DDR Holdings, LLC v. Priceline.com LLC, Appeal Nos. 2023-1176, -1177 (Fed. Cir. Dec. 9, 2024)

In our Case of the Week, the Federal Circuit affirmed a stipulated non-infringement judgment from Delaware’s district court, finding that the Appellee, Booking Holdings Inc. (Booking), had not infringed the Appellant, DDR Holdings LLC’s (DDR Holdings) patent for e-commerce web pages. The case involved four patents, including the main patent at issue—the ’399 patent—which relates to generating composite web pages that integrate visual elements of the host website with product information from third-party merchants. The primary issue on appeal pertained to claim construction.

In 2017, DDR Holdings sued Booking for infringement of four patents, alleging infringement vis a vis Booking’s websites, Priceline.com and Booking.com. Booking challenged the patents’ validity in petitions for inter partes review (IPR) to the Patent Trial and Appeal Board, which found three of the four patents’ claims invalid. Following the IPR decision, the district court addressed claim construction for the ’399 patent. At issue were the terms “merchant” and the related term, “commerce object.”

With respect to “merchant,” the provisional application of that patent described “merchants” as “producers, distributors, or resellers of goods”—and under a separate section as “producers, distributors, or resellers of goods and services.” However, the description of “merchants” in the patent specification did not reference services. DDR Holdings argued that services are included in the definition of “merchant” and the related term, “commerce object.” Booking disagreed, and asked the court to exclude the provision of services from the construction of both terms. The district court agreed with Booking and the parties stipulated to non-infringement.

On appeal, DDR Holdings argued that services should be included in the construction of “merchant” because the provisional application included “goods and services,” and the provisional application was incorporated into the patent specification by reference. However, consistent with the analysis used in MPHJ Technology Invs., LLC v. Ricoh Americas Corp., 847 F.3d 1363 (Fed. Cir. 2017), the Court found the deletion of “services” from the provisional application to the patent specification “highly significant,” and regarded the absence of “services” as a progression of the drafter’s intended meaning of the claim term between the provisional application and the patent specification. Second, consistent with Finjan LLC v. ESET, LLC, 51 F.4th 1377, 1382 (Fed. Cir. 2022), the Court found that “a skilled artisan reading the incorporated provisional application in the context of the ’399 patent specification would consider that ‘merchants’ providing ‘services’ was included in the provisional application, yet deleted by the patent drafter from the final specification.” . The Court used this same reasoning to construe the claim term “commerce object” as a “a product, a product category, a catalog, or an indication that a product, product category, or catalog should be chosen dynamically,” therefore concluding it did not include services.

Thus, the Federal Circuit agreed with the district court’s claim construction of “merchants” and “commerce object” and affirmed the judgment of non-infringement.

The full opinion can be found here.

By Brittani Gambrell

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Crown Packaging Technology, Inc. v. Belvac Production Machinery, Inc., Appeal Nos. 2022-2299, -2300 (Fed. Cir. Dec. 10, 2024)

In this case, the Federal Circuit found that patentee Crown Packaging’s asserted claims were invalid because a device covered by those claims had been on sale in the U.S. more than one year before the patents’ earliest priority date. Crown’s patents were directed to a machine used in the manufacture of metal beverage cans. At issue was a pre-critical date “quotation” that Crown had issued in connection with a contemplated transaction, which the Court found was an invalidating offer for sale.

To be subject to an “on-sale bar” under pre-AIA 35 U.S.C. § 102(b), the patented invention has to have been the subject of an offer which, if accepted, would create a binding contract for sale. Crown Packaging had argued—and the district court had agreed—that its “quotation” was not an offer for sale, but instead an invitation for a purchaser to make an offer. The Federal Circuit disagreed, noting that although it’s an important consideration, how a sales communication is labeled is not dispositive. Here, the “quotation” contained detailed terms and conditions the Court found sufficient to make the communication an offer for sale. Notably, the panel made this finding notwithstanding the quote contained a “written acceptance” provision which provided that any purchase offer must be accepted in writing by Crown Packaging. The finding relied in part on evidence of Crown’s historical practice of treating responses to quotations as orders it was required to fill. The Court also rejected Crown’s argument that the invention was not being sold for use in the United States, affirming that § 102(b)’s “on sale in this country” language is satisfied if an offer is directed to a U.S. entity at its U.S. place of business—which was the case here—regardless of where the offer was sent from or the intended location of use.

Because the Federal Circuit found the asserted claims to be invalid based on the undisputed facts of record, it reversed the district court’s pre-trial summary judgment rulings of no invalidity, and remanded for entry of judgment against Crown Packaging.

The full opinion can be found here.

By Jason A. Wrubleski