Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper No. 10
`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.
`____________
`
`Case IPR2018-01011
`Patent 9,639,876 B1
`____________
`
`
`
`Before CARL M. DeFRANCO, PATRICK M. BOUCHER, and
`ALYSSA A. FINAMORE, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`Shopify, Inc. (“Petitioner”) filed a Corrected Petition (Paper 8,
`“Petition” or “Pet.”) to institute 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”).
`DDR Holdings, LLC (“Patent Owner”) filed a Preliminary Response.
`Paper 9 (“Prelim. Resp.”). Applying the standard set forth in 35 U.S.C.
`
`
`571-272-7822
`
`
`
`
`
`Paper No. 10
`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.
`____________
`
`Case IPR2018-01011
`Patent 9,639,876 B1
`____________
`
`
`
`Before CARL M. DeFRANCO, PATRICK M. BOUCHER, and
`ALYSSA A. FINAMORE, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`Shopify, Inc. (“Petitioner”) filed a Corrected Petition (Paper 8,
`“Petition” or “Pet.”) to institute 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”).
`DDR Holdings, LLC (“Patent Owner”) filed a Preliminary Response.
`Paper 9 (“Prelim. Resp.”). Applying the standard set forth in 35 U.S.C.
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`§ 314(a), which requires demonstration of a reasonable likelihood that
`Petitioner would prevail with respect to at least one challenged claim, we
`institute an inter partes review on all grounds and claims set forth in the
`Petition. The Board has not made a final determination on the patentability
`of any claim.
`
`
`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
`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 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.
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`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
`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.
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`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
`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
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`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 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
`the visitor
`instructions directing
`
`wherein second
`computing device to download data defining the overall
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`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 (Ex. 1004)
`
` Digital River April 1997 Website (“April 1997 Website”) (Ex. 1005)
`
` 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)1
`
`
`Petitioner further relies on the Declaration of its witness, Michael I.
`Shamos. Ex. 1002.
`
`
`1 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.”
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`C. Asserted Grounds of Unpatentability
`Petitioner challenges claims 1–5, 7, 8, 11–15, 17, and 18 of the ’876
`patent on the following grounds. Pet. 5.
`Reference(s)
`Basis
`Digital River Publications
`§ 103(a)
`Moore
`§ 102(a)
`Moore and Arnold
`§ 103(a)
`Moore and the Digital River
`§ 103(a)
`Publications
`
`Claims Challenged
`1–5, 7, 8, 11–15, 17, and 18
`1–5, 7, 8, 11–15, 17, and 18
`1, 7, 11, and 17
`1–5, 7, 8, 11–15, 17, and 18
`
`
`
`D. Real Parties in Interest
`The parties identify only themselves as real parties in interest. Pet. 1;
`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.
`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.).2 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.
`
`
`2 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.
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`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. 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.
`
`
`II. ANALYSIS
`A. Claim Construction
`The Board interprets claims of an unexpired patent 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); Cuozzo Speed Techs., LLC v. Lee,
`136 S.Ct. 2131, 2144–46 (2016) (upholding the use of the broadest
`reasonable interpretation standard); Office Patent Trial Practice Guide, 77
`Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). Under the broadest reasonable
`construction standard, claim terms are generally given their ordinary and
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`customary meaning, as would be understood by one of ordinary skill in the
`art at the time of the invention and in the context of the entire disclosure. In
`re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`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.
`
`
`1. “merchants”
`Petitioner contends that the statement in the specification that
`“[m]erchants are the producers, distributors, or resellers of the goods to be
`sold through the outsource provider” is definitional. Pet. 10; Ex. 1001,
`23:7–8. We disagree because the statement does not sufficiently evidence
`an intention by the patent Applicant to depart from the ordinary meaning of
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`the term with “reasonable clarity, deliberateness, and precision.” See In re
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`Rather, we agree with Patent Owner that construction of the term
`“merchants” does not require the language “through the outsource provider.”
`Prelim. Resp. 25. As Patent Owner indicates, in related litigation, the
`district court construed this term as “[p]roducer, distributor, or reseller of
`goods or services to be sold.” Id.; Ex. 2015, 10. We further agree with
`Patent Owner that this definition “is broader and not unreasonable.” Prelim.
`Resp. 25.
`Thus, for purposes of this Decision, we construe “merchants” as
`“producers, distributors, or resellers of the goods or services to be sold.”
`
`
`2. “commerce object”
`Similar to the construction of “merchants,” the district court construed
`“commerce object” as “[a] third-party merchant’s: catalog, category,
`product (goods or services), or dynamic selection.” Ex. 2015, 10. Petitioner
`characterizes the statement in the specification of the ’876 patent from which
`this construction is ultimately drawn as definitional, and omits reference to
`the “third-party merchant” in its proposed construction. Pet. 10–11; see Ex.
`1001, 15:63–16:4. Patent Owner argues that the narrower construction is
`consistent with how the Board construed the term in one of the related
`reexamination proceedings. Prelim. Resp. 25–26 (citing Ex. 1018, 12–13).
`In support of its position, Patent Owner identifies examples within the
`specification in which a “commerce object” is associated with a third-party
`merchant. Id. at 26–27. In doing so, Patent Owner recognizes that in a
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`decision instituting inter partes review of related U.S. Patent No. 7,818,399
`B1, we stated that “Patent Owner insufficiently explains why the separation
`of parties, which is already recited explicitly in the challenged claims,
`should affect the meaning of this term.” Id.; Priceline.com v. DDR
`Holdings, LLC, Case IPR2018-00482, slip op. at 11–12 (Paper 18) (PTAB
`Aug. 2, 2018) (“the related decision”).
`Although we have considered the examples identified by Patent
`Owner, we do not now reach a different conclusion on the record before us.
`“‘[R]eading a claim in the light of the specification,’ to thereby interpret
`limitations explicitly recited in the claim, is a quite different thing from
`‘reading limitations of the specification into a claim,’ to thereby narrow the
`scope of the claim by implicitly adding disclosed limitations which have no
`express basis in the claim.” In re Prater, 415 F.2d 1393, 1396 (CCPA
`1969). In this instance, the claims themselves specifically address aspects of
`merchant involvement. In particular, both challenged independent claims
`address the separation of parties. Independent claims 1 and 11 both recite
`that “a host . . . is a third party to the outsource provider” and that “a
`merchant . . . is a third party to the outsource provider.” Ex. 1001, 27:46–
`47, 27:49–50, 29:3–4, 29:6–7. And both challenged independent claims
`address the degree of association of the recited “commerce object” with a
`merchant by reciting “a commerce object associated with at least one buying
`opportunity of a merchant.” Id. at 27:48–49, 29:5–6.
`Patent Owner articulates insufficient reasoning why, as a matter of
`construing the term “commerce object,” these explicit recitations should be
`supplemented in the manner Patent Owner proposes. Accordingly, for
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`purposes of this Decision, we construe “commerce object” as in the related
`decision as “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.” The parties will have an opportunity to
`elaborate during the trial on the issues that impact this construction,
`including the litigation construction, the specific statements made in the
`specification, and the interplay with the explicit claim recitation that requires
`separation of parties.
`
`
`3. “outsource provider”
`Petitioner does not propose a construction for the term “outsource
`provider.” Patent Owner proposes the following: “A party, independent
`from the host associated with the commerce object or merchant of the
`commerce object, that provides e-commerce support services between
`merchant(s) and host(s).” Prelim. Resp. 27 (citing Ex. 2015, 11).
`That construction differs in a minor respect from the district count’s
`construction, but we agree with Patent Owner that the difference is
`“clarifying” rather than substantive. See id. That is, the district court’s
`construction states that the outsource provider is a party “independent from
`the host associated with the commerce object or merchant of the commerce
`object.” Ex. 2015, 11 (emphasis added). Use of the word “or” creates an
`ambiguity that is clarified by Patent Owner’s proposal, consistent with the
`claims’ express language, discussed above, regarding separation of parties.
`See Ex. 1001, 27:47–50, 29:4–7. Patent Owner’s proposed construction is
`also consistent with the specification. See Ex. 1001, 23:21–47, 25:17–26:23.
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`Accordingly, we adopt Patent Owner’s proposed construction of
`“outsource provider.”
`
`
`4. Other Terms
`We do not find it necessary, for purposes of this Decision, to construe
`any other terms explicitly. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed
`that are in controversy, and only to the extent necessary to resolve the
`controversy.”).
`
`
`B. The Digital River Publications
`Petitioner contends that “[t]aken together, the Digital River
`Publications render the claims of the ‘876 Patent obvious under § 103(a).”
`Pet. 12. According to Petitioner, 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). Id. 6. One of Digital River’s website printouts states 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 website printout 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. The other Digital River website printout states that “the entire
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`transaction takes place in the selling environment you’ve created,
`surrounded by the look and feel of your identity.” Ex. 1006, 5.
`Petitioner makes the point that “[t]he Federal Circuit invalidated
`claims in the ’572 Patent [i.e., an ancestor of the ’876 patent at issue in this
`proceeding] under § 102(a) over the DR SSS (a system that had been used to
`outsource certain ecommerce functionality over one year before the ‘876
`Patent’s earliest priority date).” Pet. 11–12 (emphasis added) (citing Ex.
`1017, DDR Holdings, 773 F.3d at 1253). But the characteristics of the
`system are beyond the scope of prior art that may properly be considered in
`an inter partes review. 35 U.S.C. § 311(b) (“A petitioner in an inter partes
`review may request to cancel as unpatentable 1 or more claims of a patent
`only on a ground that could be raised under section 102 or 103 and only on
`the basis of prior art consisting of patents or printed publications.”)
`(emphasis added). Rather, we are permitted only to consider the documents
`themselves for what they disclose, divorced from particulars of any
`purported system they relate to.
`Based on our review of the record, Petitioner does not sufficiently
`explain how the high-level descriptions in the Digital River Publications
`teach the limitations of claim 1, such as
`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.
`
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`See Pet. 19–20. The Petition provides only cursory treatment of this
`limitation, with conclusory statements regarding the teachings in the Digital
`River Publications, without sufficiently explaining how particular
`disclosures in the references teach the claimed feature. The Petition
`provides no greater analysis for the corresponding limitation of independent
`claim 11, asserting only that “the same reasons” apply because the
`“apparatus claims recit[e] largely the same elements as are found in [the]
`method claims.” Id. at 26. The challenged dependent claims suffer from the
`same deficiencies as the challenged independent claims.
`We therefore conclude, on this record, that the Petition does not set
`forth adequate reasoning to support its challenge of claims 1–5, 7, 8, 11–15,
`17, and 18 as unpatentable for obviousness over the Digital River
`Publications.
`
`
`C. Moore
`Moore discloses a distributed electronic commerce system, explaining
`that “[o]ne method of distributing the electronic commerce functions is to
`separate out the function of the Transaction Server from the Web storefront
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`and the inventory and financial database.” Ex. 1010, 4:43–46. Figure 4 of
`Moore is reproduced below.
`
`
`
`Figure 4 illustrates the distributed system, in which “Store Server” 204
`allows a customer to browse the content of a web storefront, id. at 6:12–14;
`“Store Builder Server” 402 manages a shopping-basket function in response
`to customer selections, id. at 6:16–38; and “Transaction Processor” 2023
`establishes a secure connection to allow the customer to provide payment
`information, but “is not involved until money is ready to be transferred,” id.
`at 6:44–55.
`In Moore’s system, Store Server 204 “performs one basic service, and
`that is to present the multi-media content to the customer in order to let the
`customer shop.” Id. at 7:28–30. “The format of this presentation is
`controlled by the merchant,” such as by using a “Development Tool” that
`
`
`3 Although the drawing identifies “Transaction Processor 202,” Moore
`describes functions of the system in terms of “Transaction Server 202,” on
`which is maintained “Transaction Processor 102.” Ex. 1007, 4:46–51.
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`“allows the merchant to design, build, and publish a web site in a short
`period of time.” Id. at 7:30–32, 8:41–43. Store Builder Server 402 is used
`“to help the merchant get his Web storefront up and running,” and “to
`provide the shopping basket for the customer.” Id. at 7:49–50, 7:61–62.
`Transaction Processor 202, which is managed by a transaction service
`provider, “has only one general responsibility, and that is to process the
`customer’s information.” Id. at 8:2–4. “This involves getting the
`information from the customer and transferring it to the merchant.” Id. at
`8:4–5.
`Petitioner challenges claims 1–5, 7, 8, 11–15, 17, and 18 as
`anticipated by Moore. Pet. 26–43. In its analysis of independent claim 1,
`Petitioner contends that the “automatically serving” step of the recited
`method is taught by Moore’s online-shopping paradigm, in which a server
`recognizes price URLs activated by customers, causing the building of a
`“buy page” from data stored by the Development Tool in designing the web
`pages. Id. at 33–34. Petitioner specifically relies on Moore’s fully
`distributed embodiment, illustrated with Figure 4 (reproduced above), in
`contending that such a step is performed “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,” as also recited in the claim. Id. at 30–31.
`In doing so, Petitioner also observes that Moore discloses that “once
`the price URL is sent, the location of the Store Server (or rather, the location
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`from which the price URL was sent) is, and needs to be, known.” Id. at 32;
`Ex. 1010, 8:19–22. From such disclosure, and supported by the testimony of
`Mr. Shamos, Petitioner reasons that a person of skill in the art “would have
`understood that Moore teaches a server (e.g., the transaction/builder server)
`of an outsource provider uses URLs to recognize source pages (e.g., Web
`pages of the Web storefront) on which customers activated the price URLs.”
`Pet. 32 (citing Ex. 1002 ¶ 116). As such, and because Moore’s system
`supports multiple storefronts, Petitioner reasons that “the URL correlates the
`source web page with a commerce object associated with at least one
`buying opportunity of a merchant,” as recited in the claim. Id. at 31–33.
`At this time, Patent Owner does not dispute these aspects of
`Petitioner’s analysis, which we find sufficient at this stage of the proceeding.
`Rather, Patent Owner focuses on claim 1’s limitations related to the visual
`correspondence of a composite web page and source web page, as recited in
`the wherein clauses. See Prelim. Resp. 33–36. In addressing this aspect of
`claim 1, the Petition identifies Moore’s “buy page” with the recited
`“composite web page,” which is displayed on the visitor computing device.
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`Pet. 34–37. Figure 16 of Moore is reproduced below with annotations
`provided by Petitioner. Id. at 34.
`
`
`Figure 16, reproduced above as annotated by Petitioner, illustrates a
`“typical” buy page as disclosed by Moore. See Ex. 1010, 12:26–28.
`Moore discloses steps involved in building a web page with its
`Development Tool, which include “optional page header and footer
`information,” as well as “defaults for the background color or image.” Id. at
`10:43–11:67. Petitioner relies on such disclosure to contend that all web
`pages in Moore, including the buy page, may include “visually perceptible
`elements corresponding to the source page, such as company name, logo,
`URLs, and/or e-mail address information.” Pet. 35.
`Patent Owner disputes this contention, asserting that “Figures 15-16
`and the associated text make it perfectly apparent that the selected header,
`footer, and styles cannot be applied to the ‘pop-up’ style ‘buy page.’”
`Prelim. Resp. 36. Although we agree with Patent Owner that the example
`buy page illustrated in the drawing does not show the visually perceptible
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`elements that Petitioner identifies, it is not apparent that such elements
`“cannot” be applied to the buy page. Rather, Moore’s description of the
`Development Tool is generic. See Ex. 1010, 10:55–58 (“Each of the four
`steps will be further explained below with the aim of describing how the
`Development Tool operates and how the merchant designs a page”
`(emphasis added)), 11:27–28 (“Page styles allocate certain portions of each
`page to text, images, multimedia, etc.” (emphasis added)), 11:27–29 (“The
`style thus provides a template for all of the different content-related objects
`(‘style components’) that will appear on a page”) (emphasis added)).
`Notwithstanding the specific example of the illustrative drawing, one
`of skill in the art might reasonably infer that from such generic description
`that the style implemented by the Development Tool can apply to all pages,
`including the buy page. “[I]n considering the disclosure of a reference, it is
`proper to take into account not only specific teachings of the reference but
`also the inferences which one skilled in the art would reasonably be
`expected to draw therefrom.” In re Preda, 401 F.2d 825, 826 (CCPA 1968).
`Under the standard that governs at this stage, we find that Petitioner makes a
`sufficient showing.
`Nevertheless, we emphasize that development of this issue by the
`parties appears essential. In particular, we expect the parties to take
`positions with respect to construction of the phrases “relates to overall
`appearance” and “defining the overall appearance” that we can evaluate and
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`consider in ascertaining whether Moore teaches or suggests the relevant
`limitations.
`For these reasons, we conclude that Petitioner demonstrates a
`reasonable likelihood of prevailing on its challenge of independent claim 1
`as anticipated by Moore. We have also reviewed Petitioner’s analysis with
`respect to claims 2–5, 7, 8, 11–15, 17, and 18, which Patent Owner does not
`separately contest, and find that Petitioner demonstrates a reasonable
`likelihood of prevailing on its challenge of those claims also.
`
`
`D. Moore and Arnold
`Arnold “relates to a computer method and system for tracking product
`sales, and more particularly to a method and system for tracking sales on the
`Internet.” Ex. 1011, 1:6–8. Arnold describes two kinds of websites: (1)
`“content-rich sites” that attract web surfers, and (2) “selling sites” on which
`products are sold. Id. at 2:40–50. Arnold addresses a “problem for the
`selling sites [of] get[ting] the potential customers who are at the content-rich
`sites to know that the selling site has a product that is available to be sold on
`the Web.” Id. at 2:45–48. Accordingly, Arnold teaches a system in which a
`“Virtual Outlet” (“VO”) website provides visitors with commerce
`information and links to products of a third-party merchant. Id. at Abstract,
`8:9–24.
`Petitioner contends that claims 1, 7, 11, and 17 are unpatentable under
`35 U.S.C. § 103(a) over Moore and Arnold. Pet. 43–49. Because Arnold
`and Moore “are both directed to ecommerce solutions involving multiple
`merchants selling products on websites owned by others,” Petitioner reasons
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`that a person of ordinary skill in t
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