`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`SHOPIFY, INC., PRICELINE.COM LLC, and BOOKING.COM B.V.,
`Petitioner,
`
`v.
`
`DDR HOLDINGS, LLC,
`Patent Owner.
`
`
`Case IPR2018-010081
`Patent 9,639,876
`
`
`
`PATENT OWNER’S DEMONSTRATIVE EXHIBITS
`
`
`1 Priceline.com and Booking.com B.V., who filed a petition in IPR2019-00435,
`have been joined as petitioners in this proceeding.
`
`
`
`SHOPIFY, INC.
`Petitioner
`
`v.
`
`DDR HOLDINGS, LLC,
`Patent Owner
`
`Case IPR2018-01008 to 12 & IPR2018-01014
`U.S. Patent 9,639,876
`U.S. Patent 9,043,228
`U.S. Patent 8,515,825
`
`Patent Owner Demonstrative Exhibits
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE – Ex. 2035
`
`
`
`The DDR Patents
`
`PROVISIONAL
`
`“GRANDPARENT”
`Some claims invalidated
`(no overall L&F match)
`
`“PARENT”
`Upheld in reexam,
`D.Ct. & Fed. Cir.
`
`Granted over
`Moore, DR, etc.
`(at issue here)
`
`Granted recently
`over all art and IPR
`arguments
`
`Serial No. 60/100,697
`Filed Sept. 17, 1998
`Serial No. 09/398,268
`Filed Sept. 17, 1999
`USP 6,629,135
`Serial No. 10/461,997
`Filed June 11, 2003
`USP 6,993,572
`Serial No. 11/343,464
`Filed Jan. 30, 2006
`USP 7,818,399
`Serial No. 12/906,979
`Filed Oct. 18, 2010
`USP 8,515,825
`Serial No. 13/970,515
`Filed Aug. 19, 2013
`USP 9,043,228
`Serial No. 14/719,009
`Filed May 21, 2015
`USP 9,639,876
`Serial No. 15/304,121
`Filed Apr. 28, 2017
`USP 10,304,121
`
`Shopify, Inc., et al. v. DDR Holdings, LLC, IPR2018-01008 to -12 & -14
`
`Ex. 2035 2
`
`
`
`Court decisions emphasized the importance of visual correspondence
`
`Federal Circuit
`description of
`DDR patents
`
`The common specification of the patents-in-suit explains that prior art systems allowed third-
`party merchants to “lure the [host website's] visitor traffic away” from the host website …. Id. at
`2:26–30. The patents-in-suit disclose a system that provides a solution to this problem (for the
`host) …. On activation of a hyperlink on a host website—such as an advertisement for a third-
`party merchant— … the system generates and directs the visitor to a composite web page
`that displays product information from the third-party merchant, but retains the host website’s
`“look and feel.” Id. at 3:9–21. Thus, the host website can display a third-party merchant's
`products, but retain its visitor traffic by displaying this product information from within a
`generated web page that “gives the viewer of the page the impression that she is viewing
`pages served by the host” website. Id. at 2:56–63, 3:20–22.
`
`[T]he claimed system generates and directs the visitor to the above-described hybrid web
`page that presents product information from the third-party and visual ‘look and feel’ elements
`from the host website…. When the limitations … are taken together as an ordered
`combination, the claims recite an invention that is not merely the routine or conventional use
`of the Internet.
`
`DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1248-49, 1259 (Fed. Cir. 2014).
`
`Shopify, Inc., et al. v. DDR Holdings, LLC, IPR2018-01008 to -12 & -14
`
`Ex. 2035 3
`
`
`
`Court decisions emphasized the importance of visual correspondence
`
`The Court concludes that … the three patents at issue are similar enough
`to ‘399 that they share the same inventive concept found by the Federal
`Circuit Court of Appeals in DDR Holdings, LLC v. Hotels.com, LP, 773 F.3d
`1245 (Fed. Cir. 2014) regarding [the] ‘399 [Parent] ….
`
`The three patents at issue, even though their claims do not specify how the
`composite web pages are generated and allow the host and the merchant
`to be the same entity, still address the issue of retaining control over the
`customer’s attention through the use of a composite page provided by the
`third party outsource provider. The patents allow the host to control the
`attrition of internet traffic away from its site.
`
`District Court
`(D. Del.) description
`of the same patents
`at issue here
`
`DDR Holdings, LLC v. Priceline.com, LLC, Case No. 1:17-cv-00498-ER,
`Dkt. 69, slip op. at n.1 (D. Del. June 5, 2018) (Ex. 2003).
`
`Shopify, Inc., et al. v. DDR Holdings, LLC, IPR2018-01008 to -12 & -14
`
`Ex. 2035 4
`
`
`
`No showing of key “visual correspondence” element
`in either Loshin (InfoHaus) or Moore
`
`Shopify, Inc., et al. v. DDR Holdings, LLC, IPR2018-01008 to -12 & -14
`
`Ex. 2035
`
`5
`
`
`
`
`
`LOSHIN
`LOSHIN
`
`Ex. 1013
`
`EX. 1013
`
` Shopify Inc., et al. V. 005’ Holdings, LLC, IPR2018-01008 to -12 & -14
`Shopify Inc., et al. v. DDR Holdings, LLC, IPR2018-01008 to -12 & -14
`6
`Ex. 2035
`
`
`
`Alleged “host” and “outsource” pages
`do not visually correspond in overall appearance
`
`Shopify, Inc., et al. v. DDR Holdings, LLC, IPR2018-01008 to -12 & -14
`
`Ex. 2035
`
`7
`
`
`
`Methodology for deciding visual correspondence of overall appearance
`
`• Dissection: identify qualifying similarities and differences
`
`
`(minus “commerce object” information and link)
`
`• Comparison: consider previously categorized examples
`
`• Observation: view as a whole (without excluded matter)
`
`
`
`Shopify, Inc., et al. v. DDR Holdings, LLC, IPR2018-01008 to -12 & -14
`
`Ex. 2035
`
`8
`
`
`
`FIGURE 7-1 (ALLEGED SOURCE PAGE)
`
`Dissection: Differences
`
`Large-font title
`vs. none
`
`List of numbered points
`vs. none
`
`Picture of $20 Bill
`vs. none
`
`Two fill-in fields
`vs. none
`
`“buy button”
`vs. none
`
`FIGURE 7-2 (ALLEGED COMPOSITE PAGE)
`
`2 horizontal divider
`lines vs. none
`
`Dr. Keller identified a
`number of differences,
`without challenge
`(Ex. 2025 at ¶52)
`
`Copied text at bottom vs. near the top
`(Relates to the product being sold)
`
`Seller name: different fonts, font sizes,
`locations; underscore vs. no underscore
`
`Shopify, Inc., et al. v. DDR Holdings, LLC, IPR2018-01008 to -12 & -14
`
`Ex. 2035
`
`9
`
`
`
`Dissection: Similarities
`
`Petitioner-asserted
`similarities
`
`textual information
`(mentioned in Petition)
`
`Name and logo
`(mentioned in Petition)
`
`
`use of common font/font size/font
`color/background color
`(not mentioned in Petition)
`
`but ...
`
`Petitioner dropped this argument, because
`the only text in common is commerce-
`object-related text
`
`1) Names are not the same
`2) Logos are not shown
`3) File history establishes that name alone
`(with or without logo) does not suffice.
`Unchallenged evidence:
`Ex. 2005 at 2004-6;
`Ex. 2025 at ¶49; Ex. 2028
`
`No evidence that the data defining these are
`retrieved from any storage or downloaded
`Unchallenged evidence (that these may
`derive from browser defaults instead of
`being “pre-stored”):
`Ex. 2027 at 228:11-20 (background) &
`236:8-237:20 (text font, size, and style).
`Ex. 2025 at ¶54
`
`
`
`
`
`
`
`
`Shopify, Inc., et al. v. DDR Holdings, LLC, IPR2018-01008 to -12 & -14
`
`vs.
`
`’876 Patent,
`claim 1
`
`Ex. 2035
`
`10
`
`
`
`Comparison: Page pairs previously held
`to correspond in overall appearance
`
`Ex. 2031
`
`Shopify, Inc., et al. v. DDR Holdings, LLC, IPR2018-01008 to -12 & -14
`
`Ex. 2035
`
`11
`
`
`
`Comparison: Page pairs previously held NOT to have
`corresponding overall appearance
`
`Ex. 2028
`
`Shopify, Inc., et al. v. DDR Holdings, LLC, IPR2018-01008 to -12 & -14
`
`
`
`Ex. 2029
`Ex. 2035
`12
`
`
`
`Observation: Loshin’s pages
`lack corresponding overall appearance
`
`Ex. 1013, Fig. 7-1
`
`Ex. 1013, Figs. 7-2 & 7-3
`
`Blue indicates commerce-object-related text
`(which the claims say should be disregarded
`when comparing overall appearance)
`
`Shopify, Inc., et al. v. DDR Holdings, LLC, IPR2018-01008 to -12 & -14
`
`Ex. 2035
`
`13
`
`
`
`Loshin does not disclose Figure 7-1 being served by a different
`party than the party that served Figure 7-2
`Shopify presents no evidence that Loshin meets the claims’ requirement that the page
`served to a visitor on a first/source/host “website” contain a link to a “composite page”
`of a “third party” (outsource provider).
`
`Shopify, Inc., et al. v. DDR Holdings, LLC, IPR2018-01008 to -12 & -14
`
`Ex. 2035
`
`14
`
`
`
`Loshin/InfoHaus do not show storefront (host) and
`purchase (outsource) pages served by different entities
`
`“So, Page 244 talks about
`selling from your own Web
`server and talks about
`spectrum in which you can
`have your own website
`and it can point to an
`order page on InfoHaus.
`You can have everything
`on InfoHaus or you can
`have everything on your
`own server.”
`
`Ex. 1013 – Loshin p. 244
`
`Deposition of Michael I. Shamos
`Ex. 2027 at 207:2-4
`
`Shopify, Inc., et al. v. DDR Holdings, LLC, IPR2018-01008 to -12 & -14
`
`Ex. 2035
`
`15
`
`
`
`InfoHaus would handle “transactions,” which means
`payment processing and product (software) delivery
`
`“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. 1013 – Loshin pp. 248-49
`
`“The resulting order page is shown in
`Figure 7-2. When you are done, you
`click on the "BUY" button, and the
`merchant can submit the transaction
`to First Virtual for completion.”
`
`Ex. 1013 – Loshin p. 195
`
`Shopify, Inc., et al. v. DDR Holdings, LLC, IPR2018-01008 to -12 & -14
`
`Ex. 2035
`
`16
`
`
`
`InfoHaus Publications refer only to design of Storefront Pages
`
`Ex. 1016 at p. 5
`
`Ex. 1016 at p. 10
`
`Ex. 1016 at p. 7
`
`Ex. 1016 at p. 8
`
`Shopify, Inc., et al. v. DDR Holdings, LLC, IPR2018-01008 to -12 & -14
`
`Ex. 2035
`
`17
`
`
`
`
`
`MOORE
`MOORE
`
`Ex. 1010
`
`EX. 1010
`
` Shopify, Inc., et al. V. DDR Holdings, LLC, IPR2018-01008 to -12 & -14
`Shopify, Inc., et al. v. DDR Holdings, LLC, IPR2018-01008 to -12 & -14
`18
`Ex. 2035
`
`18
`
`
`
`Nowhere does Moore explicitly disclose the feature of a merchant’s Buy Page “visually
`corresponding” in “overall appearance” to the corresponding Storefront Page
`• Moore does not state that overall appearance corresponds
`• Moore does not show an example of corresponding
`overall appearance
`
`Q. So, the answer to my
`question is yes, it -- the
`Moore -- Moore never refers
`to applying a header and
`footer to buy pages as
`such?
`A. Except through the use of
`the word "every."
`Q. Except through the use of
`the word "every"?
`A. Uh-huh.
`Q. Moore never refers to
`applying headers and footer
`as such; correct?
`A. That's correct.
`
`1/4/19
`DEPOSITION OF
`MICHAEL I. SHAMOS,
`PH.D., J.D.
`
`Ex. 2027 at 117:10-27
`
`34. Moore never says that an owner can or should configure a Buy
`Page to match the owner’s Store Server pages and such is not
`necessary. Moore teaches maintaining consistency among pages
`served by the merchant’s Store Server. But, ... Moore offers no hint
`of extending consistency of any design element to the Buy Pages
`served by a different server system.
`
`2/15/19
`DECLARATION
`OF ARTHUR M.
`KELLER, PH.D.
`IN SUPPORT OF
`PATENT OWNER’S
`RESPONSE
`
`Ex. 2025 at ¶¶ 34, 46
`
`46. Moore teaches visual correspondence among different
`pages of a given product seller’s own website. Nothing in any
`cited reference discloses having the product seller’s appearance
`extended (or “maintained”) on a different website served by a
`different server system. Moore discloses a Buy Page as the only
`page served on a different server system.... Moore does not
`teach the Buy Page having appearance of web pages served by
`the seller’s Store Server, which are the purported “source
`pages.” Moore does not teach that anything on the Buy Page
`defined in Figure 15 or shown in Figure 16 (or in text in Moore’s
`specification) should correspond visually to the source page,
`much less that such correspondence should relate to overall
`appearance.
`
`Shopify, Inc., et al. v. DDR Holdings, LLC, IPR2018-01008 to -12 & -14
`
`Ex. 2035
`
`19
`
`
`
`Shopify’s mistaken assumptions
`
`Not stated in Moore
`
`Shopify, Inc., et al. v. DDR Holdings, LLC, IPR2018-01008 to -12 & -14
`
`PATENT OWNER’S SUR-REPLY, pp. 5-6
`Ex. 2035
`20
`
`
`
`All/each/any in Moore refers to all Storefront Pages,
`not Buy Pages
`
`All references to “all,” “each,”
`or “any” pages are in the context
`of creating pages on merchant's
`site, especially in section 6.b
`entitled, “Building a Page” and
`associated figures 6-14
`
`The Buy Pages produced by
`the Price URLs are described
`in section 6.c entitled,
`“Interfacing with a Distributed
`Electronic Commerce System”
`
`12:25-26
`
`• Shamos admits that “templates” in Section 6b are “applied to …
`pages that the tool creates” (Ex. 2027 at 59:16-19), but the
`“Development Tool … doesn’t create a buy page” (id. at 177:13-
`16).
`• Shamos admits: “‘the Web Pages that are uploaded or published
`to a site’ are not buy pages.” id. at 180:15-20
`• Keller: Ex. 2025 at ¶¶ 31-32 (unchallenged testimony)
`
`11:58-64
`
`Shopify, Inc., et al. v. DDR Holdings, LLC, IPR2018-01008 to -12 & -14
`
`Ex. 2035
`
`21
`
`
`
`Petitioner assumption about storage contradicts Moore’s teaching
`against storing merchant information on the Transaction Server
`Testimony of Dr. Keller, Patent Owner’s witness
`
`Ex. 2025, ¶ 41
`Moore patent supporting that testimony
`
`8:47-61
`
`Ex. 1010
`
`5:11-18
`Shopify, Inc., et al. v. DDR Holdings, LLC, IPR2018-01008 to -12 & -14
`
`9:15-20
`
`Ex. 2035 22
`
`
`
`Petitioner assumptions contradict Moore’s teaching that
`the Price URL contains all product-specific information
`
`Ex. 1010
`
`Shopify, Inc., et al. v. DDR Holdings, LLC, IPR2018-01008 to -12 & -14
`
`6:16-22
`
`12:12-17
`
`13:37-38
`(claim)
`
`Ex. 2035
`
`23
`
`
`
`Meaning of “price URL ... can be attached to any style component”
`
`Storefront Page
`
`Buy Page
`
`Ex. 1010 at 12:1-17
`
`Ex. 1010 at 11:37-50
`Shopify, Inc., et al. v. DDR Holdings, LLC, IPR2018-01008 to -12 & -14
`
`Ex. 2035
`
`24
`
`
`
`Shopify assumptions contradict Moore, given
`undisputed limits on the quantity of data passing through URL
`
`Moore
`
`Ex. 1010
`
`Petitioner's
`Reply
`
`in fig 10
`
`6:17-20
`
`IPR2018-01011, Paper 22, p. 8
`
`in fig 10
`
`Dr. Keller: “one could not include in a workable URL all of the
`information discussed in connection with the more complex
`storefront pages as shown in Figures 6-14,” including the headers
`and footers.
`
`Dr. Keller
`
`Ex. 2025, ¶ 39(d)
`
`Shopify, Inc., et al. v. DDR Holdings, LLC, IPR2018-01008 to -12 & -14
`
`Ex. 2035
`
`25
`
`
`
`Unchallenged Keller testimony shows counterexample
`disproving necessity of Shopify’s assumptions
`• Dr. Keller created an example Price URL
`
`• Encodes all information needed to build
`the Buy Page shown in Moore Figure 16
`
`• Can be decoded by Moore's "servlet"
`without use of any links
`
`• No need to store merchant-specific data
`on Store Builder (or Transaction) Server
`
`• Would encode image correctly
`
`• Rebuts Shamos claim that this
`is “impossible”
`
`Shopify, Inc., et al. v. DDR Holdings, LLC, IPR2018-01008 to -12 & -14
`
`Keller Decl., Ex. 2025 at ¶39(c)
`
` Ex. 2035
`26
`
`
`
`Shopify’s “what a POSITA would understand” theory
`does not suffice for anticipation
`• Not likely
`• At best possible
`• Not required
`
`Petitioner
`Assumptions
`Are:
`
`Shopify, Inc., et al. v. DDR Holdings, LLC, IPR2018-01008 to -12 & -14
`
` Ex. 2035
`
`27
`
`
`
`Summary of Shopify IPR challenges to DDR patents
`Shopify challenge
`
`1) anticipated by Loshin
`
`2) obvious in view of Loshin and InfoHaus documents
`
`3) obvious in view of Loshin and Moore
`
`4) obvious in view of Digital River Publications
`
`Reason for failure
`Loshin doesn’t disclose correspondence of overall appearance
`Loshin does not show a host page with a link to a composite
`(outsource) page of a third party
`InfoHaus documents address the same system Loshin discusses
`InfoHaus doesn’t disclose correspondence of overall appearance
`or third-party outsource page
`Neither Loshin nor Moore disclose correspondence of
`overall appearance
`Petition provides only cursory treatment of the
`“serving” limitation
`Digital River doesn’t disclose correspondence of
`overall appearance
`Shopify doesn’t challenge the conclusions in the
`Institution Decision
`
`5) anticipated by Moore
`
`Moore doesn’t disclose correspondence of overall appearance
`
`6) obvious in view of Moore and Arnold
`
`Not applied to independent claims
`
`7) obvious in view of Moore and Digital River Publications
`
`Shopify makes no arguments as to combination
`(see above as to individual references)
`Shopify, Inc., et al. v. DDR Holdings, LLC, IPR2018-01008 to -12 & -14
`
`Ex. 2035
`
`28
`
`
`
`
`
`
`
`
`
`
`
`Dated: July 22, 2019
`
`
`
`
`
`
`
`
`
`Case No. IPR2018-01008
`Patent 9,639,876
`
`Respectfully submitted,
`
`/Louis J. Hoffman/
`Louis J. Hoffman
`Reg. No. 38,918
`
`LOUIS J. HOFFMAN, P.C.
`7689 East Paradise Lane
`Suite 2
`Scottsdale, Arizona 85260
`(480) 948-3295
`DDR_IPR@valuablepatents.com
`Lead Counsel for Patent Owner
`
`
`
`
`
`
`Case No. IPR2018-01008
`
`Patent 9,639,876
`
`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e)(1))
`
`The undersigned hereby certifies that on July 22, 2019, a complete and correct
`
`copy of the foregoing PATENT OWNER’S DEMONSTRATIVE EXHIBITS was
`
`served via electronic mail on the following counsel of record for Petitioner:
`
`
`
`
`
`Michael McNamara (Reg. No. 52,017)
`William A. Meunier (Reg. No. 41,193)
`Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, PC
`One Financial Center
`Boston, MA 02111
`DDR_IPR_Service@mintz.com
`
`Nathan J. Rees (Reg. No. 63,820)
`NORTON ROSE FULBRIGHT US LLP
`2200 Ross Avenue, Suite 3600
`Dallas, Texas 75201-7932
`Tel: 214.855.7164
`Fax: 214.855.8200
`DDR_IPR_Service@nortonrosefulbright.com
`
`
` /Louis J. Hoffman/
`Louis J. Hoffman, Reg. No. 38,918
`LOUIS J. HOFFMAN, P.C.
`7689 East Paradise Lane, Suite 2
`Scottsdale, Arizona 85260
`(480) 948-3295
`DDR_IPR@valuablepatents.com
`Lead Counsel for Patent Owner
`
`
`
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