DDR Holdings v. Priceline.com: a cautionary tale for provisional applicants

In US patent law, a provisional application is a ‘placeholder’ that allows an applicant to file without a formal patent claim, often before the idea is fully developed, to secure an earlier priority date. However, provisional applications are typically low-budget projects, which can result in them being hastily drafted. This challenges the patent drafter responsible for converting the provisional application into a fully developed non-provisional application. On one hand, the drafter may feel compelled to refine and enhance the provisional application. On the other hand, modifying the text of the provisional application carries the risk of undesirable legal consequences. While it is widely understood that omitting material from the provisional application in the non-provisional application can result in the loss of the earlier priority date, this article will explore another risk: changing the text of the provisional application could unintentionally lead to the disavowal of the claim scope, as recently ruled by the Federal Circuit.

In DDR Holdings, LLC v. Priceline.com LLC, 122 F.4th 911 (Fed. Cir. 2024), the Federal Circuit held that the omission of an example from the definition of a term in a non-provisional application, as compared to its provisional application, can constitute a disavowal of claim scope.

The patent-in-question, US Patent No. 7,818,399 (the ’399 Patent), relates to generating a composite web page that combines certain visual elements of a “host” website with content from a third-party “merchant.” Id. at 913. The term-to-be-constructed in this case is “merchant.” Id. at 915. The ’399 Patent claims priority from a provisional application, which defined “merchant” as “producers, manufacturers, and select distributors of products or services.” Id. (emphasis added). However, the non-provisional application omitted the word “services” in the specification and described merchants as purveyors of “goods” alone – the text of the ’399 Patent defined “merchants” as “producers, distributors, or resellers of the goods.” Id. at 915-16 (emphasis added).

The Federal Circuit interpreted this omission of “services” in the non-provisional application as a disavowal of the broader scope of the term “merchant.” Id. The court cited the landmark case Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005), stating that “[w]hen construing claims, this court looks to how a skilled artisan would read the claim term ‘in the context of the entire patent,’ including the specification and prosecution history.” DDR Holdings, 122 F.4th at 916 (quoting Phillips, 415 F.3d at 1313) (emphasis added). The court further noted that “the deletion made by the patent drafter between the provisional application and the patent specification is highly significant.” Id. Hence, the court concluded that “a skilled artisan would deem significant the ’399 [P]atent specification’s deletion of the provisional application’s reference to merchants as purveyors of services.” Id. at 917.

The court further noted that their conclusion is not “undermined” because the provisional application was incorporated by reference in the ’399 Patent. Id. In reaching this conclusion, the court cited an earlier case Finjan LLC v. ESET, LLC, 51 F.4th 1377 (Fed. Cir. 2022), explaining that “[t]he use of a restrictive term in an earlier application does not reinstate that term in a later patent that purposely deletes the term, even if the earlier patent is incorporated by reference.” DDR Holdings, 122 F.4th at 917 (quoting Finjan, 51 F.4th at 1383).

This case serves as a cautionary tale for patent drafters. In reality, it is highly unlikely that a “skilled artisan” would meticulously compare the provisional and non-provisional applications word by word and regard every omission as carrying significant weight. However, case law dictates that we, as patent professionals, must treat any differences between the provisional and non-provisional applications with the utmost care. To minimize the risk of unintentionally disavowing claim scope, the safest approach is to copy the provisional application verbatim, even if this results in a less polished non-provisional application. Attempting to refine any imperfections in a provisional application — often drafted hastily — is not advisable. On a last note, as the Federal Circuit has suggested, simply incorporating the provisional by reference will not resolve this issue.

← Back to News