PTAB

IPR2018-01009

Shopify Inc v. DDR Holdings LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Specially Programmed Computer Server Serving Pages Offering Commercial Opportunities for Merchants Through Coordinated Offsite Marketing
  • Brief Description: The ’228 patent discloses a system where a user on a host website can click an advertisement for a third-party merchant’s product and be directed to a new webpage, served by an outsource provider, that maintains the visual "look and feel" of the original host website.

3. Grounds for Unpatentability

Ground 1: Anticipation by Loshin - Claims 1, 3-5, 7-9, 11-13, 15, and 16 are anticipated under 35 U.S.C. § 102 by Loshin.

  • Prior Art Relied Upon: Loshin (“Selling Online with First Virtual,” published 1996).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Loshin disclosed every element of the challenged claims. Loshin described the "InfoHaus" system, an outsource provider (First Virtual) that allowed third-party merchants to sell products without managing their own servers. Petitioner contended that Loshin’s disclosure of a user clicking a link on a merchant’s page (the host) and being taken to a transaction page served by InfoHaus (the outsource provider) met the core limitations of claim 1. For the key limitation requiring the new page to have "visually perceptible elements visually corresponding to the source web page," Petitioner argued Loshin taught personalizing pages for individual sellers by including their name, and a POSITA would have understood this included adding other visual elements via standard HTML, thereby teaching visual correspondence. Loshin also disclosed searchable catalogs, satisfying limitations in dependent claims.

Ground 2: Obviousness over Loshin and InfoHaus Documents - Claims 1, 3-5, 8, 9, 11-13, and 15-16 are obvious over Loshin in view of the InfoHaus Documents.

  • Prior Art Relied Upon: Loshin (published 1996) and the InfoHaus Documents (InfoHaus Guide, HelpMeister, and Seller Program webpages, publicly available by June 1997).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that the InfoHaus Documents supplemented Loshin’s disclosure by providing explicit instructions on how merchants could customize their InfoHaus storefronts. These documents taught adding graphics, using HTML designs, creating forms for transactions, and establishing hierarchical sub-pages for product categories. Petitioner argued these teachings made it explicit that a merchant using the InfoHaus system could and would create a consistent visual appearance between their source pages and the transaction pages served by the outsource provider, rendering the claimed invention obvious.
    • Motivation to Combine: A POSITA would combine Loshin and the InfoHaus Documents because they all described a single, common system (InfoHaus) and were presented together on the First Virtual Website. Loshin provided a high-level overview, while the InfoHaus Documents provided the detailed implementation instructions for using that same system. Therefore, a POSITA would have naturally consulted all references to gain a complete understanding of the system's capabilities.
    • Expectation of Success: The InfoHaus Documents provided express instructions for customizing web pages using well-understood technologies like HTML. A POSITA would have had a high expectation of success in applying these instructions to create visually corresponding pages.

Ground 3: Obviousness over Loshin and Moore - Claims 1, 3-5, 7-9, 11-13, and 15-16 are obvious over Loshin in view of Moore.

  • Prior Art Relied Upon: Loshin (published 1996) and Moore (Patent 6,330,575).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Moore taught the specific visual correspondence elements that Loshin’s system could be modified to include. Moore disclosed a development tool for merchants to design e-commerce pages, including "buy pages" served by an outsource provider. Crucially, Moore’s tool enabled merchants to configure visual elements like font, background color, images, and header/footer information to ensure the "buy page" maintained the appearance of the referring storefront. Petitioner asserted that combining Moore's explicit teachings on creating visual consistency with Loshin's established outsource provider framework would result in the claimed invention.
    • Motivation to Combine: A POSITA would combine Loshin and Moore because both references addressed the same problem: outsourcing e-commerce transaction processing. Petitioner argued a POSITA would have recognized that the visual customization features in Moore’s system would be a desirable and advantageous improvement to Loshin’s InfoHaus system, as it would create a more seamless user experience and likely increase sales. Combining Moore's known design techniques with Loshin's system was a predictable solution.
    • Expectation of Success: The combination involved applying known web design tools (as taught by Moore) to an existing type of e-commerce platform (as taught by Loshin). A POSITA would have reasonably expected that these conventional web design techniques would function as intended when integrated.

4. Key Claim Construction Positions

  • "merchants": Petitioner argued this term should be construed as "producers, distributors, or resellers of the goods to be sold through the outsource provider," consistent with the patent’s specification. Petitioner noted that the patent states a single party can play the dual role of "Host and Merchant."
  • "host": Petitioner argued for the definition provided in the specification: "the operator of a website that engages in Internet commerce by incorporating one or more link to the e-commerce outsource provider into its web content."
  • "commerce object": Petitioner asserted this term should be construed as a "product, product category, catalog, or dynamic selection," as defined within the patent.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1, 3-5, 7-9, 11-13, 15, and 16 of the ’228 patent as unpatentable.