United States Court of Appeals 

for the Federal Circuit ______________________ 

DDR HOLDINGS, LLC,

Plaintiff-Appellee,

v.

HOTELS.COM, L.P., CENDANT TRAVEL 

DISTRIBUTION SERVICES GROUP, INC., 

EXPEDIA, INC., TRAVELOCITY.COM, L.P., 

SITE59.COM, LLC, INTERNATIONAL CRUISE & 

EXCURSION GALLERY, INC., 

OURVACATIONSTORE, INC., INTERNETWORK 

PUBLISHING CORPORATION, AND ORBITZ 

WORLDWIDE, LLC,

Defendants,

AND

NATIONAL LEISURE GROUP, INC. AND 

WORLD TRAVEL HOLDINGS, INC.,

Defendants-Appellants,

AND

DIGITAL RIVER, INC.,

Defendant.

______________________ 

2013-1505

______________________ 
2 DDR HOLDINGS, LLC v. HOTELS.COM, L.P. 

Appeal from the United States District Court for the 

Eastern District of Texas in No. 06-CV-0042, Judge J. 

Rodney Gilstrap.

______________________ 

Decided: December 5, 2014

______________________ 

LOUIS J. HOFFMAN, Hoffman Patent Firm, of Scottsdale, Arizona, argued for plaintiff-appellee. On the brief 

was IAN B. CROSBY, Susman Godfrey LLP, of Seattle, 

Washington. 

NORMAN H. ZIVIN, Cooper & Dunham LLP, of New 

York, New York, argued for defendants-appellants, National Leisure Group, Inc., et al. With him on the brief 

was TONIA A. SAYOUR. 

______________________ 

Before WALLACH, MAYER, and CHEN, Circuit Judges.

Opinion for the court filed by Circuit Judge CHEN. 

Dissenting opinion filed by Circuit Judge MAYER. 

CHEN, Circuit Judge. 

Defendants-Appellants National Leisure Group, Inc. 

and World Travel Holdings, Inc. (collectively, NLG) appeal from a final judgment of the United States District 

Court for the Eastern District of Texas entered in favor of 

Plaintiff-Appellee DDR Holdings, LLC (DDR). Following 

trial, a jury found that NLG infringes the asserted claims 

of U.S. Patent Nos. 6,993,572 (the ’572 patent) and 

7,818,399 (the ’399 patent). The jury also found the 

asserted claims of the ’572 and ’399 patents are not invalid. The district court denied NLG’s renewed motion for 

judgment as a matter of law (JMOL) on, inter alia, noninfringement and invalidity of the asserted patents. The 

district court subsequently entered a final judgment 
DDR HOLDINGS, LLC v. HOTELS.COM, L.P. 3

consistent with the jury’s findings on infringement, validity, and damages, and awarded DDR pre- and postjudgment interest and costs. We affirm the district 

court’s denial of NLG’s motions for JMOL of noninfringement and invalidity of the ’399 patent. Because we conclude that the ’572 patent is anticipated as a matter of 

law, we reverse the district court’s denial of JMOL on the 

validity of the ’572 patent, and remand to the district 

court for further proceedings consistent with our decision. 

I. BACKGROUND

DDR is the assignee of the ’572 and ’399 patents. The 

’572 and ’399 patents are both continuations of U.S. 

Patent No. 6,629,135 (the ’135 patent), which has a priority date of September 17, 1998. Each of these patents is 

directed to systems and methods of generating a composite web page that combines certain visual elements of a 

“host” website with content of a third-party merchant. 

For example, the generated composite web page may 

combine the logo, background color, and fonts of the host 

website with product information from the merchant. 

’135 patent, 12:46–50.

The common specification of the patents-in-suit explains that prior art systems allowed third-party merchants to “lure the [host website’s] visitor traffic away”

from the host website because visitors would be taken to 

the third-party merchant’s website when they clicked on 

the merchant’s advertisement on the host site. Id. at 

2:26–30. The patents-in-suit disclose a system that 

provides a solution to this problem (for the host) by creating a new web page that permits a website visitor, in a 

sense, to be in two places at the same time. On activation 

of a hyperlink on a host website—such as an advertisement for a third-party merchant—instead of taking the 

visitor to the merchant’s website, the system generates 

and directs the visitor to a composite web page that 

displays product information from the third-party mer-
4 DDR HOLDINGS, LLC v. HOTELS.COM, L.P. 

chant, but retains the host website’s “look and feel.” Id.

at 3:9–21. Thus, the host website can display a thirdparty merchant’s products, but retain its visitor traffic by 

displaying this product information from within a generated web page that “gives the viewer of the page the 

impression that she is viewing pages served by the host” 

website. Id. at 2:56–63, 3:20–22.

Representative claim 13 of the ’572 patent recites:

13. An e-commerce outsourcing system comprising:

a) a data store including a look and feel description associated with a host web page having a 

link correlated with a commerce object; and

b) a computer processor coupled to the data store 

and in communication through the Internet 

with the host web page and programmed, upon 

receiving an indication that the link has been 

activated by a visitor computer in Internet 

communication with the host web page, to serve 

a composite web page to the visitor computer 

wit[h] a look and feel based on the look and feel 

description in the data store and with content 

based on the commerce object associated wit[h] 

the link.

System claim 13 requires that the recited system provide the host website with a “link” that “correlate[s]” the 

host website with a “commerce object.” The “commerce 

object” is the product or product catalog of the merchant. 

’135 patent, 3:7–13. After recognizing that a website 

visitor has activated the link, the system retrieves data 

from a “data store” that describes the “look and feel” of 

the host web page, which can include visual elements 

such as logos, colors, fonts, and page frames. Id. at 12:46–

50. The claimed system then constructs a composite web 

page comprising a “look and feel” based on the look and 
DDR HOLDINGS, LLC v. HOTELS.COM, L.P. 5

feel description in the data store along with content based 

on product information from the associated merchant’s

product catalog. 

The ’399 patent is directed to a similar system with a 

greater emphasis on a “scalable [computer] architecture” 

to serve “dynamically constructed [web] pages” associated 

with multiple host website and merchant pairs. ’135 

patent, 3:32–36. Representative claim 19 of the ’399 

patent recites:

19. A system useful in an outsource provider serving web pages offering commercial opportunities, the system comprising:

(a) a computer store containing data, for each of a 

plurality of first web pages, defining a plurality 

of visually perceptible elements, which visually 

perceptible elements correspond to the plurality 

of first web pages;

(i) wherein each of the first web pages belongs 

to one of a plurality of web page owners;

(ii) wherein each of the first web pages displays 

at least one active link associated with a 

commerce object associated with a buying 

opportunity of a selected one of a plurality of 

merchants; and

(iii) wherein the selected merchant, the outsource provider, and the owner of the first 

web page displaying the associated link are 

each third parties with respect to one other;

(b) a computer server at the outsource provider, 

which computer server is coupled to the computer store and programmed to:

(i) receive from the web browser of a computer 

user a signal indicating activation of one of 
6 DDR HOLDINGS, LLC v. HOTELS.COM, L.P. 

the links displayed by one of the first web 

pages;

(ii) automatically identify as the source page 

the one of the first web pages on which the 

link has been activated;

(iii) in response to identification of the source 

page, automatically retrieve the stored data 

corresponding to the source page; and

(iv) using the data retrieved, automatically 

generate and transmit to the web browser a 

second web page that displays: (A) information associated with the commerce object 

associated with the link that has been activated, and (B) the plurality of visually perceptible elements visually corresponding to 

the source page.

Similar to claim 13 of the ’572 patent, system claim 19 

of the ’399 patent requires that a “data store” hold “visually perceptible elements” (or “‘look and feel’ elements”) 

that “visually . . . correspond” to a host web page. The 

host web page must include a link associated with a 

“buying opportunity” with a merchant. Once a visitor

activates this link, the claimed system generates and 

transmits to the website visitor’s web browser a composite 

web page that includes product information of the merchant and the “look and feel” of the host website (i.e., “the 

plurality of visually perceptible elements visually corresponding to the [host web] page”).

Claim 19 further requires that the data store must 

store “look and feel” descriptions for multiple hosts and 

that each link must be associated with a particular merchant’s product catalog. Claim 19 also requires that the 

merchant, system operator, and host website be “third 

parties with respect to one another.” When a website 

visitor activates a link associated with a merchant’s 
DDR HOLDINGS, LLC v. HOTELS.COM, L.P. 7

product catalog, the claimed system identifies the host 

web page and then transmits a composite web page using 

the proper “look and feel” elements of the host website in 

the data store and the product information from the 

associated merchant.

The ’572 patent issued on January 31, 2006. On the 

same day, DDR filed suit against NLG, Digital River, Inc. 

(Digital River), and nine other defendants, asserting 

infringement of various claims of the ’135 and ’572 patents. NLG is a travel agency that sells cruises in partnership with travel-oriented websites and major cruise 

lines through the Internet. DDR’s suit accused NLG of 

infringing the ’135 and ’572 patents by providing a system 

for cruise-oriented (host) websites that allows visitors to 

book cruises on major cruise lines (merchants). Joint 

Appendix (J.A.) 261. In particular, when a visitor on one 

of these cruise-oriented (host) websites clicks on an advertisement for a cruise, NLG’s system generates and directs 

the visitor to a composite web page that incorporates “look 

and feel” elements from the host website and product 

information from the cruise line (merchant). 

DDR’s suit was stayed during the pendency of an ex 

parte reexamination of the ’135 and ’572 patents requested by DDR that was based on prior art identified by the 

defendants. Shortly after the U.S. Patent and Trademark 

Office confirmed the validity of the ’135 and ’572 patents 

and the stay was lifted, the ’399 patent issued on October 

19, 2010. DDR subsequently amended its complaint to 

assert infringement of this patent by several of the defendants, including NLG. 

During Markman proceedings, the parties stipulated 

to a construction of several terms, including “look and 

feel,” which appears in each of the asserted claims of the 

’572 patent, and “visually perceptible elements,” which 

appears in each of the asserted claims of the ’399 patent. 

J.A. 542. For “look and feel,” the parties agreed to a 
8 DDR HOLDINGS, LLC v. HOTELS.COM, L.P. 

construction of: “A set of elements related to visual appearance and user interface conveying an overall appearance identifying a website; such elements include logos, 

colors, page layout, navigation systems, frames, ‘mouseover’ effects, or others elements consistent through some 

or all of the website.” Id. For “visually perceptible elements,” the parties agreed to a construction of: “look and 

feel elements that can be seen.” Id. The defendants, 

however, expressly reserved their rights to argue that

both the “look and feel” and “visually perceptible elements” terms are indefinite, but offered the stipulated 

constructions “in the alternative.” Id. 

Between June 2012 and January 2013, DDR settled 

with all defendants except for NLG and Digital River. 

The case eventually proceeded to a jury trial in October 

2012. At trial, DDR accused NLG and Digital River of 

direct and willful infringement of claims 13, 17, and 20 of 

the ’572 patent, and accused NLG—but not Digital River—of direct and willful infringement of claims 1, 3, and 

19 of the ’399 patent. DDR also accused NLG and Digital 

River of inducing infringement of claim 17 of the ’572 

patent.

The jury found that NLG and Digital River directly 

infringed the asserted claims of the ’572 patent and that 

NLG directly infringed the asserted claims of the ’399 

patent, but that NLG and Digital River’s infringement 

was not willful. The jury found that NLG and Digital 

River did not induce infringement of claim 17 of the ’572

patent. The jury also found that the asserted claims were 

not invalid. The jury determined DDR was entitled to 

$750,000 in damages from both NLG and Digital River for 

infringing DDR’s patents. 

At the conclusion of trial, NLG and Digital River renewed motions for JMOL pursuant to Rule 50(b) of the 

Federal Rules of Civil Procedure (FRCP) on several 

grounds. NLG contended the asserted claims of the ’572 
DDR HOLDINGS, LLC v. HOTELS.COM, L.P. 9

and ’399 patents are invalid under 35 U.S.C. § 101 because the claims are directed to patent-ineligible subject 

matter and invalid under 35 U.S.C. § 112 ¶ 21 because the 

terms “look and feel” and “visually perceptible elements” 

are indefinite. NLG also contended that neither the jury’s 

finding of infringement nor its award of damages was

supported by substantial evidence. NLG also alleged the 

district court made several unfair and prejudicial evidentiary rulings.

Digital River contended that the asserted claims of 

the ’572 patent are invalid as either anticipated under 35 

U.S.C. § 102, obvious under 35 U.S.C. § 103, or indefinite 

under 35 U.S.C. § 112 ¶ 2. Digital River also contended 

that the jury’s finding of infringement was not supported 

by substantial evidence. Digital River moved for a new 

trial pursuant to FRCP 59.

The district court denied NLG and Digital River’s motions for JMOL and Digital River’s FRCP 59 motion for a 

new trial. Over the defendants’ objections, the district 

court awarded DDR an additional $284,404 in prejudgment interest pursuant to 35 U.S.C. § 284. The district 

court entered a final judgment in favor of DDR, and NLG 

and Digital River timely appealed. NLG and Digital 

River’s appeals were consolidated and fully briefed. Prior 

to oral argument, DDR and Digital River settled, and we 

granted Digital River’s motion to terminate its appeal. 

D.I. 65, 68. NLG’s appeal continued. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).

1 Paragraph 2 of 35 U.S.C. § 112 was replaced with 

newly designated § 112(b) when § 4(c) of the America 

Invents Act (AIA), Pub. L. No. 112-29, took effect on 

September 16, 2012. Because the applications resulting 

in the patents at issue in this case were filed before that 

date, we will refer to the pre-AIA version of § 112.

 
10 DDR HOLDINGS, LLC v. HOTELS.COM, L.P. 

II. DISCUSSION

Since the denial of a motion for JMOL is not patent

law-specific, regional circuit law applies. The Fifth Circuit reviews the denial of a JMOL motion de novo. See, 

e.g., Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1248 

(Fed. Cir. 2005). In the Fifth Circuit, JMOL is appropriate if “the facts and inferences point so strongly and 

overwhelmingly in favor of one party that the court concludes that reasonable jurors could not arrive at a contrary verdict.” Id. The Court “must presume that the jury 

resolved all factual disputes in the [prevailing party’s] 

favor.” Transocean Offshore Deepwater Drilling, Inc. v. 

Maersk Drilling USA, Inc., 699 F.3d 1340, 1347 (Fed. Cir. 

2012) (applying Fifth Circuit law to the review of a district court’s grant of JMOL). 

A. Anticipation

We turn first to the district court’s denial of Digital 

River’s motion for JMOL of invalidity of the ’572 patent 

based on 35 U.S.C. § 102(a). A patent claim is anticipated 

if a single prior art reference expressly or inherently 

discloses every limitation of the claim. See, e.g., Orion IP, 

LLC v. Hyundai Motor Am., 605 F.3d 967, 975 (Fed. Cir. 

2010). Anticipation challenges under § 102 must focus 

only on the limitations actually recited in the claims. See 

Constant v. Adv. Micro-Devices, Inc., 848 F.2d 1560, 

1570–71 (Fed. Cir. 1988) (finding “limitations [] not found 

anywhere in the claims” to be irrelevant to an anticipation challenge). Whether a reference discloses a limitation is a question of fact, and a jury’s findings on 

questions of fact are reviewed for substantial evidence. 

See, e.g., Dawn Equip. Co. v. Ky. Farms Inc., 140 F.3d 

1009, 1014 (Fed. Cir. 1998). Invalidity by anticipation 

must be proven by clear and convincing evidence. See

Microsoft Corp. v. i4i L.P., 131 S. Ct. 2238, 2242 (2011).

On appeal, the parties only dispute whether Digital 

River’s prior art Secure Sales System (SSS) satisfies the 
DDR HOLDINGS, LLC v. HOTELS.COM, L.P. 11

“look and feel” limitation; DDR does not dispute that the 

SSS satisfies every other limitation of the ’572 patent’s 

asserted claims. NLG, which adopted Digital River’s 

anticipation challenge to the ’572 patent,2 argues that no 

evidence supports the jury’s finding that the SSS does not 

disclose the “look and feel” limitation, since it showed the 

jury multiple examples of composite web pages generated 

by the SSS with a “look and feel” based on a set of “look 

and feel” elements from the corresponding host website. 

DDR contends that, as the district court determined, 

“it is up to the trier of fact to determine whether the 

combination of elements making up the overall appear2 Even though Digital River terminated its appeal 

prior to oral argument, it did not do so until after the 

parties had fully completed their briefing. In its own 

briefs, although only in footnotes, NLG incorporated by 

reference Digital River’s arguments on anticipation. 

Appellant’s Br. 43 n.23; Appellant’s Reply Br. 9 n.5. In a 

consolidated case such as here, Rule 28(i) of the Federal 

Rules of Appellate Procedure (FRAP) permits “any party 

[to] adopt by reference a part of another’s brief.” See, e.g., 

Pozen Inc. v. Par Pharm. Inc., 696 F.3d 1151, 1159 n.3 

(Fed. Cir. 2012); Aventis Pharma Deutschland GmbH v. 

Lupin, Ltd., 499 F.3d 1293, 1294 n.1 (Fed. Cir. 2007). 

Compare Microsoft Corp. v. DataTern, Inc., 755 F.3d 899, 

910 (Fed. Cir. 2014) (co-parties in non-consolidated appeals cannot use incorporation pursuant to FRAP 28(i) to 

exceed word count limits prescribed by FRAP 32(a)(7)). 

DDR implicitly concedes that NLG has adequately adopted Digital River’s anticipation defense as to the ’572 

patent, acknowledging that “[NLG] did not adopt Digital 

River’s anticipation defense or seek to extend it to prove 

anticipation of the ’399 patent, which has claims containing extra elements not found in the asserted claims of the 

’572 patent.” Appellee’s Br. 44 n.10 (emphasis added). 

 
12 DDR HOLDINGS, LLC v. HOTELS.COM, L.P. 

ance of a website has a similar ‘look and feel’ as compared 

to another website.” DDR Holdings, LLC v. Hotels.com, 

L.P., 954 F. Supp. 2d 509, 517 (E.D. Tex. 2013). DDR 

contends that the jury reviewed substantial evidence that 

Digital River’s SSS did not replicate the host website’s 

“look and feel” in terms of “overall appearance” and that 

the web pages generated by the SSS did not show “correspondence of overall appearance.” In particular, DDR 

argues that the SSS did not satisfy this limitation since it 

did not replicate a sufficient number of “look and feel” 

elements from the host web page. Appellee’s Br. 45–46.

We find that the record allows only one reasonable 

finding: clear and convincing evidence establishes that 

Digital River’s prior art SSS anticipates the asserted 

claims of the ’572 patent. The record lacks substantial

evidence to support the jury’s finding that the asserted 

claims of the ’572 patent are not anticipated. Therefore, 

the district court erred by denying the defendants’ motion 

for JMOL of invalidity of the ’572 patent under 35 U.S.C. 

§ 102(a).

Digital River’s prior art SSS was operational and sold 

to its first customer by August 12, 1996. J.A. 6618–23. 

By August 1997, more than a year before the filing date of 

the provisional application for the ’135 patent, Digital 

River’s SSS had attracted its 500th customer. J.A. 6257. 

Digital River advertised its SSS as a system for generating web pages that allowed website visitors to “purchase 

and download the digital products of their choice,” but 

still “retain[ed] the look and feel of [the host’s] site.” J.A. 

6202 (emphasis added). The SSS was activated when 

visitors on a host’s website clicked a “web site ‘buy’ button” hyperlink. J.A. 6320. Digital River’s advertisements 

explained that “[w]hen [website visitor] customers want to

purchase, they push the ‘buy’ button and are transferred 

immediately and transparently to the Digital River Central Commerce Server.” J.A. 6202. This component of the 

SSS then generated and served composite web pages to 
DDR HOLDINGS, LLC v. HOTELS.COM, L.P. 13

website visitors that incorporated “look and feel” elements 

of the host website and product information associated 

with the host website’s “web store” in a manner that 

“replicate[d] the look and feel of the [host’s] Web site.” 

J.A. 6320 (emphasis added). These “look and feel” elements and this product information content were stored 

by Digital River in a data warehouse and retrieved for 

incorporation into the generated composite web page 

based on a correlation with the “buy” button hyperlink on 

the host website. See id. In this way, Digital River’s SSS 

would allow “transaction[s to] take[] place in the selling 

environment [the host website had] created, surrounded 

by the look and feel of [the host website’s] identity. . . . 

There [would be] no sensation [for a website visitor] of 

being suddenly hustled off to another location.” J.A. 6123 

(emphasis added).

During trial, a Digital River witness testified at 

length on how the SSS generated composite web pages 

with “look and feel” elements from host websites, and 

operated the SSS for the jury. Digital River also showed 

the jury several composite web pages generated by the 

SSS for host websites before the earliest priority date of 

the ’572 patent, including a composite web page that 

incorporated several elements identified in DDR’s patents 

or by DDR’s expert at trial as “look and feel elements”: the 

host website’s logo, background color, and prominent 

circular icons. J.A. 8856–57 (composite web page), 7502 

(host website); see also J.A. 8858–61 (composite web page 

incorporating host website logo, colors, fonts), 6122 (example web page from host website).

The parties’ stipulated construction of “look and feel” 

requires the generated composite web page to include a 

set of elements from the host website, each of these elements being a “look and feel element” described in the 

specification that “convey[s] an overall appearance identifying a website.” J.A. 542. Consistent with the specification, the stipulated construction defines these “look and 
14 DDR HOLDINGS, LLC v. HOTELS.COM, L.P. 

feel elements” that “convey an overall appearance identifying a website” to “include logos, colors, page layout, 

navigation systems, frames, ‘mouse-over’ effects, or other 

elements that are consistent through some or all of a 

Host’s website.” Id.; see also ’572 patent, 14:11–14. 

Digital River’s SSS clearly satisfies this limitation. For 

example, Digital River showed the jury a host website 

that included a stylized logo, a particular background 

color, and prominent circular icons. J.A. 7502. The SSS 

generated a prior art composite web page that incorporated each of these “look and feel” elements. J.A. 8856–

57; see also J.A. 6172 (host website) and 6171 (SSSgenerated prior art composite web page incorporating 

logo, navigational menu, and color “look and feel” elements). And as explained above, the SSS was consistently promoted and advertised as creating a composite web 

page that retained the “look and feel” of the host website. 

E.g., J.A. 6123, 6202, 6320.

Both the district court and DDR introduced a limitation found neither in the ’572 patent’s claims nor the 

parties’ stipulated construction. In particular, the district 

court introduced a requirement that the generated composite web page have an “overall match” in appearance

with the host website, beyond what is expressly recited by 

the claims. DDR Holdings, 954 F. Supp. 2d at 517; see 

also Appellee’s Br. 47. There is nothing, however, in the 

parties’ stipulated construction of “look and feel,” the 

claim language, or the specification that requires the 

generated composite web page to match the host website 

or to incorporate a specific number, proportion, or selection of the identified “look and feel” elements on a host 

website. 

In order to satisfy this limitation, it is sufficient that 

“look and feel” elements identifying the host website are 

transferred to and displayed on the generated composite 

webpage. For example, independent claim 13 of the ’572 

patent merely requires that the generated composite web 
DDR HOLDINGS, LLC v. HOTELS.COM, L.P. 15

page have a “look and feel based on the look and feel 

description in the data store and content based on the 

commerce object associated wit[h] the link.” Independent 

claim 17 requires only that the generated composite web 

page have a “look and feel corresponding to the stored 

look and feel description” of the host website. There is no 

claim language requiring an “overall match” or a specific 

number of “look and feel” elements.

Further, the common specification explains that “[t]he 

look and feel is captured by selecting an example page 

[from] the host, retrieving the sample page from the host, 

identifying the look and feel elements from the sample 

page, and saving the identified look and feel elements.” 

’572 patent, 14:7–10. Nothing in the common specification suggests that satisfaction of the “look and feel” limitation requires more than mechanically identifying “look 

and feel elements” from a web page on the host website, 

storing these elements in a data store, and using these 

stored “look and feel elements” to create the “look and 

feel” of the generated composite web page. 

The jury’s determination that the SSS does not anticipate claims 13, 17, and 20 of the ’572 patent is not supported by substantial evidence. Therefore, the district 

court erred by denying the defendants’ motion for JMOL 

of invalidity of the ’572 patent under 35 U.S.C. § 102(a).3

B. Patent-eligible subject matter

NLG also contends that the district court erred by 

denying its motion for JMOL that the asserted claims of 

3 Neither Digital River nor NLG ever argued that 

the ’399 patent is invalid as anticipated by or obvious over 

prior art. We decline to speculate whether Digital River’s 

prior art SSS, either alone or in combination with other 

prior art, invalidates the ’399 patent under 35 U.S.C. 

§§ 102 or 103.

 
16 DDR HOLDINGS, LLC v. HOTELS.COM, L.P. 

the ’572 and ’399 patents are invalid under 35 U.S.C. 

§ 101. Since the ’572 patent is invalid as anticipated 

under 35 U.S.C. § 102(a), we focus on NLG’s § 101 challenge to claims 1, 3, and 19 of the ’399 patent. We conclude, as did the district court, that the asserted claims of 

the ’399 patent clear the § 101 hurdle. 

We review the district court’s determination of patent 

eligibility under 35 U.S.C. § 101 de novo. Dealertrack, 

Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012). In 

Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 

S. Ct. 1289, 1294 (2012), the Supreme Court set forth an 

analytical framework under § 101 to distinguish patents 

that claim patent-ineligible laws of nature, natural phenomena, and abstract ideas—or add too little to such 

underlying ineligible subject matter—from those that 

claim patent-eligible applications of those concepts. First, 

given the nature of the invention in this case, we determine whether the claims at issue are directed to a patentineligible abstract idea. Alice Corp. v. CLS Bank Int’l, 

134 S. Ct. 2347, 2355 (2014). If so, we then consider the 

elements of each claim—both individually and as an 

ordered combination—to determine whether the additional elements transform the nature of the claim into a 

patent-eligible application of that abstract idea. Id. This 

second step is the search for an “inventive concept,” or 

some element or combination of elements sufficient to 

ensure that the claim in practice amounts to “significantly 

more” than a patent on an ineligible concept. Id.

Distinguishing between claims that recite a patenteligible invention and claims that add too little to a patent-ineligible abstract concept can be difficult, as the line 

separating the two is not always clear. At one time, a 

computer-implemented invention was considered patenteligible so long as it produced a “useful, concrete and 

tangible result.” State St. Bank & Trust Co. v. Signature 

Fin. Grp., Inc., 149 F.3d 1368, 1373 (Fed. Cir. 1998)

(finding a machine that transformed data by a series of 
DDR HOLDINGS, LLC v. HOTELS.COM, L.P. 17

mathematical calculations to a final share price to be 

patent-eligible); see also In re Alappat, 33 F.3d 1526, 1544 

(Fed. Cir. 1994) (en banc). This understanding rested, in 

large part, on the view that such inventions crossed the 

eligibility threshold by virtue of being in the technological 

realm, the historical arena for patented inventions. See, 

e.g., In re Bilski, 545 F.3d 943, 952, 954–56 (Fed. Cir. 

2008) (en banc) (concluding that a patent-eligible process 

must either be “tied to a particular machine or apparatus” 

or transformed into a different state or thing, i.e., the 

“machine-or-transformation test”). 

While the Supreme Court in Bilski v. Kappos noted 

that the machine-or-transformation test is a “useful and 

important clue” for determining patent eligibility, 130 S. 

Ct. 3218, 3227 (2010), it is clear today that not all machine implementations are created equal. For example, in 

Mayo, the Supreme Court emphasized that satisfying the 

machine-or-transformation test, by itself, is not sufficient 

to render a claim patent-eligible, as not all transformations or machine implementations infuse an otherwise 

ineligible claim with an “inventive concept.” See 132 S. 

Ct. at 1301 (“[S]imply implementing a mathematical 

principle on a physical machine, namely a computer, [i]s 

not a patentable application of that principle.”) (describing Gottschalk v. Benson, 409 U.S. 63, 64 (1972)). And 

after Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise 

ineligible claim patent-eligible. 134 S. Ct. at 2358. The

bare fact that a computer exists in the physical rather 

than purely conceptual realm “is beside the point.” Id.

Although the Supreme Court did not “delimit the precise contours of the ‘abstract ideas’ category” in resolving 

Alice, 134 S. Ct. at 2356–57, over the course of several 

cases the Court has provided some important principles. 

We know that mathematical algorithms, including those 

executed on a generic computer, are abstract ideas. See

Benson, 409 U.S. at 64. We know that some fundamental 
18 DDR HOLDINGS, LLC v. HOTELS.COM, L.P. 

economic and conventional business practices are also 

abstract ideas. See Bilski, 130 S. Ct. at 3231 (finding the 

“fundamental economic practice” of hedging to be patent 

ineligible); Alice, 134 S. Ct. at 2356 (same for intermediated settlement). 

In some instances, patent-ineligible abstract ideas are 

plainly identifiable and divisible from the generic computer limitations recited by the remainder of the claim. 

For example, the Supreme Court in Alice determined that 

the claims at issue “simply instruct[ed] the practitioner to 

implement the abstract idea of intermediated settlement 

on a generic computer.” 134 S. Ct. at 2359. In Ultramercial, Inc. v. Hulu, LLC, ___ F.3d ___, 2014 WL 5904902, at 

*5 (Fed. Cir. Nov. 14, 2014), the claims merely recited the 

abstract idea of using advertising as a currency as applied 

to the particular technological environment of the Internet. In buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355

(Fed. Cir. 2014), the claims recited no more than using a 

computer to send and receive information over a network 

in order to implement the abstract idea of creating a 

“transaction performance guaranty.” In Accenture Global 

Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 

1344–45 (Fed. Cir. 2013), the claims merely recited “generalized software components arranged to implement an 

abstract concept [of generating insurance-policy-related 

tasks based on rules to be completed upon the occurrence 

of an event] on a computer.” And in Bancorp Servs., 

L.L.C. v. Sun Life Assur. Co. of Canada (U.S.), 687 F.3d 

1266, 1278 (Fed. Cir. 2012), the claims recited no more 

than the use of a computer “employed only for its most 

basic function, the performance of repetitive calculations,” 

to implement the abstract idea of managing a stable-value 

protected life insurance policy. Under Supreme Court 

precedent, the above claims were recited too broadly and 

generically to be considered sufficiently specific and 

meaningful applications of their underlying abstract 

ideas. Although many of the claims recited various com-
DDR HOLDINGS, LLC v. HOTELS.COM, L.P. 19

puter hardware elements, these claims in substance were 

directed to nothing more than the performance of an 

abstract business practice on the Internet or using a 

conventional computer. Such claims are not patenteligible. 

Against this background, we turn to the ’399 patent’s 

asserted claims. We begin our § 101 analysis at 

Mayo/Alice step one: determining whether the computerimplemented claims at issue here are “directed to” a 

patent-ineligible abstract idea.4 Here, we note that the 

’399 patent’s asserted claims do not recite a mathematical 

algorithm. Nor do they recite a fundamental economic or 

longstanding commercial practice. Although the claims 

address a business challenge (retaining website visitors), 

it is a challenge particular to the Internet. 

Indeed, identifying the precise nature of the abstract 

idea is not as straightforward as in Alice or some of our 

other recent abstract idea cases. NLG’s own varying 

formulations of the underlying abstract idea illustrate 

this difficulty. NLG characterizes the allegedly abstract 

idea in numerous ways, including “making two web pages 

look the same,” “syndicated commerce on the computer 

using the Internet,” and “making two e-commerce web 

pages look alike by using licensed trademarks, logos, color 

schemes and layouts.” See, e.g., Appellant’s Br. 18–20. 

The dissent characterizes DDR’s patents as describing the

entrepreneurial goal “that an online merchant’s sales can 

be increased if two web pages have the same ‘look and 

feel.’” Dissenting Op. 2. But as discussed below, under 

4 The parties do not dispute that the asserted system and method claims of the ’399 patent, for the purposes of § 101, are no different in substance. See Appellee Br. 

63; Appellant Br. 24. Thus, the form of the asserted 

claims (system or method) does not affect our analysis of 

their patent eligibility. See Alice, 134 S. Ct. at 2360.

 
20 DDR HOLDINGS, LLC v. HOTELS.COM, L.P. 

any of these characterizations of the abstract idea, the 

’399 patent’s claims satisfy Mayo/Alice step two.

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. 

In particular, the ’399 patent’s claims address the 

problem of retaining website visitors that, if adhering to 

the routine, conventional functioning of Internet hyperlink protocol, would be instantly transported away from a 

host’s website after “clicking” on an advertisement and 

activating a hyperlink. For example, asserted claim 19 

recites a system that, among other things, 1) stores “visually perceptible elements” corresponding to numerous 

host websites in a database, with each of the host websites displaying at least one link associated with a product 

or service of a third-party merchant, 2) on activation of 

this link by a website visitor, automatically identifies the 

host, and 3) instructs an Internet web server of an “outsource provider” to construct and serve to the visitor a 

new, hybrid web page that merges content associated 

with the products of the third-party merchant with the 

stored “visually perceptible elements” from the identified 

host website. See supra 5.

In more plain language, upon the click of an advertisement for a third-party product displayed on a host’s 

website, the visitor is no longer transported to the third 

party’s website. Instead, the patent claims call for an 

“outsource provider” having a web server which directs 

the visitor to an automatically-generated hybrid web page 
DDR HOLDINGS, LLC v. HOTELS.COM, L.P. 21

that combines visual “look and feel” elements from the 

host website and product information from the third-party 

merchant’s website related to the clicked advertisement.5 

In this way, rather than instantly losing visitors to the 

third-party’s website, the host website can instead send 

its visitors to a web page on the outsource provider’s 

server that 1) incorporates “look and feel” elements from 

the host website, and 2) provides visitors with the opportunity to purchase products from the third-party merchant without actually entering that merchant’s website.

The dissent suggests that the “store within a store” 

concept, such as a warehouse store that contains a kiosk 

for selling a third-party partner’s cruise vacation packages, is the pre-Internet analog of the ’399 patent’s asserted 

claims. Dissenting Op. 4. While that concept may have 

been well-known by the relevant timeframe, that practice 

did not have to account for the ephemeral nature of an 

Internet “location” or the near-instantaneous transport

between these locations made possible by standard Internet communication protocols, which introduces a problem 

that does not arise in the “brick and mortar” context. In 

particular, once a customer enters a physical warehouse 

store, that customer may encounter a kiosk selling third5 On a fundamental level, the creation of new compositions and products based on combining elements from 

different sources has long been a basis for patentable 

inventions. See, e.g., Parks v. Booth, 102 U.S. 96, 102 

(1880) (“Modern inventions very often consist merely of a 

new combination of old elements or devices, where nothing is or can be claimed except the new combination.”); 

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418–19 (2007) 

(“[I]nventions in most, if not all, instances rely upon 

building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in 

some sense, is already known.”).

 
22 DDR HOLDINGS, LLC v. HOTELS.COM, L.P. 

party cruise vacation packages. There is, however, no 

possibility that by walking up to this kiosk, the customer 

will be suddenly and completely transported outside the 

warehouse store and relocated to a separate physical 

venue associated with the third-party—the analog of what 

ordinarily occurs in “cyberspace” after the simple click of 

a hyperlink—where that customer could purchase a cruise 

package without any indication that they were previously 

browsing the aisles of the warehouse store, and without 

any need to “return” to the aisles of the store after completing the purchase. It is this challenge of retaining 

control over the attention of the customer in the context of 

the Internet that the ’399 patent’s claims address. 

We caution, however, that not all claims purporting to 

address Internet-centric challenges are eligible for patent. 

For example, in our recently-decided Ultramercial opinion, the patentee argued that its claims were “directed to 

a specific method of advertising and content distribution 

that was previously unknown and never employed on the 

Internet before.” 2014 WL 5904902, at *3. But this alone 

could not render its claims patent-eligible. In particular, 

we found the claims to merely recite the abstract idea of 

“offering media content in exchange for viewing an advertisement,” along with “routine additional steps such as 

updating an activity log, requiring a request from the

consumer to view the ad, restrictions on public access, and 

use of the Internet.” Id. at *5.

The ’399 patent’s claims are different enough in substance from those in Ultramercial because they do not 

broadly and generically claim “use of the Internet” to 

perform an abstract business practice (with insignificant 

added activity). Unlike the claims in Ultramercial, the 

claims at issue here specify how interactions with the 

Internet are manipulated to yield a desired result—a 

result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a 

hyperlink. Instead of the computer network operating in 
DDR HOLDINGS, LLC v. HOTELS.COM, L.P. 23

its normal, expected manner by sending the website 

visitor to the third-party website that appears to be 

connected with the clicked advertisement, the claimed 

system generates and directs the visitor to the abovedescribed hybrid web page that presents product information from the third-party and visual “look and feel” 

elements from the host website. When the limitations of 

the ’399 patent’s asserted claims are taken together as an 

ordered combination, the claims recite an invention that 

is not merely the routine or conventional use of the Internet.

It is also clear that the claims at issue do not attempt 

to preempt every application of the idea of increasing 

sales by making two web pages look the same, or of any 

other variant suggested by NLG. Rather, they recite a 

specific way to automate the creation of a composite web 

page by an “outsource provider” that incorporates elements from multiple sources in order to solve a problem 

faced by websites on the Internet. As a result, the ’399 

patent’s claims include “additional features” that ensure 

the claims are “more than a drafting effort designed to 

monopolize the [abstract idea].” Alice, 134 S. Ct. at 2357. 

In short, the claimed solution amounts to an inventive 

concept for resolving this particular Internet-centric 

problem, rendering the claims patent-eligible.

In sum, the ’399 patent’s claims are unlike the claims 

in Alice, Ultramercial, buySAFE, Accenture, and Bancorp

that were found to be “directed to” little more than an 

abstract concept. To be sure, the ’399 patent’s claims do 

not recite an invention as technologically complex as an 

improved, particularized method of digital data compression. But nor do they recite a commonplace business 

method aimed at processing business information, applying a known business process to the particular technological environment of the Internet, or creating or altering 

contractual relations using generic computer functions 

and conventional network operations, such as the claims 
24 DDR HOLDINGS, LLC v. HOTELS.COM, L.P. 

in Alice, Ultramercial, buySAFE, Accenture, and Bancorp. 

The claimed system, though used by businesses, is patenteligible under § 101.6 The district court did not err in 

denying NLG’s motion for JMOL of invalidity under 35 

U.S.C. § 101 as to these claims. 

C. Indefiniteness

In its motion for JMOL of invalidity, NLG also sought 

to invalidate the asserted claims of the ’572 and ’399 

patents on the ground that the terms “look and feel” and 

“visually perceptible elements” render the claims indefinite because they are impermissibly subjective and fail to 

notify the public of the bounds of the claimed invention.7 

On appeal, NLG contends that the district court erred by 

denying its motion. We disagree.

Since the ’572 patent’s asserted claims are invalid under 35 U.S.C. § 102(a), we need not decide NLG’s indefiniteness challenge to the patent based on the term “look 

and feel.” We thus focus our analysis on the term “visually perceptible elements” in the ’399 patent’s asserted 

claims. The parties stipulated to a construction of the 

6 Of course, patent-eligible does not mean patentable under, e.g., 35 U.S.C. §§ 102 and 103. As discussed in 

footnote 3 supra, the patentability of the ’399 patent’s 

asserted claims is not before us.

7 Though NLG contended that the term “look and 

feel” is indefinite before the district court, on appeal NLG 

shifts its focus to “look and feel description.” “Look and 

feel” and “look and feel description,” while related, are 

recited as separate terms within the asserted claims. 

E.g., ’572 patent, claim 13 (“. . . a look and feel based on 

the look and feel description in the data store . . .”). NLG 

provides no explanation or justification for its shift in 

focus. As does DDR in its briefing, we focus our analysis 

on the term “look and feel.”

 
DDR HOLDINGS, LLC v. HOTELS.COM, L.P. 25

term as “‘look and feel’ elements that can be seen.” J.A. 

542. NLG argues that the term “is effectively the same as 

‘look and feel description,’” and therefore lacks definiteness for the same reasons. Appellant’s Br. 30 n.12.

Indefiniteness is a question of law we review de novo. 

Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 

1365–66 (Fed. Cir. 2011). The definiteness requirement is 

set forth in 35 U.S.C. § 112 ¶ 2, which states that “[t]he 

specification shall conclude with one or more claims 

particularly pointing out and distinctly claiming the 

subject matter which the applicant regards as his invention.” The definiteness requirement focuses on whether 

“a patent’s claims, viewed in light of the specification and 

prosecution history, inform those skilled in the art about 

the scope of the invention with reasonable certainty.” 

Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 

2129 (2014). The inquiry “trains on the understanding of 

a skilled artisan at the time of the patent application.” 

Id. at 2130.

When a claim term “depend[s] solely on the unrestrained, subjective opinion of a particular individual 

purportedly practicing the invention,” without sufficient 

guidance in the specification to provide objective direction 

to one of skill in the art, the term is indefinite. Datamize, 

LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1350 (Fed. 

Cir. 2005) (finding “aesthetically pleasing” to be indefinite 

because the specification lacked any objective definition of 

the term). For some facially subjective terms, the definiteness requirement is not satisfied by merely offering 

examples that satisfy the term within the specification. 

See Interval Licensing LLC v. AOL, Inc., 764 F.3d 1364, 

1371–73 (Fed. Cir. 2014) (finding a single example of the 

term “unobtrusive manner” in the specification did not 

outline the claims to a skilled artisan with reasonable 

certainty). For other terms like, for example, terms of 

degree, specific and unequivocal examples may be sufficient to provide a skilled artisan with clear notice of what 
26 DDR HOLDINGS, LLC v. HOTELS.COM, L.P. 

is claimed. See Enzo Biochem, Inc. v. Applera Corp., 599 

F.3d 1325, 1334–35 (Fed. Cir. 2010) (finding the phrase 

“not interfering substantially” to be definite where intrinsic evidence provided multiple examples that would allow 

a skilled artisan to determine whether a particular chemical bond linkage group would “interfer[e] substantially” 

with hybridization).

Here, though NLG attempts to characterize “look and 

feel” as purely subjective, the evidence demonstrates 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. The specification 

explains that “the look and feel is captured by selecting an 

example page [from] the host, retrieving the sample page 

from the host, identifying the look and feel elements from 

the sample page and saving the identified look and feel 

elements.” ’399 patent, 13:5–9. “Look and feel elements” 

are described as “includ[ing] logos, colors, page layout, 

navigation systems, frames, ‘mouse-over’ effects, or other 

elements that are consistent through some or all of a 

Host’s website.” Id. at 13:9–12. DDR’s expert on infringement testified that a skilled artisan would interpret 

these “other elements” as elements such as headers, 

footers, fonts, and images. J.A. 3584.

These examples are consistent with the established 

meaning of the term “look and feel” in the art, as demonstrated by Digital River’s own evidence at trial. For 

example, as discussed in Section II. A., Digital River 

advertised its prior art SSS as generating composite web 

pages that displayed third-party merchandise but also 

replicated the “‘look and feel’ of the [host website’s] identity.” J.A. 6123. Digital River also explained that the 

composite web pages generated by its SSS “retain[ed] the 

look and feel of the [host’s web]site.” J.A. 6202. At trial, 

Digital River conceded that it understood the meaning of 

“look and feel.” J.A. 4146–47 (“Q. And Digital River 

understood what it meant when it said: we’ll match your 
DDR HOLDINGS, LLC v. HOTELS.COM, L.P. 27

look and feel, right? A. Yes, sir.”). Digital River also 

admitted that its customers understood the meaning of 

“look and feel.” J.A. 4199 (“Q. . . . [S]omebody who is 

reading Digital River’s [advertising] document should 

understand what Digital River means when it says 

matching look and feel, right? . . . A. Yes, sir.”).

In sum, “look and feel” is not a facially subjective term 

like “unobtrusive manner” in Interval or “aesthetically 

pleasing” in Datamize. Rather, as demonstrated by 

Digital River’s own advertisements for its prior art SSS

and its admissions at trial, the term had an established 

meaning in the art by the relevant timeframe. The examples of “look and feel” elements disclosed in the specification are consistent with the term’s established meaning. 

In short, the term “visually perceptible elements,” or 

“‘look and feel’ elements that can be seen,” viewed in light 

of the specification and prosecution history, informed 

those skilled in the art about the scope of the ’399 patent’s 

claims with reasonable certainty. The district court did 

not err by denying NLG’s motion for JMOL of invalidity of 

the ’399 patent under 35 U.S.C. § 112 ¶ 2. 

D. Infringement

NLG also contends that the district court erred by 

denying its motion for JMOL of noninfringement as to 

both the ’572 and ’399 patents. Since the ’572 patent is 

invalid under 35 U.S.C. § 102(a), we address only NLG’s 

noninfringement appeal of the ’399 patent. We find, as 

did the district court, that the jury was presented with 

substantial evidence on which to base its finding that 

NLG infringes the asserted claims of the ’399 patent.

NLG argues that the jury’s finding that NLG’s accused websites satisfy the “visually perceptible elements” 

limitation of the asserted claims is unsupported. NLG 

further argues that DDR failed to introduce evidence that 

NLG’s accused system automatically identifies or recognizes the source web page as required by claims 1 and 19 
28 DDR HOLDINGS, LLC v. HOTELS.COM, L.P. 

of the ’399 patent. NLG also argues that DDR only 

showed the jury screenshot images of the accused websites running NLG’s e-commerce system on a single day, 

and thus did not provide evidence of NLG’s alleged infringement throughout the entire damages period. 

The record tells a different tale. For the “visually perceptible elements” limitation, the jury viewed screenshot 

images from nine NLG-partner host websites and their

corresponding accused NLG-operated composite web 

pages. DDR’s expert on infringement also presented the 

jury with lists of the “look and feel elements” from each 

host website allegedly incorporated in a corresponding 

NLG-generated composite web page and opined that the 

accused composite web pages satisfied the limitation. The 

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.

As for the other contested limitations of the ’399 patent’s asserted claims, DDR’s expert on infringement 

testified that on activation of a link on an NLG-partner 

host website corresponding to an NLG-generated composite web page, a keyword identifier is sent to NLG’s ecommerce web server (e.g., “OBWEB” for Orbitz’s host 

website), and a processor therein determines the location 

and identity of the host website (e.g., Orbitz). The jury 

was free to credit this testimony as evidence that NLG’s 

accused e-commerce system “automatically . . . recogniz[es]” or “automatically identif[ies]” the source page “on 

which the link has been activated.”

NLG’s argument that DDR provided the jury with 

screenshot images of NLG’s accused composite web pages—and thus evidence of infringement—for only one day 

appears to be more relevant to damages than to infringement. Regardless, NLG’s contention is without merit. 

DDR’s expert testified that he had examined NLG’s 
DDR HOLDINGS, LLC v. HOTELS.COM, L.P. 29

accused system throughout the entire period of alleged 

infringement, including any changes in its software 

source code, deposition testimony on its operation, and, 

via the Internet Archive, prior versions of accused composite web pages. Based on his review, DDR’s expert testified that nothing about NLG’s accused system “had 

changed in any substantial way” during this period. J.A. 

3751–52. Substantial evidence supports the jury’s finding 

that NLG’s accused system infringes the ’399 patent, and 

thus the district court did not err in denying NLG’s motion for JMOL of noninfringement.

E. Damages

DDR sought $6.04 million in damages for NLG’s infringement of the ’572 and ’399 patents; NLG countered 

with $375,000. The parties agreed on a verdict form that 

instructed the jury to award a single sum to compensate 

DDR for NLG’s infringement of the asserted claims found 

to be infringed and not invalid. J.A. 3080. The jury 

awarded DDR $750,000 in damages for NLG’s infringement, without specifying how this award was apportioned 

between the ’572 and the ’399 patents.

Because we find the ’572 patent invalid as anticipated, we vacate the damages award. This could warrant a 

new trial on damages. See Verizon Servs. Corp. v. Vonage 

Holdings Corp., 503 F.3d 1295, 1310 (Fed. Cir. 2007). 

NLG did not, however, move for a new trial under FRCP 

59 and may not have preserved its recourse to this option. 

DDR Holdings, 954 F. Supp. 2d at 522 (“Interestingly 

however, NLG does not move for a new trial pursuant to 

Rule 59.”). We remand to the district court to determine 

the effect—if any—of our invalidation of the ’572 patent 

on the jury’s damages award.8

8 We note that NLG’s contention that the jury’s 

damages award was “grossly excessive” because its ac-

 
30 DDR HOLDINGS, LLC v. HOTELS.COM, L.P. 

F. Prejudgment Interest

The district court also awarded DDR prejudgment interest. NLG contends that DDR should not be entitled to 

any prejudgment interest because it is a non-practicing 

entity and at a minimum, DDR should not be entitled to 

any prejudgment interest during a four-year stay in 

litigation since the stay was the result of DDR’s request 

for ex parte reexamination of the ’135 and ’572 patents.

We review the district court’s award of prejudgment 

interest for an abuse of discretion. See Telcordia Techs., 

Inc. v. Cisco Sys., Inc., 612 F.3d 1365, 1377 (Fed. Cir. 

2010); see also Gen. Motors Corp. v. Devex Corp., 461 U.S. 

648, 657 (1983) (“[A] decision to award prejudgment 

interest will only be set aside if it constitutes an abuse of 

discretion.”). Under 35 U.S.C. § 284, after a finding of 

infringement, the court “shall award . . . damages . . . 

together with interest and costs.” (emphases added). 

Prejudgment interest should ordinarily be awarded 

absent some justification for withholding such an award. 

Gen. Motors, 461 U.S. at 657; see also Energy Transp. 

Grp., Inc. v. William Demant Holding A/S, 697 F.3d 

1342, 1358 (Fed. Cir. 2012) (“The award of pre-judgment 

interest is the rule, not the exception.”) (quotation and 

citation omitted).

NLG cites no case law suggesting that prevailing nonpracticing entities are not entitled to prejudgment interest. We decline to create such a statutory exception. See

Energy Transp., 697 F.3d at 1358 (“The district court did 

cused websites infringed for only one day is based on a 

flawed premise and is without merit. As the district court 

explained, NLG cannot attempt to “reverse engineer the 

jury’s math . . . and use its substituted, and purely speculative, analysis to call the award excessive.” DDR Holdings, 954 F. Supp. 2d at 530.

 
DDR HOLDINGS, LLC v. HOTELS.COM, L.P. 31

not abuse its discretion in this case by following the 

standard rule of awarding pre-judgment interest.”). 

However, since the ’572 patent is invalid, 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. Nickson Indus., Inc. v. Rol 

Mfg. Co., 847 F.2d 795, 800 (Fed. Cir. 1988) (“Generally, 

prejudgment interest should be awarded from the date of 

infringement to the date of judgment.”). Since the ’399 

patent did not issue until after the stay was lifted in 2010, 

we need not determine whether DDR is entitled to prejudgment interest during the pendency of the contested 

stay.

We have considered the parties’ remaining arguments 

and find them unpersuasive.

III. CONCLUSION

In large part, we affirm the district court. The asserted claims of the ’572 patent, however, are anticipated by 

Digital River’s prior art Secure Sales System under 35 

U.S.C. § 102(a), and no substantial evidence supports the 

jury’s contrary finding. As such, the district court erred 

in denying defendants’ motion for JMOL of invalidity as 

to the ’572 patent. We vacate the award of damages and 

prejudgment interest to DDR based on NLG’s infringement of the ’572 and ’399 patents and remand to the 

district court in order to determine the damages and

prejudgment interest attributable solely to NLG’s infringement of the ’399 patent. 

AFFIRMED IN PART, REVERSED IN PART, AND 

REMANDED

COSTS

No costs.
United States Court of Appeals 

for the Federal Circuit ______________________ 

DDR HOLDINGS, LLC,

Plaintiff-Appellee,

v.

HOTELS.COM, L.P., CENDANT TRAVEL 

DISTRIBUTION SERVICES GROUP, INC., 

EXPEDIA, INC., TRAVELOCITY.COM, L.P., 

SITE59.COM, LLC, INTERNATIONAL CRUISE & 

EXCURSION GALLERY, INC., 

OURVACATIONSTORE, INC., INTERNETWORK 

PUBLISHING CORPORATION, AND ORBITZ 

WORLDWIDE, LLC,

Defendants,

AND

NATIONAL LEISURE GROUP, INC. AND 

WORLD TRAVEL HOLDINGS, INC.,

Defendants-Appellants,

AND

DIGITAL RIVER, INC.,

Defendant.

______________________ 

2013-1505

______________________ 
2 DDR HOLDINGS, LLC v. HOTELS.COM, L.P. 

MAYER, Circuit Judge, dissenting.

I respectfully dissent. The claims asserted by DDR 

Holdings, LLC (“DDR”) fall outside 35 U.S.C. § 101 because they simply describe an abstract concept—that an 

online merchant’s sales can be increased if two web pages 

have the same “look and feel”—and apply that concept 

using a generic computer.

I.

The common specification of DDR’s patents notes that 

an online merchant will often lose customers when those 

customers click on an advertisement from a third-party 

vendor that has been displayed on the original merchant’s 

web page. See U.S. Patent No. 6,993,572 (the “’572 patent”) col.2 ll.30–33. The specification explains, however, 

that the original merchant could potentially avoid “the 

loss of hard-won visitor traffic,” id. col.2 ll.64–65, if he 

were able to dupe customers into believing that they were 

still on the merchant’s web page even when they were 

actually viewing goods from a third-party vendor, id. col.2 

ll.26–65. Notably, though, DDR’s patents are very vague 

as to how this duping is to occur, indicating only that the 

web page of the original merchant and that of the thirdparty vendor should be made to look alike using “visually 

perceptible elements.” See U.S. Patent No. 7,818,399 (the 

“’399 patent”) col.28 ll.31–32 (requiring the use of a “plurality of visually perceptible elements visually corresponding to the [original merchant’s web] page”). DDR’s 

patents fail to meet the demands of section 101 because 

they describe a goal—confusing consumers by making two 

web pages look alike—but disclose no new technology, or 

“inventive concept,” Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294 (2012), for achieving that goal. See O’Reilly v. Morse, 56 U.S. (15 How.) 62, 

120 (1854) (rejecting a claim which covered “an effect 

produced by the use of electro-magnetism distinct from 

the process or machinery necessary to produce it”); In re 
DDR HOLDINGS, LLC v. HOTELS.COM, L.P. 3

Brooks, 90 F.2d 106, 107–08 (CCPA 1937) (“It is for the 

discovery or invention of some practicable method or 

means of producing a beneficial result or effect, that a 

patent is granted, and not for the result or effect itself.” 

(emphasis added) (citations and internal quotation marks 

omitted)).

DDR’s patents are long on obfuscation but short on 

substance. Indeed, much of what they disclose is so 

rudimentary that it borders on the comical. For example, 

the patents explain that two web pages are likely to look 

alike if they are the same color, have the same page 

layout, and display the same logos. See ’572 patent col.14 

ll.5–18. The recited computer limitations, moreover, are 

merely generic. The claims describe use of a “data store,” 

a “web page having a link,” and a “computer processor,” 

id. col.29 ll.1–13, all conventional elements long-used in ecommerce. Because DDR’s claims, like those at issue in 

Alice Corporation v. CLS Bank International, “simply 

instruct the practitioner to implement [an] abstract 

idea . . . on a generic computer,” they do not meet section 

101. 134 S. Ct. 2347, 2359 (2014); see id. at 2360 (rejecting claims requiring a “data processing system’” with a 

“communications controller” and a “data storage unit” as 

“purely functional and generic” (citations and internal 

quotation marks omitted)); Accenture Global Servs., 

GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1344 

(Fed. Cir. 2013) (rejecting claims requiring “a combination 

of computer components including an insurance transaction database, a task library database, a client component, and a server component, which include[d] an event 

processor, a task engine, and a task assistant”).

II.

The court concludes that the asserted claims of 

DDR’s ’399 patent fall within section 101 because “they do 

not merely recite the performance of some business practice known from the pre-Internet world along with the 
4 DDR HOLDINGS, LLC v. HOTELS.COM, L.P. 

requirement to perform it on the Internet.” Ante at 20. 

This is incorrect. DDR’s claims do, in fact, simply take a

well-known and widely-applied business practice and 

apply it using a generic computer and the Internet. The 

idea of having a “store within a store” was in widespread 

use well before the dawn of e-commerce. For example, 

National Leisure Group, Inc. (“NLG”), one of the defendants here, previously “sold vacations at . . . BJ’s Wholesale Clubs through point of purchase displays in the 45 

BJ’s Clubs along the Eastern Seaboard.” Br. of Defendants-Appellants National Leisure Group, Inc. and World 

Travel Holdings, Inc. at 4. DDR’s patents are directed to 

the same concept. Just as visitors to BJ’s Wholesale 

Clubs could purchase travel products from NLG without 

leaving the BJ’s warehouse, the claimed system permits a 

person to purchase goods from a third-party vendor, but 

still have the visual “impression that she is viewing pages 

served by the [original host merchant].” ’399 patent col.3 

ll.23–24; see ante at 3 (explaining that DDR’s claimed 

system “permits a website visitor, in a sense, to be in two 

places at the same time”). Indeed, any doubt as to whether the claimed system is merely an Internet iteration of 

an established business practice is laid to rest by the fact 

that one of the named inventors acknowledged that the 

innovative aspect of his claimed invention was “[t]aking 

something that worked in the real world and doing it on 

the Internet.” J.A. 03208.

Alice articulated a technological arts test for patent 

eligibility. 134 S. Ct. at 2359 (explaining that the claimed

method fell outside section 101 because it did not “improve the functioning of the computer itself” or “effect an 

improvement in any other technology or technical field”). 

Here, the court correctly recognizes Alice’s technological 

arts standard, but applies it in a deficient manner. According to the court, DDR’s claims fall within section 101 

because the “solution” they offer “is necessarily rooted in 

computer technology in order to overcome a problem 
DDR HOLDINGS, LLC v. HOTELS.COM, L.P. 5

specifically arising in the realm of computer networks.” 

Ante at 20 (emphasis added). The solution offered by 

DDR’s claims, however, is not rooted in any new computer 

technology. Its patents address the problem of preventing 

online merchants from losing “hard-won visitor traffic,” ’572 patent col.2 ll.64–65, and the solution they offer 

is an entrepreneurial, rather than a technological, one. 

DDR has admitted that it did not invent any of the generic computer elements disclosed in its claims. J.A. 3311–

16. There is no dispute, moreover, that at the time of the 

claimed invention the use of hyperlinks to divert consumers to particular web pages was a well-understood and 

widely-used technique. See ’399 patent col.1 ll.29–52. 

While DDR’s patents describe the potential advantages of 

making two web pages look alike, they do not disclose any 

non-conventional technology for capturing the “look and 

feel” of a host website or for giving two web pages a similar appearance. See Alice, 134 S. Ct. at 2360 (“[W]hat 

petitioner characterizes as specific hardware . . . is purely 

functional and generic.”); Accenture, 728 F.3d at 1345 

(rejecting claims that contained no “detailed software 

implementation guidelines”). DDR’s patents fall outside 

section 101 because they simply “tak[e] existing information”—the visual appearance of a host merchant’s 

website—and use conventional technology to “organiz[e] 

this information into a new form.” Digitech Image Techs., 

LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. 

Cir. 2014); see Mayo, 132 S. Ct. at 1298 (emphasizing that 

reciting “well-understood, routine, [or] conventional 

activity” does not impart patent eligibility). 

In concluding that DDR’s claims meet the demands of 

section 101, the court focuses on the fact that “they recite 

a specific way to automate the creation of a composite web 

page . . . .” Ante at 23 (emphasis added). The Supreme 

Court, however, has emphatically rejected the idea that 

claims become patent eligible simply because they disclose a specific solution to a particular problem. See 
6 DDR HOLDINGS, LLC v. HOTELS.COM, L.P. 

Bilski v. Kappos, 561 U.S. 593, 599–601 (2010) (concluding that claims fell outside section 101 notwithstanding 

the fact that they disclosed a very specific method of 

hedging against price increases); Parker v. Flook, 437 U.S. 

584, 593 (1978) (rejecting the argument “that if a process 

application implements a principle in some specific fashion, it automatically falls within the patentable subject 

matter of § 101”). Indeed, although the claims at issue in 

Alice described a very specific method for conducting 

intermediated settlement, the Court nonetheless unanimously concluded that they fell outside section 101. 134 

S. Ct. at 2358–60.

Nor is the fact that the claims address an “Internetcentric problem,” ante at 23, sufficient to render them 

patent eligible. The Supreme Court has repeatedly made 

clear that “limiting the use of an abstract idea to a particular technological environment” is insufficient to confer 

patent eligibility. Alice, 134 S. Ct. at 2360 (citations and 

internal quotation marks omitted); see also Mayo, 132 S. 

Ct. at 1294; Bilski, 561 U.S. at 610. Accordingly, the fact 

that DDR’s system operates “in the context of the Internet,” ante at 22, does not bring it within patentable subject matter.

The potential scope of DDR’s patents is staggering, 

arguably covering vast swaths of Internet commerce. 

DDR has already brought infringement actions against 

ten defendants, including Digital River, Inc., Expedia, 

Inc., Travelocity.com, L.P., and Orbitz Worldwide, LLC. 

See J.A. 255–63; ante at 7. DDR’s claims are patent 

ineligible because their broad and sweeping reach is 

vastly disproportionate to their minimal technological 

disclosure. See Mayo, 132 S. Ct. at 1303 (In assessing 

patent eligibility, “the underlying functional concern . . . is 

a relative one: how much future innovation is foreclosed 

relative to the contribution of the inventor.”). 
DDR HOLDINGS, LLC v. HOTELS.COM, L.P. 7

Alice made clear that claims untethered to any advance in science or technology do not pass muster under 

section 101. 134 S. Ct. at 2359. Viewed as a whole, 

DDR’s claims contain no more than an abstract idea for 

increasing sales implemented via “some unspecified, 

generic computer,” id. at 2360. The inventive concept, if 

any, embedded in DDR’s claims is an idea for “retaining 

control over the attention of the customer,” ante at 22. 

Because this purported inventive concept is an entrepreneurial rather than a technological one, DDR’s claims are 

not patentable.