AmbeRio Inc v. 72lux Inc

1. Case Identification

• Case #: IPR2020-00015
• Patent #: 9,697,563
• Filed: October 4, 2019
• Petitioner(s): Amber.io, Inc. d/b/a Two Tap; Honey Science Corporation
• Patent Owner(s): 72Lux, Inc. d/b/a Shoppable
• Challenged Claims: 1-18

2. Patent Overview

• Title: System and Method for Providing Electronic Commerce Data
• Brief Description: The ’563 patent discloses a universal e-commerce system enabling content publishers to sell merchandise from multiple independent merchants directly on the publisher's website or application. The system aggregates product data into a central merchandise database and provides a single, universal checkout process for the end-user, avoiding redirection to merchant websites.

3. Grounds for Unpatentability

Ground 1: Obviousness over Solonchev and Tarvydas - Claims 1-18 are obvious over Solonchev in view of Tarvydas.

• Prior Art Relied Upon: Solonchev (Application # 2005/0102227) and Tarvydas (Patent 7,328,176).
• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that Solonchev and Tarvydas together disclose all elements of the challenged claims. Solonchev was presented as teaching the "back-end" architecture of a multi-merchant e-commerce system. It discloses an integration server that retrieves merchandise data from a plurality of merchants, stores it in a database, consolidates the data into a common format, and makes the database available to multiple content providers (publishers). Solonchev further describes a process where a user can select items for an electronic shopping cart and complete a purchase from multiple merchants without being redirected away from the publisher's site. However, Petitioner contended that Solonchev explicitly avoids detailing the "front-end" user interface, stating that techniques for shopping carts are "known in the art."

  • Petitioner asserted that Tarvydas supplies these missing front-end user interface details. Tarvydas is directed to a "universal shopping cart" and discloses a system that provides a consistent user interface for ordering products from many different merchants on a publisher's site. Crucially, Tarvydas teaches the generation of two distinct frames: an "e-commerce frame" (a shopping cart showing selected items) and a separate "universal checkout frame" for completing the purchase. The checkout frame in Tarvydas includes an order summary listing the names of the multiple merchants involved in the single transaction, directly mapping to key limitations of the ’563 patent's independent claims.

  • Motivation to Combine: Petitioner argued that a person of ordinary skill in the art (POSITA) would be motivated to combine the references because Solonchev expressly directs a POSITA to look to "known techniques" for implementing the user interface for its back-end system. Tarvydas provides exactly such a known front-end solution. Both references address the same long-standing problems in e-commerce: preventing the loss of web traffic from publisher sites due to redirection and providing a seamless multi-merchant shopping experience. A POSITA would combine Tarvydas's established user interface with Solonchev's back-end architecture to create a complete, functional, and improved universal shopping system.

  • Expectation of Success: Petitioner asserted a high expectation of success in combining the two systems. The references are highly complementary, with Solonchev providing the back-end processing and Tarvydas providing the user-facing front-end. Since their goals and underlying technical approaches are closely aligned, a POSITA would have found it predictable and straightforward to integrate Tarvydas's interface with Solonchev's server architecture to achieve the claimed invention.

4. Key Claim Construction Positions

• "e-commerce frame" vs. "universal checkout frame": Petitioner argued for constructions that maintain a clear distinction between these two terms, asserting this was the basis for allowance during prosecution.
  • The term "e-commerce frame" was construed as a "shopping cart or bag listing one or more merchandises selected by the user for purchase." This corresponds to the initial view of selected items before proceeding to payment.
  • The term "universal checkout frame" was construed as a "component that allows a user to purchase products from different merchants." This corresponds to the separate, subsequent interface where payment and shipping information is entered to finalize a multi-merchant order.
• Importance: This distinction was central to Petitioner's argument. The patent examiner allowed the claims only after they were amended to recite both a distinct "e-commerce frame" (as a shopping bag) and a subsequent "universal checkout frame." Petitioner argued that the combination of Solonchev (teaching a basic shopping cart) and Tarvydas (teaching a separate, detailed universal checkout page) explicitly discloses both of these distinct, required elements.

5. Relief Requested

• Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-18 of the ’563 patent as unpatentable under 35 U.S.C. §103.