PTAB

IPR2019-00438

PRicelineCom LLC v. DDR Holdings LLC

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Petition
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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 where a user on a "host" website can click a link to a third-party merchant's product. An outsource provider then generates and serves a new web page that combines the product information with the "look and feel" of the host website, preventing the user from feeling they have been redirected to a different site to complete 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, and websites from April 1997, December 1997, and various Digital River customers (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 e-commerce provider that enabled merchants to sell products online without the user feeling they had "left your page." The publications described customizing the web presentation so the DR SSS "remains behind the scenes," creating a transaction environment surrounded by the "look and feel" of the host merchant's identity. This system received a request from a host page, processed the transaction, and served a composite page visually corresponding to the source page, including for dependent claims features like shopping carts and commission payments to network members.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine the teachings of the various Digital River Publications because they all described a single, common system—the DR SSS. Each publication touted different benefits of the same underlying system, providing an explicit reason to view their disclosures as a combined teaching.
    • Expectation of Success: A POSITA would have a high expectation of success, as the publications described a commercially available and operational system, not a theoretical concept.

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 contended that Moore disclosed every limitation of the challenged claims. Moore described a distributed e-commerce system where a transaction service provider acts as an outsource provider. A merchant could embed "price URLs" on its website (the host page). When a user clicked a URL, a request was sent to a second server (the outsource provider's server), which would automatically generate and transmit a "buy page." Moore explicitly taught that the outsource provider's server would know the location from which the URL was sent to hyperlink the customer back, satisfying the source page recognition limitation. Furthermore, Moore taught that the generated "buy pages" could be designed to include header and footer information from the host site, thereby providing the claimed "visual correspondence" to maintain a consistent user experience. Moore also disclosed shopping cart functionality and the technical capability for the transaction server to process payments and distribute funds, anticipating the dependent claims.

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: This ground asserted that to the extent Moore was found not to teach every element, the combination with Arnold rendered the claims obvious. Moore provided the foundational outsourcing system where a transaction provider generates visually corresponding "buy pages." Arnold addressed affiliate e-commerce problems by disclosing a system where a "content-rich" site (host) links to a "selling site" (merchant). Arnold taught creating co-branded order pages that have the appearance of the referring site and using URLs to track which referring site should receive a commission for a sale.
    • Motivation to Combine: A POSITA would combine these references because they addressed complementary aspects of a common problem in e-commerce: selling a second merchant's products on a first merchant's website while maintaining traffic and brand identity. A POSITA would find it advantageous to implement the affiliate and commission-tracking functionalities of Arnold's merchant system within the more robust third-party outsourcing framework taught by Moore.
    • Expectation of Success: Success would be expected because the combination involved applying Arnold's known affiliate marketing and tracking techniques to Moore's established outsourcing architecture, representing a predictable integration of known e-commerce solutions.

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 patent's own definition.
  • "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," again relying on the patent's disclosure.
  • "commerce object": Petitioner argued for the patent's definition: "a product, product category, catalog, or dynamic selection."
  • "commission": 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," without limitation to a specific business arrangement.

5. Relief Requested

  • Petitioner requests the institution of an inter partes review and the cancellation of claims 1-5, 7-8, 11-15, and 17-18 of the ’876 patent as unpatentable.