PTAB

IPR2019-00436

PRicelineCom LLC 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 describes a system and method where an outsource provider generates and serves a composite web page to a consumer. This occurs after the consumer clicks on a merchant's advertisement on a third-party "host" website, and the generated page retains the "look and feel" of the host website while presenting the merchant's e-commerce offering.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1, 3, 5, 7-9, 11-13, 15, and 16 under §102 by Loshin

  • Prior Art Relied Upon: Loshin (“Selling Online with First Virtual,” a 1996 publication).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Loshin disclosed all elements of the challenged claims. Loshin described the “InfoHaus” system by First Virtual, an outsource provider that allowed sellers to offer products without hosting their own servers. When a user on a host web page (e.g., a seller's page on InfoHaus) clicked a link associated with a product ("commerce object"), Loshin taught that the system automatically served a transaction page. Petitioner asserted that the source page and the resulting transaction page in Loshin’s examples (e.g., the "Darren New" storefront) included the same seller name and similar textual composition, thereby satisfying the limitation of a composite page with "visually perceptible elements visually corresponding to the source web page." Dependent claims relating to electronic catalogs and search functions were also allegedly taught by Loshin's description of creating product listings and using search parameters to find items.
    • Key Aspects: This ground asserted that Loshin, a single reference from 1996, described a complete two-party outsourced e-commerce system (seller and outsource provider) that performed every step of the claimed method and embodied the claimed apparatus.

Ground 2: Obviousness of Claims 1, 3, 5, 7-9, 11-13, 15, and 16 under §103 over Loshin in view of the InfoHaus Documents

  • Prior Art Relied Upon: Loshin (a 1996 publication), and the InfoHaus Documents (including InfoHaus Guide, HelpMeister, and Seller Program webpages, available by June 1997).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground supplemented the teachings of Loshin with additional, contemporaneous documentation for the same InfoHaus system. Petitioner contended that to the extent any claim element was not explicitly detailed in Loshin, the InfoHaus Documents filled the gap. For instance, the InfoHaus Documents provided explicit guidance on creating sub-pages for individual products, customizing pages to visually correspond to a main storefront, and creating hierarchical product catalogs with selectable URLs. These documents allegedly made it obvious to implement the claimed system with features like a plurality of visually corresponding elements (e.g., logos, layouts) and hierarchical links to product subsets.
    • Motivation to Combine: A POSITA would combine these references because they all described the same single system, InfoHaus, and were presented together on the First Virtual website. The InfoHaus Documents provided practical implementation details for the system conceptually described in Loshin, and a POSITA would naturally consult all available documentation for a single product to understand its full capabilities.
    • Expectation of Success: A POSITA would have a high expectation of success, as the combination merely involved using different instructional documents to implement a single, existing commercial system (InfoHaus).

Ground 3: Obviousness of Claims 1, 3, 5, 7-9, 11-13, 15, and 16 under §103 over Loshin in view of Moore

  • Prior Art Relied Upon: Loshin (a 1996 publication) and Moore (Patent 6,330,575).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground argued that it would have been obvious to combine the outsourced e-commerce framework of Loshin with the advanced webpage design and customization features taught by Moore. Moore disclosed a distributed e-commerce system with a "store builder server" and a development tool for designing "buy pages." This tool allowed merchants to configure visual elements like font, color, background images, and consistent headers/footers across all pages, including the buy page generated after a link activation. Petitioner argued that applying Moore's explicit teachings on creating visual correspondence (e.g., using a consistent header/footer with a company logo on both the storefront and the buy page) to Loshin’s InfoHaus system would have rendered the claims obvious.
    • Motivation to Combine: A POSITA would combine Loshin and Moore because both addressed the same technical problem of facilitating outsourced e-commerce. A POSITA implementing Loshin's system would have been motivated to incorporate Moore’s more sophisticated tools for webpage customization to improve the user experience and create a more seamless "look and feel," a known goal in web design at the time. Moore taught precisely how to maintain the appearance of a referring page on a dynamically generated transaction page.
    • Expectation of Success: A POSITA would have expected success in combining the known concept of an outsourced e-commerce system (Loshin) with known web design tools for ensuring visual consistency (Moore), as it involved the application of predictable computer and web technologies.

4. Key Claim Construction Positions

  • "merchants": Petitioner proposed this term be construed as "producers, distributors, or resellers of the goods to be sold through the outsource provider," consistent with the patent's explicit definition. The patent also noted that the "host" can also be the "merchant."
  • "host": Petitioner proposed this term 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," based on another explicit definition in the specification.
  • "commerce object": Petitioner proposed this term be construed as a "product, product category, catalog, or dynamic selection," again relying on a definition provided directly in the ’228 patent.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1, 3, 5, 7-9, 11-13, 15, and 16 of the ’228 patent as unpatentable under 35 U.S.C. §§ 102 and 103.