Summary
This Federal Circuit opinion affirms the District Court for the District of Delaware's claim construction and subsequent non-infringement judgment in a patent dispute involving U.S. Patent No. 7,818,399. The court addressed whether the terms "merchants" and "commerce object" encompass services or are limited to goods, ultimately concluding that the patent specification's deliberate deletion of references to services indicated the patentee's intent to restrict these terms to goods alone. Consequently, the court upheld the district court's ruling that the accused instrumentalities did not infringe the patent under the construed claims.
Topics
Practice areas
Questions Presented
- Whether the claim term "merchants" encompasses purveyors of services or is limited to producers, distributors, or resellers of goods.
- Whether the claim term "commerce object" encompasses services or is limited to a product, product category, catalog, or indication that one of those items should be chosen dynamically.
- Whether the Patent Trial and Appeal Board's IPR construction precluded the district court and Federal Circuit from adopting a narrower construction under the Phillips standard.
Holdings
- The term "merchants" is limited to producers, distributors, or resellers of goods to be sold through the outsource provider; it does not include purveyors of services.
- The term "commerce object" is limited to a product, product category, catalog, or an indication that a product, product category, or catalog should be chosen dynamically; it does not include services.
- The Board's construction under the broadest reasonable interpretation standard did not preclude the district court or Federal Circuit from adopting a narrower construction under the Phillips standard. DDR's collateral-estoppel argument was also forfeited because it was not raised in the opening brief or in the district court.
Key quotations
“A skilled artisan would understand this progression between the provisional application and the patent specification to indicate an evolution of the applicant’s intended meaning of the claim term” (at 918)
“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.” (at 920)
“Because the Board applies the broadest reasonable construction of the claims while the district courts apply a different standard of claim construction as explored in Phillips, a party is not collaterally estopped in district court proceedings by the Board’s constructions during IPR.” (at 923)
Factual background
The '399 patent concerns an e-commerce system that generates composite web pages combining visual elements of a host website with content associated with a third-party merchant. The patent specification describes merchants as producers, distributors, or resellers of goods, while the provisional application also referred to producers, manufacturers, and distributors of products or services. The final patent specification omitted the reference to services, and the accused instrumentalities were stipulated not to infringe under the district court's resulting claim constructions.
Procedural history
DDR sued Priceline.com and Booking.com in 2017 for infringement of four patents, including U.S. Patent No. 7,818,399. The defendants sought inter partes review of the asserted patents; the district court proceedings were stayed pending the IPRs, and the Patent Trial and Appeal Board determined that the challenged claims of the '399 patent had not been shown unpatentable. After the stay was lifted, the district court construed "merchants" to mean purveyors of goods, not services, and construed "commerce object" to exclude services. The parties stipulated to non-infringement under those constructions, and the district court entered final judgment for defendants.