UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`SHOPIFY, INC.,
`Petitioner,
`
`v.
`
`DDR HOLDINGS, LLC,
`Patent Owner.
`___________________
`
`CASE IPR2018-01008
`U.S. Patent No. 9,639,876
`
`Before CARL M. DEFRANCO, PATRICK M. BOUCHER, and ALYSSA A.
`FINAMORE, Administrative Patent Judges.
`___________________
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`1
`
`

`

`Case IPR2018-01008
`U.S. Patent No. 9,639,876
`Page i
`
`TABLE OF CONTENTS
`
`I.
`II.
`
`C.
`
`D.
`
`PAGE
`INTRODUCTION ........................................................................................... 1
`PATENT OWNER’S ARGUMENTS ARE WITHOUT MERIT AND
`NON-PERSUASIVE ....................................................................................... 1
`A.
`Patent Owner Mischaracterizes the Law ............................................... 1
`B.
`Ground 1: Loshin Anticipates Claims 1-5, 7-8, 11-13, 17-18 .............. 2
`1.
`Loshin discloses “a source web page…” .................................... 2
`2.
`Loshin discloses a “visual correspondence …” .......................... 5
`3.
`Loshin discloses the “payment to the host of a
`commission….” of claims 4 and 14 .......................................... 18
`Loshin discloses the hierarchical-page electronic catalog
`of claims 7 and 17 ..................................................................... 20
`Loshin discloses the catalog-searching limitations of
`claims 8 and 18 ......................................................................... 20
`Ground 2: Loshin and InfoHaus Obviate Claims 1, 7, 11, and
`17 ......................................................................................................... 21
`1.
`Loshin and InfoHaus disclose a “visual correspondence
`[that] relates to overall appearance” of the webpages .............. 21
`Loshin and InfoHaus disclose the hierarchical-page
`electronic catalog of claims 7 and 17 ........................................ 22
`Ground 3: Loshin and Moore Obviate Claims 1-5, 7-8, 11-13,
`17, and 18 ............................................................................................ 23
`1.
`Loshin and Moore disclose a “visual correspondence….” ....... 23
`2.
`Loshin and Moore disclose the “commission” of claims 4
`and 14 ........................................................................................ 27
`Loshin and Moore disclose the hierarchical-page
`electronic catalog of claims 7 and 17 ........................................ 28
`Loshin and Moore disclose the catalog-searching
`limitations of claims 8 and 18 ................................................... 30
`
`4.
`
`5.
`
`2.
`
`3.
`
`4.
`
`i
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`

`

`III. CONCLUSION .............................................................................................. 31
`
`Case IPR2018-01008
`U.S. Patent No. 9,639,876
`Page ii
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`ii
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`Case IPR2018-01008
`U.S. Patent No. 9,639,876
`Page iii
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`DDR Holdings, LLC v. Hotels.com,
`773 F.3d 1245, 1254 (Fed. Cir. 2014) .................................................................. 5
`Genzyme Therapeutic Prods. Ltd. P’ship v. Biomarin Pharm. Inc.,
`825 F.3d 1360, 1366 (Fed. Cir. 2016) .................................................................. 2
`Shopify, Inc. v. DDR Holdings, LLC,
`IPR2018-01011, Paper No. 10, 20-21 ................................................................ 23
`Sirona Dental Systems GMBH v. Institut Straumann AG,
`892 F.3d 1349, 1356 (Fed. Cir. 2018) .................................................................. 1
`Statutes
`35 U.S.C. § 103(a) ..................................................................................................... 1
`Regulations
`37 C.F.R. § 42.24(c)(1) ........................................................................................... 33
`37 C.F.R. § 42.24(d)(1) ............................................................................................ 33
`37 C.F.R. § 42.120 ..................................................................................................... 1
`
`iii
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`

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`Case IPR2018-01008
`U.S. Patent No. 9,639,876
`Page iv
`
`TABLE OF EXHIBITS
`
`Ex. No.
`
`Description
`Petitioner Exhibits (Previously Filed)
`U.S. Patent No. 9,639,876 (‘876 Patent)
`1001
`Declaration of Michael Shamos
`1002
`RESERVED
`1003
`RESERVED
`1004
`RESERVED
`1005
`RESERVED
`1006
`RESERVED
`1007
`RESERVED
`1008
`RESERVED
`1009
`U.S. Patent No. 6,330,575 (Moore)
`1010
`U.S. Patent No. 6,016,504 (Arnold)
`1011
`1012 Declaration of Nathaniel Borenstein
`1013
`“Selling Online with First Virtual,” by Pete Loshin (Published 1996)
`1014
`First Virtual Seller Programs Webpage (June 1997)
`1015
`First Virtual InfoHaus Guide Webpages (June 1997)
`1016
`First Virtual InfoHaus HelpMeister (June 1997)
`DDR Holdings, LLC v. Hotels.com, L.P., et al., 773 F.3d 1245 (2014)
`1017
`BPAI Decision, Ex parte DDR Holdings, LLC, Appeal No. 2009-
`1018
`0013987, Reexamination Control No. 90/008,374, U.S. Patent No.
`6,993,572, April 16, 2010
`BPAI Decision, Ex parte DDR Holdings, LLC, Appeal No. 2009-
`0013988, Reexamination Control No. 90/008,375, U.S. Patent No.
`6,629,135, April 16, 2010
`1020 Affidavit of Christopher Butler, Office Manager at the Internet Archive
`1021 Definition of “commission” – The American Heritage Collegiate
`Dictionary 280 (Robert B. Costello et al. eds., 3rd ed. 1997)
`1022 Definition of “commission” – Webster’s New World Basic Dictionary
`of American English 167-168 (Michael Agnes et al. eds., 1998)
`
`1019
`
`1023
`
`Redlined Petition for Inter Partes Review
`
`iv
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`

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`Case IPR2018-01008
`U.S. Patent No. 9,639,876
`Page v
`
`Ex. No.
`
`1024
`1025
`
`Description
`Petitioner Exhibits (Newly Submitted)
`HQ Scan of Loshin pp. 194, 196
`Excerpted Joint Appendix, Volume IV at pp. A07502, A08856-7
`from DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed.
`Cir. 2014).
`
`v
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`

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`Case IPR2018-01008
`U.S. Patent No. 9,639,876
`Page 1
`
`I.
`
`INTRODUCTION
`Pursuant to the November 15, 2018 Scheduling Order (Paper 13), Shopify,
`
`Inc. (“Petitioner”) submits its reply to Patent Owner’s Response under 37 C.F.R. §
`
`42.120 (Paper 21) (“Response”).
`
`The Institution Decision (Paper 12) (“Decision”) found Petitioner
`
`demonstrated a reasonable likelihood of prevailing on challenges to Claims 1-5, 7,
`
`8, 11-15, 17 and 18 of U.S. Patent No. 9,639,876 as unpatentable under at least 35
`
`U.S.C. § 103(a).
`
`II.
`
`PATENT OWNER’S ARGUMENTS ARE WITHOUT MERIT AND
`NON-PERSUASIVE
`A.
`Patent Owner Mischaracterizes the Law
`Patent Owner mischaracterizes several cases to exclude Petitioner from
`
`relying on record evidence submitted with the petition. Response, 13-14. In Sirona
`
`Dental Systems GMBH v. Institut Straumann AG, 892 F.3d 1349, 1356 (Fed. Cir.
`
`2018), the Federal Circuit held it was improper for the “Board to deviate from the
`
`grounds in the petition and raise its own obviousness theory….” In Magnum Oil
`
`Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016), the Federal Circuit reversed
`
`the Board when it “raise[d], address[ed], and decide[d] unpatentability theories
`
`never presented by the petitioner and not supported by record evidence.” Petitioner
`
`has neither deviated from the grounds nor prior theories presented in the petition.
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`1
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`Petitioner may still introduce new evidence. Genzyme Therapeutic Prods.
`
`Ltd. P'ship v. Biomarin Pharm. Inc., 825 F.3d 1360, 1366 (Fed. Cir. 2016) (“[T]he
`
`introduction of new evidence in the course of the trial is to be expected in inter partes
`
`review trial proceedings and, as long as the opposing party is given notice of the
`
`evidence and an opportunity to respond to it, the introduction of such evidence is
`
`perfectly permissible under the APA.”).
`
`B.
`
`Ground 1: Loshin Anticipates Claims 1-5, 7-8, 11-13, 17-18
`1.
`Loshin discloses “a source web page…”
`The Board determined Loshin did not anticipate independent claims 1 and 11
`
`because it did not disclose “a source web page that has been served to the visitor
`
`computing device when visiting a website of a host that is a third party to the
`
`outsource provider.” Decision, 18-19. The Board cited two disclosures supporting
`
`its finding: (1) the URL of Figure 7-1 (“www.infohaus.com” domain), and (2) “First
`
`Virtual offers InfoHaus storefront hosting service to its merchants who prefer to have
`
`someone else manage the hardware, software, and services necessary to maintain an
`
`Internet presence” without the need to “set up their own Internet servers.” Decision,
`
`19. Loshin does disclose a source web page served by a third party with respect to
`
`the outsource provider.
`
`2
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`

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`Page 3
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`Loshin teaches a spectrum of configurations that can be utilized for selling
`
`products via InfoHaus:
`
`Determining when to move up to your own server from the InfoHaus
`depends entirely on your own situation. At one end of the spectrum is
`the individual with minimal computer experience, minimal computer
`equipment, and no employees, friends, relatives, or co-workers with
`Internet expertise. This person would need to make a large investment
`of money (to buy an Internet server, software, and Internet
`connection) and time (to learn how to install, configure, maintain,
`and administer the server; to create the Internet storefront – and
`to enable the server to accept First Virtual payments).
`
`At the other end of the spectrum, you may already have access to
`an Internet server – for example, “rental” space on an Internet
`presence provider’s system, or space available through some other
`type of affiliation. You may also have access to Internet and systems
`expertise through your own experience or through that of a friend,
`relative, employee, or colleague. If this is the case, then enabling your
`server to accept First Virtual payments may be a good deal.
`
`Ex. 1013, 244 (emphasis added). While the Board correctly identified one
`
`configuration Loshin disclosed where the outsource provider hosted the source
`
`webpage (id., 214), Loshin also discloses other configurations where the source
`
`webpage is hosted by an entity other than the outsource provider. Id., 249 (“Another
`
`alternative is to continue to use the InfoHaus to handle your transactions, but to use
`
`some other Web site to publish your products.”); Ex. 2027, 205:19-209:5 (“Q. Right.
`
`It teaches that it’s possible to serve two websites – two Web pages on two different
`
`3
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`servers; right? A. Yes.”), 221:5-17 (“In that case, the InfoHaus would be separate
`
`from the server that is serving information about the commerce objects….”).
`
`Patent Owner argues that “spectrum” refers only to the level of skill of the
`
`host. However, the plain language of Loshin and Dr. Shamos confirms that
`
`“spectrum” refers to various configurations of hardware and software. Ex. 2027,
`
`207:5-11 (“So, there’s a spectrum that’s described in the last two paragraphs of that
`
`page, and whether you use one configuration or another depends on your degree of
`
`skill and sophistication and how much money you’re willing to spend and invest on
`
`the Internet servers and software.”). Patent Owner mischaracterizes Dr. Shamos’
`
`testimony and even provides the wrong citation. Id., 206:16-207:11; Response, 15.
`
`Further, Patent Owner does not address Loshin’s disclosure to “use the InfoHaus to
`
`handle your transactions, but to use some other Web site to publish your products.”
`
`Ex. 1013, 249.
`
`Instead, Patent Owner seeks to limit Loshin to Figs. 7-1 and 7-2. However,
`
`Loshin discloses using two different servers for serving different webpages such as
`
`those depicted in Figures 7-1 and 7-2. Id., 249. Patent Owner does not dispute that
`
`Fig. 7-1 depicts a webpage “offering a product for sale.” Id., 194. Patent Owner
`
`also does not dispute Figure 7-2 depicts the “order page” from “follow[ing] the
`
`image of the $20 bill shown on the InfoHaus Web page” in Figure 7-1. Id., 196.
`
`4
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`Thus, Loshin teaches using two separate servers to implement the webpages
`
`identified in Figs. 7-1 and 7-2. Id., 248 (“If You Outsource Your Web Site…
`
`There are many organizations offering Web services through their own Web servers.
`
`These companies maintain Web servers and allow subscribers to load their own
`
`HTML documents on the server.”), 249.
`
`Loshin discloses a “visual correspondence …”
`2.
`The Board correctly determined
`that Loshin discloses a “visual
`
`correspondence [that] relates to an overall appearance of the composite web page as
`
`compared to the source web page, but excluding the commerce object information
`
`and the URL.” Decision, 17-18. The Board found at least the “the seller’s name and
`
`textual composition affect a page’s appearance.” Id., 18.
`
`While the Board asked for the development of the term “relates to overall
`
`appearance,” Patent Owner has not provided a construction of “overall appearance.”
`
`Response, 8-12. Instead, Patent Owner alleges that the claims includes a limitation
`
`requiring an “overall match.” Id., 4. The claims do not contain such requirement.
`
`Moreover, the Federal Circuit previously found that both the district court and Patent
`
`Owner improperly introduced the “overall match” limitation into the claims during
`
`litigation of related patents. DDR Holdings, LLC v. Hotels.com, 773 F.3d 1245,
`
`1254 (Fed. Cir. 2014) (“There is no claim language requiring an ‘overall match’ or
`
`5
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`

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`a specific number of ‘look and feel’ elements.”). Patent Owner claims to have
`
`“obtained this patent to cure that omission, and this patent has such an ‘overall
`
`match’ claim limitation.” Response, 4. However, the term “overall appearance”
`
`was first introduced during prosecution of related U.S. Patent No. 8,851,825 on Oct.
`
`18, 2010, predating the adverse Federal Circuit decision by four years. Ex. 2004,
`
`2937.
`
`The Federal Circuit then found the websites generated by the Digital River
`
`SSS prior art conveyed such an “overall appearance.” Id. The Federal Circuit noted
`
`that the parties’ stipulated construction of “look and feel” required that the websites
`
`include elements that “convey an overall appearance identifying a website.” Id.
`
`These elements “include logos, colors, page layout, navigation systems, frames,
`
`‘mouse-over’ effects, or other elements that are consistent through some or all of a
`
`Host’s website.” Id. While Patent Owner notes that Dr. Keller, the jury, and the
`
`district court found the Digital River page pairs “‘falls short’ of conveying an overall
`
`match of appearance,” it utterly failed to mention the Federal Circuit reversed those
`
`determinations, finding the very same page pairs to have a corresponding “overall
`
`appearance.” Id.; Response, 10-11.
`
`6
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`host website (J.A. 7502)
`
`composite website (J.A. 8856)
`
`Ex. 1025; DDR, 773 F.3d at 1254 (“Digital River showed the jury a host website
`
`that included a stylized logo, a particular background color, and prominent circular
`
`icons. J.A. 7502. The SSS generated a prior art composite web page that
`
`incorporated each of these ‘look and feel’ elements. J.A. 8856-57.”). Patent Owner
`
`also misstates the district court’s overturned decision as being issued by the Federal
`
`Circuit. Response, 11.
`
`Petitioner believes that the claim limitation “overall appearance” should be
`
`construed as “appearance taken as a whole.” Petitioner’s construction is supported
`
`7
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`by the Federal Circuit’s analysis regarding whether the Digital River SSS prior art
`
`conveyed an “overall appearance.” The Federal Circuit noted that neither an “overall
`
`match” nor a “specific number of ‘look and feel’ elements” were required to replicate
`
`the “overall appearance” of a webpage. DDR, 774 F.3d at 1253. The webpages
`
`merely needed to share similar “look and feel” elements. Id. at 1254.
`
`The Federal Circuit held the following webpage pair had a corresponding
`
`“overall appearance” due to the existence of just three similar “look and feel”
`
`elements. Id. at 1253-1255. Those elements are annotated below from Ex. 1025:
`
` “stylized logo” (annotated in the red box);
`
` “background color” (annotated in the blue box); and
`
` “circular icons” (annotated in the green boxes).
`
`8
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`host website (J.A. 7502)
`
`9
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`

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`Case IPR2018-01008
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`Page 10
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`composite website (J.A. 8856)
`
`10
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`

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`Case IPR2018-01008
`U.S. Patent No. 9,639,876
`Page 11
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`Patent Owner argues that Loshin does not teach users to create visual
`
`correspondence. However, Corrected Petition for Inter Partes Review (“Petition”)
`
`(Paper 10) describes how Loshin teaches personalizing webpages for individual
`
`sellers, including the addition of images to pages. Petition, 18-19. The Petition also
`
`describes examples of webpages with visual trademarks from the seller by using
`
`First Virtual’s own marks as examples. Id.
`
`Patent Owner also argues that Loshin does not teach a visual correspondence
`
`between the pages depicted in Fig. 7-1 and 7-2. Patent Owner mischaracterizes Dr.
`
`Shamos’ testimony as admitting all text from Fig. 7-1 reproduced in Fig. 7-2 is
`
`excluded “commerce objection information.” Response, 19. Patent Owner
`
`questioned Dr. Shamos as to whether the text of Fig. 7-1 was “relat[ed] to the
`
`commerce object.” Ex. 2027, 194:3-12 (“Q. But this block of text that I just
`
`identified … all of that text is, according to paragraph 94, information relating to
`
`commerce object; correct?”). Dr. Shamos later elaborated on which portions of the
`
`specific strings of text comprised the commerce object information, and which
`
`portions did not. Ex. 2027, 223:15-225:16 (“Q. All right. Well but Darren
`
`underscore New is part of that line of text; right? A. Well, but Darren New is not the
`
`product information. That’s the seller.”).
`
`11
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`

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`Even if the purported commerce object information between Figs. 7-1 and 7-
`
`2 were ignored, the pages share an overall visual correspondence. Ex. 1024. The
`
`Board aptly noted that Patent Owner’s argument essentially “requires that there are
`
`no differences in appearance,” an argument previously rejected by the Federal
`
`Circuit. Decision, 18; DDR, 773 F.3d at 1254 (“Both the district court and [Patent
`
`Owner] introduced a limitation found neither in the [] patent’s claims nor the parties’
`
`stipulated construction.”). Dr. Keller’s declaration improperly focuses on elements
`
`not reproduced exactly between the webpages. Ex. 2025, ¶ 52. Essentially, Dr.
`
`Keller’s declaration seeks to repeat the same flawed reasoning applied at the district
`
`court, focusing on the individual differences rather than the overall appearance of
`
`the webpages. Patent Owner later concedes the instant claims do not require an exact
`
`match, nor do the “specification, file history, or previous determinations of overall
`
`appearance.” Response, 23.
`
`Patent Owner and Dr. Keller fail to address the various visual similarities
`
`between Figs. 7-1 and 7-2. First, common font types and colors are not commerce
`
`object information. Petitioner identifies each set of corresponding text of font type
`
`and color in boxes: (red) email purchase instructions, (blue) body text, and (green)
`
`commerce object information. Patent Owner fails to appreciate that webpage
`
`depicted in Fig. 7-2 extends onto Fig. 7-3. Ex. 1013, 196; Ex. 1024, 196. The textual
`
`12
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`elements on the bottom of Fig. 7-2 are present at the start of Fig. 7-3. Id. Patent
`
`Owner does not dispute that the body text (blue boxes) has the same font type and
`
`color in both Figs. 7-1 and 7-2. Patent Owner also does not dispute that the email
`
`purchase instructions (red boxes) are the same font type and color as compared
`
`between Fig. 7-1 and Figs. 7-2 & 7-3. As noted above, the Federal Circuit did not
`
`require an “overall match” between the webpages or the exact copying of individual
`
`“look and feel” elements to find a corresponding “overall appearance” between the
`
`Digital River webpages. DDR, 773 F.3d at 1254.
`
`Patent Owner argues that Loshin’s corresponding background may be caused
`
`by “bad copying.” Patent Owner’s argument is misplaced because the claims only
`
`require a visual correspondence. The physical book discloses that visual
`
`correspondence. It does not matter how the visual correspondence is generated it is
`
`there – the webpages, as shown in the prior art, share an “overall appearance.” Ex.
`
`2027, 228:11-20 (“Q. So the background. Do you know that there is actually a
`
`background value that has been set for these pages? A. No. But whatever it is, it
`
`looks the same on both pages.”). Petitioner provides high definition scans of Figs.
`
`7-1, 7-2, and 7-3 for consideration as requested by the Board. Decision, 12 n. 2, 13
`
`n. 3; Ex. 1024.
`
`13
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`Ex. 1024, 194 (annotated); Ex. 1013, 194.
`
`14
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`Case IPR2018-01008
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`Page 15
`Page 15
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` -
`
`|
`
`
`
`Paying for a product using First Virmaf’s payment system.
`Reprinted with pemissr'an from First Virflm! Holdings
`Incorporatad, I 996.
`
`15
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`15
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`Ex. 1024, 196 (annotated); Ex. 1013, 196.
`
`With the exception of the header, the font sizes for the corresponding text in the
`
`boxes are identical. The font size is not commerce object information and is
`
`consistent between the colored boxes in the figures.
`
`Finally, both webpages identify the host as Darren New. Patent Owner does
`
`not argue that “Darren New” is a different entity from “Darren_New.” Patent
`
`Owner’s own exhibits show subtle variations in textual composition that allegedly
`
`satisfied the erroneous but higher standard requiring an “overall match.”
`
`16
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`Ex. 2031, 4 & 6.
`
`When a webpage is comprised of few elements, an overall visual
`
`correspondence equally requires few similarities. Ex. 2027, 195:7-25 (“[T]hese are
`
`primitive Web pages. They’re essentially all textual. So creating the kind of visual
`
`correspondence we think of now with beautiful graphics and color and stuff like that
`
`is not shown in Loshin because it’s so early.”). These visual elements, taken
`
`together, create an “overall correspondence” between the webpages in Fig. 7-1 and
`
`Figs. 7-2 and 7-3. A visitor to the webpage (Fig. 7-1) would not understand that
`
`they were being redirected to a webpage hosted by the outsource provider (Fig. 7-
`
`2). Ex. 2027, 13:8-21.
`
`17
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`Patent Owner makes arguments not supported by the claim language, alleging
`
`the visual correspondences “could be browser-determined defaults rather than any
`
`feature defined by the website or characteristics of it.” Claims 1 and 11 only require
`
`“visual correspondence relat[ing] to overall appearance of” the webpages. The prior
`
`art is a book with images in it, not an actual system. It does not matter if the
`
`similarities between the webpages result from browser defined defaults as long as
`
`those defaults create an overall “visual correspondence” between the webpages –
`
`they are there. Ex. 2027, 228:11-21; 236:8-19. Patent Owner does not dispute that
`
`text would be rendered in the same font and at the same size absent any overriding
`
`settings, nor does it dispute the background would be rendered identically absent any
`
`overriding settings. Ex. 2027, 107:2-23. Patent Owner also does not dispute that
`
`the font, font color, font size, or background color can establish a corresponding
`
`“overall appearance.”
`
`3.
`
`Loshin discloses the “payment to the host of a
`commission….” of claims 4 and 14
`The ’876 Patent discloses two embodiments. The first embodiment teaches
`
`that the host is paid a commission by the outsource provider for facilitating the sale
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`of the merchant’s products. Ex. 1001, 24:5-6 (“Manage the commission structure
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`for Merchant-Host relationships to maximize sales and revenues.”). The second
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`embodiment teaches the host/merchant being paid a commission by the outsource
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`provider for facilitating the sale of its own products. Ex. 1001, 23:2-3 (“This folds
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`into two parties where one party plays the dual role of Host and Merchant.”).
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`Patent Owner’s argument requires three unique parties and reads out the two-
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`party embodiment. Response, 43 (“The concept of a ‘commission’ requires payment
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`by one party to a second party for making a sale of another party’s product.”)
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`(emphasis added). Patent Owner’s construction does not comport with the two-party
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`embodiment. Response, 44 (“money paid to [the host/merchant] by or on behalf of
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`[the outsource provider] for facilitating the [outsource provider’s] sale of
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`[host/merchant’s] products.”). Patent Owner’s construction would require the
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`outsource provider pay the host/merchant for selling the same host/merchant’s
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`products, an interpretation not supported by the specification. For the same reasons
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`stated in the Petition, Petitioner’s construction is correct. Petition, 10-11.
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`Loshin discloses a “commission” paid to the host at least when the host and
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`merchant are the same party. Patent Owner’s sole argument is that “the specification
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`references are consistent with payment of a commission to a third party, not simply
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`receiving the proceeds of the sale less the selling party’s fee.” Response, 44. Again,
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`this interpretation improperly excludes an embodiment. Ex. 1001, 23:2-3. When
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`the merchant/host is the same party, all that the merchant/host can ever receive is
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`“the proceeds of the sale less the selling party’s fee.” Response, 44. Patent Owner
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`does not dispute that Loshin teaches paying the InfoHaus a percentage of the sale
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`price (8%) before paying the merchant/host the remaining balance. Response, 25.
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`4.
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`Loshin discloses the hierarchical-page electronic catalog of
`claims 7 and 17
`Patent Owner’s arguments are internally inconsistent. Patent Owner claims
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`that Loshin both “contains no disclosure of listing multiple products on a single
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`storefront page” and yet “refers to a hierarchical list of products shown on the
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`storefront.” Response, 26-27. Loshin discloses “product names appear on the
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`InfoHaus as … links on the InfoHaus Web pages.” Ex. 1013, 230. Loshin also
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`discloses viewing all products available from a seller. Id., 275-276. Further, Loshin
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`discloses the “simplest type of storefront uses a very simple default description
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`format to link the listed products through the merchant’s business name.” Id., 138.
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`5.
`
`Loshin discloses the catalog-searching limitations of claims
`8 and 18
`Patent Owner argues that Loshin’s disclosures are limited to email searching.
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`Response, 28. However, Patent Owner does not explain what the alleged “claimed
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`feature of accepting search parameters to search an online catalog” comprises.
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`Claims 8 and 18 only require “[using/use] search parameters inputted at the visitor
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`computing device to search for specific products within the catalog, and (ii)
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`[serving/serve] to the visitor computing device additional instructions directing the
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`visitor computing device to display the results of the search.” (emphasis added). As
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`explained in the Petition, Loshin discloses such a search function via email. Petition,
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`32-33.
`
`Ground 2: Loshin and InfoHaus Obviate Claims 1, 7, 11, and 17
`C.
`The Board determined that Loshin and InfoHaus describe a common system,
`
`but that InfoHaus did not remedy any deficiencies found in Loshin. Petitioner
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`disagrees and directs the Board to the additional teachings of InfoHaus.
`
`1.
`
`Loshin and InfoHaus disclose a “visual correspondence
`[that] relates to overall appearance” of the webpages
`As discussed above, Loshin discloses this claim element. InfoHaus also
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`teaches “visual correspondence [that] relates to [the] overall appearance” of the
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`webpages. InfoHaus teaches “automatic generation of storefront pages.” Ex. 1016,
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`5 (“The InfoHaus automatically generates storefront pages. You may override these
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`with your own HTML documents, creating a totally custom shop.”); Ex. 1015, 11
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`(“When you open your new shop, the InfoHaus will automatically: * Generate your
`
`Web page.”). Patent Owner does not dispute that a browser will render webpages
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`with the same default font, font color, text size, and background if there are no
`
`corresponding overriding properties. Ex. 2027, 107:2-20. Patent Owner also does
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`not dispute that font type, font color, text size, and background color are “look and
`
`feel” elements as described in the specification. Ex. 1001, 13:54-61.
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`InfoHaus also teaches automatically creating subpages. Ex. 1015, 11 (“When
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`you open your new shop the InfoHaus will automatically: * Generate your Web
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`page. * Create a storage area for your products.”), Ex. 1016, 5, 10-11 (“3.
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`‘articles.travel.Paris.00DIRECTORY’ will create a
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`third-level sub-page
`
`containing every item with a name that begins with ‘articles.travel.Paris’ (the link to
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`this sub-page will be called ‘articles.travel.Paris’ and it will appear on the
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`‘articles.travel’ page.)”). While InfoHaus teaches that one “may override these with
`
`your own HTML documents, creating a totally custom shop”, InfoHaus also teaches
`
`automatically generating the pages with default values. Id., 5, 10-13.
`
`Patent Owner argues that the InfoHaus only teaches customizing storefront
`
`pages. Patent Owner is wrong. Id., 5 (“2. To customize your main page, the file
`
`must be called … The names of other pages you add must start with….), 7-9
`
`(describing customizing product pages such as Fig. 7-2 of Loshin with forms).
`
`2.
`
`Loshin and InfoHaus disclose the hierarchical-page
`electronic catalog of claims 7 and 17
`As discussed above, Loshin discloses this claim element. InfoHaus also
`
`teaches a “hierarchical-page electronic catalog”, describing “sub-pages in your shop
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`that organize your products by category.” Ex. 1016, 10. InfoHaus provides an
`
`example where “a shop’s main page could have links named “Articles”, “Photos”,
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`and “Poems” that lead to pages containing those products.” Id.
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`Patent Owner argues InfoHaus only teaches multiple storefront pages. Again,
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`Patent Owner is wrong. Id., 10 (“[A] shop’s main page could have links … that lead
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`to pages containing those products.”). These links are “selectable URLs connecting
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`a hierarchical set of additional web pages of the outsource provider website, each
`
`pertaining to a subset of the product offerings in the electronic catalog.” Id., 11
`
`(“The link to the this [sic] sub-page will be called ‘articles.travel.Paris’ and it will
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`appear on the ‘articles.travel’ page.”); Petition 43-44.
`
`D.
`
`Ground 3: Loshin and Moore Obviate Claims 1-5, 7-8, 11-13, 17,
`and 18
`Patent Owner does not challenge the motivation to combine Loshin and
`
`Moore. Response, 29.
`
`Loshin and Moore disclose a “visual correspondence….”
`1.
`The Board correctly determined that Loshin and Moore disclose a “visual
`
`correspondence [that] relates to an overall appearance of the composite web page as
`
`compared to the source web page, but excluding the commerce object information
`
`and the URL.” Decision 33-34. The Board correctly found Loshin itself disclosed
`
`this claim element. Id., 18. The Board also found that Moore alone also disclosed
`
`this claim element. Shopify, Inc. v. DDR Holdings, LLC, IPR2018-01011, Paper No.
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`10, 20-21. For the same reasons discussed above regarding Loshin, Loshin and
`
`Moore disclose a corresponding overall visual appearance.
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`Moore teaches a corresponding overall visual appearance across all webpages
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`incorporati