DDR Holdings, LLC v. Priceline.com LLC

Authored by: Jeremy J. Gustrowsky

In a recent decision, the Federal Circuit clarified how patent claims are interpreted when the language changes between a provisional application and the final patent. The case, DDR Holdings, LLC v. Priceline.com LLC, centered on U.S. Patent No. 7,818,399, which covers technology for generating web pages that combine elements from a host website with content from a third-party merchant. DDR Holdings argued that the patent covered both goods and services, while Priceline.com contended it was limited to goods only.

The dispute focused on the meaning of the term “merchants” in the patent claims. While the original provisional application mentioned “products or services,” the final patent specification referred only to “goods.” The court found this deletion significant, concluding that the patentee intentionally narrowed the scope of the patent to exclude services. As a result, the court affirmed the district court’s construction that “merchants” means producers, distributors, or resellers of goods, not services.

The court also addressed whether the term “commerce object” should include services. Since both parties agreed that this term should follow the definition of “merchants,” the court affirmed that “commerce object” also excludes services. DDR Holdings argued that the earlier, broader definition from the provisional application should apply, especially since the provisional was incorporated by reference into the patent. However, the court held that when a patent’s final language intentionally omits certain terms, those omissions control—even if the earlier application is referenced.

This decision highlights the importance of careful drafting and the impact of changes made between provisional applications and final patents. Patent owners should be aware that narrowing language in the final specification can limit the scope of their claims, even if broader language appeared in earlier filings.