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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
`
`SHOPIFY, INC.,
`Petitioner
`
`v.
`
`
`
`DDR HOLDINGS, LLC,
`Patent Owner
`
`
`Case IPR2018-01008
`U.S. Patent 9,639,876
`
`PATENT OWNER’S SUR-REPLY
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`
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`Page i
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`Case No. IPR2018-01008
`U.S. Patent 9,639,876
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`TABLE OF CONTENTS
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`TABLE OF CONTENTS ............................................................................................ i
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`TABLE OF AUTHORITIES ................................................................................... iii
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`TABLE OF EXHIBITS ............................................................................................ iv
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`Summary .................................................................................................................... 1
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`Argument.................................................................................................................... 2
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`I. Petitioner’s Reply misconstrues “visual correspondence” of “overall
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`appearance.” ......................................................................................................... 2
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`A. Petitioner misinterprets the Federal Circuit decision. ........................................ 2
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`B. Petitioner’s proposed construction of “overall appearance” is unnecessary
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`and unhelpful. ..................................................................................................... 7
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`II. Ground 1: Loshin does not teach “visual correspondence” of “overall
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`appearance” between host and composite pages served by different
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`parties. .................................................................................................................. 8
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`A. There is no “visual correspondence” of “overall appearance” between
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`Figures 7-1 and 7-2 of Loshin. ........................................................................... 9
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`B. The Reply offers no reason to alter the Board’s decision that Loshin does
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`not teach Figures 7-1 and 7-2 being served by different parties. ..................... 14
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`C. The Reply overlooks deficiencies in the Petition’s allegation of
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`anticipation of certain dependent claims. ......................................................... 17
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`III. Ground 2: InfoHaus does not teach “visual correspondence” of
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`“overall appearance” between host and composite pages served by
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`different parties. ................................................................................................. 19
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`IV. Ground 3: Moore does not teach “visual correspondence” of “overall
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`appearance” between host and composite pages served by different
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`parties. ................................................................................................................ 20
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`V. Conclusion. ........................................................................................................ 25
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`Page iii
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`Cases
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`Case No. IPR2018-01008
`U.S. Patent 9,639,876
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`TABLE OF AUTHORITIES
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`DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) ...... 2, 3, 8
`DDR Holdings, LLC v. Hotels.com, L.P., 954 F. Supp. 2d 509 (E.D. Tex.
`2013) (Ex. 2012) ...................................................................................... 2, 3, 6, 13
`Hulu, LLC v. CRFD Research, Inc., IPR2015-00259, 2016 WL 4374994
`(P.T.A.B. June 1, 2016), rev’d on other grounds sub nom. CRFD
`Research, Inc. v. Matal, 876 F.3d 1330 (Fed. Cir. 2017) .....................................14
`Qualcomm Inc. v. Bandspeed, Inc., IPR2015-00531, 2016 WL 8960549
`(P.T.A.B. Aug. 5, 2016) ........................................................................................14
`United States Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554 (Fed. Cir.
`1997) ....................................................................................................................... 7
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795 (Fed. Cir. 1999) ............ 7
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`Page iv
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`Case No. IPR2018-01008
`U.S. Patent 9,639,876
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`TABLE OF EXHIBITS
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`Description
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`Ex. No.
`2001 U.S. Patent 6,993,572
`2002 U.S. Patent 7,818,399
`2003 Decision denying motion to dismiss, June 5, 2018, 17-498 (D. Del.)
`2004
`File history of S.N. 12/906,979 (issued as U.S. Patent 8,515,825)
`2005
`File history of S.N. 13/970,515 (issued as U.S. Patent 9,043,228)
`2006
`File history of S.N. 14/719,009 (issued as U.S. Patent 9,639,876)
`2007
`[Reserved]
`2008
`[Reserved]
`2009
`[Reserved]
`2010 Moore-related charts from IDSs
`2011
`[Reserved]
`2012 Decision denying JMOL, June 20, 2013, 2:06-CV-00042-DF (E.D. Tex.)
`2013
`[Reserved]
`2014
`[Reserved]
`2015 Claim construction order, Nov. 21, 2011, 2:06-CV-00042-DF (E.D. Tex.)
`2016
`[Reserved]
`2017 Opinion denying Motion for Summary Judgment, Oct. 3, 2012, 2:06-CV-
`00042-DF (E.D. Tex.)
`[Reserved]
`2018
`[Reserved]
`2019
`[Reserved]
`2020
`[Reserved]
`2021
`[Reserved]
`2022
`Letter from Shopify counsel
`2023
`2024 Crosby Declaration in Support of Motion for Pro Hac Vice Admission
`2025 Declaration of Dr. Arthur M. Keller, Ph.D.
`2026 Keller CV
`2027
`Shamos deposition
`2028 Demonstrative exhibit illustrating Tobin prior art patent’s figures
`2029
`Images from Digital River prior art system discussed at E.D. Tex. trial
`2030 Demonstrative exhibit comparing Loshin Figures 7-1 and 7-2
`2031
`Images discussed at E.D. Tex. trial as infringing overall visual matching
`2032 URL containing all information necessary to display Moore Fig. 16
`2033 Definition of “commission”
`2034 Notice of Allowance and claims of continuation App SN 15/582,105
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`Page 1
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`Summary
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`Petitioner’s argument that Loshin teaches visual correspondence between
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`two web pages misapplies the Federal Circuit’s decision finding that an ancestor
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`patent with different claim language required just a few common elements rather
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`than common overall appearance. Petitioner concedes that Loshin teaches at most a
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`few common elements. But Petitioner ignores (1) evidence that overall appearance
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`requires more than just a few of many elements, and (2) many conspicuous
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`differences between the pages in Loshin.
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`Regardless, any similarities between Loshin’s pages are irrelevant, because,
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`undisputedly, the same party serves both of those pages. Petitioner’s new cites to
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`different parts of Loshin show the same thing.
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`The other references do not remedy Loshin’s omission of overall visual
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`correspondence between a host’s “source” page and the “composite” page of a
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`third-party outsource provider. The InfoHaus Publications (Ground 2) concern the
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`same system as Loshin and refer to controlling the appearance of “your website”
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`and allowing InfoHaus to handle back-end transaction processing. Nor does Moore
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`(Ground 3) teach having “Storefront Pages” look like a “Buy Page.” The Reply
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`does not rebut Patent Owner’s demonstration that Moore’s statements about
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`applying default styles to “each page” refer to Storefront Pages, not the Buy Page.
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`Instead, it relies on suppositions by its expert that a POSITA would “understand”
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`Moore to teach elements that Moore not only fails to describe, but actually
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`
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`excludes in some instances.
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`Argument
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`I.
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`Petitioner’s Reply misconstrues “visual correspondence” of “overall
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`appearance.”
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`The Reply’s primary thesis is that the claim terms requiring “visual
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`correspondence” of “overall appearance” require mere correspondence of a few
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`“elements” between the host’s website page and an outsource provider’s
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`“composite page.” That theory misinterprets the Federal Circuit’s decision in DDR
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`Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1252-54 (Fed. Cir. 2014)
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`(“Hotels”).
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`A. Petitioner misinterprets the Federal Circuit decision.
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`Petitioner does not dispute that the jury and district court in Hotels found
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`that the Digital River page pair lacked “an overall match of appearance ….” Reply
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`at 6; DDR Holdings, LLC v. Hotels.com, L.P., 954 F. Supp. 2d 509 (E.D. Tex.
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`2013) (Ex. 2012).1 But Petitioner mistakenly contends that the Federal Circuit
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`1
`Page 11 of the Response (Paper 21) contains an incorrect citation, although
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`the pinpoint pages and the Table of Authorities are correct. The citation should
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`have said “954 F. Supp. 2d 509, 516, 519-20, 523 (E.D. Tex. 2013)” (Ex. 2012)
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`“reversed” that factual determination. The relevant part of the Federal Circuit
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`
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`decision considered the validity of grandparent U.S. Patent 6,993,572, claims 13
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`and 17, which lacked claim language referring to “corresponding overall
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`appearance.” 773 F.3d at 1249. Instead, those claims merely required a “composite
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`web page” having “a look and feel based on the look and feel description in the
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`data store.” Id. (emphasis added). To satisfy that requirement, the Federal Circuit
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`found that “it is sufficient that ‘look and feel’ elements identifying the host website
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`are transferred to and displayed on the generated composite webpage.” Id.
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`(emphasis added). Because the grandparent ’572 patent’s claims did not “requir[e]
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`an ‘overall match’ or a specific number of ‘look and feel’ elements,” id., the
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`Federal Circuit did not—and had no occasion to—find that any Digital River page
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`pairs had a “corresponding overall appearance.”
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`In reality, the Federal Circuit acknowledged DDR’s “conten[tion] that the
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`jury reviewed substantial evidence that Digital River’s SSS did not replicate the
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`host website’s ‘look and feel’ in terms of ‘overall appearance’ and that the web
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`pages generated by the SSS did not show ‘correspondence of overall appearance.’”
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`instead of “773 F.3d 1245, 516, 519-20, 523 (Fed. Cir. 2014)” and, at the end of
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`the paragraph, “954 F. Supp. 2d at 516” instead of “773 F.3d at 516.”
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`773 F.3d at 1253. The Court found only that such correspondence was not required
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`by the construed claims of the grandparent ’572 patent:
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`Both the district court and DDR introduced a limitation found neither
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`in the ’572 patent’s claims nor the parties’ stipulated construction. In
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`particular, the district court introduced a requirement that the
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`generated composite web page have an “overall match” in appearance
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`with the host website, beyond what is expressly recited by the claims.
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`Id. at 1254. The Federal Circuit’s decision in Hotels thus did not disturb the jury
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`and district court’s factual findings, which remain persuasive evidence that the few
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`common elements on Digital River page pairs did not produce overall
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`correspondence.
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`Unlike in Hotels, whether page pairs had corresponding overall appearance
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`was highly relevant to the examiner who allowed this patent, because the claims of
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`the three continuation patents challenged by Petitioner’s related IPRs, including
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`this patent, contain explicit language requiring “visual correspondence” of “overall
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`appearance.”
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`During prosecution of all three patents, the examiner considered Digital
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`River, including the same page pairs raised in Hotels, and agreed with the jury and
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`district court that they did not reveal corresponding overall appearance. Petitioner
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`observes (Reply at 8) that Patent Owner introduced the claim language in question
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`when prosecuting the first of those patents, and that the resulting patent, No.
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`8,515,825, issued on August 20, 2013, over a year before the Federal Circuit’s
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`decision. The examiner then had the benefit of the district court decision upholding
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`the jury’s judgment of no matching overall appearance. Ex. 2004 at 19-26.
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`The examiner granted the second of the three patents, No. 9,043,228, after
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`the Federal Circuit’s ruling, which he asked the Patent Owner to distinguish. Patent
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`Owner explained, as repeated here, that the decision turned on the absence of a
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`limitation in the grandparent ’572 patent requiring corresponding overall
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`appearance. Ex. 2005 at 61-63. In allowing the ’228 patent, then, the examiner
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`accepted Patent Owner’s explanation that the Digital River art merely “carried over
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`isolated elements” but contained no page pair with “a substantially similar overall
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`appearance.” Ex. 2005 at 150.
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`Patent Owner reminded the examiner of the Federal Circuit decision when
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`he allowed the third of the three challenged patents, No. 9,639,876. Ex. 2006 at 45.
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`The examiner recorded in the prosecution history that he had “confirmed that he
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`had reviewed prior art in parent applications, including relevant prior art related to
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`Digital River SSS (directly by study of the references and in view of the Court of
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`Appeals decision).” Ex. 2006 at 18.
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`The examiner thus understood what Petitioner does not: The Federal Circuit
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`in Hotels did not “reverse” the district court finding that Digital River failed to
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`disclose corresponding overall appearance. The jury, the district court, and the
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`examiner all concluded that the Digital River page pairs did not show
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`corresponding overall appearance, and the examiner rightly understood that the
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`Federal Circuit did not disagree.
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`None of Grounds 1-3 in this Petition relies on any Digital River page pair.
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`The discussion about the Federal Circuit, rather, bears on what is required to
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`satisfy the claim terms “visual correspondence” of “overall appearance.”
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`Petitioner’s Reply (at 7-10, emphasis added) argues that a webpage pair can meet
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`the claim merely by showing “just three similar ‘look and feel’ elements,” e.g., a
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`logo, background color, and circular bullets.2 Petitioner’s thesis is wrong because it
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`mistakenly assumes that the Federal Circuit decision overturned the jury’s
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`judgment, upheld by the district court, that the Digital River page pairs fail to show
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`“correspondence of overall appearance” based only on the presence of a few
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`common “‘look and feel’ elements.” 954 F. Supp. 2d 509 at 517 (Ex. 2012)
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`(rejecting Digital River argument to reverse jury verdict based on “three of the
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`exemplary ‘look and feel elements’”).
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`2
`Petitioner presents Exhibit 1025, an excerpt from the Federal Circuit Joint
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`Appendix in Hotels. That exhibit is nothing new; it repeats one of the Digital River
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`page pairs included in Patent Owner’s collection. See Exhibit 2029 (last page).
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`B. Petitioner’s proposed construction of “overall appearance” is
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`unnecessary and unhelpful.
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`The Reply (at 7) seeks to construe “the claim limitation ‘overall
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`appearance’” as “appearance taken as a whole.” That proposal simply repeats the
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`word “appearance” and substitutes “as a whole” for “overall.” But “overall” is a
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`well understood, non-technical English word, and Petitioner identifies no
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`ambiguity that its construction would resolve. See Institution Decision, Paper 12 at
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`10 (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
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`1999) (need to construe terms “only to the extent necessary to resolve the
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`controversy”)); accord United States Surgical Corp. v. Ethicon, Inc., 103 F.3d
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`1554, 1568 (Fed. Cir. 1997) (no obligation to “repeat or restate every claim term”;
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`claim construction “is not an obligatory exercise in redundancy.”).
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`This IPR does not turn on what “overall” means. Instead, it depends on
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`whether “visual correspondence” of “overall appearance” can be met for a pair of
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`webpages that “merely … share similar ‘look and feel’ elements,” as Petitioner
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`puts it. Reply at 8 (quoting the Federal Circuit’s discussion of the grandparent ’572
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`patent at 774 F.3d at 1254) (emphasis added).
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`In the Response (at 10-11), Patent Owner cites evidence from the district
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`court proceedings and from the prosecution histories demonstrating that “page
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`pairs” that share only the name and logo of a host “fall[] short” of “conveying an
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`‘overall match’ of appearance.” 773 F.3d at 516 (Ex. 2012); see Ex. 2005 at 2004-
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`
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`06; Ex. 2025 at ¶49; Ex. 2028 (Tobin example). The Reply challenges none of that
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`evidence. Accordingly, the Board should find that claim terms requiring “visual
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`correspondence” of “overall appearance” cannot be met by a host page and
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`composite page that just share a host’s name, or name plus trademark or logo.
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`II. Ground 1: Loshin does not teach “visual correspondence” of “overall
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`appearance” between host and composite pages served by different
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`parties.
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`The Institution Decision concluded that Petitioner failed to prove that Loshin
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`(Ex. 1013) discloses correspondence in overall appearance between a host page
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`and a composite page: “Petitioner has not shown the source web page has been
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`served when visiting a website of a host” and that both pages of the page pair
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`relied on by the Petition (Figs. 7-1 and 7-2) were “served from a website of the
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`outsource provider.” Paper 12 at 19. Petitioner’s Reply seeks to persuade the Board
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`that Loshin teaches both (1) different parties serving the pages in Figures 7-1 and
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`7-2, and (2) those pages having corresponding visual appearance.
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`A. There is no “visual correspondence” of “overall appearance” between
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`Figures 7-1 and 7-2 of Loshin.
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`First, Petitioner incorrectly contends that Loshin Figure 7-1, on the left
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`below, and Loshin Figure 7-2 (continuing onto Figure 7-3), on the right, have the
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`required “visual correspondence” of “overall appearance”:
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`The challenged claims require that the correspondence must exclude
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`“commerce object information.” Petitioner’s Reply (at 12-16) outlines in green
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`boxes certain features admittedly in the category of “commerce object
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`information.” But Petitioner presents no evidence that those are the only such
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`items. The Reply (at 11) accuses Patent Owner of “mischaracteriz[ing] Dr.
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`Shamos’ testimony,” but Petitioner does not deny that Dr. Shamos changed his
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`testimony about what was “commerce object information.” See Ex. 2030 at 2, 3.
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`Dr. Shamos did not say (either time) that the “commerce object information” is
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`limited to the green-boxed items. Compare Ex. 2027 at 194:3-9 (admitting that text
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`stating, “This is a volumed periodical. A subscription costs $1.00 per volume” is
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`“information relating to commerce object”) with Reply at 15 (not including that
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`text in a green box); see also id. at 223:24 (despite changing testimony, admitting
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`that text that reveals “what the cost is or how many issues you’re going to get of it”
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`is commerce object information).
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`Applying Dr. Keller’s undisputed definition of “commerce object
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`information” (and crediting the Petition’s view that Figure 7-2 “extends onto”
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`Figure 7-3), the relevant comparison is whether the right and left sides just below,
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`excluding the blue-shaded areas, visually correspond in overall appearance:
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`A glance suffices to confirm Dr. Keller’s testimony: “Figures 7-1 and 7-2 do not
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`have corresponding overall appearance in visual correspondence, excluding the
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`commerce object information and the URL. The pages do not look alike in overall
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`appearance ….” Ex. 2025 at ¶54.
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`Dr. Keller’s testimony listed many specific differences between the two
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`pages, supporting the absence of corresponding overall appearance. Id. at ¶54. The
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`Reply challenges none of those specifics. Rather, the Reply (at 12) argues that Dr.
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`Keller “requires that there are no differences in appearance,” despite citing Patent
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`Owner’s Response, which said (at 23) the precise opposite. The Reply offers no
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`quarrel that “the Board should not overlook clear differences that profoundly
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`detract from any commonality of visual appearance between the two pages.” Id.
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`(emphasis in original).
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`Petitioner’s Reply (at 17) tries to excuse the dearth of corresponding
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`elements by contending that the pages contain just a “few elements” related to
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`appearance in all. But Dr. Keller’s list of differences shows that Loshin’s pages
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`contain more than just a “few elements” impacting visual appearance.
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`The Reply abandons the Petition’s reliance on common “textual
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`information.” Ex. 1002 at ¶¶97, 102. Unchallenged evidence now proves that “the
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`only text repeated on both pages relates to the commerce object being offered. The
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`common lines of text are ‘commerce object information’ because they identify
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`information about that mail list, including its start date, number of issues, number
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`of subscribers, and price.” Ex. 2025 at ¶54. The Institution Decision’s finding that
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`the Preliminary Response was “unpersuasive because … the textual composition
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`[might] affect a page’s appearance” is thus no longer pertinent. Paper 12 at 18.
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`The Reply instead identifies (at 12-16) a few shared elements: (1) use of a
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`common Roman font (for most text), (2) use of the same font size (for most text),
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`(3) use of black letters on a gray background (as reproduced in Loshin’s book), and
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`(4) repeating the seller’s name (“Darren New”).
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`As to elements (1)-(3), Petitioner offers no evidence that the “composite
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`page” presents those elements by means of them being retrieved from any storage
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`having stored data defining the common visually perceptible elements. Petitioner’s
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`witness admits that each of elements (1)-(3) instead could be produced instead by
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`browser defaults. Ex. 2027 at 228:11-20 (background) & 236:8-237:20 (text font,
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`size, and style). Browser defaults would not meet the storage/download
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`requirements of the patent claims. Ex. 2025 at ¶54.3
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`The Reply (at 18) alleges, “Patent Owner also does not dispute that the font,
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`font color, font size, or background color can establish a corresponding ‘overall
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`appearance.’” That is a mischaracterization: Such elements can contribute to
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`common overall appearance but cannot “establish” correspondence in overall
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`appearance all by themselves, when the rest of the appearance differs.
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`3
`The Reply does not deny that the Petition never cited background
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`color, font, and font color/size; the expert raised those for the first time in his
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`deposition. See Response at 22. They should be ignored for that reason too.
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`As to item (4), Petitioner agrees that the pages present the host name a bit
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`differently but more importantly does not challenge the Response’s explanation (at
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`10-12) that, per the file history, a common name, or name and logo, is not enough
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`to show overall correspondence.4
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`Even if the Board decides that font/size/color are common elements when
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`they could be just defaults, and even if the seller name “counts” despite
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`differences, commonality of overall appearance cannot be premised merely on the
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`presence of “a few common ‘“look and feel” elements,’” DDR Holdings, 954
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`F. Supp. 2d at 517 (Ex. 2012), especially non-distinctive ones, as those cited here.
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`Loshin’s pages share far fewer “elements” than the Digital River page pairs in
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`Exhibit 2029 repeatedly held non-corresponding in overall visual appearance.
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`In all, Petitioner’s Reply depends on misreading the Federal Circuit as
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`allowing a showing of commonality based on just a few “elements” and a laser-like
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`focus on font and seller names while ignoring plain differences and the overall
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`picture.
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`4
`The Reply also alludes to Loshin’s reference to logos as “visual
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`trademarks” (see Petition and Ex. 1002 at ¶97) but offers no answer to the
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`Response’s point (at 21) that Loshin never teaches adding such trademarks to
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`Figures 7-1 or 7-2, nor using a trademark on both pages of any pair.
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`B. The Reply offers no reason to alter the Board’s decision that Loshin
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`does not teach Figures 7-1 and 7-2 being served by different parties.
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`Petitioner’s Reply (at 3) admits that both Figures 7-1 and 7-2 show a
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`configuration “where the outsource provider hosted the source webpage.”
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`Petitioner must concede such, given its witness’s admission. Ex. 2027 at 208:5-10.
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`Admittedly, then, the page pair cited in the Petition does not meet the claim, at
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`least because there is no showing that the “source” page meets the requirement of
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`the page being served to a visitor on a first/source/host “website” that contains a
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`link to a “composite page” of a “third party” (outsource provider).
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`Petitioner’s Reply (at 3-4) relies on page 244 of Loshin, but Petitioner does
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`not deny that the Petition does not cite this page. Petitioner cites Genzyme for the
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`principle that it may offer new evidence, but this is not new evidence—it is a new
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`theory. A “theory” that a prior art reference teaches an element “elsewhere in its
`
`disclosure” than identified in the Petition is an “improper reply” because it presents
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`“a new prima facie case, rather than a response to arguments presented in the
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`Patent Owner Response” that the disclosure cited in the Petition was lacking.
`
`Qualcomm Inc. v. Bandspeed, Inc., IPR2015-00531, 2016 WL 8960549, at *13
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`(P.T.A.B. Aug. 5, 2016); see also, e.g., Hulu, LLC v. CRFD Research, Inc.,
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`IPR2015-00259, 2016 WL 4374994 (P.T.A.B. June 1, 2016) (“Petitioner argues
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`that even if Bates does not transmit session history from the ‘current session’ after
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`
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`Page 15
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`
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`Case No. IPR2018-01008
`U.S. Patent 9,639,876
`session discontinuation, Bates discloses transmitting session history from ‘prior
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`sessions.’ Petitioner never argued this theory in its Petition, and it was improper to
`
`raise it for the first time in the Reply.”), rev’d on other grounds sub nom. CRFD
`
`Research, Inc. v. Matal, 876 F.3d 1330, 1333 (Fed. Cir. 2017).
`
`Nevertheless, the new argument is wrong: Petitioner’s witness admits that
`
`page 244 teaches, “You can have everything on InfoHaus or you can have
`
`everything on your own server.” Ex. 2027 at 207:2-4.5 The Reply offers no rebuttal
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`to the Response’s observation (at 15) that Loshin has “no discussion of splitting”
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`Figures 7-1 and 7-2 between the host site and the InfoHaus site.
`
`The Reply shifts to still another excerpt, Loshin pages 248-49, again first
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`raised in deposition. Ex. 2027 at 221. There, in a section entitled, “If You
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`Outsource Your Web Site…,” Loshin writes, “Another alternative is to continue to
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`use the InfoHaus to handle your transactions, but to use some other Web site to
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`publish your products.” The Reply (at 4-5) pretends that this is a disclosure of
`
`“using two different servers for serving different webpages such as those depicted
`
`in Figures 7-1 and 7-2,” but that is not what the quoted sentence says: Aside from
`
`
`5
`The Response quotes the expert’s words; in no sense did it
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`“mischaracterize” what he said. The Response cited 204:2-4 of Ex. 2027; the right
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`citation is 207:2-4.
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`
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`Page 16
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`Case No. IPR2018-01008
`U.S. Patent 9,639,876
`the absence of any tie to Figures 7-1 and 7-2 at all, these pages teach only that
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`InfoHaus would handle “transactions,” which means payment processing and
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`product (software) delivery. A “transaction” is what happens after the visitor clicks
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`the “buy” button in Figure 7-2 (“Select BUY to purchase”). See Ex. 1013 at 195
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`(describing Fig. 7-2: “When you are done, you click on the ‘BUY’ button, and the
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`merchant can submit the transaction to First Virtual for completion.”) (emphasis
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`added). Thus, a seller has the option of moving both pages to the “other Web site”
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`but using InfoHaus to handle payment processing after the “buy” button is clicked.
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`Moreover, nothing on pages 248-49 speaks about what a “transaction” page
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`would look like or whether it would meet the claim’s requirements for a
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`“composite page.” To the contrary, Loshin says that such “processing” uses the
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`First Virtual server as a back-end for “your own Web site” (page 261), and the
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`only response page that the First Virtual server serves, in any scenario,6 is a generic
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`“First Virtual ‘thank you’ response page” (page 265) as shown in Fig. 7-4, not the
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`order page depicted in Fig. 7-2 that Petitioner likens to the outsource page.
`
`
`6
`
`Loshin’s scenarios are “submitting transfer requests by e-mail” using
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`scripts (pages 265-68), communicating information via a specialized “API” (pages
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`269-72), or posting transaction requests from “HTML forms” (pages 261-65).
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`Case No. IPR2018-01008
`Page 17
`U.S. Patent 9,639,876
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`C. The Reply overlooks deficiencies in the Petition’s allegation of
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`anticipation of certain dependent claims.
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`As to claims 4 and 14, the Reply (at 18-19) alleges that Patent Owner’s
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`interpretation of the “commission” limitation “requires three unique parties and
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`reads out the two-party embodiment” because the “concept of a ‘commission’
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`requires payment by one party to a second party for making a sale of another
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`party’s product.” The Reply does not explain, though, why that is a problem: Every
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`dependent claim need not be consistent with all disclosed embodiments; indeed it
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`would be surprising if such were true.
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`The Reply next (at 19) argues, “Loshin discloses a ‘commission’ paid to the
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`host at least when the host and the merchant are the same party.” That is irrelevant
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`(see above) as well as inaccurate: As the Reply (at 18-19) concedes, Loshin
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`teaches InfoHaus keeping “a percentage of the sale price (8%) before paying the
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`merchant/host the remaining balance,” which is “the proceeds of the sale less [First
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`Virtual/InfoHaus’] fee.” That 92% of the sale price does not meet the definition of
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`“commission,” as explained in the unrebutted testimony of Dr. Keller, Ex. 2025 at
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`¶47(a), according to the unrebutted claim construction evidence, Ex. 2033, and
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`according to the unrebutted argument in the Response (at 44), “No English speaker
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`would call the seller’s price less a fee retained by an Outsource Provider a
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`‘commission.’”
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`
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`Page 18
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`Case No. IPR2018-01008
`U.S. Patent 9,639,876
`As to claims 7 and 17, the Reply (at 20) accuses the Response of being
`
`“internally inconsistent” by referring to “a hierarchical list of products shown on
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`the storefront” but also pointing out that Loshin has “no disclosure of listing
`
`multiple products on a single storefront page.” There is no inconsistency: The
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`Response and the cited, unrebutted evidence, Ex. 2025 at ¶47(b)(iii), show that
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`Loshin teaches that the storefront, a collection of pages, can be arranged in a
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`hierarchy, one product per page. Moreover, the Reply offers no answer to the fact
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`that Loshin’s disclosure does not correspond to the claims, which require a
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`hierarchical set of pages on the “composite page.” The examiner has recently
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`agreed with Patent Owner. Ex. 2034 at 6 (finding Loshin does not teach catalog).
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`As to claims 8 and 18, the Reply (at 20-21) argues about Loshin’s email
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`searching function. These claims say that the “search parameters” must be “to
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`search for specific products within the catalog.” The antecedent of “the catalog” is
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`in claims 7 and 17, which define it as a “electronic catalog listing a multitude of
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`products offered for sale by the merchant through a website of an outsource
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`provider” and further specify that the “commerce object” (the one correlated or
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`associated with the source web page on which the URL has been activated) is that
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`“electronic catalog.” In Loshin’s email searching, the search parameters do not
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`search within an “electronic catalog” as so defined. Again, uncontested evidence
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`supports this conclusion. Ex. 2025 at ¶47(b)(iii) (Loshin “refer[s] to a way a user
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`Page 19
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`Case No. IPR2018-01008
`U.S. Patent 9,639,876
`who does not have access to online pages can use email to search through
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`products.”)(emphasis added).
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