`
`
`
`
`
`KeyCite Red Flag - Severe Negative Treatment
`Affirmed in Part, Reversed in Part and Remanded by DDR Holdings,
`LLC v. Hotels.com, L.P., Fed.Cir.(Tex.), December 5, 2014
`954 F.Supp.2d 509
`United States District Court,
`E.D. Texas,
`Marshall Division.
`
`DDR HOLDINGS, LLC, Plaintiff and
`Counterdefendant,
`v.
`HOTELS.COM, L.P., et al., Defendants and
`Counterclaimants.
`
`Civil Action No. 2:06–cv–42–JRG.
`|
`June 20, 2013.
`
`Synopsis
`Background: Patentee brought
`infringement action
`against competitors, alleging infringement of patents
`relating to an e-commerce system and method providing
`hosts with transparent, context sensitive e-commerce
`supported pages. After a jury returned a verdict against
`competitors, competitors filed renewed motions for
`judgment as a matter of law (JMOL), and one competitor
`moved for a new trial.
`
`
`
`Holdings: The District Court, Rodney Gilstrap, J., held
`that:
`
`[1] asserted claims of one patent were not invalid as
`anticipated;
`
`[2] substantial evidence supported finding of direct
`infringement by first competitor;
`
`[3] substantial evidence supported finding of direct
`infringement by second competitor; and
`
`[4] asserted claims of patents were not so manifestly
`abstract as to render them invalid for failing to claim
`patentable subject matter.
`
`
`
`Motions denied.
`
`
`
`
`
`
`
`West Headnotes (35)
`
`[1]
`
`
`
`
`Courts
`Particular questions or subject matter
`
`
`The grant or denial of a motion for judgment as
`a matter of law (JMOL) is a procedural issue not
`unique to patent law, reviewed under the law of
`the regional circuit in which the appeal from the
`district court would usually
`lie. Fed.Rules
`Civ.Proc.Rule 50(a), 28 U.S.C.A.
`
`Cases that cite this headnote
`
`
`
`
`
`[2]
`
`
`
`
`
`
`
`[3]
`
`
`Federal Civil Procedure
`Evidence
`Federal Courts
`Verdict
`Federal Courts
`Taking case or question from jury;  judgment
`as a matter of law
`
`In reviewing the grant or denial of a motion for
`judgment as a matter of law (JMOL), the Fifth
`Circuit uses the same standard to review the
`verdict that the district court used in first passing
`on the motion; thus, a jury verdict must be
`upheld, and judgment as a matter of law may not
`be granted, unless there is no legally sufficient
`evidentiary basis for a reasonable jury to find as
`the jury did. Fed.Rules Civ.Proc.Rule 50(a), 28
`U.S.C.A.
`
`1 Cases that cite this headnote
`
`
`Federal Civil Procedure
`Construction of evidence
`Federal Courts
`Weight or preponderance of evidence in
`general
`Federal Courts
`Credibility and impeachment
`Federal Courts
`Taking case or question from jury;  judgment
`
`DDR Holdings, LLC - Ex. 2012
`Shopify, Inc. v. DDR Holdings, LLC
`IPR2018-01011
`
`

`

`
`
`
`
`
`[4]
`
`
`
`
`
`
`
`[5]
`
`
`
`
`as a matter of law
`Federal Courts
`Taking case or question from jury;  judgment
`as a matter of law
`
`In reviewing the grant or denial of a motion for
`judgment as a matter of law (JMOL), a court
`reviews all evidence in the record and must
`draw all reasonable inferences in favor of the
`nonmoving party; however, a court may not
`make credibility determinations or weigh the
`evidence, as those are solely functions of the
`jury. Fed.Rules Civ.Proc.Rule 50(a), 28
`U.S.C.A.
`
`Cases that cite this headnote
`
`
`Federal Civil Procedure
`Weight and Sufficiency of Evidence
`Federal Civil Procedure
`Evidence
`
`
`A moving party is entitled to judgment as a
`matter of law (JMOL) only if the evidence
`points so strongly and so overwhelmingly in
`favor of the nonmoving party that no reasonable
`juror could return a contrary verdict. Fed.Rules
`Civ.Proc.Rule 50(a), 28 U.S.C.A.
`
`Cases that cite this headnote
`
`
`Federal Civil Procedure
`Weight of evidence
`Federal Civil Procedure
`Presumptions; construction of evidence
`
`
`On a motion for a new trial, the court must view
`the evidence in a light most favorable to the
`jury’s verdict, and the verdict must be affirmed
`unless the evidence points so strongly and
`overwhelmingly in favor of one party that the
`court believes that reasonable persons could not
`arrive at a contrary conclusion. Fed.Rules
`Civ.Proc.Rule 59(a), 28 U.S.C.A.
`
`Cases that cite this headnote
`
`
`
`
`
`
`
`
`
`
`
`
`
`[6]
`
`
`
`
`[7]
`
`
`
`
`[8]
`
`
`
`
`[9]
`
`
`
`
`
`
`Patents
`Ambiguity, Uncertainty, or Indefiniteness
`
`
`Purpose of patent law’s definiteness requirement
`is to ensure that the claims delineate the scope of
`the invention using language that adequately
`notifies the public of the patentee’s right to
`exclude. 35 U.S.C.A. § 112.
`
`Cases that cite this headnote
`
`
`Patents
`Ambiguity, Uncertainty, or Indefiniteness
`
`
`A claim is indefinite under patent law when it
`depends solely on the unrestrained, subjective
`opinion of a particular individual purportedly
`practicing the invention. 35 U.S.C.A. § 112.
`
`Cases that cite this headnote
`
`
`Patents
`Questions of law or fact
`
`
`Whether a patent claim fails for indefiniteness is
`a question of law for the court to decide. 35
`U.S.C.A. § 112.
`
`1 Cases that cite this headnote
`
`
`Patents
`Ambiguity, Uncertainty, or Indefiniteness
`
`
`Patent claims need not have mathematically
`precise boundaries to satisfy the definiteness
`requirement so
`long as
`the patent gives
`examples and general guidelines. 35 U.S.C.A. §
`112.
`
`Page 2
`
`

`

`Cases that cite this headnote
`
`
`Cases that cite this headnote
`
`
`
`
`
`[10]
`
`
`
`
`
`
`
`[11]
`
`
`
`
`Patents
`Ambiguity, Uncertainty, or Indefiniteness
`Patents
`Evidence
`
`
`A finding of indefiniteness under patent law
`must overcome the statutory presumption of
`validity;
`that
`is,
`the standard for finding
`indefiniteness is met where an accused infringer
`shows by clear and convincing evidence that a
`skilled artisan could not discern the boundaries
`of the claim based on the claim language, the
`specification, and the prosecution history, as
`well as her knowledge of the relevant art area.
`35 U.S.C.A. §§ 112, 282.
`
`1 Cases that cite this headnote
`
`
`Patents
`Particular products or processes
`
`
`Substantial evidence supported jury’s finding
`that alleged infringer’s prior art system did not
`satisfy 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, as
`required
`to
`render
`the patent
`invalid as
`anticipated by the prior art system; alleged
`infringer’s vice president of product and
`innovation
`testified
`that alleged
`infringer’s
`earlier
`systems had much more
`limited
`functionality than the recent, infringing systems,
`had technical constraints that made it difficult to
`emulate sites, relied on rigid predefinition of
`templates, only had a logo match, and required a
`logo to appear at a fixed location absent a hack
`to change location, and patentee’s expert witness
`also offered his opinion that the prior art system
`and related publications failed to show any
`overall match of appearance because the pair of
`websites alleged infringer presented basically
`had a matching logo, which fell short of being
`“based on” the host’s “look and feel.”
`
`
`
`
`[12]
`
`
`
`
`
`
`
`[13]
`
`
`
`
`
`
`
`[14]
`
`
`Patents
`Particular fields of invention
`
`
`Substantial evidence supported jury’s verdict of
`direct infringement of patent relating to an
`e-commerce system and method providing hosts
`with transparent, context sensitive e-commerce
`supported pages, by three of alleged infringer’s
`customers’ websites, in light of the exhibits of
`the product pages for each customer’s host
`website and patentee’s infringement expert’s
`comparison to each customer’s outsourced store
`page served by alleged infringer’s accused
`system.
`
`Cases that cite this headnote
`
`
`Patents
`Answer or Other Responsive Pleading
`
`
`to an
`infringer of patent relating
`Alleged
`e-commerce system and method providing hosts
`with transparent, context sensitive e-commerce
`supported pages did not waive its defense that
`there was no substantial evidence in the record
`that it stored the “look and feel” information as
`required by the asserted claims because the
`servers were neither owned nor operated by
`alleged infringer, even though alleged infringer
`failed to disclose the defense in advance of trial,
`where the defense was based on patentee’s
`expert’s revelation during cross-examination
`that he did not investigate the location or owner
`of the servers that he alleged were involved in
`infringement. Fed.Rules Civ.Proc.Rule 37(c)(1),
`28 U.S.C.A.
`
`Cases that cite this headnote
`
`
`Patents
`Particular fields of invention
`
`
`
`Page 3
`
`

`

`
`
`[15]
`
`
`
`
`[16]
`
`
`
`
`Substantial evidence existed in the record to
`allow a reasonable inference by the jury that
`servers provided by a third party were under the
`direction and control of alleged infringer, as
`required by asserted claims of patent relating to
`an e-commerce system and method providing
`hosts with
`transparent,
`context
`sensitive
`e-commerce supported pages; alleged infringer’s
`vice president of product and
`innovation
`testified that alleged infringer had a contract
`with the third party to serve data from two of
`alleged
`infringer’s domains, and patentee’s
`expert testified that third party acted on behalf
`of alleged infringer by caching copies of alleged
`infringer’s content for faster access.
`
`Cases that cite this headnote
`
`
`Patents
`Nature and elements of injury
`
`
`To “use” a system for purposes of patent
`infringement, a party must put the invention into
`service, i.e., control the system as a whole and
`obtain
`benefit
`from
`it;
`the
`“control”
`contemplated does not have to be physical or
`direct control, but, rather, it is the ability to
`place the system as a whole into service.
`
`Cases that cite this headnote
`
`
`Patents
`Profits and damages
`
`
`The patentee bears the burden of proving
`damages in an infringement suit, including the
`burden to sufficiently tie the expert testimony on
`damages to the facts of the case.
`
`Cases that cite this headnote
`
`
`[17]
`
`
`Patents
`Particular fields of invention
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`[18]
`
`
`
`
`
`
`
`[19]
`
`
`
`
`Substantial evidence supported jury’s verdict of
`direct infringement as to the “look and feel”
`elements of patents 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 presented expert
`testimony comparing
`the website pairs for
`substantial similarities and
`listing out
`the
`similarities in a demonstrative exhibit before the
`jury.
`
`Cases that cite this headnote
`
`
`Patents
`Particular fields of invention
`
`
`Substantial evidence supported jury finding that
`alleged infringer’s computer processor was in
`communication through the Internet with the
`host web page, as required to directly infringe
`patent relating to an e-commerce system and
`method providing hosts with
`transparent,
`context sensitive e-commerce supported pages;
`patentee’s expert witness testified that “When
`the computer server receives a request, when a
`link is clicked on or activated on the host
`webpage, that’s how the host webpage is
`communicating through the Internet with the
`computer processor on the server.”
`
`Cases that cite this headnote
`
`
`Patents
`Questions of law or fact
`
`
`When opposing experts differ on how a patent
`claim limitation is met, it is up to the jury to
`decide which opinion is more credible in light of
`the evidence.
`
`Cases that cite this headnote
`
`
`Page 4
`
`

`

`
`
`
`[20]
`
`
`
`
`
`
`
`[21]
`
`
`
`
`[22]
`
`
`
`
`
`
`
`
`
`Patents
`Particular fields of invention
`
`
`Substantial evidence supported jury’s finding
`that alleged infringer infringed patents relating
`to an e-commerce system and method providing
`hosts with
`transparent,
`context
`sensitive
`e-commerce supported pages for more than the
`one day during which a screenshot was
`captured; patentee’s expert testified that, in
`forming his opinions, he considered the accused
`systems as a whole, including the dates of
`operation, how the systems operated, the current
`website, as well as past websites.
`
`Cases that cite this headnote
`
`
`Patents
`In general;  power of Congress
`
`
`In choosing expansive terms to define the four
`categories of inventions or discoveries eligible
`for patent protection, modified by
`the
`comprehensive
`“any,” Congress
`plainly
`contemplated that the patent laws would be
`given wide scope; Congress took this permissive
`approach to patent eligibility to ensure that
`ingenuity
`should
`receive
`a
`liberal
`encouragement. 35 U.S.C.A. § 101.
`
`Cases that cite this headnote
`
`
`Patents
`Laws of nature, natural phenomena, and
`abstract ideas;  fundamental principles
`
`Laws of nature and physical phenomena are not
`patentable
`subject matter because
`those
`categories embrace the basic tools of scientific
`and technological work. 35 U.S.C.A. § 101.
`
`Cases that cite this headnote
`
`
`
`
`[23]
`
`
`
`
`
`
`
`[24]
`
`
`
`
`
`
`
`
`
`
`[25]
`
`
`
`
`[26]
`
`
`
`
`Patents
`Questions of law or fact
`
`
`A court can determine invalidity of a patent for
`failing to claim patentable subject matter as a
`matter of law. 35 U.S.C.A. § 101.
`
`Cases that cite this headnote
`
`
`Patents
`Laws of nature, natural phenomena, and
`abstract ideas;  fundamental principles
`
`The rule against patents on naturally occurring
`things is not without limits, for all inventions at
`some level embody, use, reflect, rest upon, or
`apply laws of nature, natural phenomena, or
`abstract ideas, and too broad an interpretation of
`this exclusionary principle could eviscerate
`patent law.
`
`Cases that cite this headnote
`
`
`Patents
`Patents
`
`
`Patent protection strikes a delicate balance
`between creating incentives that lead to creation,
`invention, and discovery and impeding the flow
`of information that might permit, indeed spur,
`invention.
`
`Cases that cite this headnote
`
`
`Patents
`Laws of nature, natural phenomena, and
`abstract ideas;  fundamental principles
`Patents
`Mathematical formulas and algorithms
`
`
`A process is not unpatentable simply because it
`contains a law of nature or a mathematical
`algorithm, and an application of a law of nature
`
`Page 5
`
`

`

`
`
`
`[27]
`
`
`
`
`
`
`
`[28]
`
`
`
`
`
`
`
`[29]
`
`
`
`
`or mathematical formula to a known structure or
`process may well be deserving of patent
`protection.
`
`Cases that cite this headnote
`
`
`Patents
`Laws of nature, natural phenomena, and
`abstract ideas;  fundamental principles
`
`Abstractness places subject matter outside the
`statutory categories of inventions or discoveries
`eligible for patent protection; an abstract idea
`should exhibit itself so manifestly as to override
`the broad statutory categories of eligible subject
`matter and the statutory context that directs
`primary attention on the patentability criteria of
`the rest of the Patent Act. 35 U.S.C.A. § 101.
`
`Cases that cite this headnote
`
`
`Patents
`Laws of nature, natural phenomena, and
`abstract ideas;  fundamental principles
`
`applications or
`specific
`Inventions with
`technologies
`in
`the
`improvements
`to
`marketplace are not likely to be so abstract that
`they override
`the statutory
`language and
`framework of the Patent Act. 35 U.S.C.A. § 101.
`
`1 Cases that cite this headnote
`
`
`Patents
`Eligible subject matter
`
`
`All issued patent claims receive a statutory
`presumption of validity, and that presumption
`applies when a failure to claim patentable
`subject matter is raised as a basis for invalidity
`in district court proceedings. 35 U.S.C.A. § 101.
`
`Cases that cite this headnote
`
`
`
`
`[30]
`
`
`
`
`
`
`
`
`
`
`[31]
`
`
`
`
`[32]
`
`
`
`
`
`
`Patents
`Business methods;  Internet 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 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.
`
`Cases that cite this headnote
`
`
`Patents
`Laws of nature, natural phenomena, and
`abstract ideas;  fundamental principles
`
`applications or
`specific
`Inventions with
`technologies
`in
`the
`improvements
`to
`marketplace are not likely to be so abstract as to
`be ineligible for patent protection.
`
`1 Cases that cite this headnote
`
`
`Patents
`Use or operation of machine or apparatus as
`affecting process;  “machine or transformation”
`test
`
`Under the machine-or-transformation test, an
`invention
`is a process eligible for patent
`protection only if: (1) it is tied to a particular
`machine or apparatus, or (2) it transforms a
`particular article into a different state or thing;
`
`Page 6
`
`

`

`although the machine-or-transformation test is
`not the sole test for deciding whether an
`invention is patent-eligible, it is a useful and
`important indicator. 35 U.S.C.A. § 101.
`
`Cases that cite this headnote
`
`
`Patents
`Infringement or invalidity contentions
`
`
`Alleged infringer waived its enablement defense
`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; local
`patent rule required each party opposing a claim
`of patent
`infringement
`to serve
`invalidity
`contentions which disclosed any grounds of
`invalidity based on enablement, and alleged
`infringer did not put forward a
`lack of
`enablement based on
`the “look and feel”
`element at any point before trial either by
`complying with
`its disclosure obligations,
`responding to discovery, or in its invalidity
`expert report, and, further, alleged infringer did
`not raise the issue during trial.
`
`Cases that cite this headnote
`
`
`Patents
`In general;  utility
`
`
`US Patent 6,141,666, US Patent 6,629,135.
`Cited.
`
`Cases that cite this headnote
`
`
`Patents
`In general;  utility
`
`
`US Patent 6,993,572, US Patent 7,818,399.
`Valid and Infringed.
`
`
`
`
`[33]
`
`
`
`
`
`
`
`
`
`
`[34]
`
`
`
`
`[35]
`
`
`
`
`Cases that cite this headnote
`
`
`
`
`
`Attorneys and Law Firms
`
`*514 Louis J Hoffman, Louis J. Hoffman, P.C.,
`Scottsdale, AZ, Ophelia F. Camina, Leelle Krompass,
`Susman Godfrey LLP, Dallas, TX, George C. Chen,
`Bryan Cave LLP, Phoenix, AZ, Ian Bradford Crosby,
`Susman Godfrey, LLP, Seattle, WA, Michael Charles
`Smith, Siebman Burg Phillips & Smith, LLP, Marshall,
`TX, Scott A. Penner, Fish & Richardson, San Diego, CA,
`for Plaintiff and Counterdefendant.
`
`
`
`
`
`MEMORANDUM OPINION AND ORDER
`
`RODNEY GILSTRAP, District Judge.
`
`Before the Court are the parties’ post-trial motions.
`Having considered the parties’ written submissions, the
`Court: (1) DENIES Defendant Digital River, Inc.’s
`Renewed Motion for Judgment as a Matter of Law
`Pursuant to Fed.R.Civ.P. 50(b) (Dkt. No. 540); (2)
`DENIES National Leisure Group, Inc.’s and World
`Travel Holdings, Inc.’s Renewed Motion for Judgment as
`a Matter of Law Pursuant to Fed.R.Civ.P. 50(b) (Dkt. No.
`539); and (3) DENIES Defendant Digital River, Inc.’s
`Motion for New Trial Pursuant to Fed.R.Civ.P. 59 (Dkt.
`No. 562).
`
`
`
`
`I. BACKGROUND
`this patent
`filed
`(“DDR”)
`DDR Holdings, LLC
`infringement action against multiple defendants on
`January 31, 2006, alleging infringement of U.S. Patent
`Nos. 6,629,135 (“the ′135 patent”) and 6,993,572 (“the
`′572 patent”). The case was then stayed for almost four
`years until October 6, 2010, pending the reexamination
`proceedings at
`to both of
`the patents-in-suit. On
`September 9, 2011, DDR amended its complaint to add
`additional infringement allegations of
`
`Page 7
`
`

`

`7,818,399 (“the ′399 patent”). This case went to trial on
`October 8, 2012 against Digital River, Inc. (“Digital
`River”), National Leisure Group, Inc., and world Travel
`Holdings, Inc. (collectively, “NLG”). Following a five
`day trial, the jury returned a unanimous verdict finding
`that Digital River infringed claims 13, 17, and 20 of the
`′572 patent and awarded damages to DDR of $750,000 for
`the period of the issue date of *515 the patent, January 31,
`2006, through the verdict date, October 12, 2012. The
`jury also found that NLG infringed claims 13, 17, and 20
`of the ′ 572 patent and claims 1, 3, and 9 of the ′399
`patent and awarded damages to DDR of $750,000 for the
`period of the earliest issue date, January 31, 2006, through
`the verdict date. The jury did not find either infringement
`to be willful. The jury further found that claims 13, 17,
`and 20 of the ′572 patent was not invalid.
`
`
`
`
`II. APPLICABLE LAW REGARDING RULE 50
`[1] [2] Judgment as a matter of law is only appropriate
`when “a reasonable jury would not have a legally
`sufficient evidentiary basis to find for the party on that
`issue.” Fed.R.Civ.P. 50(a). “The grant or denial of a
`motion for judgment as a matter of law is a procedural
`issue not unique to patent law, reviewed under the law of
`the regional circuit in which the appeal from the district
`court would usually lie.” Finisar Corp. v. DirecTV Group,
`Inc., 523 F.3d 1323, 1332 (Fed.Cir.2008). The Fifth
`Circuit “uses the same standard to review the verdict that
`the district court used in first passing on the motion.”
`Hiltgen v. Sumrall, 47 F.3d 695, 699 (5th Cir.1995). Thus,
`a jury verdict must be upheld, and judgment as a matter of
`law may not be granted, unless “there is no legally
`sufficient evidentiary basis for a reasonable jury to find as
`the jury did.” Id. at 700. The jury’s verdict must be
`supported by “substantial evidence” in support of each
`element of the claims. Am. Home Assurance Co. v. United
`Space Alliance, 378 F.3d 482, 487 (5th Cir.2004).
`
`[3] [4] A court reviews all evidence in the record and must
`draw all reasonable inferences in favor of the nonmoving
`party; however, a court may not make credibility
`determinations or weigh the evidence, as those are solely
`functions of the jury. See Reeves v. Sanderson Plumbing
`Prods., Inc., 530 U.S. 133, 150–51, 120 S.Ct. 2097, 147
`L.Ed.2d 105 (2000). The moving party is entitled to
`judgment as a matter of law “only if the evidence points
`so strongly and so overwhelmingly in favor of the
`nonmoving party that no reasonable juror could return a
`contrary verdict.” Int’l Ins. Co. v. RSR Corp., 426 F.3d
`281, 296 (5th Cir.2005).
`
`
`
`
`
`III. APPLICABLE LAW REGARDING RULE 59
`[5] Under Rule 59(a) of the Federal Rules of Civil
`Procedure, a new trial can be granted to any party to a
`jury trial on any or all issues “for any reason for which a
`new trial has heretofore been granted in an action at law
`in federal court.” Fed.R.Civ.P. 59(a). “A new trial may be
`granted, for example, if the district court finds the verdict
`is against the weight of the evidence, the damages
`awarded are excessive, the trial was unfair, or prejudicial
`error was committed in its course.” Smith v. Transworld
`Drilling Co., 773 F.2d 610, 612–13 (5th Cir.1985). The
`Court must view the evidence “in a light most favorable
`to the jury’s verdict, and [ ] the verdict must be affirmed
`unless
`the
`evidence
`points
`so
`strongly
`and
`overwhelmingly in favor of one party that the court
`believes that reasonable persons could not arrive at a
`contrary conclusion.” Dawson v. Wal–Mart Stores, Inc.,
`978 F.2d 205, 208 (5th Cir.1992).
`
`
`
`
`IV. DIGITAL RIVER’S RENEWED MOTION FOR
`JUDGMENT AS A MATTER OF LAW PURSUANT
`TO FED. R. CIV. P. 50(B) (DKT. NO. 540)
`Digital River seeks judgment as a matter of law pursuant
`to Fed.R.Civ.P. 50(b) that (1) the asserted claims are
`invalid *516 under 35 U.S.C. § 112 as indefinite; (2) the
`asserted claims are invalid under 35 U.S.C. §§ 102 and
`103 as anticipated and/or obvious; (3) the asserted claims
`are invalid under 35 U.S.C. § 101 as directed to subject
`matter that is not eligible for patent protection; (4) Digital
`River does not directly infringe the asserted claims; and
`(5) DDR did not prove that it is entitled to any damages.
`
`
`
`
`A. The asserted claims are not invalid under 35
`U.S.C. § 112 as indefinite
`Digital River contends that it is entitled to judgment as a
`matter of law that the asserted claims are invalid as
`indefinite because the patent specification lacks the
`required objective guidance to allow one of ordinary skill
`in the art to know when the claimed “look and feel”
`element has been achieved. (Dkt. No. 540, at 2.) As
`support, Digital River relies on Datamize, LLC v.
`Plumtree Software, Inc. where the Federal Circuit found
`the term “aesthetically pleasing” to be indefinite because
`the patentee “offered no objective definition identifying a
`standard for determining when an interface screen is
`
`Page 8
`
`

`

`1350
`1342,
`F.3d
`417
`pleasing.”
`aesthetically
`this Court does not find
`(Fed.Cir.2005). However,
`“aesthetically pleasing” to be analogous to the concept of
`“look and feel” in this case.
`
`[6] [7] [8] 35 U.S.C. § 112 ¶ 2 requires claims to particularly
`point out and distinctly claim the subject matter which the
`applicant regards as his invention. The purpose of the
`definiteness requirement is to ensure that the claims
`delineate the scope of the invention using language that
`adequately notifies the public of the patentee’s right to
`exclude. Honeywell Int’l Inc. v. Int’l Trade Comm’n, 341
`F.3d 1332, 1338 (Fed.Cir.2003). A claim is indefinite
`when it depends “solely on the unrestrained, subjective
`opinion of a particular individual purportedly practicing
`the invention.” Datamize, 417 F.3d at 1350. However,
`“[i]f the meaning of the claim is discernible, even though
`the task may be formidable and the conclusion may be
`one over which reasonable persons will disagree, we have
`held the claim sufficiently clear to avoid invalidity on
`indefiniteness grounds.” Exxon Research & Eng’g Co. v.
`United States, 265 F.3d 1371, 1375 (Fed.Cir.2001).
`Whether a patent claim fails for indefiniteness is a
`question of law for the Court to decide. Id. at 1376.
`
`[9] This Court previously defined “look and feel” to be “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 [sic ] elements consistent through some or all of the
`website.” (Dkt. No. 309 at 10.) The claims define the
`question of whether the “look and feel” of the web pages
`that Digital River serves are “based on” the look and feel
`of the referring host site. A comparison of visual elements
`according to the Court’s construction between a pair of
`websites is precisely the type of infringement question for
`the trier of fact to decide. Such a comparison does not
`render the jury’s decision subjective. Indeed, claims need
`not have mathematically precise boundaries so long as the
`patent gives examples and general guidelines. See Enzo
`Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1335
`(Fed.Cir.2010) (the term “not interfering substantially”
`does not render claims indefinite); Ecolab, Inc. v.
`Envirochem, Inc., 264 F.3d 1358, 1367 (Fed.Cir.2001)
`(terms like “about” and “substantially” are descriptive
`terms commonly used in patent claims to “avoid a strict
`numerical boundary to the specified parameter.”).
`
`
`*517 [10] A finding of indefiniteness must overcome the
`statutory presumption of validity. See 35 U.S.C. § 282.
`That is, the “standard [for finding indefiniteness] is met
`where an accused infringer shows by clear and convincing
`evidence that a skilled artisan could not discern the
`
`boundaries of the claim based on the claim language, the
`specification, and the prosecution history, as well as her
`knowledge of the relevant art area.” Halliburton Energy
`Servs., Inc. v. M–I LLC, 514 F.3d 1244, 1249–50
`(Fed.Cir.2008). The Court does not find that Digital River
`has met its burden. Accordingly, judgment as a matter of
`law as to a finding of indefiniteness is denied.
`
`
`
`
`B. The asserted claims are not invalid as anticipated
`and/or obvious
`[11] Digital River contends it has shown by clear and
`convincing evidence, through the testimony of Mr.
`Pichler and Mr. Kent, that the asserted claims are invalid.
`Digital River argues that the claims are invalid as
`anticipated by the Digital River Secure Sales System
`(“SSS System”), and also invalid as obvious in light of
`the SSS System, and/or in light of the combination of the
`SSS System with U.S. Patent No. 6,141,666 (the “Tobin
`patent”). Digital River argues that since three of the
`exemplary “look and feel elements” from the Court’s
`claim construction were included in its prior art system,
`substantial evidence contradicts the jury’s conclusion that
`the “look and feel” limitation is not met. (Dkt. No. 557 at
`5.) The Court disagrees.
`
`
`As stated earlier, the Court construed “look and feel” to
`mean
`
`“[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 [sic ] elements
`consistent through some or all of
`the website.”
`
`
`(Dkt. No. 309 at 10.) While Digital River is correct that
`the list of elements in the Court’s construction is
`exemplary and not exclusive, this term is not necessarily
`satisfied by matching one, three, or a specific number of
`the exemplary elements. Rather, 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.
`
`Indeed, the trial record reveals that the jury heard from
`Digital River’s witnesses about how the SSS System
`
`Page 9
`
`

`

`combine the two references?
`
`A. No, he did not.
`
`
`(10/11/2012 PM Tr. at 121:9–122:8.) In other words,
`Digital River did not meet
`their burden
`to show
`obviousness by clear and convincing evidence. For these
`reasons, the Court finds that substantial evidence supports
`the jury’s verdict that the asserted claims are not invalid
`as anticipated or obvious in light of the SSS System
`and/or in light of the combination of the SSS System and
`the Tobin patent.
`
`
`
`
`C. Judgment as a matter of law of invalidity for
`failing to claim patent-eligible subject matter
`Digital River contends that the asserted claims are invalid
`as unpatentable subject matter under 35 U.S.C. § 101
`because they are directed to an abstract idea. (Dkt. No.
`540 at 13.) In its opposition, DDR incorporates by
`reference its opposition to a similar argument made by
`defendant NLG. (Dkt. No. 552 at 7.) In reply, Digital
`River also incorporates by reference its responsive
`arguments in NLG’s reply to DDR’s Opposition. (Dkt.
`No. 557 at 6.) To similarly avoid repetition, the Court
`addresses this common issue in Section V(B), below.
`
`
`
`
`D. Judgment as a matter of law of no infringement
`of the asserted claims
`Digital River contends that it is entitled to judgment as a
`matter of law of no infringement because no reasonable
`jury could find that Digital River directly infringed based
`on three grounds: (1) the asserted claims require three
`separate entities, (2) DDR failed to perform the required
`element-by-element
`infringement analysis, and
`(3)
`substantial evidence does not support the jury’s direct
`infringement verdict because Digital River does not store
`the “look and feel,” as required by the asserted claims.
`(Dkt. No. 540 at 15–16.)
`
`
`
`
`operated and what capabilities it had, and the jury has
`weighed the credibility of such evidence. The trial record
`shows that Digital River’s Vice President of Product and
`Innovation, Mr. Gagliardi, testified that earlier Digital
`River systems (1) had “much more limited functionality”
`than the recent, infringing systems, (2) had “technical
`constraints” that made it “difficult to emulate” sites, (3)
`relied on “rigid predefinition of templates,” (4) “only had
`a logo” match, and (5) required a logo to appear at a fixed
`location absent a “hack” to change location. (10/8/2012
`PM Tr. at 221:10–224:15; 10/10/12 PM Tr. at
`161:11–165:2.) DDR’s expert