PTAB

IPR2025-00131

Shopify Inc v. DKR Consulting LLC

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Petition
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1. Case Identification

2. Patent Overview

  • Title: System and Method for Generating and Embedding a Buy Button
  • Brief Description: The ’785 patent discloses systems and methods for generating and embedding an e-commerce "buy button" into a website. The technology involves a server-side "widget builder resource component" that receives item information, generates code for the button, and integrates with transaction payment processing services.

3. Grounds for Unpatentability

Ground 1: Claims 1-20 are obvious over Dierks in view of Johnston

  • Prior Art Relied Upon: Dierks (Application # 2008/0183593) and Johnston (Application # 2010/0114739).
  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that Dierks teaches the fundamental architecture of the challenged claims. Dierks discloses a payment processing system on a "first server" operated by a "buy button provider" that includes an "HTML Generator." Petitioner asserted this generator functions as the claimed "embeddable buy button builder" because it receives item parameters (e.g., name, price, description) via a web form and generates embeddable HTML code for an "add to cart" button. This system allows a merchant to place a purchase button on a separate website (executed by a "second server") while the payment provider's server handles the e-commerce functionality, such as the shopping cart and checkout process.

      Petitioner contended that while Dierks shows a product image on the merchant's webpage, it is silent on how that image is provided to the button builder system. Johnston was argued to render this limitation obvious. Johnston explicitly discloses a user interface that allows a seller to create an e-commerce storefront by entering product information, including uploading an image file (a "thumbnail") to serve as the "representation of the item." Petitioner mapped this teaching to the limitation of "receiving... a representation of the item." The combination of Dierks's back-end system and Johnston's front-end user interface for item setup was alleged to disclose all limitations of independent claims 1, 7, and 14.

      Dependent claims were addressed by alleging Dierks teaches their additional limitations, including generating the button with JavaScript (claim 2), providing a checkout screen with a payment mechanism (claim 3), using third-party transaction services (claim 4), and selling physical goods (claim 5). Johnston's teaching of uploading a static image was mapped to claims 6, 11, and 18.

    • Motivation to Combine: Petitioner asserted a POSITA would combine Dierks and Johnston to improve Dierks's system. Both references are in the same field of e-commerce and aim to simplify online store creation for non-technical users. A POSITA implementing Dierks's system, which displays an image but does not specify its origin, would have naturally looked to known techniques for user-friendly image handling. Johnston provides precisely such a solution: a simple interface for a seller to upload their own product image. Combining Johnston's image upload functionality with Dierks's button generator was presented as an obvious application of a known technique to improve a known system, directly aligning with Dierks's goal of assisting users with limited time and computer skills.

    • Expectation of Success: Petitioner argued a POSITA would have had a high expectation of success. Integrating a file-upload feature into a web form, as taught by Johnston, was a routine and well-understood programming task at the time. The outcome—receiving an image file on the server and generating HTML to display it—was entirely predictable and would not have required undue experimentation.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under §325(d) would be inappropriate. It acknowledged that Dierks and Johnston were cited during the original prosecution of the ’785 patent.
  • However, Petitioner contended the Examiner committed a material error by failing to substantively analyze or apply the references in combination. The petition asserted that the Examiner never discussed the specific teachings of these references, which allegedly disclose the very limitations the Examiner found absent in other prior art combinations. Therefore, Petitioner argued the Board should not afford deference to the Examiner's allowance.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-20 of Patent 10,846,785 as unpatentable.