United States: Claims Patent Eligible Under § 101 Where Claimed Solution To Technological

In DDR Holdings, LLC v. Hotels.com, L.P., No. 13-1505 (Fed. Cir. Dec. 5, 2014), the Federal Circuit reversed the district court's denial of JMOL on the validity of U.S. Patent No. 6,993,572 ("the '572 patent"), finding that the '572 patent was anticipated, and affirmed the district court's denial of JMOL of noninfringement and invalidity of U.S. Patent No. 7,818,399 ("the '399 patent"), finding that the '399 patent's claims were novel, patent eligible, and definite.

DDR Holdings, LLC ("DDR") is the assignee of the '399 and '572 patents—continuations of U.S. Patent No. 6,629,135 ("the '135 patent")—which describe a method for generating a composite web page. DDR sued National Leisure Group, Inc. and World Travel Holdings, Inc. (collectively "NLG"), Digital River, Inc. ("Digital River"), and nine other defendants, alleging infringement of certain claims of the '135 and '572 patents. DDR's suit was stayed during the pendency of certain ex parte reexaminations pertaining to the '135 and '572 patents. After the PTO confirmed the validity of the '135 and '572 patents, the district court lifted the litigation stay. Afterwards, the '399 patent issued and DDR amended its complaint to add claims for infringement of the '399 patent. Prior to trial, DDR settled with all defendants except for NLG and Digital River. A jury found that NLG and Digital River directly infringed the claims of the '572 patent and that NLG directly infringed the claims of the '399 patent, but that neither willfully infringed. The jury further found that NLG and Digital River did not induce infringement of claim 17 of the '572 patent and that the asserted claims were not invalid. The district court denied NLG's and Digital River's renewed motions for JMOL on, inter alia, noninfringement and invalidity of the '399 and '572 patents, and Digital River's motion for a new trial. NLG and Digital River appealed. Prior to oral argument in the present appeal, DDR and Digital River settled.

"As an initial matter, it is true that the claims here are similar to the claims in the cases discussed above in the sense that the claims involve both a computer and the Internet. But these claims stand apart because they do not merely recite the performance of some business practice known from the pre-Internet world along with the requirement to perform it on the Internet. Instead, the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks." Slip op. at 20.

On appeal, the Federal Circuit held that "clear and convincing evidence establishes that Digital River's prior art [Secure Sales System ('SSS')] anticipates the asserted claims of the '572 patent." Slip op. at 12. The Court found that the prior art SSS, like the asserted claims in the '572 patent, generated a composite web page that looked and felt like the host site but allowed for purchasing and downloading of third-party content. Indeed, the Court noted that "the SSS was consistently promoted and advertised as creating a composite web page that retained the 'look and feel' of the host website." Id. at 14 (citation omitted). In finding that the claims of the '572 patent were anticipated, the Court rejected the district court's importation of a requirement that "the generated composite web page have an 'overall match' in appearance with the host website" because neither the claim language nor the specification supported such an interpretation. Id. (citation omitted).

Because it found the '572 patent invalid as anticipated, the Federal Circuit only considered the patent eligibility of the '399 patent, finding that the claims of the '399 patent were directed to patent-eligible subject matter under 35 U.S.C. § 101. After discussing the case law undergirding the § 101 analysis, the Court acknowledged that "the claims here are similar to the [patent-ineligible] claims in the cases discussed above in the sense that the claims involve both a computer and the Internet," but distinguished the current claims because "the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks." Id. at 20. The Court further explained that standard Internet communication protocols "introduce[] a problem that does not arise in the 'brick and mortar' context." Id. at 21. The Court further found that the '399 patent claims survive a § 101 analysis because they "do not attempt to preempt every application of the idea of increasing sales by making two web pages look the same." Id. at 23.

Again noting that the '572 patent was invalid as anticipated, the Federal Circuit then considered the definiteness of the claims of only the '399 patent. The Court rejected NLG's argument that the claim term "look and feel" is subjective and found the claims to be definite. The Court found that "'look and feel' had an established, sufficiently objective meaning in the art, and that the '399 patent used the term consistent with that meaning." Id. at 26. The Court also pointed to advertisements for the prior art SSS and trial testimony to support the interpretation that "the term had an established meaning in the art by the relevant timeframe." Id. at 27.

Turning to the district court's denial of NLG's motion for JMOL of noninfringement, the Court found that the jury was presented with substantial evidence to support its finding of infringement of the '399 patent. Despite NLG's arguments to the contrary, the Court found that for the "visually perceptible elements," the jury viewed screenshot images of accused composite web pages and DDR's expert presented lists of "look and feel elements" for the accused composite web pages. Id. at 28. Thus, the Court concluded that "[t]he jury was free to use this proffered evidence and testimony to form its own conclusions as to whether NLG's accused composite web pages satisfied the 'visually perceptible elements' limitation of the asserted claims." Id.

The Federal Circuit then vacated the jury's damages award. At trial, the parties agreed on a verdict form that provided an instruction to award a single sum to compensate DDR for NLG's infringement. The jury awarded DDR $750,000 in damages, but did not specify how the award was apportioned between the '572 and '399 patents. Because the Federal Circuit found the '572 patent invalid as anticipated, the Court remanded to the district court to determine the effect of the '572 patent's invalidation on the damages award.

Finally, the Federal Circuit reviewed the district court's award of prejudgment interest. The Court noted that NLG failed to cite any case law in support of its contention that DDR should not be entitled to prejudgment interest because it is a nonpracticing entity, and the Court "decline[d] to create such a statutory exception." Id. at 30. However, due to its finding of invalidity of the '572 patent, the Court instructed that "the district court must recalculate its award of prejudgment interest so that it is tied solely to NLG's infringement of the '399 patent, which issued in 2010, more than four years after issuance of the '572 patent." Id. at 31. Due to the fact that the '399 patent issued after the stay was lifted, the Federal Circuit did not need to address whether DDR was entitled to prejudgment interest.

Accordingly, the Federal Circuit held that the district court erred in denying NLG's motion for JMOL of invalidity as to the '572 patent, it vacated the award of damages and prejudgment interest to DDR based on NLG's infringement of the '572 and '399 patents, and remanded to the district court for determination of damages and prejudgment interest attributable solely to NLG's infringement of the '399 patent. In his dissent, Judge Mayer disagreed with the holding of the Court with respect to the eligibility analysis under § 101. Specifically, Judge Mayer would have found that the claims of the '399 and '572 patents were directed to a computer application of the abstract concept "that an online merchant's sales can be increased if two web pages have the same 'look and feel.'" Mayer Dissent at 2. In his view, the claims "simply take a well-known and widely-applied business practice and apply it using a generic computer and the Internet." Id. at 4. Further, Judge Mayer took issue with the Court's finding that the claims were not preemptive, specifically noting that the "potential scope of DDR's patents is staggering, arguably covering vast swaths of Internet commerce." Id. at 6.

Judges: Wallach, Mayer (dissenting), Chen (author)

[Appealed from E.D. Tex., Judge Gilstrap]

This article previously appeared in Last Month at the Federal Circuit, January, 2015.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Events from this Firm
17 Oct 2018, Other, Washington, DC, United States

Finnegan is a Platinum sponsor of the ChIPs Women in Tech, Law, & Policy Global Summit. The program will take place at the Mandarin Oriental Hotel in Washington, DC.

18 Oct 2018, Webinar, Washington, DC, United States

Since the Supreme Court’s 2006 decision in eBay v. MercExchange, many patent practitioners have considered preliminary or permanent injunctions nearly impossible.

23 Oct 2018, Webinar, Washington, DC, United States

How do trademark and advertising trends impact your company? Join a discussion on the latest trends in the food and beverage industry in the United States and Europe.

Similar Articles
Relevancy Powered by MondaqAI
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Akin Gump Strauss Hauer & Feld LLP
Davis & Gilbert
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Akin Gump Strauss Hauer & Feld LLP
Davis & Gilbert
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions