Shopify Inc v. DKR Consulting LLC

1. Case Identification

• Case #: IPR2025-00133
• Patent #: 11,488,237
• Filed: November 22, 2024
• Petitioner(s): Shopify Inc.
• Patent Owner(s): DKR Consulting LLC
• Challenged Claims: 1-20

2. Patent Overview

• Title: Generating an Electronic Commerce Store
• Brief Description: The ’237 patent describes a system comprising an application server configured to generate and distribute a product listing widget. The server controls a transaction processing service to handle payments for products purchased via the widget.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1-4, 7-12, and 15-18 under §102 by Johnston

• Prior Art Relied Upon: Johnston (Application # 2010/0114739).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Johnston discloses every limitation of the challenged claims. Johnston’s “platform server 110” is the claimed “application server,” which controls a “micro payment service 145” corresponding to the “transaction processing service.” The server uses “storage 106” to store product information, including multimedia content and metadata. Petitioner asserted that Johnston’s user interface for creating a “Storefront” is a “widget builder resource” that generates a “product listing.” This listing, displayed as an embeddable widget, includes a product preview and an “Add to Cart” button, which functions as the claimed “clickable link” comprising a “buy button.” Johnston’s system then distributes this widget to websites (e.g., Facebook) or native applications, receives an indication of purchase when the button is clicked, and provides a checkout screen to a remote computing device to complete the transaction.
  • Key Aspects: Petitioner contended that Johnston’s detailed disclosure of a complete, widget-based e-commerce platform, from product listing creation to payment processing, directly reads on all elements of the independent claims.

Ground 2: Obviousness of Claims 1-4, 7-12, and 15-18 under §103 over Wiser and Dierks

• Prior Art Relied Upon: Wiser (Patent 6,868,403) and Dierks (Application # 2008/0183593).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Wiser discloses most elements of the claimed system. Wiser’s online music distribution system includes an application server (a combination of its content manager, delivery server, and HTTP server) that controls a payment processing system and stores product data in a master media file system. Wiser also discloses a web-based product listing with a preview and a “Place Order” (buy) button. However, Wiser is silent on how this product listing is generated. Petitioner argued Dierks remedies this gap by teaching an “HTML generator” that functions as the claimed “widget builder resource.” Dierks’s generator is a tool that receives product parameters (e.g., description, price) and automatically generates embeddable HTML code for a product listing with a buy button.
  • Motivation to Combine: A POSITA would combine Wiser and Dierks to improve the efficiency of Wiser’s system. Wiser provides the overall e-commerce architecture but lacks a specified method for creating its numerous product listings. Dierks provides an explicit solution for this exact problem: an automated tool to generate such listings. Since both references are in the e-commerce field, a POSITA would look to a tool like Dierks’s generator as an obvious and logical way to implement the product listing feature in Wiser’s system, avoiding the impracticality of manually coding each one.
  • Expectation of Success: The combination would have yielded predictable results. Implementing a known code generator (Dierks) into an online sales platform (Wiser) to automate the creation of product listings is a straightforward application of known technologies to achieve a known goal.

Ground 3: Obviousness of Claims 5, 6, 13, 14, 19, and 20 under §103 over Wiser, 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: This ground addresses the remaining claims, which require the product listing to include a “share link.” Petitioner first established the base Wiser-Dierks system as described in Ground 2. Petitioner then argued that Chang teaches the missing element by disclosing the inclusion of a “share button” within widget code for an item page. When a user clicks Chang’s share button, they are prompted to specify where they want to embed the widget, thereby distributing it to other locations like social media sites.
  • Motivation to Combine: A POSITA would be motivated to add Chang’s share functionality to the Wiser-Dierks system to enable viral marketing. By including a share button on the product listing, sellers could easily promote their products across various platforms, thereby expanding their market reach. This was a common and desirable feature for online commerce at the time.
  • Expectation of Success: Adding a share button to an existing product listing widget was a well-understood and routine programming task. The function and predictable result—allowing users to share the content—was clear from Chang’s teachings.

• Additional Grounds: Petitioner asserted that claims 5, 6, 13, 14, 19, and 20 are also obvious over Johnston alone, arguing a POSITA would have found it obvious to add a share link to individual product listings within Johnston’s storefront to allow promotion of specific items rather than the entire store.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be inappropriate. Although Johnston, Dierks, and Chang were of record during prosecution, the Examiner’s consideration was "silent" and not "well-developed." Petitioner contended the Examiner provided no substantive analysis of these references and therefore committed a material error by overlooking their specific, persuasive teachings that demonstrate the unpatentability of the challenged claims.

5. Relief Requested

• Petitioner requests institution of IPR and cancellation of claims 1-20 of the ’237 patent as unpatentable.