Holding: The deletion of a word, or words, from a provisional application in the nonprovisional patent can be considered to inform claim construction of claim terms in the nonprovisional patent. Incorporation by reference of the provisional application into the nonprovisional patent does not reinstate the deleted term into the nonprovisional patent.
DDR Holdings owns US Patent No. 7,818,399 relating to generating a composite web page that combines visual elements of a host website with content from a third-party merchant. This e-commerce system includes three main parties: the merchant, the host, and an outsource provider. The outsource provider acts as an intermediary between the host and the merchant and creates a system that allows a customer to shop in a merchant-controlled storefront within the design of the host website.
At the district court, the parties argued over the claim construction of the term “merchants.” DDR proposed that merchants are producers, distributors, or resellers of goods or services to be sold. Priceline proposed that merchants be construed only as producers, distributors, or resellers of goods.
Claim terms are generally given their plain and ordinary meaning to one of skill in the art when read in the context of the specification and the prosecution history. The exceptions to this rule are when the patentee acts as his or her own lexicographer and provides their own definition or when the patentee disavows claim scope in the specification or during prosecution.
In this case, the construction of the term “merchants” depends on the written description of the ‘399 Patent and the provisional application to which it claims priority. In one section, the provisional application describes merchants as producers of goods to be sold through the outsource provider, while another section of the provisional application describes merchants as producers of products and services. However, the specification of the ‘399 Patent merely describes the merchants as producers, distributors, or resellers of goods to be sold through the outsource provider and does not mention merchants as providers of services.
The Federal Court found the deletion of the word services by the patent drafter between the provisional application and the nonprovisional patent specification to be significant when determining the correct construction of the term “merchants.” The drafter of the ‘399 Patent made a choice to remove the reference to merchants as purveyors of both goods and services and to only discuss merchants as purveyors of goods. The Federal Circuit construed this omission to indicate that the term “merchants” is only supposed to apply to sellers of goods and does not apply to sellers of services.
Incorporating the provisional application by reference into the specification of the nonprovisional application does not correct the deletion of words from the provisional application. The host patent provides the context that determines the impact that the patent that is incorporated by reference has on the construction of claim terms in the host patent. In Finjan LLC v. ESET, LLC, 51 F. 4th 1377 (Fed. Cir. 2022), the Federal Circuit held that the use of a restrictive term in an earlier application that is incorporated by reference does not reinstate that term in the later patent if the term is purposely deleted in the later patent. In this case, the deletion of the description of merchants providing services in addition to goods was clear and unambiguous, and a person of skill in the art would assume that the removal of the description of merchants providing services means that the term “merchants” only refers to sellers of goods.
DDR additionally argued that Priceline was collaterally estopped from suggesting that the ‘399 Patent contained a definition for the term “merchant” since the PTAB already decided that the specification of the ‘399 Patent did not provide a definition that was different than the plain and ordinary meaning. However, neither the Federal Circuit nor the district court is bound by the PTAB’s claim construction since the IPR was decided while the PTAB was still using the broadest reasonable interpretation standard instead of the Phillips standard for claim construction in IPRs. Since the claim construction standard at the PTAB was different for the IPR, the issue preclusion doctrine does not apply.
Federal Circuit Precedential 
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