Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`Paper 34
`Entered: February 14, 2020
`
`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.
`____________
`
`IPR2018-01011
`Patent 9,639,876 B1
`____________
`
`
`
`Before CARL M. DEFRANCO, PATRICK M. BOUCHER, and
`ALYSSA A. FINAMORE, Administrative Patent Judges.
`
`Opinion for the Board filed by Administrative Patent Judge BOUCHER.
`
`Opinion Dissenting-in-Part filed by Administrative Patent Judge
`DEFRANCO.
`
`BOUCHER, Administrative Patent Judge.
`
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper 34
`Entered: February 14, 2020
`
`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.
`____________
`
`IPR2018-01011
`Patent 9,639,876 B1
`____________
`
`
`
`Before CARL M. DEFRANCO, PATRICK M. BOUCHER, and
`ALYSSA A. FINAMORE, Administrative Patent Judges.
`
`Opinion for the Board filed by Administrative Patent Judge BOUCHER.
`
`Opinion Dissenting-in-Part filed by Administrative Patent Judge
`DEFRANCO.
`
`BOUCHER, Administrative Patent Judge.
`
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`IPR2018-01011
`Patent 9,639,876 B1
`
`
`In response to a Corrected Petition (Paper 8, “Petition” or “Pet.”) filed
`by Shopify, Inc., we instituted an inter partes review of claims 1–5, 7, 8, 11–
`15, 17, and 18 of U.S. Patent No. 9,639,876 B1 (“the ’876 patent”). Paper
`10 (“Dec.”). During the trial, DDR Holdings, LLC, (“Patent Owner”) filed a
`Response (Paper 20, “PO Resp.”), to which Shopify filed a Reply (Paper 22,
`“Reply”) and Patent Owner filed a Sur-Reply (Paper 24, “Sur-Reply”).
`Subsequent to this briefing, Priceline.com LLC and Booking.com B.V. were
`joined as parties to the proceeding, and we accordingly refer herein to
`“Petitioner” as including Shopify, Priceline, and Booking.com.1 Paper 25.
`An oral hearing was held with the parties, and a copy of the transcript was
`entered into the record. Paper 32 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This Decision is a Final
`Written Decision under 35 U.S.C. § 318(a) as to the patentability of the
`claims on which we instituted trial. Based on the record before us, Petitioner
`has shown, by a preponderance of the evidence, that claims 1–3, 5, 11–13,
`and 15 are unpatentable.
`
`
`I. BACKGROUND
`A. The ’876 Patent
`1. Disclosure
`The ’876 patent “relates to a system and method supporting commerce
`syndication.” Ex. 1001, 1:27–28. The patent is particularly focused on the
`
`
`1 In light of this joinder, we adjusted the one-year pendency for issuing this
`Final Written Decision. Paper 33.
`
`2
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`implementation of “affiliate” marketing systems on the Internet, which
`Petitioner’s expert, Michael I. Shamos, describes as follows:
`Commonly known as affiliate marketing (though the world’s
`largest system, owned by Amazon.com, actually uses the term
`associate rather than affiliate), the concept is simple. If website
`owner A sends a visitor from his website to the ecommerce site
`owned by website owner B, and if that visitor makes a purchase
`from B’s website, then B pays A commission on the sale. A
`merchant could multiply sales many times by having affiliates
`market his products.
`
`Ex. 1002 ¶ 16. As the ’876 patent itself explains, with such affiliate
`marketing systems, “companies let third-party website owners list a subset
`of their goods (e.g., 10 of Amazon.com’s millions of books, selected by the
`website owner) and promote them as they choose within their websites.”
`Ex. 1001, 2:23–28.
`Although the ’876 patent acknowledges that “[t]he benefits of affiliate
`programs are significant,” it also recognizes that “the greater benefit almost
`always accrues not to the affiliate, but to Amazon.com and other online
`stores.” Id. at 2:31–38. In particular, the patent identifies a “fundamental
`drawback of the affiliate programs” as “the loss of the visitor to the vendor,”
`because, with such an arrangement, the vendor is “able to lure the visitor
`traffic away from the affiliate.” Id. at 2:38–47. The patent describes a
`solution to this problem by “includ[ing] a data store including a look and
`feel description associated with a host website.” Id. at 4:58–61.
`A particular solution relevant to the challenged claims involves three
`distinct parties: a “host,” which is an operator of a website, a “merchant”
`selling a product, and an “outsource provider” that facilitates maintaining the
`
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`look and feel of the host website when a link to a product of the merchant is
`selected:
`The processor performs the tasks of capturing a look and feel
`description associated with a host website, storing the captured
`look and feel description in the data store, providing the host
`website with a link that link correlates the host website with a
`commerce object for inclusion within a page on the host
`website and which, when activated, causes the processor to
`serve an e-commerce supported page via the communication
`link with a look and feel corresponding to the captured look and
`feel description of the host website associated with the provided
`link and with content based on the commerce object associated
`with the provided link.
`
`Id. at 4:61–5:5. In other embodiments described by the ’876 patent, “[t]his
`folds into two parties where one party plays the dual role of Host and
`Merchant.” Id. at 23:2–3.
`According to the ’876 patent, “[m]erchants are the producers,
`distributors, or resellers of the goods to be sold through the outsource
`provider.” Id. at 23:7–8. “A Host is the operator of a website that engages
`in Internet commerce by incorporating one or more link[s] to the e-
`commerce outsource provider into its web content.” Id. at 23:35–37. And
`the “outsource provider” has a number of functions that provide support
`services between merchants and hosts, and which may be illustrated with a
`description of a typical overall transaction process flow. See id. at 23:51–
`24:9.
`
`In such a typical transaction process, a customer visits a host website
`and “through contextually relevant content, becomes interested in a product
`offered.” Id. at 24:18–20. The customer selects the item by clicking a
`
`4
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`IPR2018-01011
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`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 23:34–36. A
`secure checkout interface appears, “still consistent in look and feel with the
`Host’s referring website,” and the customer provides billing and shipping
`information. Id. at 24:37–42. The customer is returned to another section of
`the host’s website, “possibly just returning to the page in which the offer
`was placed.” Id. at 24:44–46. 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. Settlement is effected
`by the outsource provider periodically remitting payment to the merchant for
`filled orders and remitting payment to hosts for commissions earned. Id. at
`24:54–57.
`
`
`2. Illustrative Claim
`Independent claim 1 is illustrative of the claims at issue, and is
`reproduced below.
`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 a 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
`
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`
`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 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
`
`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, 27:37–28:2.
`
`
`B. Evidence Relied Upon
`Petitioner relies on the following references.
`Moore
`US 6,330,575 B1
`Dec. 11, 2001
`Arnold
`US 6,016,504
`Jan. 18, 2000
`
`Ex. 1010
`Ex. 1011
`
`
` Digital River Brochure (“Brochure”) (Ex. 1004)
`
` Digital River April 1997 Website (“April 1997 Website”) (Ex. 1005)
`
`
`6
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` Digital River December 1997 Website (“December 1997 Website”) (Ex.
`1006)
`
` Corel Web Page (July 1998) (Ex. 1007)
`
` 21 Software Drive Web Page (April 1998) (Ex. 1008)
`
` 21 Software Drive Web Page (April 1998) (Ex. 1009)2
`
`
`Petitioner further relies on the Declaration of its witness, Michael I.
`Shamos, Ph.D. Ex. 1002. Dr. Shamos was cross-examined by Patent
`Owner, and a transcript of his deposition entered into the record. Ex. 2027.
`Patent Owner provides a declaration by Arthur M. Keller, Ph.D. Ex. 2025.
`No cross-examination testimony of Dr. Keller was entered into the record.
`
`
`C. Asserted Grounds of Unpatentability
`Petitioner challenges the patentability of claims 1–5, 7, 8, 11–15, 17,
`and 18 of the ’876 patent on the following grounds. Pet. 5.
`
`
`2
`Petitioner asserts that certain of its challenges “utilize six different
`printed publications describing the Digital River system and Digital River
`websites,” i.e., Exhibits 1004–1009. Pet. 5 n.1. Patent Owner does not
`challenge Petitioner’s position that “[t]his art may be viewed individually
`and as two or more together as a whole.” See id. Both parties often refer to
`the six publications collectively in their briefs. Consistent with Petitioner’s
`usage, we also refer collectively to the six publications as “the Digital River
`Publications.”
`
`Petitioner also provides evidence in the form of a Declaration by
`James Pichler authenticating the Digital River Publications as prior-art
`printed publications. Ex. 1003. Patent Owner does not dispute the
`sufficiency of Petitioner’s authentication evidence.
`7
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`
`Claims Challenged
`1–5, 7, 8, 11–15, 17, 18
`1–5, 7, 8, 11–15, 17, 18
`1, 7, 11, 17
`1–5, 7, 8, 11–15, 17, 18
`
`
`
`35 U.S.C. §3
`103(a)
`102(a)
`103(a)
`103(a)
`
`Reference(s)
`Digital River Publications
`Moore
`Moore and Arnold
`Moore and the Digital River
`Publications
`
`D. Real Parties in Interest
`Petitioner identifies Shopify, Inc., The Priceline Group Inc.,
`Priceline.com LLC, Priceline Partner Network, Booking.com B.V.,
`Booking.com Holding B.V., Priceline.com Bookings Acquisition Co., Ltd.,
`Priceline.com International Ltd., Priceline.com Holdco U.K. Ltd., and
`Priceline.com Europe Holdco, Inc. as real parties in interest. Pet. 1;
`Priceline.com LLC and Booking.com B.V. v. DDR Holdings, LLC, IPR2019-
`00438, Paper 3, 1 (petition in proceeding where Priceline.com LLC and
`Booking.com B.V. moved for joinder as parties to this proceeding).
`Patent Owner identifies only itself as a real party in interest. Paper 4,
`
`1.
`
`
`
`E. Related Proceedings
`The parties identify the following district court proceedings as related
`to this proceeding: (1) DDR Holdings, LLC v. Priceline.com, LLC, No.
`1:17-cv-498 (D. Del.); (2) DDR Holdings, LLC v. Booking.com B.V., No.
`
`
`3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 285–88 (2011), amended 35 U.S.C. §§ 102 and 103. Because the
`application from which the ’876 patent issued was filed before March 16,
`2013, the effective date of the relevant amendment, the pre-AIA versions of
`§§ 102 and 103 apply.
`
`8
`
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`IPR2018-01011
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`1:17-cv-499 (D. Del.); (3) DDR Holdings, LLC v. Ticketnetwork, Inc., No.
`1:17-cv-500 (D. Del.); (4) DDR Holdings, LLC v. Shopify, Inc., No. 1:17-cv-
`501 (D. Del.); and (5) DDR Holdings, LLC v. Travel Holdings, Inc., No.
`1:17-cv-502 (D. Del.).4 Pet. 1–2; Paper 4, 1–2. In addition, the parties
`identify DDR Holdings, LLC v. Hotels.com, L.P., 954 F.Supp.2d 509 (E.D.
`Tex. 2013) and the appeal of that district court case in DDR Holdings, LLC
`v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). Pet. 2–3; Paper 4, 2–3.
`Petitioner further identifies two reexamination proceedings as related,
`both of which included appeals to the Board: (1) Ex parte DDR Holdings,
`LLC, Appeal No. 2009-0013987, Reexamination Control No. 90/008,374
`(BPAI April 16, 2010); and (2) Ex parte DDR Holdings, LLC, Appeal No.
`2009-0013988, Reexamination Control No. 90/008,375 (BPAI April 16,
`2010). Pet. 3–4.
`Patent Owner also identifies pending U.S. Patent Appl. No.
`15/582,105 as related to the ’876 patent, as well as issued U.S. Patent Nos.
`6,629,135, 6,993,572, 7,818,399, 8,515,825, and 9,043,228. Paper 4, 4; see
`also Paper 21 (Patent Owner disclosing completion of prosecution and
`allowance of Appl. No. 15/582,105). The following inter partes review
`proceedings involve the ’876 patent or one of these related patents: (1)
`IPR2018-00482; (2) IPR2018-01008; (3) IPR2018-01009; (4) IPR2018-
`01010; (5) IPR2018-01012; and (6) IPR2018-01014. See id. at 4–5.
`
`
`
`4 Patent Owner indicates that these five proceedings were consolidated under
`No. 1:17-cv-498, and that Nos. 1:17-cv-500 and 1:17-cv-502 have been
`terminated because the parties settled. Paper 4, 1–2.
`9
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`
`II. ANALYSIS
`A. Legal Principles5
`To establish anticipation under 35 U.S.C. § 102, each and every
`element in a claim, arranged as recited in the claim, must be found in a
`single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d
`1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242
`F.3d 1376, 1383 (Fed. Cir. 2001). While the elements must be arranged in
`the same way as is recited in the claim, “the reference need not satisfy an
`ipsissimis verbis test.” In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009);
`In re Bond, 910 F.2d 831, 832–33 (Fed. Cir. 1990). Identity of terminology
`between the anticipatory prior art reference and the claim is not required.
`Prior art references 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).
`A claim is unpatentable for obviousness under 35 U.S.C. § 103(a) 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
`said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
`406 (2007). The question of obviousness is resolved on the basis of
`underlying factual determinations, including: (1) the scope and content of
`
`
`5 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 285–88 (2011), amended 35 U.S.C. §§ 102 and 103. Because the
`application from which the ’876 patent issued was filed before March 16,
`2013, the effective date of the relevant amendment, the pre-AIA versions of
`§§ 102 and 103 apply.
`
`10
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`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) when in evidence, objective
`indicia of nonobviousness, i.e., secondary considerations.6 Graham v. John
`Deere Co., 383 U.S. 1, 17–18 (1966).
`Additionally, the obviousness inquiry typically requires an analysis of
`“whether there was an apparent reason to combine the known elements in
`the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In
`re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated
`reasoning with some rational underpinning to support the legal conclusion of
`obviousness”)); see In re Warsaw Orthopedic, Inc., 832 F.3d 1327, 1333
`(Fed. Cir. 2016) (citing DyStar Textilfarben GmbH & Co. Deutschland KG
`v. C.H. Patrick Co., 464 F.3d 1356, 1360 (Fed. Cir. 2006)).
`To prevail on its challenges, Petitioner must demonstrate by a
`preponderance of the evidence that the claims are unpatentable. 35 U.S.C.
`§ 316(e); 37 C.F.R. § 42.1(d). “In an [inter partes review], the petitioner has
`the burden from the onset to show with particularity why the patent it
`challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d
`1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter
`partes review petitions to identify “with particularity . . . the evidence that
`supports the grounds for the challenge to each claim”)). This burden never
`shifts to Patent Owner. See Dynamic Drinkware, LLC v. National Graphics,
`Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v.
`Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the
`
`
`6 The parties do not address objective indicia of nonobviousness, which
`accordingly do not form part of our analysis.
`11
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`burden of proof in inter partes review). Furthermore, Petitioner does not
`satisfy its burden of proving obviousness by employing “mere conclusory
`statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed.
`Cir. 2016).
`
`
`B. Level of Skill in the Art
`Petitioner contends that 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. 9 (citing Ex. 1002 ¶¶ 56–58). Petitioner’s declarant, Dr.
`Shamos, makes the same assertion. Ex. 1002 ¶ 58.
`Patent Owner does not specifically advocate for a particular level of
`skill in the art, but its declarant, Dr. Keller, asserts that he “ha[s] reviewed
`Dr. Shamos’[s] formulation defining the level of skill o[f] a person of
`ordinary skill in the art and ha[s] no material substantive dispute.” Ex. 2025
`¶ 18.
`
`Because there is no apparent dispute between the parties, and because
`Petitioner’s articulation is both reasonable and supported by Dr. Shamos’s
`testimony and the skill reflected in the prior art of record, we adopt
`Petitioner’s proposed level of skill for this Decision.
`
`
`C. Claim Construction
`In an inter partes review proceeding based on a petition filed prior to
`November 13, 2018, the Board interprets claims of an unexpired patent
`
`12
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`using the broadest reasonable construction in light of the specification of the
`patent in which they appear. See 37 C.F.R. § 42.100(b) (2017); Cuozzo
`Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the
`use of the broadest reasonable interpretation standard). Under the broadest
`reasonable interpretation standard, claim terms generally are given their
`ordinary and customary meaning, as would have been understood by one of
`ordinary skill in the art at the time of the invention. In re Translogic Tech.,
`Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). An inventor may provide a
`meaning for a term that is different from its ordinary meaning by defining
`the term in the specification with reasonable clarity, deliberateness, and
`precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`The Federal Circuit has cautioned that “[t]he protocol of giving claims
`their broadest reasonable interpretation . . . does not include giving claims a
`legally incorrect interpretation.” In re Skvorecz, 580 F.3d 1262, 1267 (Fed.
`Cir. 2009). “Rather, ‘claims should always be read in light of the
`specification and teachings in the underlying patent.’” Microsoft Corp. v.
`Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (quoting In re Suitco
`Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010) (overruled on other
`grounds by Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) (en
`banc))). “Even under the broadest reasonable interpretation, the Board’s
`construction ‘cannot be divorced from the specification and the record
`evidence,’ In re NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011), and ‘must
`be consistent with the one that those skilled in the art would reach,’ In re
`Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999).” Microsoft Corp., 789
`F.3d at 1298.
`
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`
`1. Preliminary Constructions
`In the Institution Decision, we provided the following preliminary
`constructions of terms that appear in claim 1. Dec. 9–13.
`
`“merchants”
`
`“commerce object”
`
`“outsource provider”
`
`
`
`producers, distributors, or resellers
`of the goods or services to be sold
`a product (goods or services), a
`product category, a catalog, or an
`indication that product (goods or
`services), product category, or
`catalog should be chosen
`dynamically
`a party, independent from the host
`associated with the commerce
`object and from the merchant of the
`commerce object, that provides e-
`commerce support services between
`merchant(s) and host(s)
`
`Patent Owner comments on these preliminary constructions, such as
`by expressing a preference that “merchant” be construed in the singular
`rather than in the plural, but generally accepts the constructions. PO Resp.
`6–7. Petitioner does not further remark on these terms as a matter of claim
`construction in its Reply. Because Patent Owner’s comments do not cause
`us to reevaluate those preliminary constructions, we adopt them for this
`Final Written Decision.
`In addition, Patent Owner observes that “[t]he district court construed
`‘host/owner [of the first web page]’ as: ‘An operator of a website that
`engages in Internet commerce by incorporating one or more links to an e-
`commerce outsource provider into its web content.’” Id. at 7 (citing Ex.
`
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`2015, 10). As Patent Owner asserts, “[t]he Petition . . . agrees with this
`definition.” Id. (citing Pet. 10). Petitioner does not further address
`construction of the term in its Reply. Because of the parties’ apparent
`agreement, we also adopt this construction for purposes of this Final Written
`Decision and construe “host” as “an operator of a website that engages in
`Internet commerce by incorporating one or more links to an e-commerce
`outsource provider into its web content.”
`
`
`2. “commission”
`Claims 4 and 14 each recite that “the host and the outsource provider
`are parties to a contract providing for payment to the host of a commission
`based on the level sales made through activation of URLs displayed on the
`source web page.” Ex. 1001, 28:17–21, 29:41–30:2. Petitioner proposes
`that “commission” be construed as “‘money earned by a host for sales of a
`third party merchant’s product’s through the host’s website,’ and should not
`be limited to being earned based on any particular business arrangement.”
`Pet. 11 (citing Ex. 1002 ¶ 66; Ex. 1021; Ex. 1022). Patent Owner proposes
`that the term be construed as “money paid to a party by or on behalf of a
`third-party seller for facilitating the seller’s sales of products.” PO Resp. 29
`(citing Ex. 2033, 264).
`According to Patent Owner, “Petitioner’s construction ignores the
`concept, inherent in the word ‘commission,’ of the selling party making a
`payment to someone else for assisting with the sale.” Id. at 28. In addition,
`Patent Owner notes that “[a]n additional defect with the proposed
`construction is that there is no need to include context in the definition of
`
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`‘commission’ itself, so referring to ‘hosts’ and ‘merchants’ is unnecessary.”
`Id. at 28 n.5. We agree with these points made by Patent Owner.
`The parties have provided three dictionary definitions as evidence,
`two by Petitioner and one by Patent Owner. In the relevant sense, the
`American Heritage College Dictionary defines “commission” as “[a] fee or
`percentage allowed to a sales representative or an agent for services
`rendered.” Ex. 1021 (emphasis added). Webster’s New World Basic
`Dictionary of American English defines the word as “a part of the money
`taken in on sales that is paid to the person making the sale.” Ex. 1022
`(emphasis added). Webster’s Ninth New Collegiate Dictionary defines the
`word as “a fee paid to an agent or employee for transacting a piece of
`business or performing a service.” Ex. 2033 (emphasis added). As indicated
`by the emphasized portions of each definition, the word “commission” is
`consistently understood as Patent Owner indicates, i.e. “of the selling party
`making a payment to someone else for assisting with the sale.”
`We also agree with Patent Owner that the written description of the
`’876 patent supports its proposed construction. In particular, the written
`description refers to the outsource provider as “[m]anag[ing] the commission
`structure for Merchant-Host relationships,” and also draws a distinction
`between payment for “filled orders” and “commissions.” Ex. 1001, 24:5–6,
`24:54–57.
`Accordingly, we adopt Patent Owner’s proposed construction of
`“commission” as money paid to a party by or on behalf of a third-party seller
`for facilitating the seller’s sales of products.
`
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`D. Digital River Publications
`Petitioner challenges claims 1–5, 7, 8, 11–15, 17, and 18 as
`unpatentable under 35 U.S.C. § 103(a) over the Digital River Publications.7
`
`
`1. Overview of the Digital River Publications
`The Digital River Publications are a Digital River Brochure (Exhibit
`1004), printouts from the Digital River website from 1997 (Exhibits 1005
`and 1006), a printout of a Corel web page (Exhibit 1007), and printouts of a
`21 Software Drive web page (Exhibits 1008 and 1009). Pet. 6.
`The April 1997 Website explains that “Digital River’s Secure Sales
`System (SSS) brings together software manufacturers and dealers[,] enabling
`them to sell and deliver product via the Internet.” Ex. 1005, 1. The
`document adds that “it will appear to the consumer as if the transaction is
`being processed by the manufacturer or dealer while the Digital River SSS is
`handling the whole transaction ‘behind the scenes.’” Id. at 1–2.
`Of particular relevance to the challenged claims are the Brochure and
`the December 1997 Website. The Brochure describes an arrangement in
`which a client of Digital River “will become part of the Digital River
`
`
`7 We have reconsidered the preliminary conclusions expressed in our
`Institution Decision in light of the full trial record. See Dec. 13–15.
`TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016) (“[T]he
`Board is not bound by any findings made in its Institution Decision. At that
`point, the Board is considering the matter preliminarily without the benefit
`of a full record. The Board is free to change its view of the merits after
`further development of the record, and should do so if convinced its initial
`inclinations were wrong.”). We disagree with Patent Owner that Petitioner
`has waived this ground. See Sur-Reply 24.
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`Network.” Ex. 1004, 3. Within this network “members will be able to link
`between each other’s sites so that compl[e]mentary products can be
`bundled.” Id. The December 1997 Website further explains that, within the
`network, products of a given member “will appear on the sites of all the
`dealers who are part of the Digital River Network.” Ex. 1006, 5.
`An integral part of this arrangement is that “the entire transaction
`takes place in the selling environment” created by the network member,
`“with your products presented the way you want them presented.” Id. This
`is achieved with “an integrated back-end commerce system tailored just to
`your site so your customers will feel that they’ve never left your page.” Ex.
`1004, 3. Instead, “[a]ll they’ll see is the Digital River icon in the corner of
`their screen reassuring them that their transaction will be secure, easy,
`accurate and immediate.” Id. Operating within the network, “customers
`simply hit the purchase icon at your site and the whole process unfolds
`smoothly.” Ex. 1006, 3.8 According to Dr. Shamos, “[t]hese disclosures
`taught a [person of ordinary skill in the art] that an outsource provider could
`enable products of a merchant to be marketed across a network of
`ecommerce websites while maintaining the appearance that a user remained
`on a single merchant’s webstore throughout the duration of a transaction.”
`Ex. 1002 ¶ 71.
`
`
`
`8 Consistent with the apparent practice adopted by Petitioner, we cite to the
`native pagination of Exhibit 1006 throughout.
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`
`2. Combination of the Digital River Publications
`Supported by the testimony of Dr. Shamos, Petitioner contends that a
`person of ordinary skill in the art “would have understood that each of the
`Digital River Publications discusses a single system—the DR SSS—and
`would therefore have viewed these references as a combined teaching as of
`their respective publication dates.” Pet. 15–16 (citing Ex. 1002 ¶ 76). In
`particular Petitioner contends that a person of ordinary skill in the art “would
`have been motivated to combine their teachings because they include an
`explicit motivation for doing so” by virtue of the description of what
`purports to be a common system, with each touting the benefits of their
`respectively described features. Id. at 16 (citing Ex. 1002 ¶ 76).
`We agree with this reasoning, which provides rational underpinning to
`effect the combination of teachings, and which is not contested by Patent
`Owner.
`
`
`3. Independent Claim 1
`a. Undisputed Limitations
`In addressing the specific limitations of independent claim 1,
`Petitioner contends that the Digital River Publications teach or render
`obvious the claim’s preamble, i.e. “[a] method of serving commerce
`information of an outsource provider in connection with host web pages
`offering commercial opportunities.” Pet. 16–17. As observed by Petitioner,
`the Digital River Publications describe that the DR SSS brought together
`manufacturers and dealers to enable them to sell products via the Internet,
`with the DR SSS acting as the recited “outsource provider” by providing an
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`integrated back-end commerce system. Id. (citing Ex. 1004, 3; Ex. 1005;
`Ex. 1006, 2–3). In addition, Petitioner contends that the requirement that the
`recited method be performed “with a computer system of an outsource
`provider” is taught or rendered obvious by the Digital River Publications in
`light of the correspondence between the recited “outsource provider” and the
`DR SSS. Regardless of whether the preamble is limiting, Petitioner’s
`showing for these recitations is sufficient, and not disputed by Patent Owner.
`With respect to the claim element reciting “upon receiving over the
`Internet of 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,” Petitioner points to the ability of Digital River network
`members to link between each other’s sites in a manner that “a customer will
`feel that they’ve never left your page.” Id. at 17–18 (citing Ex. 10
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