PTAB

IPR2019-00439

PRicelineCom LLC v. DDR Holdings LLC

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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 an e-commerce system where a host website, containing links for products offered by a third-party merchant, directs a user to a webpage generated by an outsource provider. This generated webpage maintains the "look and feel" of the host website while presenting the third-party merchant's product information and purchasing options.

3. Grounds for Unpatentability

Ground 1: Obviousness over Digital River Publications - Claims 1, 3-5, 7-9, 11-13, 15, and 16 are obvious over the Digital River Publications.

  • Prior Art Relied Upon: A collection of six printed publications describing the Digital River Secure Sales System (DR SSS), including the Digital River Brochure (Brochure), the April 1997 Website, the December 1997 Website, and web pages for Digital River customers Corel and 21 Software Drive.
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the Digital River Publications collectively disclosed an outsource e-commerce system (the DR SSS) that performed all the functions claimed in the ’228 patent. The publications described an "integrated back-end commerce system tailored just to your site so your customers will feel that they’ve never left your page." This system allowed network members to link between sites for cross-selling while the outsource provider handled the transaction "behind the scenes," explicitly including "customization of Web presentation" to maintain the host site's appearance. This directly taught the central concept of serving a composite webpage that visually corresponds to the source page while offering a third-party product.
    • Motivation to Combine: A POSITA would have viewed the various Digital River Publications as a combined teaching because they all described a single, common commercial system (the DR SSS). Each publication touted different benefits of the same underlying service, providing an explicit reason to consider their teachings together to understand the full functionality of the system.
    • Expectation of Success: Success was expected because the Digital River system was an existing, operational commercial product that already implemented the claimed functionality.

Ground 2: Anticipation over Moore - Claims 1, 3-5, 7-9, 11-13, 15, and 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 element of the challenged claims. Moore described a distributed e-commerce system with an outsource provider (a "transaction service provider") that generates a "buy page" in response to a user clicking a "price URL" on a merchant's website. Crucially, Moore’s system included a tool allowing merchants to design their storefronts and buy pages, specifying consistent header and footer information (e.g., company name and logo) for use on every page. Petitioner asserted this taught the generation of a composite page with "visually perceptible elements visually corresponding to the source web page," as the generated buy page would inherently carry over the look and feel of the source site via the shared header and footer.

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: This ground used Moore as the primary reference for an outsourced e-commerce framework and added Arnold to supply more explicit teachings. Arnold addressed the problem in affiliate marketing where referring a customer to a second website causes the first site to lose traffic and its brand identity. Arnold's solution was to have the merchant's system serve customized web pages that matched the appearance of the referring affiliate ("Virtual Outlet") website. Petitioner argued that Arnold explicitly taught modifying the look and feel of a destination sales page to match the source referral page.
    • Motivation to Combine: A POSITA would combine Moore and Arnold because both addressed e-commerce solutions for selling products through third-party websites and recognized the need to maintain the original site's identity. Arnold's specific solution to the look-and-feel problem was a known technique to solve a known problem, and it would have been obvious to apply Arnold's teachings to improve the more general outsourced e-commerce system of Moore. The functionality in Arnold was complementary to that in Moore.
    • Expectation of Success: A POSITA would have a reasonable expectation of success in combining the systems, as it involved applying a known web design customization technique (from Arnold) to a known transactional system (from Moore).

  • Additional Grounds: Petitioner asserted an additional obviousness challenge against all claims based on Moore in view of the Digital River Publications, relying on similar arguments that the functionality was well-known and that the systems were conceptually aligned.

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 definition provided in the ’228 patent specification.
  • "host": Petitioner argued the 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 ’228 patent.
  • "commerce object": Petitioner argued the term should be construed as a “product, product category, catalog, or dynamic selection,” per the definition in the ’228 patent.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and 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.