By Dennis Crouch
DDR Holdings, LLC v. Hotels.com, L.P., 2013 WL 3187161 (E.D.Tex. 2013)
In late 2012, jury agreed with DDR that its business method patents were being infringed upon and that the various defendants had failed to prove the claims invalid as either anticipated or obvious. The patents themselves are related to a method of "coordinated offsite marketing" of "internet websites." U.S. Patent No. 7,818,399 and 6,993,572. The jury was not given the question of patentable subject matter under 35 U.S.C. 101. In a recent post-verdict ruling, Judge Gilstrap has also rejected Defendants' Section 101 argument.
A typical claim in the patents is No. 17 from the '572 patent that reads:
An e-commerce outsourcing process comprising the steps of:
a) storing a look and feel description associated with a first website in a data store associated with a second website;
b) including within a web page of the first website, which web page has a look and feel substantially corresponding to the stored look and feel description, a link correlating the web page with a commerce object; and
c) upon receiving an activation of the link from a visitor computer to which the web page has been served, sewing to the visitor computer from the second website a composite web page having a look and feel corresponding to the stored look and feel description of the first website and having content based on the commerce object associated with the link.
In considering the claim scope, the Judge agreed with the patentee that the inventions embodied by the claims present "functional and palpable applications in the field of computer technology." (Citing Research Corp). The judge also walked through the litany of "machine" elements required by the claims and concluded that the claim "also passes the machine-or-transformation test" and that conclusion strongly suggests patentable subject matter as "a useful and important indicator in the § 101 analysis."
[The] claimed e-commerce outsourcing process requires [an] interaction between a data store storing a look and feel description of a web page and an activation of a link from a visitor computer to receive a composite web page. The method of an outsource provider also discloses a server that responds to activation by a web browser of a computer user by retrieving pre-stored data from storage, then generating and transmitting visual elements corresponding to the source page.
. . . .
As discussed above, the asserted claims disclose a specific set of physical linkages that involve a data store, server, computer, that together, and through the claimed interconnectivity, accomplishes the process of displaying composite web pages having the look and feel of the source web page. [Defendant] urges the Court to find the invention is only a business method of making two web pages look alike. While the ′572 and ′399 patents do, indeed, cover the concept of two web pages with visually corresponding elements, there is more to the asserted claims when considered as a whole. "Diehr emphasized the need to consider the invention as a whole, rather than 'dissect[ing] the claims into old and new elements and then ... ignor[ing] the presence of the old elements in the analysis." Bilski. When the asserted claims are considered as a whole, the claimed invention lies in stark contrast to the facts of Bancorp. In Bancorp, the claimed "mathematical concept of managing a stable value protected life insurance policy" was found unpatentable as an abstract idea because mere mathematical computer was not dependent upon the computer components required to perform it. In contrast, the interactions and linkages of computer machinery to generate composite web pages in this case are integral to each of DDR's asserted claims. Accordingly, the first prong of the machine-or-transformation test is satisfied. That being the case, this Court needs not address the transformation prong at this time.
Using the word "idea": The word "idea" seems fairly abstract and thus potentially troublesome for a patentee. In this case, the inventor used the word "idea" repeatedly in his trial testimony. The defendants made the argument that the inventor's language should serve as evidence that the claim is abstract. However, Judge Gilstrap rejected that argument as well:
The Court is also not persuaded that the inventor's use of the word "idea" at least 25 times to describe his invention is evidence of unpatentable subject matter. The inventor's testimony was given during a one week trial, and it is not unusual to explain a patent claim as a "gist" or "core idea." Such testimony is not instructive that a claim is an abstract idea for purposes of § 101 patentability. Moreover, "all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas," yet, "too broad an interpretation of this exclusionary principle could eviscerate patent law." Mayo.
In all likelihood, the case will soon move to the Federal Circuit for review.
Judge Gilstrap cited the recent fractured en banc decision in CLS Bank v. Alice only once and for the position posited by Judge Lourie that the statutory presumption of validity applies to the Section 101 analysis.