UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`SHOPIFY, INC.,
`Petitioner,
`
`v.
`
`DDR HOLDINGS, LLC,
`Patent Owner.
`____________
`
`Case No.: Unassigned
`INTER PARTES REVIEW OF U.S. PATENT NOS. 8,515,825, 9,043,228, &
`9,639,876
`________________
`
`DECLARATION OF NATHANIEL BORENSTEIN IN SUPPORT OF
`PETITIONS FOR INTER PARTES REVIEW OF U.S. PATENT NOS.
`8,515,825, 9,043,228, & 9,639,876
`
`SShopify Exhibit 1012
`
`Page 1 of 9
`
`PRICELINE.COM LLC et al.
`Exhibit 1012
`
`
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`SHOPIFY, INC.,
`Petitioner,
`
`v.
`
`DDR HOLDINGS, LLC,
`Patent Owner.
`____________
`
`Case No.: Unassigned
`INTER PARTES REVIEW OF U.S. PATENT NOS. 8,515,825, 9,043,228, &
`9,639,876
`________________
`
`DECLARATION OF NATHANIEL BORENSTEIN IN SUPPORT OF
`PETITIONS FOR INTER PARTES REVIEW OF U.S. PATENT NOS.
`8,515,825, 9,043,228, & 9,639,876
`
`SShopify Exhibit 1012
`
`Page 1 of 9
`
`PRICELINE.COM LLC et al.
`Exhibit 1012
`
`
`
`1.
`
`My name is NATHANIEL BORENSTEIN. I am over the age of
`
`twenty-one (21) years, of sound mind and capable of making the statements set forth
`
`in this declaration. I am competent to testify to matters set forth herein. All the facts
`
`and statements contained herein are within my personal knowledge and they are, to
`
`the best of my knowledge, true and correct.
`
`2.
`
`I am being compensated by the Petitioner for my assistance with its
`
`Inter Partes Review (IPR) and, specifically, for my time spent reviewing documents
`
`in association with the IPR and in preparing my testimony. Additionally, I am not,
`
`and have never been, an employee of Petitioner, and my compensation is not
`
`dependent upon the outcome of this proceeding. I am being compensated at a rate
`
`of $470 per hour for my work.
`
`First Virtual/InfoHaus Prior Art Publications
`
`3.
`
`I have reviewed the First Virtual/InfoHaus publications provided as
`
`Exhibits 1013-1016 in the petition for Inter Partes Review. I was Chief Scientist of
`
`First Virtual from March 1994 until June 1998. I have personal knowledge relating
`
`to the creation and distribution of these publications as of the times and dates detailed
`
`below.
`
`4.
`
`Loshin (Ex. 1013) is a paperback book authored by Pete Loshin, entitled
`
`“The Internet Merchant Master Series: Selling Online With… First Virtual”, and
`
`was published in 1996. I was involved with answering questions regarding the
`
`1
`
`Page 2 of 9
`
`
`
`subject matter of Loshin, reviewing aspects of Loshin, and writing the forward to
`
`Loshin. Ex. 1013 is a true and correct copy of the Loshin book. When books such
`
`as this were published, it was the goal to distribute as far and as wide as possible to
`
`people in our field (e.g. to merchants having or wanting to establish ecommerce
`
`websites and/or web designers tasked with designing and maintaining such
`
`websites). Individuals receiving this book would include potential clients in the
`
`ecommerce field, including individuals with three (3) plus years of technical
`
`expertise in this field such as web-designers and technical developers who design
`
`and manage ecommerce websites.
`
`5.
`
`The following links from the Internet Archive: Wayback Machine
`
`(“Wayback Machine”) represent various content from First Virtual’s website. These
`
`webpages and documents are included as Exhibits 1014-1016 in the Petition. I was
`
`personally involved in creating and reviewing content for each of these websites
`
`and/or documents:
`
`(cid:120)
`
`https://web.archive.org/web/19970615125011/http://www.fv.com:80/i
`
`nfohaus/guide/index.html (archived on 6/15/1997 – InfoHaus Guide)
`
`(Ex. 1015);
`o
`
`https://web.archive.org/web/19970625184134/http://www.fv.co
`
`m:80/pubdocs/infohaus-guide-1.txt (6/25/1997 – Chapter One -
`
`Introduction) (Ex. 1015, at 3-6);
`
`2
`
`Page 3 of 9
`
`
`
`o
`
`o
`
`o
`
`o
`
`https://web.archive.org/web/19970625184145/http://www.fv.co
`
`m:80/pubdocs/infohaus-guide-2.txt (6/25/1997 – Chapter Two –
`
`Communicating with the InfoHaus) (Ex. 1015, at 7-9);
`
`https://web.archive.org/web/19970625184155/http://www.fv.co
`
`m:80/pubdocs/infohaus-guide-3.txt (6/25/1997 – Chapter Three
`
`– Opening Your Shop on the InfoHaus ) (Ex. 1015, at 10-17);
`
`https://web.archive.org/web/19970625184207/http://www.fv.co
`
`m:80/pubdocs/infohaus-guide-4.txt (6/25/1997 – Chapter Four –
`
`Adding and Removing Information Products) (Ex. 1015, at 18-
`
`26);
`
`https://web.archive.org/web/19970625184222/http://www.fv.co
`
`m:80/pubdocs/infohaus-guide-5.txt (6/25/1997 – Chapter Five –
`
`Adding HTML To Your Shop – Advanced Info) (Ex. 1015, at
`
`27-31);
`
`(cid:120)
`
`(cid:120)
`
`https://web.archive.org/web/19970615125950/http://www.fv.com:80/i
`
`nfohaus/helpmeister/ (archived on 6/15/1997 – InfoHaus HelpMeister)
`
`(Ex. 1016); and
`
`https://web.archive.org/web/19970615124058/http://www.fv.com:80/s
`
`elling/ (archived on 6/15/1997 – FV Seller Programs June 15 1997
`
`Website) (Ex. 1014).
`
`3
`
`Page 4 of 9
`
`
`
`I certify that each of these pages and/or documents are true and correct copies of the
`
`documents or webpages found at the specified locations, and that they were
`
`published on the World Wide Web at the location noted in the archive at least as of
`
`the archival date provided by the Wayback Machine.
`
`6.
`
`A person in the field of ecommerce systems in general, ecommerce
`
`affiliate sales systems, web storefront design, and the like, exercising reasonable
`
`diligence, would have found the above websites and documents using customary
`
`internet searching tools available at the time. Additionally, in my position and
`
`capacity at First Virtual, I often spoke to potential clients and at conferences in the
`
`ecommerce field, including individuals with three (3) plus years of technical
`
`expertise in this field such as web-designers and technical developers who design
`
`and manage ecommerce websites, and directed them to the above websites. In fact,
`
`the above websites were made explicitly to receive traffic from such individuals.
`
`7.
`
`Exhibit 1015 is a webpage including a search option from the First
`
`Virtual website from June 15, 1997. I was personally involved in reviewing content
`
`for this webpage, and I certify that Exhibit 1015 is a true and correct copy of that
`
`webpage including its linked text documents. This First Virtual InfoHaus Guide
`
`webpage was freely and actively available to customers and potential customers at
`
`least by June 15, 1997. I navigated to this First Virtual InfoHaus Guide webpage by
`
`4
`
`Page 5 of 9
`
`
`
`first going to the First Virtual homepage archived on the Wayback Machine at the
`
`following URL:
`
`https://web.archive.org/web/19970615123552/http://www.fv.com:80/index.h
`
`tml
`
`From the archived First Virtual homepage, I selected the “Become a Seller” link at
`
`the following URL:
`
`https://web.archive.org/web/19970615124058/http://www.fv.com:80/selling/
`
`Next, I selected “The InfoHaus” link located at the top of the web page in red text
`
`which redirected me to the following URL:
`
`https://web.archive.org/web/19970615123828/http://www.fv.com:80/infoha
`
`us/infohaus.html
`
`From “The InfoHaus” webpage at the immediate preceding URL, I then selected the
`
`“InfoHaus Seller’s Guide” link at the following URL:
`
`https://web.archive.org/web/19970615125011/http://www.fv.com:80/infoha
`
`us/guide/index.html
`
`This is consistent with how a member of the public could navigate to this web
`
`page and associated documents in June of 1997. The InfoHaus Guide was used by
`
`members of the public to inform themselves on how First Virtual’s InfoHaus
`
`worked. The guide provides an accurate description on how the InfoHaus product
`
`5
`
`Page 6 of 9
`
`
`
`operated as of at least June 25, 1997. In fact, the individual chapters of the guides
`
`included the last date on which they were last edited, May 1, 1996 (Revision 5.03).
`
`8.
`
`Exhibit 1016 is a webpage named InfoHaus HelpMeister archived on
`
`June 15, 1997. I was personally involved in reviewing content for this website, and
`
`I certify that Exhibit 1016 is a true and correct copy of that webpage. This InfoHaus
`
`HelpMeister webpage was freely and actively available to customers and potential
`
`customers by at least by June 15, 1997. I navigated to this First Virtual InfoHaus
`
`HelpMeister webpage by first going to the First Virtual website on the Wayback
`
`Machine at the following URL:
`
`https://web.archive.org/web/19970615123552/http://www.fv.com:80/index.h
`
`tml
`
`From the archived First Virtual homepage, I selected the “Become a Seller” link at
`
`the following URL:
`
`https://web.archive.org/web/19970615124058/http://www.fv.com:80/selling/
`
`Next, I selected “The InfoHaus” link located at the top of the web page in red text
`
`which redirected me to the following URL:
`
`https://web.archive.org/web/19970615123828/http://www.fv.com:80/infoha
`
`us/infohaus.html
`
`Finally I selected the “InfoHaus HelpMeister” link which is at the following URL:
`
`6
`
`Page 7 of 9
`
`
`
`https://web.archive.org/web/19970615125950/http://www.fv.com:80/infoha
`
`us/helpmeister/
`
`This is consistent with how a member of the public could navigate to this web page
`
`on June 15, 1997. The InfoHaus HelpMeister webpage was used by members of the
`
`public to inform themselves on how First Virtual’s InfoHaus worked. InfoHaus
`
`HelpMeister provides an accurate description on how the InfoHaus product operated
`
`as of at least June 15, 1997.
`
`9.
`
`Exhibit 1014 is a webpage from the First Virtual website from June 15,
`
`1997. I was personally involved in reviewing content for this website, and I certify
`
`that Exhibit 1014 is a true and correct copy. The First Virtual webpage was freely
`
`and actively available to customers and potential customers at least by June 15, 1997.
`
`I navigated to this First Virtual InfoHaus HelpMeister webpage by first going
`
`to the First Virtual website on the Wayback Machine at the following URL:
`
`https://web.archive.org/web/19970615123552/http://www.fv.com:80/index.h
`
`tml
`
`From the archived First Virtual homepage, I selected the “Become a Seller” link at
`
`the following URL:
`
`https://web.archive.org/web/19970615124058/http://www.fv.com:80/selling/
`
`This is consistent with how a member of the public could navigate to this web page
`
`on June 15, 1997. The First Virtual “Become a Seller” webpage included product
`
`7
`
`Page 8 of 9
`
`
`
`search functionalities, which was a common aspect of webpages at the time.
`
`Individuals receiving this webpage could include individuals in the ecommerce field,
`
`including individuals with three (3) plus years of technical expertise in this field such
`
`as web-designers and technical developers who design and manage ecommerce
`
`websites.
`
`10.
`
`I hereby declare that all statements made herein of my own knowledge
`
`are true and that all statements made on information and belief are believed to be
`
`true; and further that these statements were made with the knowledge that willful
`
`false statements and the like so made are punishable by fine or imprisonment, or
`
`both, under Section 1001 of Title 18 of the United States Code.
`
`77419362v.1
`
`8
`
`Page 9 of 9
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
