Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 36
`Date: October 26, 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.
`
`
`BOUCHER, Administrative Patent Judge.
`
`
`
`
`
`
`DECISION
`Granting Petitioner’s Request on
`Rehearing of Final Written Decision
`37 C.F.R. § 42.71(d)
`
`I. INTRODUCTION
`In our Final Written Decision, the Board held that, based on a
`preponderance of the evidence, Petitioner had shown that claims 1, 3, 5, 11–
`13, and 15 of U.S. Patent No. 9,639,876 B1 are unpatentable. Paper 34
`
`
`571-272-7822
`
`
`
`
`
`Paper 36
`Date: October 26, 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.
`
`
`BOUCHER, Administrative Patent Judge.
`
`
`
`
`
`
`DECISION
`Granting Petitioner’s Request on
`Rehearing of Final Written Decision
`37 C.F.R. § 42.71(d)
`
`I. INTRODUCTION
`In our Final Written Decision, the Board held that, based on a
`preponderance of the evidence, Petitioner had shown that claims 1, 3, 5, 11–
`13, and 15 of U.S. Patent No. 9,639,876 B1 are unpatentable. Paper 34
`
`
`
`IPR2018-01011
`Patent 9,639,876 B1
`
`(“Dec.”), 42–43. The Board additionally held that Petitioner had not shown
`that claims 4, 7, 8, 14, 17, and 18 are unpatentable. Id. Petitioner requests
`rehearing with respect to claims 7, 8, 17, and 18 solely on Petitioner’s
`ground that challenges those claims as unpatentable over the Digital River
`Publications. Paper 35 (“Req. Reh’g”), 1. “Petitioners do not seek
`rehearing of the Board’s other findings, including with regard to dependent
`claims 4 and 14 or other prior art.” Id.
`For the reasons discussed below, we grant Petitioner’s Request for
`Rehearing, and modify our Final Written Decision accordingly.
`
`
`II. LEGAL STANDARD
`A request for rehearing “must specifically identify all matters the
`party believes the Board misapprehended or overlooked, and the place where
`each matter was previously addressed in a motion, an opposition, or a reply.”
`37 C.F.R. § 42.71(d). The burden of showing a decision should be modified
`on a request for rehearing lies with the party challenging the decision. Id.
`
`
`III. ANALYSIS
`In its Rehearing Request, Petitioner highlights certain findings made
`in the Final Written Decision with respect to independent claim 1 and the
`disclosure of the Digital River Publications. Req. Reh’g 3–4. Specifically,
`we found that “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 integrated back-end commence system.” Dec. 19–20. In
`addition, we found that the Digital River Publications teach that the DR SSS,
`
`2
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`IPR2018-01011
`Patent 9,639,876 B1
`
`i.e., the recited outsource provider, causes display of the recited “commerce
`object information associated with the commerce object . . . , which
`commerce object includes at least one product available for sale through the
`computer system of the outsource provider,” at least in part because “the
`Digital River Publications teach generation and transmission of a second
`web page to a user in allowing the user to shop for products of another
`merchant.” Id. at 21–23.
`Claim 7 depends from independent claim 1 and recites that “the
`commerce object correlated with the source web page is an electronic
`catalog listing a multitude of products offered for sale by the merchant
`through a website of an outsource provider, and wherein the composite web
`page contains one or more selectable URLs connecting a hierarchical set of
`additional web pages of the outsource provider website, each pertaining to a
`subset of the product offerings in the electronic catalog.” Ex. 1001, 28:33–
`41. In discussing this claim in the Final Written Decision, we stated that
`“Petitioner does not sufficiently address the claim’s requirement that the
`selectable URLs connect ‘a hierarchical set of additional web pages of the
`outsource provider website,’ each of which pertains to a subset of product
`offerings.” Dec. 30. Petitioner disagrees with this characterization of the
`content of its original Petition and supporting evidence, particularly the
`Declaration of its witness, Michael I. Shamos, Ph.D. Req. Reh’g 4–11.
`According to Petitioner, the Petition “organized its showing of
`[unpatentability] of claim 7 into two parts corresponding to the claim’s two
`separate ‘wherein’ clauses.” Id. at 4. The Final Written Decision
`highlighted a perceived deficiency in the Petition’s analysis of the second of
`those clauses. See Dec., dissenting opinion at 7 (“As for the first ‘wherein
`
`3
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`IPR2018-01011
`Patent 9,639,876 B1
`
`clause, the majority appears to find Petitioner’s showing is sufficient.”).
`With respect to the second “wherein” clause, Petitioner asserts that “[t]he
`Petition and accompanying expert declaration demonstrated that the Digital
`River Publications teach a composite web page that displays commerce
`object information associated with one or more products of the electronic
`catalog.” Req. Reh’g 7–8. In particular, Petitioner highlights the Petition’s
`argument that the Digital River Publications disclose that the composite web
`page can be a buy page, as shown in Exhibit 1009. Id. (citing Paper 8
`(“Pet.”), 25).
`A portion of Exhibit 1009 is reproduced below.
`
`
`The portion of Exhibit 1009 reproduced above illustrates the structure of the
`21 Software Drive web page, notably showing “add to cart,” “view cart,”
`
`4
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`IPR2018-01011
`Patent 9,639,876 B1
`
`“modify cart,” and “check out” links. Ex. 1009. In the context of this
`drawing, Petitioner specifically contends that “the panel majority overlooked
`or misapprehended Petitioners’ further showing that the Digital River
`Publications’ buy page identified above satisfies all of the added elements of
`the second ‘wherein’ clause of claim 7.” Id. at 8. Addressing the
`hierarchical set of additional web pages highlighted in the Final Written
`Decision, Petitioner draws our attention to the presence of the “add to cart,”
`“view cart,” “modify cart,” and “check out” links:
`The links do connect a hierarchical set of additional pages,
`namely, pages that are accessed serially by selecting these
`progressive links within a buy sequence to “add,” “view,”
`“modify” and “check out,” where each page visited by selecting
`these links pertains to a subset (e.g., one or more) of the product
`offerings in the electronic catalog that the user has selected for
`purchase.
`
`Id. at 9 (citing Pet. 25). Petitioner supports this argument by providing a
`reference to where it is made in the original Petition, as well as supporting
`evidence that includes testimony by Dr. Shamos. See Pet. 25 (citing Ex.
`1009, 1; Ex. 1002 ¶ 107; Ex. 1006, 3–6).
`Petitioner’s argument on rehearing is persuasive, particularly under
`the broadest-reasonable-interpretation standard of claim construction applied
`in this proceeding. See Dec. 12–13 (Final Written Decision noting that, for
`an inter partes review proceeding based on a petition filed prior to
`November 13, 2018, “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”). Petitioner clarifies that the Petition identifies
`Exhibit 1009’s buy page as corresponding to the “composite web page
`contain[ing] one or more selectable URLs” recited in the claim and identifies
`
`5
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`IPR2018-01011
`Patent 9,639,876 B1
`
`the “view cart,” “modify cart,” and “check out” pages linked to the “buy”
`page as corresponding to the recited “hierarchical set of additional pages.”
`See Req. Reh’g 11 (asserting “the Petition demonstrated that the ‘view cart,’
`‘modify cart,’ and ‘checkout’ links satisfy the second ‘wherein’ clause”).
`In doing so, Petitioner points us to specific portions of its Petition that
`we find provide sufficient support for this position. Specifically, the Petition
`cites to paragraph 107 of Dr. Shamos’s Declaration, and both the Petition
`and that Declaration cite multiple times to page 1 of Exhibit 1009. See Pet.
`25; Ex. 1002 ¶ 107. In describing the correspondence to the “hierarchical
`set of additional pages,” Dr. Shamos testifies that “[t]he buy pages also
`provide a link (i.e., selectable URL) to a shopping cart, which, as described
`by the 21 Software Drive website, allows a user to add products to a
`shopping cart, view a shopping cart, modify a shopping cart, and check out.”
`Ex. 1002 ¶ 107 (citing Ex. 1009, 1). We credit this testimony, which is
`unrebutted on the record before us. Indeed, Dr. Shamos’s testimony that a
`skilled artisan would have understood Exhibit 1009’s sequence of URLs as
`satisfying the claimed “hierarchical set of additional webpages” is consistent
`with the manner in which the ’876 patent itself describes its shopping cart
`functionality—namely, as nothing more than the ability to “ADD TO
`CART,” “VIEW SHOPPING CART,” “UPDATE QUANTITIES,” and
`“CHECK OUT.” Ex. 1001, Fig. 22.
`Petitioner thus demonstrates that the buy page shown in Exhibit 1009,
`i.e., the recited “composite web page,” contains one or more selectable
`URLs connecting the “view cart,” “modify cart,” and “check out” pages to
`the buy page, i.e., the recited “hierarchical set of additional web pages,” as
`required by the claim. Because each of those pages “pertain[s] to a subset of
`
`6
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`IPR2018-01011
`Patent 9,639,876 B1
`
`the product offerings in the electronic catalog,” such as those selected for
`purchase, Petitioner demonstrates, by a preponderance of the evidence, that
`each limitation of the second “wherein” clause of claim 7 is met by the
`Digital River Publications.
`Claim 8 depends from claim 7 and recites “automatically with the
`computer system, (i) using search parameters inputted at the visitor
`computing device to search for specific products within the catalog, and (ii)
`serving to the visitor computing device additional instructions directing the
`visiting computing device to display the results of the search.” Ex. 1001,
`28:42–48. Because of the dependence from claim 7, the Board did not
`specifically address Petitioner’s reasoning as applied to this claim in the
`Final Written Decision. Dec. 30 (“Claim 8 depends from claim 7, and
`Petitioner’s showing is accordingly similarly deficient.”).
`In addressing this limitation, the Petition observes that the Corel
`website shown in Exhibit 1007 “provided a structured search that allowed a
`user to search for software by product, platform, or program.” Pet. 26. Dr.
`Shamos provides testimonial support for Petitioner’s contention that a
`person of ordinary skill in the art would have understood the Digital River
`Publications to disclose a search engine as part of a web storefront for
`product searching. Id.; Ex. 1002 ¶ 108. Dr. Shamos also provides support
`for Petitioner’s assertion that “[n]ormal operation of a search engine in the
`eyes of a [person of ordinary skill in the art] would provide search results as
`required by the second clause of Claim 8.” Pet. 26; Ex. 1002 ¶ 108. We
`credit this support, which is sufficient for these limitations. We accordingly
`conclude that Petitioner makes a sufficient showing with respect to claim 8.
`
`7
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`IPR2018-01011
`Patent 9,639,876 B1
`
`
`Claims 17 and 18 depend from claim 11 and otherwise include
`limitations that generally parallel the limitations recited in claims 7 and 8.
`Ex. 1001, 30:15–30. Petitioner’s arguments are thus persuasive also with
`respect to these claims, and we accordingly conclude that Petitioner makes a
`sufficient showing with respect to these claims.
`
`
`8
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`IPR2018-01011
`Patent 9,639,876 B1
`
`
`IV. CONCLUSION
`In light of these considerations, we modify our Final Written Decision
`to make the following conclusions. 1
`Claims
`35
`Reference(s) Claims Shown
`U.S.C. §
`Unpatentable
`
`103(a)
`
`Digital River
`Publications
`
`102(a) Moore
`
`1–5, 7, 8,
`11–15, 17,
`18
`1–5, 7, 8,
`11–15, 17,
`18
`1, 7, 11, 17 103(a) Moore and
`Arnold
`103(a) Moore and the
`Digital River
`Publications
`
`
`1–5, 7, 8,
`11–15, 17,
`18
`Overall
`Outcome
`
`
`
`
`
`
`
`
`1–3, 5, 7, 8,
`11–13, 15, 17,
`18
`
`
`
`
`
`
`Claims Not
`Shown
`Unpatentable
`4, 14
`
`1–5, 7, 8, 11–
`15, 17, 18
`
`1, 7, 11, 17
`
`1–5, 7, 8, 11–
`15, 17, 18
`
`1–3, 5, 7, 8,
`11–13, 15, 17,
`18
`
`4, 14
`
`
`1 Should Patent Owner wish to pursue amendment of the challenged
`claims in a reissue or reexamination proceeding subsequent to the
`issuance of this decision, we draw Patent Owner’s attention to the April
`2019 Notice Regarding Options for Amendments by Patent Owner
`Through Reissue or Reexamination During a Pending AIA Trial
`Proceeding. See 84 Fed. Reg. 16,654 (Apr. 22, 2019). If Patent Owner
`chooses to file a reissue application or a request for reexamination of the
`challenged patent, we remind Patent Owner of its continuing obligation to
`notify the Board of any such related matters in updated mandatory
`notices. See 37 C.F.R. §§ 42.8(a)(3), (b)(2).
`
`9
`
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`IPR2018-01011
`Patent 9,639,876 B1
`
`
`V. ORDER
`
`It is
`ORDERED that Petitioner’s Request for Rehearing is granted;
`FURTHER ORDERED that, based on a preponderance of the
`evidence, claims 1–3, 5, 7, 8, 11–13, 15, 17, and 18 of U.S. Patent No.
`9,639,876 B1 have been shown to be unpatentable; and
`FURTHER ORDERED that parties to this proceeding seeking judicial
`review of our decision must comply with the notice and service requirements
`of 37 C.F.R. § 90.2.
`
`
`
`
`
`
`10
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`IPR2018-01011
`Patent 9,639,876 B1
`
`PETITIONER:
`Michael McNamara
`mmcnamara@mintz.com
`William Meunier
`wameunier@mintz.com
`Peter Snell
`pfsnell@mintz.com
`
`PATENT OWNER:
`Louis Hoffman
`donald@valuablepatents.com
`Justin Lesko
`justinlesko@patentit.com
`Ian Crosby
`icrosby@susmangodfrey.com
`
`
`11
`
`
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