Trials@uspto.gov
`571.272.7822
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`Paper: 12
`Entered: November 15, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SHOPIFY, INC.,
`Petitioner,
`
`v.
`
`DDR HOLDINGS, LLC,
`Patent Owner.
`____________
`
`IPR2018-01008
`Patent 9,639,876 B1
`____________
`
`
`
`Before CARL M. DEFRANCO, PATRICK M. BOUCHER, and
`ALYSSA A. FINAMORE, Administrative Patent Judges.
`
`FINAMORE, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`571.272.7822
`
`
`
`
`
`
`Paper: 12
`Entered: November 15, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SHOPIFY, INC.,
`Petitioner,
`
`v.
`
`DDR HOLDINGS, LLC,
`Patent Owner.
`____________
`
`IPR2018-01008
`Patent 9,639,876 B1
`____________
`
`
`
`Before CARL M. DEFRANCO, PATRICK M. BOUCHER, and
`ALYSSA A. FINAMORE, Administrative Patent Judges.
`
`FINAMORE, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`IPR2018-01008
`Patent 9,639,876 B1
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`
`INTRODUCTION
`I.
`Petitioner filed a Petition (Paper 2) requesting inter partes review of
`claims 1–5, 7, 8, and 11–18 of U.S. Patent No. 9,639,876 B1 (Ex. 1001, “the
`’876 patent”). Paper 2, 1. With the Board’s authorization, Petitioner filed a
`Motion to Correct Mistakes in Petition (Paper 8), which we granted
`(Paper 9), and Petitioner subsequently filed a Corrected Petition (Paper 10,
`“Pet.”). Patent Owner filed a Preliminary Response (Paper 11,
`“Prelim. Resp.”).
`Upon consideration of the arguments and evidence presented by both
`parties, we determine that Petitioner has demonstrated a reasonable
`likelihood that Petitioner will prevail with respect to at least one of the
`claims challenged in the Petition. Accordingly, pursuant to 35 U.S.C.
`§ 314(a) and 37 C.F.R. § 42.4, we hereby institute inter partes review.
`
`
`BACKGROUND
`II.
`A. Related Matters
`The parties identify the following five proceedings from the U.S.
`District Court for the District of Delaware: (1) DDR Holdings, LLC v.
`Priceline.com LLC, No. 1:17-cv-498-ER (D. Del. filed May 2, 2017);
`(2) DDR Holdings, LLC v. Booking.com B.V., No. 1:17-cv-499-ER (D. Del.
`filed May 2, 2017); (3) DDR Holdings, LLC v. TicketNetwork, Inc.,
`No. 1:17-cv-500-ER (D. Del. dismissed May 9, 2018); (4) DDR Holdings,
`LLC v. Shopify, Inc., No. 1:17-cv-501-ER (D. Del. filed May 2, 2017); and
`(5) DDR Holdings, LLC v. Travel Holdings, Inc., No. 1:17-cv-502-ER
`(D. Del. dismissed May 9, 2018). Pet. 1–2; Paper 4, 1–2. Patent Owner
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`indicates that these five proceedings have been consolidated under
`No. 1:17-cv-498-ER. Paper 4, 1–2.
`The parties also identify DDR Holdings, LLC v. Hotels.com, L.P.,
`954 F.Supp.2d 509 (E.D. Tex. 2013), as well as the corresponding appeal,
`DDR Holdings, LLC v. Hotels.com. L.P., 773 F.3d 1245 (Fed. Cir. 2014).
`Pet. 2–3; Paper 4, 2–3. Patent Owner further identifies DDR Holdings, LLC
`v. World Travel Holdings, Inc., No. 2:13-cv-00646-JRG (E.D. Tex. filed
`Aug. 20, 2013) and DDR Holdings, LLC v. Digital River, Inc.,
`No. 2:13-cv-00647-JRG (E.D. Tex. filed Aug. 20, 2013). Paper 4, 3–4.
`The parties further identify Office proceedings. Namely, the parties
`identify Priceline Group Inc. v. DDR Holdings, LLC, Case IPR2018-00482
`(PTAB filed Jan. 16, 2018). Pet. 4, Paper 4, 4. Petitioner also identifies
`Ex parte DDR Holdings, LLC, No. 2009-013987 (BPAI 2010) and Ex parte
`DDR Holdings, LLC, No. 2009-013988 (BPAI 2010). Pet. 3–4. Patent
`Owner additionally identifies: Shopify, Inc. v. DDR Holdings, LLC, Case
`IPR2018-01009 (PTAB filed May 3, 2018); Shopify, Inc. v. DDR Holdings,
`LLC, Case IPR2018-01010 (PTAB filed May 4, 2018); Shopify, Inc. v. DDR
`Holdings, LLC, Case IPR2018-01011 (PTAB filed May 2, 2018); Shopify,
`Inc. v. DDR Holdings, LLC, Case IPR2018-01012 (PTAB filed May 2,
`2018); Shopify, Inc. v. DDR Holdings, LLC, Case IPR2018-01014 (PTAB
`filed May 2, 2018); U.S. Patent Application Serial No. 15/582,105;
`U.S. Patent No. 6,629,135 B1; U.S. Patent No. 6,993,572 B2; U.S. Patent
`No. 7,818,399 B1; U.S. Patent No. 8,515,825 B1; and U.S. Patent
`No. 9,043,228 B1. Paper 4, 1, 4–5.
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`B. The ’876 Patent
`The ’876 patent relates to an affiliate commerce system for
`co-marketing on the Internet. Ex. 1001, 2:64–66. As described in the
`’876 patent, an affiliate program is a commercial arrangement between an
`owner of an Internet commerce website, like Amazon.com, and a third-party
`website owner. Id. at 2:23–30. More specifically, the owner of the Internet
`commerce website lets the third-party website owner promote a subset of its
`goods, e.g., ten books selected by the website owner from Amazon.com’s
`millions of books, on the third party’s website. Id.
`These affiliate programs generate revenue for the third-party website
`owners, i.e., affiliates, but there is a greater benefit to the owners of the
`Internet commerce websites. Id. at 2:31–38. According to the ’876 patent:
`Not only do these sites benefit from the marketing resources of
`the affiliate operators, they are also able to lure the visitor traffic
`away from the affiliate. Once a visitor clicks on an affiliate ad
`and enters an online store, that visitor has left the affiliate’s site
`and is gone. . . . No alternatives have been able to address a
`fundamental drawback of the affiliate programs—the loss of the
`visitor to the vendor.
`Id. at 2:38–47.
`The disclosed invention provides the same benefits as traditional
`affiliate programs, but without the restrictive limitation of losing visitors.
`Id. at 2:66–3:8. In particular, the invention enables a host to control the
`customer experience before, during, and after a purchase transaction. Id. at
`3:1–3. As set forth in the ’876 patent:
`[T]he look and feel of each participating Host is captured and
`stored. Hosts may include links to selected products or product
`categories within pages residing on the Hosts’ website. Upon
`actuation of such a link by a visitor of the Host website, a page
`is presented to the visitor incorporating a replica of the Host’s
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`look and feel directed to the sale of the selected products or
`product categories.
`Id. at 3:18–25.
`Furthermore, an outsource provider may be used to capture the look
`and feel of a host’s website and generate pages that replicate the host’s look
`and feel. Id. at 3:26–34. Namely, the ’876 patent explains:
`The look and feel of a host is captured and stored by
`receiving an identification of an example page of a target host.
`The identified page is retrieved. The look and feel elements of
`the page are identified, and these elements are stored for future
`use in generating outsourced transparent pages, pages served by
`a server other than the host but with the host’s look and feel.
`Such pages give the viewer of the page the impression that she is
`viewing pages served by the host.
`
`Id.
`
`The ’876 patent further explains that there are three main parties in the
`outsourced e-commerce relationship, excluding the end consumer:
`merchants, hosts, and the e-commerce outsource provider. Id. at
`22:66–23:2. However, there may be only two parties where one party plays
`the dual rule of host and merchant. Id. at 23:2–3.
`In a typical transaction process, a customer visits a host website and
`becomes interested in a product offered. Id. at 24:15–20. The customer
`selects the item she wishes to purchase by clicking a product image or
`similar link, taking her to dynamically generated web pages which retain the
`look and feel of the referring host and are served by the e-commerce
`outsource provider. Id. at 24:21–26. After browsing through and selecting
`certain offered products, the customer initiates the checkout procedure,
`never leaving the host website. Id. at 24:27–36. A secure checkout interface
`appears, which is similarly consistent in look and feel with the host’s
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`referring website, and the customer provides billing and shipping
`information. Id. at 24:37–42. Once the payment is authorized, the customer
`is returned to another section of the host’s website, possibly the page in
`which the offer was placed. Id. at 24:43–46. The outsource provider passes
`the order to the merchant, which receives and logs the order before
`assembling and shipping the order to the customer. Id. at 24:47–53. The
`outsource provider also periodically remits payment to the merchant for
`filled orders and remits payment to hosts for commissions earned. Id. at
`24:54–57.
`
`
`C. Challenged Claims
`Petitioner challenges claims 1–5, 7, 8, and 11–18 of the ’876 patent.
`Pet. 1. Claims 1 and 11 are independent. Ex. 1001, 27:37–28:2,
`28:59–29:26. Independent claim 1, reproduced below, is illustrative:
`1.
`A method of serving commerce information of an
`outsource provider in connection with host web pages offering
`commercial opportunities, the method comprising:
`with a computer system of an outsource provider:
`upon receiving over the Internet an electronic request
`generated by an Internet-accessible computing
`device of a visitor in response to selection of a
`uniform resource locator (URL) within 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,
`wherein the URL correlates the source web page
`with a commerce object associated with at least one
`buying opportunity of a merchant that is a third
`party to the outsource provider,
`automatically serving to the visitor computing device first
`instructions directing the visitor computing device
`to display commerce object information associated
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`with the commerce object associated with the URL
`that has been activated, which commerce object
`includes at least one product available for sale
`through the computer system of the outsource
`provider after activating the URL;
`wherein the commerce object information is displayed to
`the visitor computing device on a composite web
`page visually corresponding to the source web page;
`wherein the visual correspondence relates to overall
`appearance of the composite web page as compared
`to the source web page, but excluding the commerce
`object information and the URL; and
`the visitor
`wherein second
`instructions directing
`computing device to download data defining the
`overall appearance of the composite web page are
`accessible to the visitor computing device through
`the Internet.
`
`Id. at 27:37–28:2.
`
`
`D. References and Evidence
`Petitioner relies on the following references in asserting that
`claims 1–5, 7, 8, and 11–18 of the ’876 patent are unpatentable (Pet. 5):
`
`Reference
`
`U.S. Patent No. 6,330,575 B1 (“Moore”)
`
`First Virtual Seller Programs web page (June 1997),
`First Virtual InfoHaus Guide web page (June 1997),
`and First Virtual InfoHaus HelpMeister (June 1997)
`(collectively “the InfoHaus Documents”)
`
`Exhibit No.
`
`1010
`
`1014, 1015, and
`1016, respectively
`
`Peter Loshin, Selling Online with . . . First Virtual
`Holdings Inc. (1996) (“Loshin”)
`
`1013
`
`Petitioner also relies on a Declaration of Michael Shamos (Ex. 1002).
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`E. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability (Pet. 5):
`
`References
`
`Loshin
`
`Basis
`35 U.S.C.
`§ 102(b)1
`
`Claims
`
`1–5, 7, 8, 11–13, and 16–18
`
`Loshin and the
`InfoHaus Documents 35 U.S.C. § 103(a) 1, 7, 11, 16, and 17
`Loshin and Moore
`35 U.S.C. § 103(a) 1–5, 7, 8, 11–15, and 17–18
`
`
`
`III. ANALYSIS
`A. Principles of Law
`
`1. Anticipation
`“A claim is anticipated only if each and every element as set forth in
`the claim is found, either expressly or inherently described, in a single prior
`art reference.” Verdegaal Bros. Inc. v. Union Oil Co., 814 F.2d 628, 631
`(Fed. Cir. 1987). When evaluating a single prior art reference in the context
`of anticipation, the reference must be “considered together with the
`knowledge of one of ordinary skill in the pertinent art.” In re Paulsen, 30
`F.3d 1475, 1480 (Fed. Cir. 1994) (quoting In re Samour, 571 F.2d 559, 562
`(CCPA 1978)). Accordingly, “‘the dispositive question regarding
`anticipation [i]s whether one skilled in the art would reasonably understand
`or infer from the [prior art reference’s] teaching’ that every claim element
`was disclosed in that single reference.” Dayco Prods., Inc. v. Total
`Containment, Inc., 329 F.3d 1358, 1368 (Fed. Cir. 2003) (alterations in
`
`
`1 Petitioner asserts Loshin is prior art under 35 U.S.C. § 102(b). Pet. 6.
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`original) (quoting In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir.
`1991)).
`
`
`2. Obviousness
`A claim is unpatentable under 35 U.S.C. § 103 if the differences
`between the claimed subject matter and the prior art are “such that the
`subject matter as a whole would have been obvious at the time the invention
`was made to a person having ordinary skill in the art to which such subject
`matter pertains.” 35 U.S.C. § 103(a). The question of obviousness under
`35 U.S.C. § 103 is resolved on the basis of underlying factual
`determinations, including: (1) the scope and content of the prior art; (2) any
`differences between the claimed subject matter and the prior art; (3) the level
`of skill in the art; and (4) objective evidence of nonobviousness, i.e.,
`secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1966).
`An obviousness analysis that involves a combination of references
`must be a supported by a reason, based upon rational underpinnings, why a
`person of ordinary skill would have been motivated to combine the prior art
`to achieve the claimed invention. In re Magnum Oil Tools Int’l, Ltd., 829
`F.3d 1364, 1380 (Fed. Cir. 2016) (”To satisfy its burden of proving
`obviousness, a petitioner . . . must . . . articulate specific reasoning, based on
`evidence of record, to support the legal conclusion of obviousness.” (citing
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007))). The requirement
`of a reason to combine is a safeguard against hindsight bias, which is
`characterized by the “temptation to read into the prior art the teachings of the
`invention in issue.” KSR, 550 U.S. at 421 (quoting Graham, 383 U.S. at 36).
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`B. Level of Ordinary Skill in the Art
`Petitioner asserts a person of ordinary skill in the art “would need to
`have an undergraduate degree in computer science or a related field, or
`equivalent experience, and, in addition, at least one year of experience with
`Web user-interface design, electronic catalogs and online payment
`processing.” Pet. 8. Patent Owner does not dispute Petitioner’s proposed
`level of ordinary skill in the art. Based on the record at this stage in the
`proceeding, we adopt Petitioner’s definition of the level of ordinary skill in
`the art for the purposes of this Decision.
`
`
`C. Claim Construction
`We interpret the claims of an unexpired patent using the broadest
`reasonable interpretation in light of the specification. 37 C.F.R. § 42.100(b);
`Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Under
`this standard, a claim term generally is given its ordinary and customary
`meaning, as would be understood by one of ordinary skill in the art in the
`context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
`1257 (Fed. Cir. 2007). Furthermore, “only those terms need be construed
`that are in controversy, and only to the extent necessary to resolve the
`controversy.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`803 (Fed. Cir. 1999).
`Petitioner proposes constructions for the following claim terms:
`“merchants,” “host,” “commerce object,” and “commission.” Pet. 9–11.
`Patent Owner proposes constructions for “merchant,” “commerce object,”
`“outsource provider,” and “host/owner.” Prelim. Resp. 15–19. Determining
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`whether to institute inter partes review, however, does not require an
`express construction of any claim term.
`
`
`D. Anticipation by Loshin
`Petitioner challenges claims 1–5, 7, 8, 11–13 and 16–18 of the
`’876 patent under 35 U.S.C. § 102(b) as anticipated by Loshin. Pet. 11–34.
`In contrast, Patent Owner argues Loshin does not disclose every limitation
`of the claims. Prelim. Resp. 19–29. We begin our analysis with a brief
`summary of Loshin, and then address the parties’ contentions.
`1. Loshin (Ex. 1013)
`Loshin describes First Virtual’s InfoHaus service, which is a hosting
`service that enables sellers to sell their information products without having
`to own their own Internet servers. Ex. 1013, 103, 105, 214. More
`specifically, “InfoHaus is a Web server that customers can browse through,
`and that merchants can load with their store information and information
`products over the Internet.” Id. at 216.
`Figure 7-1, reproduced below, shows a typical offering on InfoHaus:
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`Figure 7-1 shows the InfoHaus News e-mailing list.2 According to Loshin:
`Nothing can happen until a merchant sets up an Internet
`storefront for consumers to browse and buy from. This page
`includes a description of the product as well as the product’s
`price. There is also a link from the offering screen to a
`transaction page with forms for the consumer to fill in with
`required information.
`Id. at 195. Once a consumer decides to purchase a product, the consumer
`needs to follow the link associated with the image of the $20 bill shown on
`
`
`2 We reproduce Figure 7-1 from the copy of Loshin provided by Petitioner
`(Ex. 1013). We are unable to find a more legible copy of this figure in the
`record.
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`the InfoHaus web page depicted in Figure 7-1. Id. Following the link
`results in an order page shown in Figure 7-2, reproduced below.
`
`
`Figure 7-2 shows an order page.3 Id. On the order page, a consumer enters
`a First Virtual Account ID (VirtualPIN) and an e-mail address for delivery
`of the subscription and then clicks on the “BUY” button. Id. The merchant
`then can submit the transaction to First Virtual for completion. Id.
`
`
`3 We also reproduce Figure 7-2 from the copy of Loshin provided by
`Petitioner (Ex. 1013). We are unable to find a more legible copy of this
`figure in the record.
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`2. Discussion
`a. Independent claim 1
`In asserting that Loshin anticipates independent claim 1, Petitioner
`identifies specific portions of Loshin that allegedly disclose each limitation
`of the claim. Pet. 14–24. Beginning with the preamble, independent claim 1
`recites “[a] method of serving commerce information of an outsource
`provider in connection with host web pages offering commercial
`opportunities.” Ex. 1001, 27:37–39. Petitioner contends Loshin discloses
`an outsource provider, First Virtual, serving web pages offering commercial
`opportunities via its InfoHaus service, which allows sellers to sell their
`information products without having to own their own Internet servers.
`Pet. 14 (citing Ex. 1013, 103, 126–27, 207; Ex. 1002 ¶ 84). Independent
`claim 1 further recites a plurality of steps performed “with a computer
`system of an outsource provider.” Ex. 1001, 27:40. For this, Petitioner
`asserts Loshin teaches an outsource provider, First Virtual, serving web
`pages via InfoHaus, a web server. Pet. 15 (citing Ex. 1013, 127, 216–17,
`238–39; Ex. 1002 ¶ 85).
`In addition, independent claim 1 recites the step of
`upon receiving over the Internet an electronic request generated
`by an Internet-accessible computing device of a visitor in
`response to selection of a uniform resource locator (URL)
`within 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.
`Ex. 1001, 27:41–47. Petitioner argues Loshin discloses a sample purchase
`conducted via InfoHaus, whereby a buyer activates a link on a host web
`page, namely the Darren New InfoHaus Page shown in Figure 7-1. Pet. 15
`(citing Ex. 1013, 194–96, Fig. 7-1; Ex. 1002 ¶ 87). Petitioner also asserts
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`Loshin teaches that the host, Darren New, is a third party to the outsource
`provider, First Virtual. Id. (citing Ex. 1013, 103, 126–27; Ex. 1002 ¶ 88).
`Independent claim 1 further recites “wherein the URL correlates the source
`web page with a commerce object associated with at least one buying
`opportunity of a merchant that is a third party to the outsource provider.”
`Ex. 1001, 27:47–50. According to Petitioner, Loshin discloses the URL,
`http://www.infohaus.com/access/subscription/Darren_New/Infohaus_News,
`which correlates the source web page, http://www.infohaus.com/access/
`subscription/Darren_New, with a commerce object, subscription to
`Darren_New/InfoHaus_News. Pet. 17 (citing Ex. 1013, 195–96, Figs. 7-1,
`7-2; Ex. 1002 ¶ 89). Petitioner again asserts that Loshin teaches Darren
`New, the host and merchant, is a third party to the outsource provider, First
`Virtual. Id. (citing Ex. 1013, 103, 126–27; Ex. 1002 ¶¶ 90–91).
`Independent claim 1 also recites the step of
`automatically serving to the visitor computing device first
`instructions directing the visitor computing device to
`display commerce object information associated with the
`commerce object associated with the URL that has been
`activated, which commerce object includes at least one
`product available for sale through the computer system of
`the outsource provider after activating the URL.
`Ex. 1001, 27:51–58. According to Petitioner, Loshin discloses that once the
`link on the host’s web page is activated, the order page shown in Figure 7-2
`is automatically loaded. Pet. 18 (citing Ex. 1013, 195–96, Figs. 7-1, 7-2;
`Ex. 1002 ¶ 94). Petitioner argues the page contains instructions directing a
`buyer’s computer to display information relating to the commerce object,
`namely the price, start date, and number of issues. Id. (citing Ex. 1013,
`195–96, 227–32, Fig. 7-2; Ex. 1002 ¶ 94).
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`Independent claim 1 further recites the commerce object information
`
`is displayed on a composite web page that visually corresponds to the source
`web page. Namely, independent claim 1 recites:
`wherein the commerce object information is displayed to the
`visitor computing device on a composite web page
`visually corresponding to the source web page;
`wherein the visual correspondence relates to overall appearance
`of the composite web page as compared to the source web
`page, but excluding the commerce object information and
`the URL.
`Ex. 1001, 27:59–65. Petitioner argues that Loshin discloses these
`limitations because the Darren New web pages shown in Figures 7-1, 7-2,
`and 7-3 have a similar appearance. Pet. 18–22 (citing Ex. 1013, 194–96,
`Figs. 7-1, 7-2, 7-3; Ex. 1002 ¶¶ 95–96, 99–102). Petitioner also asserts
`Loshin teaches these limitations because it discloses personalizing web
`pages for individual sellers to provide visual correspondence (id. at 19,
`22–23 (citing Ex. 1013, 196–98, 238–39, 252–53, Figs. 7-5, 9-2, 9-3;
`Ex. 1002 ¶¶ 97, 102)), as well as using default pages which would visually
`correspond to each other (id. at 19, 23 (citing Ex. 1013, 218–27, 228–39,
`Figs. 8–9; Ex. 1002 ¶¶ 98, 103)).
`
`Lastly, independent claim 1 recites “wherein second instructions
`directing the visitor computing device to download data defining the overall
`appearance of the composite web page are accessible to the visitor
`computing device through the Internet.” Ex. 1001, 27:59–28:2. Petitioner
`argues that Loshin teaches serving web pages that include retrieved data that
`visually corresponds to the source web page. Pet. 23 (citing Ex. 1013, 249–
`51; Ex. 1002 ¶¶ 104–05). More specifically, Petitioner asserts Loshin’s web
`pages contain HTML, which describes the visual appearance of the pages
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`and provides for the display of trademarks and images related to the
`company controlling the web page. Id. at 23–24 (citing Ex. 1013, 198,
`238–39, 252–53; Ex. 1002 ¶ 105).
`Patent Owner argues Loshin does not anticipate independent claim 1
`because it does not disclose the recited page pair, i.e., a source web page on
`a host website and a composite web page generated by a computer server of
`an outsource provider. Prelim. Resp. 20–24. Patent Owner also argues
`Loshin does not teach a visual correspondence of overall appearance
`between the composite web page and the source web page. Id. at 24–28.
`We begin by addressing the parties’ contentions regarding the recited visual
`correspondence, and then turn to the arguments for the recited page pair
`having source web page on a host website.
`i. Visual correspondence
`As set forth above, independent claim 1 recites “wherein the visual
`correspondence relates to overall appearance of the composite web page as
`compared to the source web page, but excluding the commerce object
`information and the URL.” Ex. 1001, 27:62–64. Petitioner contends Loshin
`discloses this limitation because the storefront web page shown in Figure 7-1
`and the order page shown in Figure 7-2 “include a similar appearance and
`provide the same seller name, which directly links them together.” Pet. 20
`(citing Ex. 1002 ¶ 100). Petitioner similarly asserts “[t]he textual
`composition of the web pages and the overall look and feel of these pages
`are quite similar.” Id. at 22 (citing Ex. 1002 ¶ 102).
`In contrast, Patent Owner argues that Petitioner fails to provide
`evidence of visual correspondence between the source web page and the
`composite page. Prelim. Resp. 24–28. According to Patent Owner,
`
`17
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`Patent 9,639,876 B1
`
`Petitioner does not support the assertion that the web pages have similar
`appearances with any facts other than the usage of the seller’s name and the
`textual composition, which describe what the pages say, not how they look.
`Id. at 25. We do not find this persuasive because the seller’s name and the
`textual composition affect a page’s appearance, and Patent Owner has not
`provided any argument or evidence as to why textual features are
`insufficient to establish visual correspondence.
`In addition to asserting that Petitioner fails to identify any visual
`element that is similar, Patent Owner points to various differences between
`the web pages. Id. at 26. Patent Owner, however, has not explained why
`“visual correspondence relating to overall appearance,” as recited in this
`limitation, requires that there are no differences in appearance.
`Despite the differences in appearance between Loshin’s storefront
`web page shown in Figure 7-1 and order page shown in Figure 7-2, there are
`nonetheless similarities, as Petitioner explains. Pet. 20–22. Consequently,
`on this record, Petitioner has shown sufficiently that Loshin discloses
`“wherein the visual correspondence relates to overall appearance of the
`composite web page as compared to the source web page, but excluding the
`commerce object information and the URL,” as recited in independent
`claim 1.
`ii. Page pair having a source web page on a host website
`As also set forth above, independent claim 1 recites “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.” Ex. 1001,
`27:44–46 (emphasis added). Petitioner argues the Darren New InfoHaus
`Page shown in Figure 7-1 of Loshin discloses the recited source web page.
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`18
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`IPR2018-01008
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`Pet. 15 (citing Ex. 1013, 194–96, Fig. 7-1, Ex. 1002 ¶ 87). According to
`Petitioner, “Loshin teaches that the host, Darren New, is a third party to the
`outsource provider, First Virtual.” Id. at 16 (citing Ex. 1013, 103, 126–27;
`Ex. 1002 ¶ 88).
`Although Petitioner may demonstrate Loshin discloses a source web
`page, i.e., the Darren New InfoHaus Page, we find persuasive Patent
`Owner’s argument that Petitioner has not shown the source web page has
`been served when visiting a website of a host, i.e., Darren New, as this
`limitation requires. Prelim. Resp. 21. Rather, as Patent Owner argues,
`Figure 7-1 shows the Darren New InfoHaus Page is available at http://www.
`infohaus.com/access/by-seller/Darren_New, which indicates that the page is
`at the www.infohaus.com domain. Id. at 21–22; Ex. 1013, Fig. 7-1.
`Furthermore, Loshin discloses:
`First Virtual offers the 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. This service is particularly attractive to
`information merchants who see the Internet as a suitable medium
`for selling their products, but who don’t have the time, money,
`or expertise to set up their own Internet servers.
`Ex. 1013, 214. Loshin, therefore, suggests that the Darren New InfoHaus
`Page is served from a website of the outsource provider, First Virtual, not
`the host, Darren New.
`
`On the record before us, Patent Owner’s argument that Loshin fails to
`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,” as recited in independent claim 1, is persuasive. During trial,
`Petitioner will have an opportunity to persuade us otherwise.
`
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`
`b. Claims 2–5, 7, and 8
`Each of claims 2–5, 7, and 8 depends from independent claim 1
`(Ex. 1001, 28:3–26, 28:33–48), and, therefore, includes the limitation of
`independent claim 1 reciting “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” (id. at 27:44–46). Petitioner does not make
`any additional arguments regarding this limitation in asserting that Loshin
`discloses the limitations of these dependent claims. Pet. 24–33. For the
`reasons discussed above with respect to independent claim 1, Patent Owner
`is persuasive, on this record, that Loshin does not disclose this limitation.
`c. Independent claim 11 and dependent claims 12, 13, and 16–18
`Like independent claim 1, independent claim 11 recites “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.” Ex. 1001,
`29:1–4. Each of claims 12, 13, and 16–18 depends from independent
`claim 11 and includes this limitation. Ex. 1001, 29:27–40, 30:9–30.
`Petitioner does not make any additional arguments regarding this
`limitation in asserting that Loshin discloses the limitations of these claims.
`Pet. 33–34. For the reasons discussed above with respect to independent
`claim 1, Patent Owner is persuasive that Loshin does not disclose this
`limitation.
`3. Conclusion
`At this stage of the proceeding, Petitioner has persuaded us that
`Loshin discloses most of the limitations of claims 1–5, 7, 8, 11–13, and
`16–18. However, we also find persuasive Patent Owner’s argument that
`Loshin fails to disclose “a source web page that has been served to the
`
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`
`visitor computing device when visiting a website of a host that is a third
`party to the outsource provider,” as recited in these claims. During trial,
`Petitioner will have an opportunity to persuade us otherwise should it wish
`to continue with this ground.
`
`
`E. Obviousness based on Loshin and the InfoHaus Documents
`Petitioner challenges claims 1, 7, 11, 16, and 17 of the ’876 patent
`under 35 U.S.C. § 103(a) as unpatentable over Loshin and the InfoHaus
`Documents. Pet. 34–45. In contrast, Patent Owner argues the combined
`teachings of Loshin and the InfoHaus Documents would not have resulted in
`every limitation of the claims. Prelim. Resp. 29–32. We begin our analysis
`with a brief summary of the InfoHaus Documents, and then address the
`parties’ contentions.
`1. The InfoHaus Documents (Exs. 1014–1016)
`The InfoHaus Documents are a collection of web pages from First
`Virtual’s website. Exs. 1014–1016. The InfoHaus Documents include a
`Seller Programs web page (Ex. 1014), an InfoHaus Guide web page
`(Ex. 1015), and the InfoHaus HelpMeister web page (Ex. 1016).
`a. Seller Programs (Ex. 1014)
`The Seller Programs web page teaches that First Virtual has designed
`two distinct seller programs, Pioneer Seller and Express Sel
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