Trials@uspto.gov
`571-272-7822
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`Paper 24
`Entered: June 10, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`PRICELINE.COM LLC and BOOKING.COM B.V.,
`Petitioners,
`
`v.
`
`DDR HOLDINGS, LLC,
`Patent Owner.
`____________
`
`Case IPR2019-00439
`Patent 9,043,228 B1
`____________
`
`
`
`Before CARL M. DeFRANCO, PATRICK M. BOUCHER, and
`ALYSSA A. FINAMORE, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`
`
`DECISION
`Petition for Inter Partes Review and Motion for Joinder
`35 U.S.C. §§ 314(a), 315(c)
`
`
`Priceline.com LLC and Booking.com B.V. (“Petitioners”) filed (1) a
`Petition (Paper 3, “Pet.”) to institute an inter partes review of claims 1, 3–5,
`7–9, 11–13, 15, and 16 of U.S. Patent No. 9,043,228 B1 (“the ’228 patent”);
`and (2) a Motion for Joinder (Paper 4, “Mot.”) with IPR2018-01012 (“the
`related IPR”), which was instituted on November 15, 2018. DDR Holdings,
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`IPR2019-00439
`Patent 9,043,228 B1
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`LLC (“Patent Owner”) expressly waives filing a preliminary response and
`“consents to Petitioner’s Motion for Joinder” but “maintains that the
`petitions do not show that the patent is invalid, for the reasons given in the
`response [in IPR2018-01012].” Paper 8, 2.
`We grant the Motion for Joinder, joining Petitioners as parties to the
`related IPR, and terminate this proceeding.
`
`
`I. BACKGROUND
`A. The ’228 Patent
`1. Disclosure
`The ’228 patent “relates to a system and method supporting commerce
`syndication.” Ex. 1001, 1:24–25. The patent is particularly focused on the
`implementation of “affiliate” marketing systems on the Internet, which
`Petitioner’s expert, Peter Kent, describes as follows:
`Commonly known as affiliate marketing (though the world’s
`largest system, owned by Amazon.com, actually uses the term
`associate rather than affiliate), the concept is simple. If website
`owner A sends a visitor from his website to the ecommerce site
`owned by website owner B, and if that visitor makes a purchase
`from B’s website, then B pays A a commission on the sale. A
`merchant could multiply sales many times by having affiliates
`market his products.
`
`Ex. 1002 ¶ 20. As the ’228 patent itself explains, with such affiliate
`marketing systems, “companies let third-party website owners list a subset
`of their goods (e.g., 10 of Amazon.com’s millions of books, selected by the
`website owner) and promote them as they choose within their websites.”
`Ex. 1001, 2:19–23.
`
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`IPR2019-00439
`Patent 9,043,228 B1
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`Although the ’228 patent acknowledges that “[t]he benefits of affiliate
`programs are significant,” it also recognizes that “the greater benefit almost
`always accrues not to the affiliate, but to Amazon.com and other online
`stores.” Id. at 2:27–33. In particular, the patent identifies a “fundamental
`drawback of the affiliate programs” as “the loss of the visitor to the vendor,”
`because, with such an arrangement, the vendor is “able to lure the visitor
`traffic away from the affiliate.” Id. at 2:33–42. The patent describes a
`solution to this problem by “includ[ing] a data store including a look and
`feel description associated with a host website.” Id. at 4:49–52.
`A particular solution relevant to the challenged claims involves three
`distinct parties: a “host,” which is an operator of a website, a “merchant”
`selling a product, and an “outsource provider” that facilitates maintaining the
`look and feel of the host website when a link to a product of the merchant is
`selected:
`The processor performs the tasks of capturing a look and feel
`description associated with a host website, storing the captured
`look and feel description in the data store, providing the host
`website with a link that link correlates the host website with a
`commerce object for inclusion within a page on the host website
`and which, when activated, causes the processor to serve an e-
`commerce supported page via the communication link with a
`look and feel corresponding to the captured look and feel
`description of the host website associated with the provided link
`and with content based on the commerce object associated with
`the provided link.
`
`Id. at 4:52–63. In other embodiments described by the ’228 patent, “[t]his
`folds into two parties where one party plays the dual role of Host and
`Merchant.” Id. at 22:60–61.
`
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`According to the ’228 patent, “[m]erchants are the producers,
`distributors, or resellers of the goods to be sold through the outsource
`provider.” Id. at 22:65–66. “A Host is the operator of a website that
`engages in Internet commerce by incorporating one or more link[s] to the e-
`commerce outsource provider into its web content.” Id. at 23:27–29. And
`the “outsource provider” has a number of functions that provide support
`services between merchants and hosts, and which may be illustrated with a
`description of a typical overall transaction process flow. See id. at 23:43–
`24:4.
`
`In such a typical transaction process, a customer visits a host website
`and “through contextually relevant content, becomes interested in a product
`offered.” Id. at 24:9–10. The customer selects the item by clicking a
`product image or similar link, “taking her to [] dynamically generated web
`pages which retain the look and feel of the referring Host and are served by
`the e-commerce outsource provider.” Id. at 24:11–16. After browsing
`through and selecting certain offered products, “the customer initiates the
`checkout procedure, never leaving the Host website.” Id. at 24:17–26. A
`secure checkout interface appears, “still consistent in look and feel with the
`Host’s referring website,” and the customer provides billing and shipping
`information. Id. at 24:27–32. The customer is returned to another section of
`the host’s website, “possibly just returning to the page in which the offer
`was placed.” Id. at 24:33–36. The outsource provider passes the order to
`the merchant, which receives and logs the order before assembling and
`shipping the order to the customer. Id. at 24:37–43. Settlement is effected
`by the outsource provider periodically remitting payment to the merchant for
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`filled orders and remitting payment to hosts for commissions earned. Id. at
`24:44–47.
`
`
`2. Illustrative Claim
`Independent claim 1 is illustrative of the claims at issue, and is
`reproduced below.
`1. A method of serving informational pages offering commercial
`opportunities, the method comprising, with a computer system
`serving displayable information of an outsource provider:
`
`upon receiving over the Internet an electronic request
`generated by an Internet-accessible computing device of a visitor
`in response to selection of a uniform resource locator (URL)
`within a source web page that has been served to the visitor
`computing device when visiting a host website controlled by a
`third party to the owner of the computer system, wherein the
`URL correlates the source web page with at least one commerce
`object associated with a buying opportunity of a merchant that is
`a third party to the owner of the computer system,
`
`automatically serving to the visitor computing device a
`dynamically generated composite page containing instructions
`directing the visitor computing device to display:
`
`(i) information associated with the commerce object
`associated with the URL that has been activated, which
`commerce object includes at least one product available for sale
`through the computer system after activating the URL, and
`
`(ii) a plurality of visually perceptible elements visually
`corresponding to the source web page,
`
`wherein the visually perceptible elements comprise any of
`the following applicable features: logos, colors, page layout,
`navigation systems, frames, and visually perceptible mouse-over
`effects,
`
`wherein the plurality of visually perceptible elements
`define an overall appearance of the composite page that,
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`Patent 9,043,228 B1
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`excluding the information associated with the commerce object,
`visually corresponds to the source web page, and
`
`wherein the instructions direct the visitor computing
`device to download data defining the visually perceptible
`elements from an information storage that is accessible to the
`visitor computing device through the Internet.
`
`Ex. 1001, 27:22–60.
`
`
`B. Evidence Relied Upon
`Petitioner relies on the following references.
`Moore
`US 6,330,575 B1
`Dec. 11, 2001
`Arnold
`US 6,016,504
`Jan. 18, 2000
`
`Ex. 1010
`Ex. 1011
`
`
` Digital River Brochure (Ex. 1004)
`
` Digital River April 1997 Website (“April 1997 Website”) (Ex. 1005)
`
` Digital River December 1997 Website (“December 1997 Website”) (Ex.
`1006)
`
` Corel Web Page (July 1998) (Ex. 1007)
`
` 21 Software Drive Web Page (April 1998) (Ex. 1008)
`
` 21 Software Drive Web Page (April 1998) (Ex. 1009)1
`
`
`1 Petitioner asserts that certain of its challenges “utilize six different printed
`publications describing the Digital River system and Digital River
`websites,” i.e., Exhibits 1004–1009. Pet. 7 n.1. Patent Owner does not
`challenge Petitioner’s position that “[t]his art may be viewed individually
`and as two or more together as a whole.” See id. Consistent with
`Petitioner’s usage, we also refer collectively to the six publications as “the
`Digital River Publications.”
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`Petitioner further relies on the Declaration of its witness, Peter Kent.
`Ex. 1002.
`
`
`C. Asserted Grounds of Unpatentability
`Petitioner challenges claims 1, 3–5, 7–9, 11–13, 15, and 16 of the
`’228 patent on the following grounds. Pet. 7.
`Reference(s)
`Basis
`Digital River Publications
`§ 103(a)
`Moore
`§ 102(a)
`Moore and Arnold
`§ 103(a)
`Moore and the Digital River
`§ 103(a)
`Publications
`
`Claims Challenged
`1, 3–5, 7–9, 11–13, 15, and 16
`1, 3–5, 7–9, 11–13, 15, and 16
`1, 4, 9, and 12
`1, 3–5, 7–9, 11–13, 15, and 16
`
`
`
`D. Real Parties in Interest
`Petitioners identify The Priceline Group Inc., Priceline.com LLC,
`Priceline Partner Network, Booking.com B.V., Booking.com Holding B.V.,
`Priceline.com Bookings Acquisition Co., Ltd., Priceline.com International
`Ltd., Priceline.com Holdco U.K. Ltd., and Priceline.com Europe Holdco,
`Inc. as real parties in interest. Pet. 1. Patent Owner identifies only itself as a
`real party in interest. Paper 5, 1.
`
`
`E. Related Proceedings
`The parties identify the following district court proceedings as related
`to this proceeding: (1) DDR Holdings, LLC v. Priceline.com, LLC, No.
`1:17-cv-498 (D. Del.); (2) DDR Holdings, LLC v. Booking.com B.V., No.
`1:17-cv-499 (D. Del.); (3) DDR Holdings, LLC v. Ticketnetwork, Inc., No.
`
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`Patent 9,043,228 B1
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`1:17-cv-500 (D. Del.); (4) DDR Holdings, LLC v. Shopify, Inc., No. 1:17-cv-
`501 (D. Del.); and (5) DDR Holdings, LLC v. Travel Holdings, Inc., No.
`1:17-cv-502 (D. Del.).2 Pet. 1–2; Paper 5, 1–2. In addition, the parties
`identify DDR Holdings, LLC v. Hotels.com, L.P., 954 F. Supp. 2d 509 (E.D.
`Tex. 2013) and the appeal of that district court case in DDR Holdings, LLC
`v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). Pet. 2–4; Paper 5, 2–4.
`Petitioner further identifies two reexamination proceedings as related,
`both of which included appeals to the Board: (1) Ex parte DDR Holdings,
`LLC, Appeal No. 2009-0013987, Reexamination Control No. 90/008,374
`(BPAI Apr. 16, 2010); and (2) Ex parte DDR Holdings, LLC, Appeal No.
`2009-0013988, Reexamination Control No. 90/008,375 (BPAI Apr. 16,
`2010). Pet. 4–5.
`Patent Owner also identifies pending U.S. Patent Appl. No.
`15/582,105 as related to the ’228 patent, as well as issued U.S. Patent Nos.
`6,629,135, 6,993,572, 7,818,399, 8,515,825, and 9,639,876. Paper 5, 4. The
`following inter partes review proceedings involve the ’228 patent or one of
`these related patents: (1) IPR2018-00482; (2) IPR2018-01008; (3) IPR2018-
`01009; (4) IPR2018-01010; (5) IPR2018-01011; (6) IPR2018-01012;
`(7) IPR2018-01014; (8) IPR2019-00435; (9) IPR2019-00436; (10) IPR2019-
`00437; (11) IPR2019-00438; and (12) IPR2019-00440. See id. at 4–5.
`
`
`
`2 Patent Owner indicates that these five proceedings were consolidated under
`No. 1:17-cv-498, and that Nos. 1:17-cv-500 and 1:17-cv-502 have been
`terminated because the parties settled. Paper 5, 1–2.
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`II. ANALYSIS
`In the related IPR, we instituted an inter partes review of claims 1, 3–
`5, 7–9, 11–13, 15, and 16 on all of the bases set forth above. Shopify, Inc. v.
`DDR Holdings, LLC, Case IPR2018-01012, slip op. at 7, 24 (PTAB Nov.
`15, 2018) (Paper 10).
`Petitioners in this proceeding challenge the same claims challenged in
`the related IPR on the same grounds of unpatentability. Pet. 7. The Petition
`also “follows the arguments raised in the Shopify Petition, and is
`substantively identical to the Shopify Petition.” Mot. 1. The principal
`difference between the instant Petition and the petition filed in the related
`IPR is that Petitioners rely on testimony of Mr. Kent, rather than testimony
`of Mr. Shamos. But Mr. Kent expressly “agree[s] with the legal theories and
`analysis presented in the Shamos Declaration and the [petition filed in the
`related IPR].” Ex. 1002 ¶ 3. Petitioners represent that they “will not rely on
`the declaration of Peter Kent (which is substantively the same as Shopify’s
`expert declaration) submitted with the present petition, unless Shopify is
`terminated from the proceeding prior to the Shopify expert being deposed.”
`
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`Mot. 3. Under these circumstances, we consider the evidence sufficiently
`similar that joinder with the related IPR would have minimal impact.3
`In addition, Petitioners agree to “cooperate with Shopify in the joined
`proceeding, whether at hearings, at depositions, in filings, or otherwise.” Id.
`at 2. In particular, “Petitioners will proceed in a limited ‘understudy’ role”
`and “[j]oinder will not impact the trial schedule.” Id.
`A party may be joined to an instituted inter partes review in
`accordance with the following statutory provision:
`(c) JOINDER.—If the Director institutes an inter partes
`review, the Director, in his or her discretion, may join as a party
`to that inter partes review any person who properly files a
`petition under section 311 that the Director, after receiving a
`preliminary response under section 313 or the expiration of the
`time for filing such a response, determines warrants the
`institution of an inter partes review under section 314.
`
`35 U.S.C. § 315(c); see 37 C.F.R. § 42.122. As the moving party,
`Petitioners bear the burden of proving that they are entitled to the requested
`
`
`3 The related IPR was instituted under a claim-construction standard that
`does not apply to petitions, like the instant Petition, filed after November 13,
`2018. See Changes to the Claim Construction Standard for Interpreting
`Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83
`Fed. Reg. 51,340 (Oct. 11, 2018); Pet. 11. Nevertheless “Petitioners submit
`that the outcome of the [related IPR] will not be changed based on which
`claim construction standard is applied and therefore this rule change will not
`burden the present case.” Mot. 6 n.1. We agree with Petitioner that “joinder
`of the Petition with the [related IPR] will not prejudice Patent Owner in any
`way as the [related IPR] has already been instituted under the broadest
`reasonable interpretation standard and using a plain and ordinary meaning
`standard would not adversely impact Patent Owner.” Id.
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`relief. 37 C.F.R. § 42.20(c). In light of Petitioners’ representations, and in
`light of Patent Owner’s express “consent[] to Petitioner’s Motion for
`Joinder,” Paper 8, 2, we determine that Petitioners have demonstrated
`sufficiently that the arguments in the Petition warrant institution of an inter
`partes review under 35 U.S.C. § 314 with respect to the grounds instituted in
`the related proceeding. Accordingly, we grant the Motion and terminate this
`proceeding so that all further filings are made in the related proceeding to
`which Petitioners are joined.
`
`
`III. ORDER
`
`It is
`ORDERED that Petitioners’ Motion for Joinder is granted and that
`Petitioners are hereby joined as parties to IPR2018-01012;
`FURTHER ORDERED that the grounds of unpatentability on which
`trial was instituted in IPR2018-01012 are unchanged and remain the only
`grounds on which trial has been instituted;
`FURTHER ORDERED that the Scheduling Order and any
`modifications thereto entered in IPR2018-01012 shall govern the schedule of
`the joined proceeding;
`FURTHER ORDERED that the joined parties in IPR2018-01012 shall
`file all papers jointly in the joined proceeding as consolidated filings, and
`will identify each such paper as “Consolidated,” except for papers that
`involve fewer than all of the parties;
`FURTHER ORDERED that this proceeding is terminated;
`
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`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record of IPR2018-01012; and
`
`FURTHER ORDERED that the case caption in IPR2018-01012 shall
`be modified in accordance with the attached example to reflect joinder of
`Petitioners.
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`IPR2019-00439
`Patent 9,043,228 B1
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`For PETITIONER:
`
`(IPR2019-00439):
`
`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
`
`(IPR2018-01012):
`
`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.
`louis@valuablepatents.com
`justinlesko@patentit.com
`
`
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`Trials@uspto.gov
`571-272-7822
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`Paper XX
`Entered: XX
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`Example Case Caption for Joined Proceeding
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`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 IPR2018-01012
`Patent 9,043,228 B1
`_______________
`
`
`