement, advising the examiner that the district judge had
`
`just upheld the jury verdict from the 2012 DDR v. Digital River and NLG trial. Id.
`
`at 34, 81-84. The IDS told the examiner, “the prior art invalidity arguments
`
`presented against the parent patent at trial centered on Digital River’s own
`
`operations, specifically a system called the ‘Secure Sales System,’ abbreviated
`
`‘SSS,’ which Digital River pointed out was working before the effective filing date
`
`and supported sales to its customers.” Id. at 83. The IDS further pointed out that
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`

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`Page 8 Case Nos. IPR2018-01011, 12 & 14
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`U.S. Patents 8,515,825,
`9,043,228 & 9,639,876
`the examiner had received previously “lots of materials regarding the Digital River
`
`SSS system” that was believed to “contain adequate information about the Digital
`
`River SSS, and provide a good representation of the SSS system as operational or
`
`as disclosed by Digital River before this application’s effective filing date.” Id. The
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`IDS referenced many previously disclosed printed publications about Digital
`
`River’s system and a previously disclosed Digital River expert report, summarized
`
`the information presented by Digital River at trial, and offered to provide further
`
`Digital River information from the trial. Id. at 83-84. Applicant then called the
`
`examiner to ensure that he reviewed the material, and the examiner confirmed that
`
`he had “considered” the IDS and maintained the allowance. Id. at 21, 23.
`
`Prosecution resulting in the challenged ‘228 Patent: In application Serial No.
`
`13/970,515, which eventually issued as the ‘228 Patent, in a March 2014 response
`
`to a first Office Action rejecting a single original claim, applicant presented a new
`
`claim set, reported on the status of the then-pending Federal Circuit appeal, and
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`indicated that applicant wished to obtain claims that would not be subject to the
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`same arguments. Ex. 2005 at 194-96 (claims) and 197-98 (remarks). Applicant
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`accompanied the response with a Supplemental IDS. Id.at 208 et seq..
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`As recorded in the examiner’s next action (which was a final rejection
`
`containing only a double-patenting rejection), the “Examiner wanted to review the
`
`references related to Digital River” and asked applicant’s attorney’s office for help.
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`

`

`Page 9 Case Nos. IPR2018-01011, 12 & 14
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`U.S. Patents 8,515,825,
`9,043,228 & 9,639,876
`Id. at 161. Applicant’s response recorded that applicant had delivered to the
`
`examiner a package assembling all earlier cited Digital River art “in a single
`
`place.” Id. at 146. Exhibit 2007 is a list of Digital River references provided to the
`
`examiner then, and Exhibit 2008 is a copy of the pile of references provided. The
`
`examiner received copies of 82 “NPL” (non-patent literature) references related to
`
`the Digital River SSS system. See list at Ex. 2007 and copies of the references at
`
`Ex. 2008. In all the Digital River SSS references totaled 341 pages. Ex. 2008.
`
`Applicant’s response provided another update on the pending Federal Circuit
`
`appeal and contained a discussion explicitly recapping the debate at trial over the
`
`Digital River art. Specifically, applicant explained:
`
`The primary distinction argued at trial was that the Digital River art
`
`failed completely to show even one outsourced page where visually
`
`perceptible elements copied from
`
`the host page produced a
`
`substantially similar overall appearance. Digital River carried over
`
`isolated elements from time to time from the host page to an
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`outsourced page and called that “matching look and feel” (or similar
`
`words) on occasion, but never was there evidence of any matching
`
`overall appearance. Other differences may exist, but given time limits
`
`at trial, the parties to the case focused on this point. The pending
`
`claim includes a “wherein” clause that says, “wherein the plurality of
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`

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`Page 10 Case Nos. IPR2018-01011, 12 & 14
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`U.S. Patents 8,515,825,
`9,043,228 & 9,639,876
`visually perceptible elements define an overall appearance of the
`
`composite page that, excluding the information associated with the
`
`commerce object, visually corresponds to the source web page ….”
`
`Ex. 2005 at 150.
`
`The examiner then made a Section 101 rejection based on the then-recent
`
`Supreme Court decision in Alice. Id. at 117-22. After the Federal Circuit released
`
`its above-mentioned decision involving the parent ‘399 patent and the grandparent
`
`‘572 patent, applicant responded to the Section 101 rejection comparing the new
`
`claims to the Federal Circuit opinion and explaining why the Federal Circuit’s
`
`invalidation of certain claims of the grandparent ‘572 patent should not result in
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`unpatentability of these claims. Id. at 53-60. Applicant there argued:
`
`
`
`The Office Action contains no art rejections, and the Examiner
`
`recently considered, yet again, the collection of art related to the
`
`Digital River SSS system and declined to enter a rejection. The court
`
`opinion invalidates certain claims of one of the parent patents,
`
`however. In response, the Examiner requested in the interview that the
`
`undersigned explain in this response how the claims pending here
`
`would not be anticipated by Digital River SSS art applying reasoning
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`parallel to the court decision.
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`

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`Page 11 Case Nos. IPR2018-01011, 12 & 14
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`U.S. Patents 8,515,825,
`9,043,228 & 9,639,876
`The answer is easy: The court invalidated certain claims of the
`
`
`
`parent ‘572 Patent by concluding that they did not contain claim
`
`language requiring an “overall match” between the websites…. The
`
`above comments are emphatically not equally applicable to the
`
`pending claims…. [T]he claim language here expressly requires
`
`overall appearance correspondence. Id. at 61-62 (emphasis added).
`
`The next action, a Notice of Allowance, withdrew the Section 101 rejection and
`
`referred to applicant’s remarks as “fully considered” and “persuasive.” Id. at 28.
`
`Prosecution resulting in the challenged ‘876 Patent: In Serial No.
`
`14/719,009, which eventually issued as the ‘876 Patent, the examiner made only a
`
`double-patenting rejection, which was quickly overcome, leading to allowance. Ex.
`
`2006 at 49, 53-57, 95, 100-04. The Notice of Allowance referred to “Other relevant
`
`prior art” that “is already considered and discussed for the parent applications”
`
`leading to all five earlier DDR patents. Id. at 56. The earlier Office Action
`
`contained reasons for allowance over prior art. Id. at 102-04. Applicant took care,
`
`after allowance, to file “comments” reminding the examiner that discussion of the
`
`Digital River art, which “the examiner had considered ‘yet again’” did not appear
`
`in the notices of allowance leading to the parent patents, because it was addressed
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`separately, as explained above. Id. at 45. The examiner then issued an interview
`
`report saying, “Examiner also confirmed that he had reviewed prior art in parent
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`

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`Page 12 Case Nos. IPR2018-01011, 12 & 14
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`U.S. Patents 8,515,825,
`9,043,228 & 9,639,876
`applications, including relevant prior art related to Digital River SSS (directly by
`
`study of the references and in view of the Court of Appeals decision).” Id. at 18.
`
`Summary of examiner decisions: As the examiner concluded, each of the
`
`claims of the three patents challenged here contain explicit limitations requiring the
`
`“overall match” in appearance that the Federal Circuit held had been lacking from
`
`the invalidated claims of the grandparent ‘572 patent. The ‘825 Patent, independent
`
`claim 1 at part (b)(ii), requires serving a “composite web page” that includes “a
`
`plurality of visually perceptible elements derived from the retrieved pre-stored data
`
`defining an overall appearance of the composite web page that, excluding the
`
`information associated with the commerce object, visually corresponds to the
`
`source web page ….” Claim 11 is an independent apparatus counterpart that recites
`
`a parallel limitation at part (b)(ii)(B). Independent claim 17 likewise contains a
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`parallel limitation at part (ii). The same is true for both the ‘228 Patent (see claim 1
`
`at part (ii), second “wherein” clause; claim 9 at same location) and for the ‘876
`
`Patent (see claim 1: “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 …”; claim 11 (same)).
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`These limitations were crucial to the examiner’s patentability decision.
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`

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`Page 13 Case Nos. IPR2018-01011, 12 & 14
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`U.S. Patents 8,515,825,
`9,043,228 & 9,639,876
`II. The Petitions offer no reason for instituting IPRs to reconsider prior
`
`art addressed during examination and litigation.
`
`The Board has discretion whether to institute an IPR. 35 U.S.C. § 314(a).
`
`More specifically, the Board has discretion to deny institution if “the same or
`
`substantially the same prior art or arguments previously were presented to the
`
`Office,” including during original prosecution. 35 U.S.C. § 325(d). The Board
`
`should deny institution under both Section 325(d) and Section 314(a). See
`
`Harmonic Inc. v. Avid Tech, Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“the PTO
`
`is permitted, but never compelled, to institute an IPR proceeding”).
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`A. The examiner thoroughly considered the relied-upon art.
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`The following list indexes the “grounds” identified in the Petitions for
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`challenging all three of the related patents, and it demonstrates that each “ground”
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`rely on the key art references known to the examiner during prosecution.
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`1.
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`The first “ground” is alleged obviousness over Digital River
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`publications (Exs. 1004-06). Digital River was the main, and essentially only, art
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`used in the district court trial, and it was the reason for the Federal Circuit
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`invalidating certain claims of the grandparent ‘572 patent. As explained in detail in
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`the discussion of the file history above, the examiner repeatedly considered “lots of
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`material” related to Digital River, and he reviewed specially the precise issue of
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`whether the claims of these three patents should suffer the same fate as the claims
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`Page 14 Case Nos. IPR2018-01011, 12 & 14
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`U.S. Patents 8,515,825,
`9,043,228 & 9,639,876
`that the Federal Circuit invalidated. Also as explained above, the examiner’s
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`decision to allow all three of these patents turned on specific and detailed analysis
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`of many Digital River-related publications and the conclusion that the then-
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`pending claims were patentably distinct from that collection of art.
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`For the independent claims, the Petitions here specifically use only three
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`printed publications discussing the “Digital River SSS” system. Exs. 1004-06; see
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`also Exs. 1007-09 (applied to dependent claims). A demonstrative exhibit
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`submitted here, Exhibit 2021, compares the disclosure of those specific
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`publications to the Digital River-related publications that the examiner reviewed in
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`the pile submitted to him. Exhibit 2021 demonstrates that, although one of the
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`specific publications cited by the Petitions (and a couple of brief pages of another)
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`was not before the examiner, the examiner saw the same substance.
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`More specifically, the Petitions cite a four-page flyer or brochure (Ex. 1004),
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`an April 1997 website (Ex. 1005), and a December 1997 website (Ex. 1006). The
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`examiner in the patents-at-issue received and reviewed the entirety of the
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`referenced April 1997 and the main web page of the referenced December 1997
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`website. See Ex. Ex. 2004 at 1668-69, 2874-75 (items 135 and 148); Ex. 2005 at
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`388, 420 (items 257 and 270); Ex. 2006 at 120, 283 (items 266 and 279); Ex. 2008
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`at 59-60, 128-29. The examiner did not receive the specific Digital River brochure
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`relied on here (Ex. 1004) and a landing page and secondary page from the
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`Page 15 Case Nos. IPR2018-01011, 12 & 14
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`U.S. Patents 8,515,825,
`9,043,228 & 9,639,876
`December 1997 website (Ex. 1006 at 1, 3). However, he received and reviewed a
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`different Digital River brochure – one that was much longer and more detailed (see
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`Ex. 2008 at 173-82; Ex. 2004 at 1670, 2876 (at item 165); Ex. 2005 at 389, 421 (at
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`item 287); Ex. 2006 at 121, 284 (at item 296)) – as well as Digital River “white
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`papers,” the company S-1, press releases, customer contracts, example websites,
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`correspondence with customers, and marketing materials. Exs. 2007-08.
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`The materials about Digital River’s system that the examiner reviewed
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`contained substantially the same information as what is disclosed in the uncited
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`parts of the Petition-cited materials. See Ex. 2021 (demonstrative exhibit showing
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`parallel information available to what the Petitions quote from uncited portions of
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`the Petitions’ references). In actuality, the examiner-reviewed information was
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`more detailed than the Petition-cited information. Id.
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`Indeed, the Petitions (at fn. 1) acknowledge that the Digital River references,
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`although “may be viewed … together as a whole,” apparently because “the printed
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`publications describe the Digital River system,” and contend that its “Grounds” for
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`invalidity “do not stand or fall on the status of any one of these printed
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`publications.” In the same vein, it should not matter that the examiner had a large
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`quantity of Digital River materials – an overlapping set of printed publications –
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`disclosing the same kinds of information, about the same system, in front of him.
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`Page 16 Case Nos. IPR2018-01011, 12 & 14
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`U.S. Patents 8,515,825,
`9,043,228 & 9,639,876
`The second “ground” is alleged anticipation by Moore (U.S. Patent
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`2.
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`6,330,575, Ex. 1010). The file histories of the three patents show that the examiner
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`reviewed Moore. Ex. 2004 at 1651, 1782 (item 1); Ex. 2005 at 378, 410 (item 83);
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`Ex. 2006 at 110, 273 (item 86). Moore was not, moreover, just one of a large
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`number of references cited in IDS filings. Rather, defendants in the prior litigation
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`submitted “invalidity charts” accompanying both their invalidity contentions and
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`their expert’s report, and the examiner reviewed those materials. Ex. 2004 at 157,
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`159; Ex. 2005 at 393-94, 396; Ex. 2006 at 125-26, 128. Moore was one of the key
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`references for which defendants submitted claim charts, and the examiner reviewed
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`those charts. Exhibit 2010 collects the Moore-related charts and expert report
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`excerpts that the examiner reviewed.
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`3.
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`The third “ground” is alleged obviousness over Moore in view of
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`Arnold (U.S. Patent 6,016,504, Ex. 1011). Again, applicant disclosed Arnold to the
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`examiner during prosecution, and the examiner considered Arnold. Ex. 2004 at
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`1662, 2868 (item B); Ex. 2005 at 378, 410 (item 68); Ex. 2006 at 110, 273 (item
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`71). Also, as noted in the file history discussion above, the examiner confirmed
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`that he had reviewed the files related to the parent patents. Ex. 2006 at 18. Again,
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`Arnold was not “just another reference.” Rather, the grandparent ‘572 patent was
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`earlier involved in a reexamination matter, which resulted in an appeal to this
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`Board, and Arnold was the sole reference in that appeal. Ex. 1018. Moreover, the
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`Page 17 Case Nos. IPR2018-01011, 12 & 14
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`U.S. Pate