PTAB

IPR2018-01014

Shopify Inc v. DDR Holdings LLC

Log In
Key Events
Petition
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 describes a system and method where an outsource provider generates a composite webpage in response to a user clicking a link on a host website. This new webpage, offering a third-party merchant’s product, maintains the "look and feel" of the host website, preventing the user from feeling they have been redirected to a different online location.

3. Grounds for Unpatentability

Ground 1: Obviousness over Digital River Publications - Claims 1-8 and 11-18 are obvious over the Digital River Publications.

  • Prior Art Relied Upon: A collection of six publications describing the Digital River Secure Sales System (DR SSS), including the Digital River Brochure (Summer 1997), the April 1997 Website, the December 1997 Website, and webpages for Digital River customers Corel and 21 Software Drive (1998).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the Digital River Publications collectively disclose every element of the challenged claims. The DR SSS was an outsource provider that enabled merchants to sell products online while the transaction was handled "behind the scenes." The publications explicitly taught customizing the web presentation so that "customers will feel that they've never left your page," directly mapping to the core limitation of generating a composite page that visually corresponds to the source page. This system involved receiving a request from a source page URL, retrieving pre-stored data, and serving a webpage offering products from a third-party merchant.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would have viewed these publications as a combined teaching because they all describe a single, common system (the DR SSS). Each publication touts different benefits and features of this same system, providing an explicit reason to combine their teachings to understand the full scope of its functionality.
    • Expectation of Success: The publications demonstrated an existing, commercially successful system, providing a POSITA with a strong expectation of success in implementing the claimed methods.

Ground 2: Anticipation by Moore - Claims 1-8 and 11-18 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 discloses a distributed e-commerce system that anticipates every limitation of the challenged claims. In Moore, a transaction service provider (an outsource provider) handles payment processing initiated from a merchant’s storefront. The merchant embeds "price URLs" on its website which, when clicked, send a request to the provider's server. This server then automatically generates and serves a "buy page" for the associated product. Moore’s development tools allowed merchants to design these buy pages with header and footer information that corresponded to the source website, thereby preserving its overall appearance. The system also disclosed shopping cart functionality, processing payments, and the necessary relationships between the website owner, merchant, and server owner.

Ground 3: Obviousness over Moore in view of Arnold - Claims 1, 3, 11, and 13 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: This ground asserted that Moore’s outsourcing framework, when combined with Arnold’s affiliate marketing teachings, renders the claims obvious. Arnold discloses a system where "content-rich" websites (hosts) direct traffic to "selling sites" (merchants) using co-branded webpages that maintain the host's appearance to facilitate sales. Arnold explicitly teaches using URLs that identify the referring host so that it can be paid a commission. While Moore provides the base system of an outsource provider generating look-alike pages, Arnold supplements this by teaching an established business model for such a system, including presenting an electronic catalog of a merchant's items on a host site.
    • Motivation to Combine: Petitioner argued a POSITA would have been motivated to combine these references to improve upon the systems of both. Moore teaches how to implement an outsourced e-commerce system, while Arnold teaches what kind of affiliate marketing system to build. A POSITA would have recognized the advantages of shifting the processing tasks described in Arnold (serving customized pages, processing sales, reporting) to a third-party outsource provider as taught by Moore to create a more efficient and scalable system.
    • Expectation of Success: Both references describe functional e-commerce solutions, and combining them involved applying a known outsourcing model (Moore) to a known affiliate business model (Arnold), leading to a high expectation of success.

  • Additional Grounds: Petitioner asserted an additional obviousness challenge against claims 1-8 and 11-18 based on the combination of Moore and the Digital River Publications.

4. Key Claim Construction Positions

  • "merchants": Petitioner argued the term should be construed as "producers, distributors, or resellers of the goods to be sold through the outsource provider," consistent with the patent’s definition.
  • "commerce object": Petitioner proposed this term be construed as a "product, product category, catalog, or dynamic selection," as defined in the patent’s specification.
  • "commission": Petitioner argued for a broad construction of "money earned by a host for sales of a third party merchant's products through the host's website." This construction would not be limited to any particular business arrangement, which is critical for mapping prior art that discusses revenue sharing or service fees rather than a specific commission structure.

5. Relief Requested

  • Petitioner requests the institution of an inter partes review and the cancellation of claims 1-5, 7-8, and 11-18 of the ’825 patent as unpatentable under 35 U.S.C. §102 and §103.