DDR Holdings, LLC v. Priceline.com LLC, et al., Nos. 2023-1176, -1177 (Fed. Cir. (D. Del.) Dec. 9, 2024). Opinion by Chen, joined by Mayer and Cunningham.
DDR owns a patent directed to generating a composite web page that combines certain visual elements of a host website with content from a third-party merchant. DDR sued Priceline for infringement, and the case was stayed pending resolution of IPR proceedings initiated by Priceline.
In the IPRs, the Patent Trial and Appeal Board applied the “broadest reasonable interpretation” standard to construe the claim term “merchants” as “producers, distributors, or resellers of the goods or services to be sold.” Applying the construction, the Board found that the claims were not shown to be unpatentable.
The district court then lifted the stay and construed the term “merchants” (and a related term, “commerce object”). The dispute over “merchants” hinged on the differences between the disclosures in the patent’s specification and its provisional application. The provisional application referenced “services” while the specification did not, and the district court construed the term according to the specification, omitting reference to “services.” The parties stipulated to noninfringement under that construction.
On appeal, the Federal Circuit upheld the construction of “merchants” (and the related term, “commerce object”). The court ruled that “notably missing from the patent’s specification … is any mention of services in relation to merchants.” The court explained: “the deletion made by the patent drafter between the provisional application and the patent specification is highly significant. Although DDR’s provisional application discussed merchants as both purveyors of ‘goods’ and purveyors of ‘products or services,’ DDR elected in its patent specification to delete the reference to ‘products or services’ and instead discuss merchants as purveyors of ‘goods’ alone.”
The Federal Circuit also addressed whether collateral estoppel applied given the Board’s contrary construction during the IPR. The court ruled there was no estoppel: “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.”
For similar reasons, the Federal Circuit also upheld the construction of “commerce object.” Thus, the court affirmed the stipulated judgment of noninfringement based on the affirmed claim constructions.
Crown Packaging Technology, Inc., et al. v. Belvac Production Machinery, Inc., Nos. 2022-2299, -2300 (Fed. Cir. (W.D. Va.) Dec. 10, 2024). Opinion by Dyk, joined by Hughes and Cunningham.
Crown Packaging sued Belvac for infringement of three patents concerning machines for reducing the diameter of the top of a metal beverage can’s body—called “necking” machines. Belvac raised an affirmative defense of invalidity under pre-AIA 35 U.S.C. § 102(b), asserting that Crown placed a necking machine embodying the claimed invention on sale in this country before the critical date of the patents.
The basis of the defense was that, before the critical date, Crown sent a letter to a third party providing a quotation for Crown’s CMB3400 necking machine. Crown did not dispute that the machine was ready for patenting, embodied the claims, and was sent before the patents’ critical date. Instead, Crown argued that the letter was not a commercial offer for sale and was not an offer for sale “in this country.” The district court agreed with Crown, ruling on summary judgment that the patents were not invalid under the on-sale bar. The case proceeded to trial, where a jury found the asserted claims not invalid and not infringed.
On appeal, the Federal Circuit reversed the “on sale” ruling, holding that “the undisputed record shows that the asserted claims of the three patents were the subject of an invalidating offer for sale in the United States.” The court explained that Crown’s letter “characterized itself as an ‘offer’” and “was sufficiently definite as to the terms of the offer for sale to constitute a commercial offer for sale.” The letter provided a detailed description of the machine, a price, the delivery terms, and more. The Federal Circuit also ruled that although the letter described the offer as a “quotation,” which is “an important fact,” the “precise label used for a given communication … is not controlling.”
The Federal Circuit also addressed the district court’s reliance on the letter’s statement that “[q]uotations … are subject to [Crown’s] written acceptance of your order.” The Federal Circuit explained that the court’s case law “counsels against concluding that a term of written acceptance is determinative.” The case law “instruct[s] that a communication when taken as a whole may still be a commercial offer for sale even with an express written acceptance term,” and the same was true here.
Finally, the Federal Circuit held that the offer was made “in this country” as required by pre-AIA § 102(b). The court explained that its precedent “demonstrates that an offer directed to a United States entity at its United States place of business is an offer ‘made in this country.’”