PTAB

IPR2018-01010

Shopify Inc v. DDR Holdings LLC

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Key Events
Petition

1. Case Identification

2. Patent Overview

  • Title: Methods of Expanding Commercial Opportunities for Internet Websites Through Coordinated Offsite Marketing
  • Brief Description: The ’825 patent discloses a system where an outsource provider manages e-commerce for a host website. When a visitor clicks a link on the host website related to a third-party merchant's product, the system generates and serves a new composite webpage that includes the merchant's product information while maintaining the visual "look and feel" of the original host website.

3. Grounds for Unpatentability

Ground 1: Anticipation by Loshin - Claims 1-4, 8, 11-14, and 17 are anticipated by Loshin under 35 U.S.C. §102.

  • Prior Art Relied Upon: Loshin (“Selling Online with First Virtual,” a printed publication from 1996).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Loshin disclosed every element of the challenged claims. Loshin described First Virtual’s “InfoHaus” service as an outsource provider that allowed merchants to sell products without hosting their own servers. In Loshin’s system, a merchant (e.g., “Darren New”) could set up a storefront on a first website. When a user clicked a link on that site, the InfoHaus server would automatically retrieve pre-stored data and serve a second, composite webpage (a transaction page) containing product information. Petitioner contended this composite page visually corresponded to the source page, for example by displaying the merchant's name, thus satisfying the key "look and feel" limitation. The owner of the first website (the merchant) and the owner of the server computer (First Virtual) were distinct third parties as required by the claims.
    • Key Aspects: The core of this argument was that Loshin’s basic two-party e-commerce system, mediated by a third-party outsource provider, met all limitations, including the requirement for visual correspondence between the host page and the transaction page.

Ground 2: Obviousness over Loshin and InfoHaus Documents - Claims 1, 3, 11, and 17 are obvious over Loshin in view of the InfoHaus Documents under 35 U.S.C. §103.

  • Prior Art Relied Upon: Loshin (a 1996 publication) and the InfoHaus Documents (publicly available guides and webpages from 1997).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that the InfoHaus Documents, which provided guidance on using the very system described in Loshin, reinforced the teachings of Loshin and supplied additional detail. These documents explicitly taught merchants how to upload products, customize storefronts, add graphics, and create sub-pages for product categories. This combination made it explicit that a POSITA could and would create a composite webpage served by the outsource provider (InfoHaus) that was customized to visually correspond to the merchant’s source page, thereby satisfying the "look and feel" limitation.
    • Motivation to Combine: A POSITA would combine these references because they all described a single, common system: InfoHaus. Loshin provided an overview, while the InfoHaus Documents were the official user guides for implementing that system. The documents were presented together on the First Virtual website, providing an explicit motivation to be read and used together to build a functional online store.
    • Expectation of Success: A POSITA would have a high expectation of success, as the combination merely involved following the instructional materials (the InfoHaus Documents) to implement the e-commerce system described in Loshin.

Ground 3: Obviousness over Loshin and Moore - Claims 1-4, 8, 11-14, and 17 are obvious over Loshin in view of Moore under 35 U.S.C. §103.

  • Prior Art Relied Upon: Loshin (a 1996 publication) and Moore (Patent 6,330,575).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued Moore supplemented Loshin by teaching a more advanced system for maintaining visual consistency. Moore disclosed an outsourced e-commerce system where activating a "price URL" on a merchant's storefront caused a second server to dynamically generate a "buy page." Moore explicitly taught that the outsource provider's server needed to know the location of the source page to hyperlink the customer back, and disclosed design tools for creating buy pages with consistent headers, footers, logos, and color schemes corresponding to the source page. Combining Loshin’s outsource provider framework with Moore’s specific techniques for dynamic page generation and visual correspondence would result in the claimed invention.
    • Motivation to Combine: A POSITA would combine Loshin and Moore because both described solutions for outsourced e-commerce. A POSITA implementing the general outsource system of Loshin would have been motivated to incorporate the specific, advantageous techniques taught by Moore to dynamically generate transaction pages that maintained the look and feel of the referring merchant site, which was a known commercial goal at the time.
    • Expectation of Success: A POSITA would have a high expectation of success in combining the teachings, as it involved applying Moore’s well-understood web design and server-side processing techniques to the known e-commerce framework of Loshin.

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." Crucially, the Petitioner noted that under the patent's own definition, the "host" and the "merchant" could be the same party, clarifying the roles in a two-party transaction managed by a third-party provider.
  • "commission": Petitioner proposed construing this term broadly as "money earned by a host for sales of a third party merchant’s products through the host’s website." This construction was not limited to any particular business arrangement, supporting a broader application of the prior art systems that facilitated payments between parties.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-4, 8, 11-14, and 17 of the ’825 patent as unpatentable.