Federal Circuit IP

DDR Holdings, LLC v. Priceline.com LLC, Booking.com B.V.

By Caitlin Thireault Published January 14, 2025

CAFC Opinion No. 2023-1176, 2023-1177, Decided December 9, 2024

(Chen, Mayer, Cunningham; Precedential)

Overview:  The “evolution” of the intended meaning of a claim term and unintended consequences of modifying provisional application content.

 Facts/Background

• DDR Holdings sued Priceline.com and Booking.com for patent infringement in District of Delaware.
• The patent at issue concerns a method of generating a composite webpage that shows visual elements of a “host” site, but content from a “merchant” site.
• Whether Priceline infringes depends on whether the term “merchant” encompasses goods and services, or only goods.
• The non-provisional specification did not mention “services”; however, DDR Holdings argued that “merchant” encompassed a purveyor of goods and services based on the provisional patent application, which was incorporated by reference in the non-provisional.
• The District Court disagreed, and construed the term as being limited to goods, which was dispositive in the Defendants’ favor. DDR Holdings appealed.

Issue:  How should a term be construed when there is variance between a non-provisional application and a provisional patent application to which it claims priority?

Federal Circuit Analysis:

• Review: Claim construction reviewed de novo; findings of fact reviewed for clear error.
• The provisional patent application provides that “merchants” include “producers, manufacturers, and select distributors of products or services.” The non-provisional patent application lacks any mention of “services” in relation to “merchants.”
• DDR Holdings argued that the provisional definition was an explicit part of the non-provisional application via incorporation by reference, and that the non-provisional definition was never disclaimed.
• The CAFC disagreed and found that “the deletion made by the patent drafter between the provisional application and the patent specification [was] highly significant.”

 Holding:  Affirmed.  “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, which is further reinforced by the specification clear statement that “[m]erchants are the producers, distributors, or resellers of the goods to be sold.”

 Takeaways:

• Beware of term discrepancies between provisional and non-provisional applications, particularly with coversheet provisionals.
• When drafting applications, avoid “removing” content.