PTAB

IPR2018-01011

Shopify Inc v. DDR Holdings LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Method and Computer System for Serving Commerce Information of an Outsource Provider in Connection with Host Web Pages Offering Commercial Opportunities
  • Brief Description: The ’876 patent discloses a system that prevents visitor diversion when making an online purchase. When a visitor on a "host" website clicks a link for a third-party merchant's product, an outsource provider serves a new composite web page that maintains the visual "look and feel" of the host website while presenting the third-party's commerce information and facilitating the transaction.

3. Grounds for Unpatentability

Ground 1: Obviousness over Digital River Publications - Claims 1-5, 7-8, 11-15, and 17-18 are obvious over the Digital River Publications

  • Prior Art Relied Upon: A collection of printed publications describing the Digital River Secure Sales System (DR SSS), including the Digital River Brochure, the April 1997 Website, and the December 1997 Website.
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the Digital River Publications, which describe a single, commercially available system, collectively teach all elements of the challenged claims. The DR SSS was an outsource provider that enabled manufacturers and dealers to sell products online. A key feature was the "customization of Web presentation so that the SSS remains behind the scenes," ensuring that customers "feel that they've never left your page." This system served customized web pages that maintained the visual appearance of a host merchant's site while processing a transaction for another merchant's product, directly mapping to the core limitations of independent claims 1 and 11.
    • Motivation to Combine: A POSITA would have viewed the various Digital River Publications as a combined teaching because they all describe a single, common system (the DR SSS) and its benefits. The motivation was explicit: to solve the well-known problem of disrupting the customer experience by redirecting them to a foreign-looking page to complete a purchase, a problem the DR SSS was designed to solve.
    • Expectation of Success: A POSITA would have had a high expectation of success because the DR SSS was not a theoretical concept but an existing, operational commercial system that already implemented the claimed functionality.

Ground 2: Anticipation by Moore - Claims 1-5, 7-8, 11-15, and 17-18 are anticipated by Moore

  • Prior Art Relied Upon: Moore (Patent 6,330,575).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Moore discloses every element of the challenged claims. Moore teaches a distributed e-commerce system where a transaction service provider (an outsource provider) processes purchases initiated on a merchant's (host's) web storefront. Merchants embed "price URLs" on their sites that link to the outsource provider's server. Upon activation, the server automatically generates and serves a "buy page." Moore explicitly discloses that its design tool allows merchants to configure these buy pages with header and footer information, ensuring the generated pages maintain the visual appearance of the source website. Moore also teaches that the server knows the location from which the URL was sent, enabling it to maintain context and visual correspondence.

Ground 3: Obviousness over Moore in view of Arnold - Claims 1, 7, 11, and 17 are obvious over Moore in view of Arnold

  • Prior Art Relied Upon: Moore (Patent 6,330,575) and Arnold (Patent 6,016,504).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that Moore provides the foundational outsourcing framework, while Arnold provides specific teachings on co-branding and affiliate commission structures that were common in the art. Arnold describes a two-party system where a "Virtual Outlet" (host) website links to a third-party merchant's selling site. Arnold teaches that the merchant's site serves order pages customized to have the appearance of the referring Virtual Outlet and discloses paying a commission to the host for referred sales. The combination supplies all elements of the claims.
    • Motivation to Combine: A POSITA would combine Moore and Arnold to implement a more robust and efficient version of the affiliate system described in Arnold. The motivation was to gain the advantages of both references: using the outsource provider taught by Moore to handle the complex back-end transaction processing, customization, and tracking tasks required by the co-branded, commission-based affiliate model taught by Arnold. This would reduce the technical burden on merchants while retaining the seamless user experience.
    • Expectation of Success: A POSITA would have had a high expectation of success, as the combination involved applying the well-known concept of outsourcing (Moore) to the well-known business practice of affiliate marketing and co-branding (Arnold), using predictable technologies.

  • Additional Grounds: Petitioner asserted that claims 1-5, 7-8, 11-15, and 17-18 are also obvious over Moore in view of the Digital River Publications, leveraging arguments from Grounds 1 and 2.

4. Key Claim Construction Positions

  • "commission" (Claims 4, 14): Petitioner argued this term should be construed broadly as "money earned by a host for sales of a third party merchant's products through the host's website." This construction is not limited to any particular business arrangement for how the commission is calculated, earned, or paid, reflecting the patent's disclosure and preventing a narrow interpretation that might exclude prior art business models.
  • "merchants," "host," and "commerce object": For these terms, Petitioner argued for constructions consistent with the explicit definitions provided within the ’876 patent specification itself. This approach grounds the claim scope in the patent's own disclosure.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-5, 7-8, 11-15, and 17-18 of the ’876 patent as unpatentable under 35 U.S.C. §102 and §103.