PTAB

IPR2018-01012

Shopify Inc v. DDR Holdings LLC

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Key Events
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 an e-commerce outsource provider generates and serves a "composite" web page to a consumer. The system is activated when a consumer on a host website clicks a link associated with a third-party merchant's product; the resulting composite page displays the merchant's product information while retaining the visual "look and feel" of the host website, making the transition seamless to the consumer.

3. Grounds for Unpatentability

Ground 1: Obviousness over Digital River Publications - Claims 1, 3-9, 11-13, and 15-16 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 (Brochure), the April 1997 Website, and the December 1997 Website (collectively, Digital River Publications).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the Digital River Publications collectively disclosed 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 touted by the publications was the "customization of Web presentation so that the SSS remains behind the scenes," ensuring that customers "will feel that they've never left your page." This directly taught the core concept of generating a transaction page that maintains the visual identity of the referring (host) website. The publications described linking between network members' sites to sell complimentary products, which maps to the claimed method of serving a composite page upon selection of a URL on a host site.
    • Motivation to Combine: A POSITA would have viewed the various Digital River Publications as describing a single, cohesive system (the DR SSS). The publications themselves provided an explicit reason to combine their teachings, as they each described different features and benefits of the same underlying service, creating a comprehensive picture of a system that solved the exact problem addressed by the ’228 patent: preventing consumer disruption when transitioning from a host site to a third-party merchant's transaction page.
    • Expectation of Success: A POSITA would have had a high expectation of success because the Digital River Publications described an existing, operational commercial system, not a theoretical concept.

Ground 2: Anticipation by Moore - Claims 1, 3-9, 11-13, and 15-16 are anticipated by Moore.

  • Prior Art Relied Upon: Moore (Patent 6,330,575).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that Moore disclosed every limitation of the challenged claims. Moore described a distributed e-commerce system where a transaction service provider (an outsource provider) handles payment processing for a merchant's web storefront. The system used "price URLs" on the merchant's site that, when activated, linked to a second server (e.g., a "store builder server") to dynamically generate a "buy page." Crucially, Moore taught that "the location from which the price URL was sent) is, and needs to be, known," allowing the system to hyperlink the customer back to the original site. Moore further disclosed a development tool for merchants to design these buy pages, including configuring header and footer information, fonts, and background colors, thereby enabling the buy page to visually correspond to the source web page. This directly maps to the claimed generation of a composite page that maintains the look and feel of the host site.

Ground 3: Obviousness over Moore in view of Arnold - Claims 1, 4, 9, and 12 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 provided the foundational outsourcing system, as detailed in Ground 2. Arnold supplemented Moore by explicitly teaching solutions for affiliate marketing environments where maintaining website identity was a known problem. Arnold described a "Virtual Outlet" (VO) website that provides links to a third-party merchant's products. To solve the problem of the VO losing traffic, Arnold disclosed that the merchant's web pages for facilitating sales transactions were customized to have the appearance of the referring VO website. Arnold also taught that the customer should be returned to the VO website upon completion of the transaction.
    • Motivation to Combine: A POSITA would combine Moore and Arnold to improve Moore's outsourcing system with Arnold's proven solution for affiliate marketing. Both references addressed the known commercial need to prevent user confusion and retain web traffic when a user transitions from one site to another to complete a purchase. A POSITA would have recognized that the merchant system in Arnold performed the same functions as the outsource provider in Moore and would have been motivated to incorporate Arnold’s explicit teachings on customizing transaction pages into Moore’s distributed e-commerce framework to create a more robust and commercially effective system.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success in combining the known software and web development techniques described in both references to achieve the predictable result of a seamless, co-branded user experience.
  • Additional Grounds: Petitioner asserted that claims 1, 3-9, 11-13, and 15-16 are also obvious over Moore in view of the Digital River Publications, leveraging similar arguments.

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 definition in the ’228 patent specification.
  • "host": Petitioner argued this term should be construed as "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," as defined in the patent.
  • "commerce object": Petitioner argued this term should be construed as a "product, product category, catalog, or dynamic selection," again relying on the patent's explicit definition.

5. Relief Requested

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