Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`
`Paper: 24
`Entered: June 10, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PRICELINE.COM LLC and BOOKING.COM B.V.,
`Petitioner,
`
`v.
`
`DDR HOLDINGS, LLC,
`Patent Owner.
`____________
`
`IPR2019-00436
`Patent 9,043,228 B1
`____________
`
`
`
`Before CARL M. DEFRANCO, PATRICK M. BOUCHER, and
`ALYSSA A. FINAMORE, Administrative Patent Judges.
`
`FINAMORE, Administrative Patent Judge.
`
`
`
`
`DECISION
`Instituting Inter Partes Review
`and
`Granting Motion for Joinder
`35 U.S.C. §§ 314, 315(c)
`
`
`
`
`571.272.7822
`
`
`
`
`
`
`Paper: 24
`Entered: June 10, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PRICELINE.COM LLC and BOOKING.COM B.V.,
`Petitioner,
`
`v.
`
`DDR HOLDINGS, LLC,
`Patent Owner.
`____________
`
`IPR2019-00436
`Patent 9,043,228 B1
`____________
`
`
`
`Before CARL M. DEFRANCO, PATRICK M. BOUCHER, and
`ALYSSA A. FINAMORE, Administrative Patent Judges.
`
`FINAMORE, Administrative Patent Judge.
`
`
`
`
`DECISION
`Instituting Inter Partes Review
`and
`Granting Motion for Joinder
`35 U.S.C. §§ 314, 315(c)
`
`
`
`
`
`IPR2019-00436
`Patent 9,043,228 B1
`
`
`INTRODUCTION
`I.
`Priceline.com LLC and Booking.com B.V. (collectively “Petitioner”)
`filed a Petition (Paper 3, “Pet.”) requesting inter partes review of claims 1,
`3, 5, 7–9, 11–13, 15, and 16 of U.S. Patent No. 9,043,228 B1 (Ex. 1001),
`hereinafter “the ’228 patent.” Pet. 1. Concurrently with its Petition,
`Petitioner filed a Motion for Joinder (Paper 4, “Mot.”), whereby Petitioner
`seeks to join the instituted inter partes review in Shopify, Inc. v. DDR
`Holdings, LLC, Case IPR2018-01009 (PTAB filed May 3, 2018). Mot. 1.
`DDR Holdings LLC, (“Patent Owner”) waived its Preliminary
`Response. Paper 8, 2. Also, Patent Owner consented to Petitioner’s Motion
`for Joinder. Id.
`For the reasons below, we institute inter partes review of challenged
`claims 1, 3, 5, 7–9, 11–13, 15, and 16 of the ’228 patent. We grant
`Petitioner’s Motion for Joinder and join Petitioner to IPR2018-01009. In
`view of this joinder, we terminate this present proceeding.
`
`
`BACKGROUND
`II.
`A. Related Matters
`
`1. Court Proceedings
`The parties identify the following three pending court proceedings:
`(1) DDR Holdings, LLC v. Priceline.com LLC,
`No. 1:17-cv-498-ER (D. Del. filed May 2, 2017);
`(2) DDR Holdings, LLC v. Booking.com B.V., No. 1:17-cv-499-ER
`(D. Del. filed May 2, 2017); and
`(3) DDR Holdings, LLC v. Shopify, Inc., No. 1:17-cv-501-ER
`(D. Del. filed May 2, 2017).
`
`2
`
`
`
`IPR2019-00436
`Patent 9,043,228 B1
`
`Pet. 1–2; Paper 5, 1. According to Patent Owner, these three proceedings
`are consolidated under No. 1:17-cv-498-ER and are currently stayed.
`Paper 5, 1.
`The parties also identify the following six court proceedings that are
`no longer pending:
`(1) DDR Holdings, LLC v. TicketNetwork, Inc.,
`No. 1:17-cv-500-ER (D. Del. dismissed May 9, 2018);
`(2) DDR Holdings, LLC v. Travel Holdings, Inc.,
`No. 1:17-cv-502-ER (D. Del. dismissed May 9, 2018);
`(3) DDR Holdings, LLC v. World Travel Holdings, Inc.,
`No. 2:13-cv-00646-JRG (E.D. Tex. dismissed Mar. 15, 2016);
`(4) DDR Holdings, LLC v. Digital River, Inc., No. 2:13-cv-00647-
`JRG (E.D. Tex. dismissed Apr. 14, 2014);
`(5) DDR Holdings, LLC v. Hotels.com, L.P., 954 F.Supp.2d 509
`(E.D. Tex. 2013); and
`(6) DDR Holdings, LLC v. Hotels.com. L.P., 773 F.3d 1245
`(Fed. Cir. 2014).
`Pet. 2; Paper 5, 1–4.
`
`
`2. Office Proceedings
`The following twelve proceedings are pending before the Board:
`(1) Priceline Grp. Inc. v. DDR Holdings, LLC,
`Case IPR2018-00482 (PTAB filed Jan. 16, 2018);
`Shopify, Inc. v. DDR Holdings, LLC, Case IPR2018-01008
`(PTAB filed May 3, 2018);
`
`(2)
`
`3
`
`
`
`(5)
`
`(6)
`
`(7)
`
`IPR2019-00436
`Patent 9,043,228 B1
`
`
`(3)
`
`(4)
`
`Shopify, Inc. v. DDR Holdings, LLC, Case IPR2018-01009
`(PTAB filed May 3, 2018);
`Shopify, Inc. v. DDR Holdings, LLC, Case IPR2018-01010
`(PTAB filed May 4, 2018);
`Shopify, Inc. v. DDR Holdings, LLC, Case IPR2018-01011
`(PTAB filed May 2, 2018);
`Shopify, Inc. v. DDR Holdings, LLC, Case IPR2018-01012
`(PTAB filed May 2, 2018);
`Shopify, Inc. v. DDR Holdings, LLC, Case IPR2018-01014
`(PTAB filed May 2, 2018);
`(8) Priceline.com LLC v. DDR Holdings, LLC,
`Case IPR2019-00435 (PTAB filed Dec. 14, 2018);
`(9) Priceline.com LLC v. DDR Holdings, LLC,
`Case IPR2019-00437 (PTAB filed Dec. 14, 2018);
`(10) Priceline.com LLC v. DDR Holdings, LLC,
`Case IPR2019-00438 (PTAB filed Dec. 14, 2018);
`(11) Priceline.com LLC v. DDR Holdings, LLC,
`Case IPR2019-00439 (PTAB filed Dec. 14, 2018); and
`(12) Priceline.com LLC v. DDR Holdings, LLC,
`Case IPR2019-00440 (PTAB filed Dec. 14, 2018).
`Pet. 5–6, Paper 5, 4–5.
`The parties also identify the following two reexamination
`proceedings: (1) Ex parte DDR Holdings, LLC, No. 2009-013987
`(BPAI 2010); and (2) Ex parte DDR Holdings, LLC, No. 2009-013988
`(BPAI 2010). Pet. 4–5; Paper 5, 5. The parties further identify U.S. Patent
`Application Serial No. 15/582,105. Pet. 5; Paper 5, 4. Patent Owner
`
`4
`
`
`
`IPR2019-00436
`Patent 9,043,228 B1
`
`additionally identifies the following five patents: (1) U.S. Patent
`No. 6,629,135 B1; (2) U.S. Patent No. 6,993,572 B2; (3) U.S. Patent
`No. 7,818,399 B1; (4) U.S. Patent No. 8,515,825 B1; and (5) U.S. Patent
`No. 9,639,876 B1. Paper 5, 4.
`
`
`B. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability. Pet. 7.
`
`References
`Loshin1
`
`Loshin and the
`InfoHaus
`Documents3
`
`Claims
`Basis
`35 U.S.C. § 102(b)2 1, 3–5, 7–9, 11–13, 15, and 16
`
`35 U.S.C. § 103(a)
`
`1, 3–5, 7–9, 11–13, 15, and 16
`
`1, 3–5, 7–9, 11–13, 15, and 16
`Loshin and Moore4 35 U.S.C. § 103(a)
`In asserting these grounds of unpatentability, Petitioner relies on a
`Declaration of Peter Kent (Ex. 1002).
`
`
`III. ANALYSIS
`A. Standing to Request Inter Partes Review
`Pursuant to 37 C.F.R. § 42.104(a), Petitioner certifies that the
`’228 patent is available for inter partes review. Pet. 6. Based on the present
`
`
`1 Peter Loshin, Selling Online with . . . First Virtual Holdings Inc. (1996)
`(Exs. 1013A–B) (“Loshin”).
`2 Petitioner asserts Loshin is prior art under 35 U.S.C. § 102(b). Pet. 8.
`3 First Virtual Seller Programs web page (June 1997) (Ex. 1014), First
`Virtual InfoHaus Guide web page (June 1997) (Ex. 1015), and First Virtual
`InfoHaus HelpMeister (June 1997) (Ex. 1016) (collectively “the InfoHaus
`Documents”).
`4 U.S. Patent No. 6,330,575 B1 (Ex. 1010) (“Moore”).
`
`5
`
`
`
`IPR2019-00436
`Patent 9,043,228 B1
`
`record, we determine Petitioner has standing to request inter partes review
`of the ’228 patent.
`
`
`B. Institution of Inter Partes Review
`We have authority, acting under the designation of the Director, to
`determine whether to institute an inter partes review. 35 U.S.C. § 314;
`37 C.F.R. § 42.4(a). We may not authorize an inter partes review to be
`instituted “unless . . . the information presented in the petition filed under
`section 311 and any response filed under section 313 shows that there is a
`reasonable likelihood that the petitioner would prevail with respect to at least
`1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).
`The Petition is substantively identical to the Petition in
`IPR2018-01009. Compare Pet., with Shopify, Case IPR2018-01009 (PTAB
`Aug. 21, 2018) (Paper 8). For the same reasons discussed the Decision
`instituting inter partes review in IPR2018-01009, Petitioner has
`demonstrated a reasonable likelihood of prevailing with respect to at least
`one of the challenged claims of the ’228 patent. Shopify,
`Case IPR2018-01009 (PTAB Nov. 15, 2018) (Paper 10).
`Accordingly, we institute inter partes review of claims 1, 3, 5, 7–9,
`11–13, 15, and 16 of the ’228 patent based on the asserted grounds of
`unpatentability set forth in the present Petition. SAS Inst., Inc. v. Iancu, 138
`S. Ct. 1348, 1359–60 (2018). At this juncture, however, we have not made a
`final determination as to the patentability of any challenged claim or any
`underlying factual or legal issue.
`
`
`6
`
`
`
`IPR2019-00436
`Patent 9,043,228 B1
`
`
`C. Joinder
`At the outset, we determine Petitioner’s Motion for Joinder is timely.
`“Any request for joinder must be filed . . . no later than one month after the
`institution date of any inter partes review for which joinder is requested.”
`37 C.F.R. § 42.122(b). On December 14, 2018, Petitioner filed the Motion
`for Joinder requesting to join IPR2018-01009. The Board instituted an inter
`partes review in IPR2018-01009 on November 15, 2018. Petitioner,
`therefore, requested joinder no later than one month after the institution date
`of IPR2018-01009.
`We have discretion, acting under the designation of the Director, to
`determine whether to join a party to an instituted inter partes review.
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122(a). We may
`join as a party to [an instituted] inter partes review any person
`who properly files a petition under section 311 that . . . after
`receiving a preliminary response under section 313 or the
`expiration of the time for filing such a response . . . warrants the
`institution of an inter partes review under section 314.
`35 U.S.C. § 315(c). Moreover, we have explained that a motion for joinder
`should: (1) set forth reasons why joinder is appropriate; (2) identify any new
`grounds of unpatentability asserted in the petition; (3) explain what impact,
`if any, joinder would have on the trial schedule for the existing review; and
`(4) address specifically how briefing and discovery may be simplified.
`Kyocera Corp. v. Softview LLC, Case IPR2013-00004, slip op. at 4 (PTAB
`Apr. 24, 2013) (Paper 15).
`
`With respect to the first element, Petitioner argues joinder will
`promote an efficient determination of the validity of the challenged claims
`without prejudice to any party. Mot. 5–8. In particular, Petitioner asserts
`that joinder would allow the validity of the grounds raised in the present
`
`7
`
`
`
`IPR2019-00436
`Patent 9,043,228 B1
`
`Petition and in the Petition in IPR2018-01009 to be determined in a single
`proceeding as there are no substantive differences between the Petitions and
`supporting evidence. Id. at 5–7.
`
`In regard to the second element, Petitioner contends the present
`Petition does not raise any new grounds of unpatentability. Mot. 8–9.
`Namely, the present Petition challenges the validity of the same claims on
`the same asserted grounds as in IPR2018-01009. Id. at 8; compare Shopify,
`Case IPR2018-01009, slip op. at 39 (PTAB Nov. 15, 2018) (Paper 10), with
`Pet. 7.
`
`For the third element, Petitioner argues that joinder would not affect
`the schedule in IPR2018-01009 because the Board instituted inter partes
`review in IPR2018-01009 less than one month before Petitioner’s Motion
`for Joinder. Mot. 9. Petitioner also asserts that its participation would not
`result in changes to the Scheduling Order in IPR2018-01009. Id. (citing
`Shopify, Case IPR2018-01009 (PTAB Nov. 15, 2018) (Paper 11)).
`
`Lastly, with respect to the fourth element, Petitioner argues that
`joinder will simplify briefing and discovery because Petitioner has agreed to
`consolidate filings and to take an understudy role to Shopify, Petitioner in
`IPR2018-01009. Mot. 9–11. According to Petitioner, it is has agreed “as
`long as Shopify remains a party to [IPR2018-01009], to (1) coordinate any
`communications with Shopify’s experts through Shopify’s counsel; (2) not
`to produce [its] own testifying witnesses; and (3) not file substantive papers
`(except for those associated with Board-approved motions that do not affect
`Shopify or Shopify’s position).” Id. at 9. Petitioner also asserts that as long
`as Shopify is a party, Shopify will make all final decisions and retain
`responsibility for oral argument. Id. Petitioner further represents that
`
`8
`
`
`
`IPR2019-00436
`Patent 9,043,228 B1
`
`Shopify will make all final decisions regarding discovery and witness
`testimony, and that Petitioner’s expert, Mr. Kent, would not be relied upon if
`Shopify’s expert is available. Id. at 10.
`
`In view of Petitioner’s representations, as well as Patent Owner’s
`consent to the Motion for Joinder, Petitioner has persuaded us that joinder is
`appropriate. We, therefore, grant Petitioner’s Motion for Joinder.
`
`
` CONCLUSION
`IV.
`We institute inter partes review of claims 1, 3, 5, 7–9, 11–13, 15, and
`16 of the ’228 patent based on the asserted grounds of unpatentability set
`forth in the present Petition. We grant Petitioner’s Motion for Joinder and
`join Petitioner to IPR2018-01009. In view of this joinder, we terminate the
`present proceeding in accordance with 37 C.F.R. § 42.72.
`
`
`V. ORDER
`In consideration of the foregoing, it is:
`ORDERED that, pursuant to 35 U.S.C. § 314(a) and 37 C.F.R. § 42.4,
`inter partes review of claims 1, 3, 5, 7–9, 11–13, 15, and 16 of the
`’228 patent is hereby instituted with respect to all grounds presented in the
`Petition;
`FURTHER ORDERED that, pursuant to 35 U.S.C. § 315(c) and
`37 C.F.R. § 42.122(a), Petitioner’s Motion for Joinder is granted, and that
`Petitioner is joined as a petitioner in IPR2018-01009;
`FURTHER ORDERED that, in view of the joinder, this proceeding,
`IPR2019-00436, is terminated under 37 C.F.R. § 42.72, and that all further
`filings shall be made only in IPR2018-01009;
`
`9
`
`
`
`IPR2019-00436
`Patent 9,043,228 B1
`
`
`FURTHER ORDERED that the asserted grounds of unpatentability on
`which the Board instituted inter partes review in IPR2018-01009 are
`unchanged and remain the only instituted grounds;
`FURTHER ORDERED that the Scheduling Order in IPR2018-01009,
`and any modifications thereto, shall govern the schedule of the joined
`proceeding;
`FURTHER ORDERED that in IPR2018-01009, Shopify and
`Petitioner will file each paper, except for any paper that does not involve the
`other party, as a single, consolidated filing, subject to the page limits set
`forth in 37 C.F.R. § 42.24, and shall identify such filing as a consolidated
`filing;
`FURTHER ORDERED that for any consolidated filing, if Petitioner
`wishes to file an additional paper to address points of disagreement with
`Shopify, Petitioner must request authorization from the Board to file a
`motion for an additional paper or pages;
`FURTHER ORDERED that Shopify and Petitioner shall collectively
`designate attorneys to conduct the cross-examination of any witness
`produced by Patent Owner and the redirect of any witness produced by
`Shopify and Petitioner, within the timeframes set forth in 37 C.F.R.
`§ 42.53(c) or agreed to by the parties;
`FURTHER ORDERED that Shopify and Petitioner shall collectively
`designate attorneys to present at the oral hearing, if requested and scheduled,
`in a consolidated argument;
`FURTHER ORDERED that the case caption in IPR2018-01009 shall
`be changed to reflect joinder of Petitioner in accordance with the attached
`example; and
`
`10
`
`
`
`IPR2019-00436
`Patent 9,043,228 B1
`
`
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record of IPR2018-01009.
`
`
`
`
`
`
`11
`
`
`
`IPR2019-00436
`Patent 9,043,228 B1
`
`For PETITIONER:
`
`(IPR2019-00436):
`
`Nathan Rees
`William Braxdale
`Ross Viguet
`Brett Govett
`NORTON ROSE FULBRIGHT LLP
`nate.rees@nortonrosefulbright.com
`allan.braxdale@nortonrosefulbright.com
`ross.viguet@nortonrosefulbright.com
`brett.govett@nortonrosefulbright.com
`
`(IPR2018-01009):
`
`Michael McNamara
`William Meunier
`MINTZ LEVIN LLP
`mmcnamara@mintz.com
`wameunier@mintz.com
`
`For PATENT OWNER:
`
`Louis Hoffman
`Justin Lesko
`LAW OFFICE OF STEVEN G. LISA, LTD.
`donald@valuablepatents.com
`justinlesko@patentit.com
`
`
`
`
`
`
`
`
`12
`
`
`
`IPR2019-00436
`Patent 9,043,228 B1
`
`
`
`Example Case Caption for Joined Proceeding
`
`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.
`_______________
`
`Case IPR2018-010091
`Patent 9,043,228 B1
`_______________
`
`
`
`
`
`
`
`
`
`
`
`
`
`1 Priceline.com and Booking.com B.V., who filed a petition in
`IPR2019-00436, have been joined as petitioners in this proceeding.
`
`13
`
`
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