In the latest installment of Knobbe Martens’ Law360 column on noteworthy Federal Circuit decisions, partners Sean Murray and Jeremiah Helm discuss the outcome of DDR Holdings LLC v. Priceline.com LLC.
Murray and Helm explain how the ruling demonstrates the complexity of patent law and highlights that “even the most axiomatic of hornbook rules have exceptions.”
In DDR v. Priceline.com, the dispute centered around a DDR patent covering methods for developing a specific type of webpage. The authors provide background on the case, including DDR’s success during inter partes review proceedings that seemed to foreshadow a ruling in their favor at the U.S. District Court for the District of Delaware. However, due to discrepancies between the patent’s provisional application and nonprovisional application, the district court ruled against DDR and the Federal Circuit upheld the court’s summary judgment of noninfringement.
Murray and Helm maintain that the DDR decision “provides useful lessons” for patent holders and practitioners. They advise caution when filing a patent application that claims priority to a provisional application and emphasize the importance of carefully comparing the two documents for any substantive changes before filing the nonprovisional application.
The authors conclude, “As the DDR decision demonstrates, any arguable change in the scope of the invention from the provisional to the nonprovisional application could later be deemed an intentional evolution in the applicant’s understanding of the invention.”
Read the full article here.
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