DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (2014)
`13 U.S.P.Q.2d 1097
`
`ASAF SHIMSHOVITZ,JPatent Tr. & App. Bd., May 31, 2017
`
`73 F.3d 1245
`nited States Court of Appeals,
`
`Digital River, Inc., Defendant.
`
`No. 2013-1505,
`
`Background:|Patentee brought infringement action against competitors, alleging infringementof patents relating to an e-
`
`Shopify Exhibit 1017
`
`renewed motions for judgment as a matter of law (JMOL),
`jury returned a verdict against competitors, competitors filed
`and one competitor moved for a newtrial. The United States District Court for the Eastern District of Texas,
`Gilstrap}J.,J054 F.Supp.2d 509, denied motion. Competitors appealed.
`
`Holdings:
`
`[The Court of Appeals,f[Chen, Circuit Judge, held that:
`
`claims of one patent were invalid as anticipated;
`
`|2|fasserted claims of patents were not so manifestly abstract as to render them invalid for failing to claim patentable
`subject matter;
`
`atent was not invalid for indefiniteness; and
`
`irect infrmgement by second competitor.
`
`Affirmed in part, reversed in part, and remanded.
`
`Mayer, Circuit Judge,
`
`filed
`
`dissenting opinion.
`
`
`13 U.S.P.Q.2d 1097
`
`ASAF SHIMSHOVITZ,JPatent Tr. & App. Bd., May 31, 2017
`
`73 F.3d 1245
`nited States Court of Appeals,
`
`Digital River, Inc., Defendant.
`
`No. 2013-1505,
`
`Background:|Patentee brought infringement action against competitors, alleging infringementof patents relating to an e-
`
`Shopify Exhibit 1017
`
`renewed motions for judgment as a matter of law (JMOL),
`jury returned a verdict against competitors, competitors filed
`and one competitor moved for a newtrial. The United States District Court for the Eastern District of Texas,
`Gilstrap}J.,J054 F.Supp.2d 509, denied motion. Competitors appealed.
`
`Holdings:
`
`[The Court of Appeals,f[Chen, Circuit Judge, held that:
`
`claims of one patent were invalid as anticipated;
`
`|2|fasserted claims of patents were not so manifestly abstract as to render them invalid for failing to claim patentable
`subject matter;
`
`atent was not invalid for indefiniteness; and
`
`irect infrmgement by second competitor.
`
`Affirmed in part, reversed in part, and remanded.
`
`Mayer, Circuit Judge,
`
`filed
`
`dissenting 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
`
`
`
`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 &