Soverain Software LLC v. Newegg Inc.
705 F.3d 1333
| Fed. Cir. | 2013Background
- Soverain sued Newegg for infringement of the ’314, ’492, and ’639 patents related to online commerce systems using networks.
- The asserted system features a shopping cart with a product list, a cart database, and a checkout-triggered payment message.
- CompuServe Mall is identified as the primary prior art against the shopping cart claims and a baseline for obviousness.
- The district court, after trial, removed the obviousness issue from the jury and held the claims not invalid on obviousness.
- The jury awarded damages for the ’314 and ’492 patents; the district court granted JMOL and ordered a new trial for the ’639 patent damages.
- The Federal Circuit held the shopping cart and hypertext/session claims invalid for obviousness and reversed the district court’s rulings accordingly.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the shopping cart claims are obvious | Soverain contends CompuServe Mall renders them obvious | Newegg argues prior art discloses all elements and obviousness is clear | Yes; claims invalid for obviousness |
| Whether the hypertext statement claims are obvious | Soverain asserts distinct hypertext/URL features are nonobvious | Newegg argues routine Internet integration renders obvious | Yes; claims invalid for obviousness |
| Whether the session identifier claims are obvious | Soverain claims Johnson/Gifford not disclose the claimed session identifier | Newegg contends Johnson/Gifford disclose comparable session mechanisms and web context | Yes; claim 79 invalid for obviousness |
Key Cases Cited
- Graham v. John Deere Co., 383 U.S. 1 (U.S. 1966) (obviousness framework and Graham factors; ultimate question is law)
- KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (U.S. 2007) (standard for obviousness; common sense in combining prior art)
- Western Union Co. v. MoneyGram Payment Sys., Inc., 626 F.3d 1361 (Fed. Cir. 2010) (web-based modification of existing processes can be obvious)
- Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (Fed. Cir. 2008) (modification to incorporate web functionality can be obvious)
- Markman v. Westview Instruments, Inc., 517 U.S. 370 (U.S. 1996) (claims construction; judge determines legal questions and ultimate legal conclusions)