PTAB

IPR2018-00482

Priceline Group Inc. v. DDR Holdings, LLC

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1. Case Identification

2. Patent Overview

  • Title: Methods of Expanding Commercial Opportunities for Internet Websites Through Coordinated Offsite Marketing
  • Brief Description: The ’399 patent discloses a method for an outsource provider to serve web pages that prevent a user from being redirected away from a host website to complete a transaction. When a user on a host website clicks a link to a third-party merchant's product, the system generates a new composite web page that incorporates the "look and feel" of the host website while displaying the merchant's commerce content, creating a seamless user experience.

3. Grounds for Unpatentability

Ground 1: Obviousness over Arnold and Digital River - Claims 1, 3, 7, 9, 13-16, and 18 are obvious over Arnold in view of the Digital River Publications.

  • Prior Art Relied Upon: Arnold (Patent 6,016,504) and the Digital River Publications (a collection of publicly available materials from 1997, including a brochure and websites, describing the Digital River Secure Sales System, or DR SSS).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Arnold teaches a two-party affiliate system where a content-rich "virtual outlet" (VO) website can display a merchant's products on a page that is customized to retain the VO's look and feel, thereby solving the problem of losing web traffic. Arnold, however, describes the merchant itself performing this customization. The Digital River Publications disclose a third-party outsource provider (the DR SSS) that handles back-end e-commerce and explicitly offers "customization of Web presentation so that the SSS remains behind the scenes" and customers "feel that they've never left your page." Petitioner contended that combining Arnold's system architecture with Digital River's outsourced implementation renders the key limitations of independent claim 1 obvious.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine these references to gain the known benefits of outsourcing. Arnold teaches the concept of a co-branded, merchant-hosted page, and the Digital River Publications teach the advantages of outsourcing this exact type of e-commerce functionality to a specialized third party for improved efficiency, security, and scalability. A POSITA would have recognized that the functionality performed by the merchant in Arnold is substantially the same as the service offered by the outsource provider in the Digital River Publications, making it an obvious design choice to substitute one for the other.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success because the combination involves applying a well-known business strategy (outsourcing) to a known technical implementation (co-branded web pages). The result—an outsourced, co-branded e-commerce page—was predictable and achieved the expected benefits described in the references.

Ground 2: Obviousness over Moore and Voorhees - Claims 1, 3, 7, 9, 13-16, and 18 are obvious over Moore in view of Voorhees.

  • Prior Art Relied Upon: Moore (Patent 6,330,575) and Voorhees (Application # 2009/0144176).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner asserted that Moore teaches a distributed e-commerce system where an outsource provider processes transactions using dynamically generated "buy pages" that can be linked from a merchant’s own site or other third-party sites. While Moore discloses customizable pages, it does not explicitly teach that a buy page linked from a third-party site would retain the third-party site's look and feel. Voorhees addresses this exact issue, teaching a system where a retailer can display a manufacturer's products in a "boutique" page that is generated to be "transparent to the shopper" and maintain the retailer's branding to avoid losing the sale. The combination of Moore's outsourcing framework with Voorhees's specific branding solution allegedly discloses all limitations of the challenged claims.
    • Motivation to Combine: A POSITA would combine Moore and Voorhees to solve the known problem of visitor drop-off, as explicitly identified in Voorhees. Moore provides the general outsourcing system for generating transaction pages, and Voorhees provides the specific motivation and method for ensuring those pages maintain the visual identity of the referring (host) site. The references are complementary, with Voorhees providing a specific improvement to the general type of system disclosed in Moore.
    • Expectation of Success: The combination would have been successful because it integrates known e-commerce techniques to solve a recognized problem. Implementing Moore’s outsourced transaction pages with the branding retention strategy from Voorhees was a predictable convergence of existing solutions.

  • Additional Grounds: Petitioner asserted additional obviousness challenges (Grounds 3 and 4) to dependent claims 13-16 by adding Gregory (Patent 6,490,567) to the primary combinations of Ground 1 and Ground 2, respectively. Gregory was cited to explicitly teach common e-commerce functionalities, such as shopping cart links ("Buy This" button), checkout links, and automated payment processing to merchants, to the extent those features were not found to be explicitly taught by the primary art combinations.

4. Key Claim Construction Positions

  • "merchants" (claims 1, 7, 15): Petitioner contended this term should be construed according to the patent's explicit definition as "producers, distributors, or resellers of the goods to be sold through the outsource provider."
  • "commerce object" (claims 1, 7, 9, 13, 14): Petitioner argued this term should be construed according to its definition in the patent as a "product, product category, catalog, or dynamic selection."
  • "commission" (claims 9, 16): Petitioner proposed that the broadest reasonable interpretation of this term is "money earned by a host for sales of a third party merchant's products through the host's website." Petitioner argued the term should not be limited to any particular business arrangement or calculation method.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1, 3, 7, 9, 13-16, and 18 of the ’399 patent as unpatentable under 35 U.S.C. §103.