Shopify Inc v. DKR Consulting LLC

1. Case Identification

• Case #: IPR2025-00132
• Patent #: 11,157,995
• Filed: November 22, 2024
• Petitioner(s): Shopify Inc.
• Patent Owner(s): DKR Consulting LLC
• Challenged Claims: 1-14

2. Patent Overview

• Title: System for Generating an E-Commerce Store with Social Media Integration
• Brief Description: The ’995 patent describes a system using a server to generate and embed a product listing widget into a website and social media network. The server also controls a transaction service to process payments for purchases made via the product listing.

3. Grounds for Unpatentability

Ground 1: Claims 1-14 are obvious over Johnston in view of Dierks

• Prior Art Relied Upon: Johnston (Application # 2010/0114739) and Dierks (Application # 2008/0183593).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Johnston taught nearly all elements of the challenged claims. Johnston’s system includes a "platform server" (the application server) that generates embeddable "Storefronts" which are widget-based product listings. This system uses a "micro payment service" (the transaction service), stores product data and images, and allows the Storefronts to be embedded into websites and social media profiles like Facebook. Petitioner asserted the only key feature missing was the specific user flow for checkout. In Johnston, a user adds an item to a cart and must then click a separate cart icon to view the cart contents and proceed. Dierks was introduced to supply this missing step, as it taught displaying a shopping cart screen immediately upon a user clicking the "Add to Cart" button.
  • Motivation to Combine: A POSITA would combine Johnston and Dierks to improve the user experience and streamline the checkout process. Implementing Dierks's immediate cart display would reduce the number of clicks required for a purchase and provide instant confirmation that an item was successfully added to the cart. Petitioner argued this was a simple and predictable improvement for any e-commerce platform.
  • Expectation of Success: Petitioner asserted a high expectation of success. Both references are directed to e-commerce, and the combination involves applying a known user interface improvement from Dierks to an existing e-commerce system in Johnston. This integration would have been well within the skill of a POSITA using routine programming principles.

Ground 2: Claims 1-14 are obvious over Wiser in view of Dierks and Chang

• Prior Art Relied Upon: Wiser (Patent 6,868,403), Dierks (Application # 2008/0183593), and Chang (Application # 2008/0255962).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended this combination of references taught every claimed element. Wiser disclosed the foundational e-commerce system for online music distribution, including an application server (its "music distribution center"), a payment processing system, and storage for media files containing product metadata and images. While Wiser showed a "preview listing" on a web page, it was silent on how these listings were generated. Dierks was added to teach an "HTML generator" that functions as a "widget builder resource" to programmatically create product listings from templates and user-provided data. Finally, since Wiser and Dierks did not explicitly teach embedding these listings into social media, Chang was introduced for its disclosure of systems that distribute e-commerce widgets to social networking sites like Facebook and MySpace.
  • Motivation to Combine: A POSITA would combine these references to create a more efficient and commercially effective system. First, a POSITA would integrate Dierks's generator into Wiser's system to solve the impractical problem of manually coding each product listing. Second, they would incorporate Chang's teachings on social media distribution as an obvious way to expand market reach for the products, a fundamental business goal.
  • Expectation of Success: Petitioner argued success would have been predictable. The combination represented a straightforward aggregation of known elements from the same technical field: an e-commerce backend (Wiser), a tool for generating front-end content (Dierks), and a known method for viral marketing and distribution (Chang).

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) would be inappropriate because the Examiner committed a material error by overlooking key teachings. Petitioner asserted that although Johnston, Chang, and a Dierks-related patent were of record during prosecution, the Examiner never substantively discussed or applied their relevant disclosures against the claims. Furthermore, Petitioner highlighted that the primary reference Wiser (from Ground 2) was not before the Examiner at all, presenting new evidence for review.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-14 of Patent 11,157,995 as unpatentable.