Patent Owner Beware: Provisional Deletions and the Limits of Incorporation by Reference

Federal Circuit affirmed district court's claim construction in DDR Holdings v. Priceline.com, ruling that "merchants" in U.S. Patent No. 7,818,399 means producers, distributors, or resellers of goods only, not services. Court held that DDR's deletion of "services" references from the nonprovisional application specification, despite incorporating the broader provisional application by reference, signaled intent to exclude services from the claim scope. Decision highlights risks of modifying terminology between provisional and nonprovisional patent applications.