The Federal Circuit’s famous (or infamous) decision that one DDR Holdings’ patent was not invalid under 35 U.S.C. § 101 was used to support a district court’s denial of a motion for judgment of § 101 for three other DDR Holdings’ patents. In DDR Holdings, LLC v. Priceline.com, LLC, No. 17-498 (D. Del. June 5, 2018), the court denied a motion for judgment on the pleadings, because the three present patents-in-suit share the same inventive concept” as U.S. 7,818,399, which the Federal Circuit held patent-eligible in its 2014 decision in DDR Holdings, LLC v. Priceline.com, LLC.
The previously-litigated ’399 patent is entitled “Methods of expanding commercial opportunities for internet websites through coordinated offsite marketing,” and claims, in a nutshell, one online merchant to presenting retail opportunities framed with branding of another online merchant. DDR Holdings’ three patents now at issue are the following:
- S. 8,515,825, Methods of expanding commercial opportunities for internet websites through coordinated offsite marketing;
- S. 9,043,228, Specially programmed computer server serving pages offering commercial opportunities for merchants through coordinated offsite marketing; and
- S. 9,639,876, Method and computer system for serving commerce information of an outsource provider in connection with host web pages offering commercial opportunities.
The Federal Circuit had found that the claims of the ’399 patent “recite a specific way to automate the creation of a composite web page by an ‘outsource provider’ that incorporates elements from multiple sources in order to solve a problem faced by websites on the Internet.” The three patents here differed only in that “they do not specify that the outsource provider generates the composite page.” This was an unessential detail regarding the shared inventive concept of “the automated delivery of the page by an outsource provider that incorporates the look and feel of the host site with the details of the merchant’s product.”
We will never know how these three patents would have been evaluated if they did not share this heritage with the ’399 patent and were considered in isolation.