UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`PRICELINE.COM LLC AND BOOKING.COM B.V.,
`Petitioner
`
`v.
`
`DDR HOLDINGS, LLC,
`Patent Owner
`
`
`
`Case IPR2018-01008
`U.S. Patent 9,639,876
`
`
`
`
`PATENT OWNER’S UPDATED MANDATORY NOTICES
`PURSUANT TO 37 C.F.R. § 42.8
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`PRICELINE.COM LLC AND BOOKING.COM B.V.,
`Petitioner
`
`v.
`
`DDR HOLDINGS, LLC,
`Patent Owner
`
`
`
`Case IPR2018-01008
`U.S. Patent 9,639,876
`
`
`
`
`PATENT OWNER’S UPDATED MANDATORY NOTICES
`PURSUANT TO 37 C.F.R. § 42.8
`
`
`
`
`
`
`Page 1
`
`Case No. IPR2018-01008
`
`U.S. Patent 9,639,876
`
`Pursuant to 37 C.F.R. § 42.8(a)(2), Patent Owner, DDR Holdings, LLC
`
`provides updated Mandatory Notices in connection with the above-captioned
`
`Petition.
`
`I.
`
`REAL PARTY-IN-INTEREST
`
`The patent owner is DDR Holdings, LLC.
`
`II. RELATED JUDICIAL OR ADMINISTRATIVE MATTERS
`
`As of the filing date of this notice, related matters are:
`
`A. Litigations Involving the Patent-at-Issue
`
`U.S. Patent 9,639,876 (“the ‘876 Patent”) and two related patents are at issue
`
`in the following lawsuits, filed in the United States District Court in and for the
`
`District of Delaware on May 2, 2017:
`
`DDR Holdings, LLC v. Priceline.com, LLC, Case No. 1:17-cv-498-ER
`
`DDR Holdings, LLC v. Booking.com B.V., Case No. 1:17-cv-499-ER
`
`DDR Holdings, LLC v. Shopify, Inc., Case No. 1:17-cv-501-ER
`
`The above lawsuits have been consolidated under 1:17-cv-498-ER. In the
`
`consolidated matter, the Court held that the patent at issue here and two related
`
`patents were patent-eligible under 35 U.S.C. § 101). The matters are currently
`
`stayed.
`
`Previous, and now-settled, lawsuits filed at the same time are:
`
`DDR Holdings, LLC v. TicketNetwork, Inc., Case No. 1:17-cv-500-ER
`
`
`
`Page 2
`
`Case No. IPR2018-01008
`
`U.S. Patent 9,639,876
`
`DDR Holdings, LLC v. Travel Holdings, Inc. and Tourico Holidays, Inc.,
`
`Case No. 1:17-cv-502-ER
`
`Previous, and since-resolved, lawsuits filed some years ago are:
`
`DDR Holdings, LLC v. Hotels.com, LLC, 773 F.3d 1245 (Fed. Cir. 2014),
`
`aff’g in part, 954 F. Supp. 2d 509 (E.D. Tex. 2013). The Federal Circuit affirmed a
`
`judgment finding related (parent) patent 7,818,399 not invalid and infringed by
`
`WTH Holdings. The Federal Circuit ruled that the patent was not indefinite (under
`
`35 U.S.C. § 112(2)) nor directed to patent-ineligible subject matter (Section 101).
`
`The Federal Circuit reversed a judgment finding certain claims of related (parent)
`
`patent 6,993,572 valid and infringed, holding certain claims of that patent invalid
`
`as anticipated by Digital River prior art because the district court had allegedly
`
`misconstrued the claims as requiring a corresponding overall appearance. That
`
`limitation is expressly recited in the claims of the present patent.
`
`The above-mentioned district court proceeding originally involved related
`
`U.S. Patents 6,629,135, 6,993,572, and 7,818,399, and eventually was styled DDR
`
`Holdings, LLC v. Hotels.com, L.P. et al., Case No. 2:06-cv-00042-RG, filed in the
`
`United States District Court in and for the Eastern District of Texas.
`
`In 2006, Patent Owner sued six independent companies for infringement of
`
`parent U.S. Patents 6,629,135 and 6,993,572. While the case was ongoing, parent
`
`U.S. Patent 7,818,399, issued (October 19, 2010), and Patent Owner amended its
`
`
`
`Page 3
`
`Case No. IPR2018-01008
`
`U.S. Patent 9,639,876
`
`complaint to assert that patent against five of the six defendants. Four of six
`
`defendants (Expedia, Travelocity, Orbitz, and International Cruise Excursions)
`
`settled in Fall 2012, one week or a few weeks before trial. The case proceeded to
`
`trial in October 2012 against two non-settling defendants: Digital River, Inc. for
`
`infringement of the ‘572 Patent and National Leisure Group, Inc. (NLG) for
`
`infringement of both the ‘572 and ‘399 Patents. Allegations of infringement of the
`
`‘135 Patent were dropped before trial.
`
`Patent Owner received a jury verdict holding the tried claims of the ‘572 and
`
`‘399 Patent infringed and not invalid and judgment as a matter of law that the ‘399
`
`Patent was not invalid based on anticipation or obviousness. The infringement
`
`verdict for ‘399 was against NLG only. The district court denied all post-trial
`
`motions seeking to overturn the verdict, DDR Holdings, LLC, v. Hotels.com, L.P.,
`
`954 F. Supp. 2d 509 (E.D. Tex. 2013), and entered judgment for Patent Owner.
`
`Digital River settled in April 2014, while the case was on appeal.
`
`While the appeal was pending, U.S. Patent 8,515,825 issued (August 20,
`
`2013), and DDR filed the following related lawsuits in the United States District
`
`Court in and for the Eastern District of Texas, asserting infringement of the ‘825
`
`Patent and also alleging infringement of the above-mentioned patents for activity
`
`by the respective defendants during the post-trial period:
`
`DDR Holdings, LLC v. World Travel Holdings, Inc., 2-13-CV-00646-JRG
`
`
`
`Page 4
`
`Case No. IPR2018-01008
`
`U.S. Patent 9,639,876
`
`DDR Holdings, LLC v. Digital River, Inc., 2-13-CV-00647-JRG
`
`The Digital River settlement in April 2014 mentioned above, and a last settlement,
`
`with NLG and its related company WTH in January 2015, terminated these two
`
`cases and the case decided by the Federal Circuit.
`
`B.
`
`Proceedings Before the USPTO Involving This or Related Patents
`
`
`
`The ‘876 patent is related to pending application Serial No. 15/582,105 and
`
`parent U.S. Patents 6,629,135, 6,993,572, 7,818,399, 8,515,825, and 9,043,228.
`
`The following inter partes review proceeding involves a parent patent
`
`related to the patent involved here (the same patent upheld by the Federal Circuit):
`
`IPR2018-00482, filed February 6, 2018, reconstituted with Priceline.com
`
`LLC and Booking.com B.V. (Petitioners here) as Petitioner, involves U.S. Patent
`
`7,818,399. The PTAB entered a decision instituting this IPR proceeding on August
`
`2, 2018.
`
`The following inter partes review proceedings, all filed by Shopify, Inc. as
`
`Petitioner, involve this patent or a parent patent related to the patent involved here:
`
`IPR2018-01009, filed May 3, 2018, involving U.S. Patent 9,043,228,
`
`IPR2018-01010, filed May 4, 2018, involving U.S. Patent 8,515,825,
`
`IPR2018-01011, filed May 2, 2018, involving U.S. Patent 9,639,876,
`
`IPR2018-01012, filed May 2, 2018, involving U.S. Patent 9,043,228,
`
`IPR2018-01014, filed May 2, 2018, involving U.S. Patent 8,515,825.
`
`
`
`Page 5
`
`Case No. IPR2018-01008
`
`U.S. Patent 9,639,876
`
`The PTAB entered decisions instituting all of the IPRs listed above on November
`
`15, 2018.
`
`The following inter partes review proceedings, all filed on December 14,
`
`2018, by Priceline.com LLC and Booking.com B.V. as Petitioner, involve this
`
`patent or a parent patent related to the patent involved here:
`
`IPR2019-00435 involving U.S. Patent 9,639,876,
`
`IPR2019-00436 involving U.S. Patent 9,043,228,
`
`IPR2019-00437 involving U.S. Patent 8,515,825,
`
`IPR2019-00438 involving U.S. Patent 9,639,876,
`
`IPR2019-00439 involving U.S. Patent 9,043,228,
`
`IPR2019-00440 involving U.S. Patent 8,515,825.
`
`Petitioner in the IPRs listed above seeks joinder with the IPRs filed by Shopify,
`
`Inc. listed in the previous paragraph.
`
`The following Board decisions related to reexaminations of related patents,
`
`both filed by Patent Owner based on prior art and arguments provided by
`
`defendants in the Texas litigation identified above:
`
`Ex parte DDR Holdings, LLC, Appeal No. 2009-0013987, Reexamination
`
`Control No. 90/008,374, U.S. Patent 6,993,572 (Decision affirming patentability of
`
`claims, April 16, 2010).
`
`
`
`Page 6
`
`Case No. IPR2018-01008
`
`U.S. Patent 9,639,876
`
`Ex parte DDR Holdings, LLC, Appeal No. 2009-0013988, Reexamination
`
`Control No. 90/008,375, U.S. Patent No. 6,629,135 (Decision affirming patentability
`
`of claims, April 16, 2010).
`
`III. LEAD AND BACK-UP COUNSEL AND SERVICE INFORMATION
`
`Lead Counsel:
`Louis J. Hoffman, Esq.
`USPTO Req. No. 38,918
`Louis J. Hoffman, P.C.
`7689 East Paradise Lane, Suite 2
`Scottsdale, Arizona 85260
`Ph.: (480) 948-3295
`Email: louis@valuablepatents.com
`
`Patent Owner consents
`
`Back-up Counsel:
`Ian B. Crosby, Esq.
`Admitted pro hac vice
`Susman Godfrey L.L.P.
`1201 Third Avenue, Suite 3800
`Seattle, Washington 98101
`Ph.: (206) 516-3880
`Email: icrosby@susmangodfrey.com
`
`to electronic service and requests
`
`that all
`
`correspondence to lead and back-up counsel be sent to the e-mail address
`
`DDR_IPR@valuablepatents.com.
`
`Dated: January 18, 2019
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
` /Louis J. Hoffman/
`Louis J. Hoffman
`Reg. No. 38,918
`
`LOUIS J. HOFFMAN, P.C.
`7689 East Paradise Lane
`Suite 2
`Scottsdale, Arizona 85260
`(480) 948-3295
`Lead Counsel for Patent Owner
`
`
`
`Page 7
`
`Case No. IPR2018-01008
`
`U.S. Patent 9,639,876
`
`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e)(1))
`
`The undersigned hereby certifies that on January 18, 2019, a complete and
`
`correct copy of the foregoing PATENT OWNER’S UPDATED MANDATORY
`
`NOTICES PURSUANT TO 37 C.F.R. § 42.8 was served via electronic mail on the
`
`following counsel of record for Petitioner:
`
`
`
`Michael McNamara (Reg. No. 52,017)
`William A. Meunier (Reg. No. 41,193)
`Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, PC
`One Financial Center
`Boston, MA 02111
`DDR_IPR_Service@mintz.com
`
`
` /Louis J. Hoffman/
`Louis J. Hoffman, Reg. No. 38,918
`LOUIS J. HOFFMAN, P.C.
`7689 East Paradise Lane, Suite 2
`Scottsdale, Arizona 85260
`DDR_IPR@valuablepatents.com
`
`
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