Deleted Definition Highly Significant for Claim Construction

Written by: Brian C. Barnes and Brandon G. Smith

DDR HOLDINGS, LLC V. PRICELINE.COM LLC, BOOKING.COM B.V.

Before Chen, Mayer, and Cunningham. 

Appeal from the United States District Court for the Northern District of Delaware.

Summary: Deleting a definition provided in provisional application from the final specification evidenced patentee’s intent to exclude deleted language from claim scope.

DDR Holdings, LLC (“DDR”) sued Priceline.com LLC and Booking.com B.V. (collectively, “Priceline”) for infringement of a patent relating to a composite web page that displays visual elements of a host website with content from a third party “merchant.”  Priceline argued it did not infringe because the claim term “merchant” was limited to purveyors of goods alone and did not encompass purveyors of services.  DDR argued that “merchant” encompassed purveyors of goods and services based on a definition provided in the provisional application to which the asserted patent claimed priority.  However, the patentee deleted that definition from the final specification, which contained no reference merchant services.  The district court agreed with Priceline and construed “merchant” to be limited to purveyors of goods.

The Federal Circuit affirmed, holding that the patentee’s deletion of language between the provisional application and the asserted patent’s specification was “highly significant” to its claim construction analysis.  The court rejected DDR’s argument that the definition from the provisional should apply because the provisional is incorporated by reference in the asserted patent.  The Federal Circuit found that deleting the definition referencing “services” showed “an evolution of the applicant’s intended meaning” of “merchants.”

Editor: Sean Murray