DDR Holdings, LLC

Patent Trials and Appeals Board

Oct 26, 2020

IPR2018-01012 (P.T.A.B. Oct. 26, 2020)

Trials@uspto.gov Paper 35
571-272-7822 Date: October 26, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SHOPIFY, INC., PRICELINE.COM LLC, and BOOKING.COM B.V.,
Petitioner,

v.

DDR HOLDINGS, LLC,
Patent Owner.
____________

IPR2018-01012
Patent 9,043,228 B1
____________

Before CARL M. DEFRANCO, PATRICK M. BOUCHER, and
ALYSSA A. FINAMORE, Administrative Patent Judges.

BOUCHER, Administrative Patent Judge.

DECISION
Granting Petitioner’s Request on
Rehearing of Final Written Decision
37 C.F.R. § 42.71(d)

I. INTRODUCTION
In our Final Written Decision, the Board held that, based on a
preponderance of the evidence, Petitioner had shown that claims 1, 3, 7–9,
11, 15, and 16 of U.S. Patent No. 9,043,228 B1 are unpatentable. Paper 33
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(“Dec.”), 38–39. The Board additionally held that Petitioner had not shown
that claims 4, 5, 12, and 13 are unpatentable. Id. Petitioner requests
rehearing solely on Petitioner’s ground that challenges those claims as
unpatentable over the Digital River Publications. Paper 34 (“Req. Reh’g”),
1. “Petitioners do not seek rehearing of the Board’s other findings,
including with regard to other prior art.” Id.
For the reasons discussed below, we grant Petitioner’s Request for
Rehearing, and modify our Final Written Decision accordingly.

II. LEGAL STANDARD
A request for rehearing “must specifically identify all matters the
party believes the Board misapprehended or overlooked, and the place where
each matter was previously addressed in a motion, an opposition, or a reply.”
37 C.F.R. § 42.71(d). The burden of showing a decision should be modified
on a request for rehearing lies with the party challenging the decision. Id.

III. ANALYSIS
In its Rehearing Request, Petitioner highlights certain findings made
in the Final Written Decision with respect to independent claim 1 and the
disclosure of the Digital River Publications. Req. Reh’g 3–4. Specifically,
we found that “the Digital River Publications describe that the DR SSS
brought together manufacturers and dealers to enable them to sell products
via the Internet, with the DR SSS providing an integrated back-end
commerce system.” Dec. 18. In addition, we found that the Digital River
Publications teach that the DR SSS causes display of the recited
“information associated with the commerce object . . . , which commerce
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object includes at least one product available for sale through the computer
system,” at least in part because “the Digital River Publications teach
generation and transmission of a second web page to a user in allowing the
user to shop for products of another merchant.” Id. at 19–21.
Claim 4 depends from independent claim 1 and recites that “the
commerce object associated with the URL that has been activated comprises
information defining an electronic catalog having a multitude of products
offered for sale by the merchant through a website of an outsource provider,
and wherein the composite page contains one or more selectable URLs
connecting a hierarchical set of additional web pages of the outsource
provider website, each pertaining to a subset of the product offerings in the
catalog.” Ex. 1001, 28:4–12. In discussing this claim in the Final Written
Decision, we stated that “Petitioner does not sufficiently address the claim’s
requirement that the selectable URLs connect ‘a hierarchical set of
additional web pages of the outsource provider website,’ each of which
pertains to a subset of product offerings.” Dec. 26. Petitioner disagrees with
this characterization of the content of its original Petition and supporting
evidence, particularly the Declaration of its witness, Michael I. Shamos,
Ph.D. Req. Reh’g 3–11.
According to Petitioner, the Petition “organized its showing of
[unpatentability] of claim 4 into two parts corresponding to the claim’s two
separate ‘wherein’ clauses.” Id. at 4. The Final Written Decision
highlighted a perceived deficiency in the Petition’s analysis of the second of
those clauses. See Dec., dissenting opinion at 2 (“As for the first ‘wherein
clause, the majority appears to find Petitioner’s showing is sufficient.”).
With respect to the second “wherein” clause, Petitioner asserts that “[t]he
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Petition and accompanying expert declaration demonstrated that the Digital
River Publications teach a composite web page that displays commerce
object information associated with one or more products of the electronic
catalog.” Req. Reh’g 7–8. In particular, Petitioner highlights the Petition’s
argument that the Digital River Publications disclose that the composite web
page can be a buy page, as shown in Exhibit 1009. Id. (citing Paper 8
(“Pet.”), 23).
A portion of Exhibit 1009 is reproduced below.

The portion of Exhibit 1009 reproduced above illustrates the structure of the
21 Software Drive web page, notably showing “add to cart,” “view cart,”
“modify cart,” and “check out” links. Ex. 1009. In the context of this
drawing, Petitioner specifically contends that “the panel majority overlooked
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or misapprehended Petitioners’ further showing that the Digital River
Publications’ buy page identified above satisfies all of the added elements of
the second ‘wherein’ clause of claim 4.” Id. at 8. Addressing the
hierarchical set of additional web pages highlighted in the Final Written
Decision, Petitioner draws our attention to the presence of the “add to cart,”
“view cart,” “modify cart,” and “check out” links:
The links do connect a hierarchical set of additional pages,
namely, pages that are accessed serially by selecting these
progressive links within a buy sequence to “add,” “view,”
“modify” and “check out,” where each page visited by selecting
these links pertains to a subset (e.g., one or more) of the product
offerings in the electronic catalog that the user has selected for
purchase.

Id. at 9 (citing Pet. 23). Petitioner supports this argument by providing a
reference to where it is made in the original Petition, as well as supporting
evidence that includes testimony by Dr. Shamos. See Pet. 23 (citing Ex.
1009, 1; Ex. 1002 ¶ 105; Ex. 1006, 3–6).
Petitioner’s argument on rehearing is persuasive, particularly under
the broadest-reasonable-interpretation standard of claim construction applied
in this proceeding. See Dec. 12–13 (Final Written Decision noting that, for
an inter partes review proceeding based on a petition filed prior to
November 13, 2018, “the Board interprets claims of an unexpired patent
using the broadest reasonable construction in light of the specification of the
patent in which they appear”). Petitioner clarifies that the Petition identifies
Exhibit 1009’s buy page as corresponding to the “composite web page
contain[ing] one or more selectable URLs” recited in the claim and identifies
the “view cart,” “modify cart,” and “check out” pages linked to the “buy”
page as corresponding to the recited “hierarchical set of additional pages.”
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See Req. Reh’g 11 (asserting “the Petition demonstrated that the ‘view cart,’
‘modify cart,’ and ‘checkout’ links satisfy the second ‘wherein’ clause”).
In doing so, Petitioner points us to specific portions of its Petition that
we find provide sufficient support for this position. Specifically, the Petition
cites to paragraph 105 of Dr. Shamos’s Declaration, and both the Petition
and that Declaration cite multiple times to page 1 of Exhibit 1009. See Pet.
23; Ex. 1002 ¶ 105. In describing the correspondence to the “hierarchical
set of additional pages,” Dr. Shamos testifies that “[t]he buy pages also
provide a link (i.e., selectable URL) to a shopping cart, which, as described
by the 21 Software Drive website, allows a user to add products to a
shopping cart, view a shopping cart, modify a shopping cart, and check out.”
Ex. 1002 ¶ 105 (citing Ex. 1009, 1). We credit this testimony, which is
unrebutted on the record before us. Indeed, Dr. Shamos’s testimony that a
skilled artisan would have understood Exhibit 1009’s sequence of URLs as
satisfying the claimed “hierarchical set of additional webpages” is consistent
with the manner in which the ’228 patent itself describes its shopping cart
functionality—namely, as nothing more than the ability to “ADD TO
CART,” “VIEW SHOPPING CART,” “UPDATE QUANTITIES,” and
“CHECK OUT.” Ex. 1001, Fig. 22.
Petitioner thus demonstrates that the buy page shown in Exhibit 1009,
i.e., the recited “composite web page,” contains one or more selectable
URLs connecting the “view cart,” “modify cart,” and “check out” pages to
the buy page, i.e., the recited “hierarchical set of additional web pages,” as
required by the claim. Because each of those pages “pertain[s] to a subset of
the product offerings in the electronic catalog,” such as those selected for
purchase, Petitioner demonstrates, by a preponderance of the evidence, that
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each limitation of the second “wherein” clause of claim 4 is met by the
Digital River Publications.
Claim 5 depends from claim 4 and recites “automatically with the
computer system, (i) accepting search parameters inputted at the visitor
computing device, (ii) using said parameters to search for specific products
within the catalog, and (iii) serving the results for display on the visitor
computing device.” Ex. 1001, 28:13–18. Because of the dependence from
claim 4, the Board did not specifically address Petitioner’s reasoning as
applied to this claim in the Final Written Decision. Dec. 26 (“Claim 5
depends from claim 4, and Petitioner’s showing is accordingly similarly
deficient.”).
In addressing this limitation, the Petition observes that the Corel
website shown in Exhibit 1007 “provided a structured search that allowed a
user to search for software by product, platform, or program.” Pet. 24. Dr.
Shamos provides testimonial support for Petitioner’s contention that a
person of ordinary skill in the art would have understood the Digital River
Publications to disclose a search engine as part of a web storefront for
product searching. Id.; Ex. 1002 ¶ 106. Dr. Shamos also provides support
for Petitioner’s assertion that “[n]ormal operation of a search engine in the
eyes of a [person of ordinary skill in the art] would provide search results as
required by the second clause of Claim 5.” Pet. 24; Ex. 1002 ¶ 106. We
credit this support, which is sufficient for these limitations. We accordingly
conclude that Petitioner makes a sufficient showing with respect to claim 5.
Claims 12 and 13 depend from claim 11 and otherwise include
limitations that generally parallel the limitations recited in claims 4 and 5.
Ex. 1001, 29:21–30:9. Petitioner’s arguments are thus persuasive also with
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respect to these claims, and we accordingly conclude that Petitioner makes a
sufficient showing with respect to these claims.

IV. CONCLUSION
In light of these considerations, we modify our Final Written Decision
to make the following conclusions. 1
Claims 35
U.S.C. §
Reference(s) Claims Shown
Unpatentable
Claims Not
Shown
Unpatentable
1–5, 7, 8,
11–15, 17,
18
103(a) Digital River
Publications
1–3, 5, 7, 8,
11–13, 15, 17,
18
4, 14
1–5, 7, 8,
11–15, 17,
18
102(a) Moore 1–5, 7, 8, 11–
15, 17, 18
1, 7, 11, 17 103(a) Moore and
Arnold
1, 7, 11, 17
1–5, 7, 8,
11–15, 17,
18
103(a) Moore and the
Digital River
Publications
1–5, 7, 8, 11–
15, 17, 18
Overall
Outcome
1–3, 5, 7, 8,
11–13, 15, 17,
18
4, 14

1 Should Patent Owner wish to pursue amendment of the challenged
claims in a reissue or reexamination proceeding subsequent to the
issuance of this decision, we draw Patent Owner’s attention to the April
2019 Notice Regarding Options for Amendments by Patent Owner
Through Reissue or Reexamination During a Pending AIA Trial
Proceeding. See 84 Fed. Reg. 16,654 (Apr. 22, 2019). If Patent Owner
chooses to file a reissue application or a request for reexamination of the
challenged patent, we remind Patent Owner of its continuing obligation to
notify the Board of any such related matters in updated mandatory
notices. See 37 C.F.R. §§ 42.8(a)(3), (b)(2).
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V. ORDER
It is
ORDERED that Petitioner’s Request for Rehearing is granted;
FURTHER ORDERED that, based on a preponderance of the
evidence, claims 1–3, 5, 7, 8, 11–13, 15, 17, and 18 of U.S. Patent No.
9,639,876 B1 have been shown to be unpatentable; and
FURTHER ORDERED that parties to this proceeding seeking judicial
review of our decision must comply with the notice and service requirements
of 37 C.F.R. § 90.2.

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PETITIONER:
Michael McNamara
mmcnamara@mintz.com
William Meunier
wameunier@mintz.com
Peter Snell
pfsnell@mintz.com

PATENT OWNER:
Louis Hoffman
donald@valuablepatents.com
Justin Lesko
justinlesko@patentit.com
Ian Crosby
icrosby@susmangodfrey.com