Soverain Software LLC v. Victoria's Secret , 778 F.3d 1311 ( 2015 )

United States Court of Appeals
for the Federal Circuit
______________________
SOVERAIN SOFTWARE LLC,
Plaintiff-Appellee
v.
VICTORIA’S SECRET DIRECT BRAND
MANAGEMENT, LLC, AVON PRODUCTS, INC.,
Defendants-Appellants
______________________
2012-1649, 2012-1650
______________________
Appeals from the United States District Court for the
Eastern District of Texas in No. 09-CV-0274, Chief Judge
Leonard Davis.
______________________
Decided: February 12, 2015
______________________
JEFFREY A. LAMKEN, MoloLamken LLP, Washington,
DC, argued for plaintiff-appellee. Also represented by
ROBERT B. WILSON, ANASTASIA M. FERNANDS, Quinn
Emanuel Urquhart & Sullivan, LLP, New York, NY;
DAVID A. NELSON, Chicago, IL; GEORGE ELLSWORTH
QUILLIN, ANDREW S. BALUCH, Foley & Lardner LLP,
Washington, DC.
ROBERT RHOAD, Dechert LLP, Princeton, NJ, argued
for defendant-appellant, Victoria’s Secret Direct Brand
Management, LLC. Also represented by CHRISTOPHER S.
2 SOVERAIN SOFTWARE LLC v. VICTORIA'S SECRET
RUHLAND, Los Angeles, CA; ROBERT W. ASHBROOK, JR.,
ROBERT LOUIS MASTERSON Philadelphia, PA; DANIEL B.
EPSTEIN, Mountain View, CA.
DARYL L. JOSEFFER, King & Spalding LLP, Washing-
ton, DC, argued for defendant-appellant, Avon Products,
Inc. Also represented by ADAM M. CONRAD, Charlotte, NC;
GASTON KROUB, Locke Lord, LLP, New York, NY.
______________________
Before DYK, TARANTO, and HUGHES, Circuit Judges.
DYK, Circuit Judge.
Victoria’s Secret Direct Brand Management, LLC
(“Victoria’s Secret”) and Avon Products, Inc. (“Avon”)
(collectively, “defendants”) appeal from a judgment of the
District Court for the Eastern District of Texas. The
district court found that defendants infringed claims 34
and 51 of U.S. Patent No. 5,715,314 (the “’314 patent”)
and claims 15, 17, and 39 of U.S. Patent No. 5,909,492
(the “’492 patent”) and that those claims were not invalid.
After the district court’s judgment, this court decided
Soverain Software LLC v. Newegg Inc., 705 F.3d 1333
(Fed. Cir. 2013), amended on reh’g, 728 F.3d 1332, 1336
(Fed. Cir. 2013) (hereinafter “Newegg”). There, we held
invalid as obvious claims 34 and 51 of the ’314 patent and
claims 17, 41, and 61 of the ’492 patent. Id. at 1341, 1344.
We hold that issue preclusion applies as a result of the
Newegg case, and that the asserted claims here are there-
fore invalid. Accordingly, we reverse.
BACKGROUND
Soverain Software LLC (“Soverain”) is the assignee of
the ’314 and ’492 patents. It brought an infringement
action against defendants in the Eastern District of
Texas. The asserted claims fall into two categories.
Claims 34 and 51 of the ’314 patent and claim 17 of
SOVERAIN SOFTWARE LLC v. VICTORIA'S SECRET 3
the ’492 patent are directed to virtual shopping carts. 1
Claims 15 and 39 of the ’492 patent are directed to using
1 Claim 34 of the ’314 patent is representative. It
recites:
A network-based sales system, comprising:
at least one buyer computer for operation by a us-
er desiring to buy products;
at least one shopping cart computer; and
a shopping cart database connected to said shop-
ping cart computer;
said buyer computer and said shopping cart com-
puter being interconnected by a computer
network;
said buyer computer being programmed to receive
a plurality of requests from a user to add a
plurality of respective products to a shopping
cart in said shopping cart database, and, in
response to said requests to add said products,
to send a plurality of respective shopping cart
messages to said shopping cart computer each
of which comprises a product identifier identi-
fying one of said plurality of products;
said shopping cart computer being programmed to
receive said plurality of shopping cart mes-
sages, to modify said shopping cart in said
shopping cart database to reflect said plurali-
ty of requests to add said plurality of products
to said shopping cart, and to cause a payment
message associated with said shopping cart to
be created; and
said buyer computer being programmed to receive
a request from said user to purchase said plu-
rality of products added to said shopping cart
and to cause said payment message to be acti-
vated to initiate a payment transaction for
4 SOVERAIN SOFTWARE LLC v. VICTORIA'S SECRET
a hypertext statement so that users can access infor-
mation about past orders. 2
said plurality of products added to said shop-
ping cart;
said shopping cart being a stored representation
of a collection of products, said shopping cart
database being a database of stored represen-
tations of collections of products, and said
shopping cart computer being a computer that
modifies said stored representations of collec-
tions of products in said database.
’314 patent col. 13 l. 62–col. 14 l. 28.
2 Claim 15 of the ’492 patent is representative. It
recites:
A hypertext statement system, comprising:
a client computer for operation by a client user;
and
one or more server computers for operation by a
server user;
the client computer and the server computers be-
ing interconnected by a public packet switched
computer network;
at least one of the server computers being pro-
grammed to record information pertaining to
purchase transaction records in a database,
and to transmit a statement document com-
prising the purchase transaction records to
the client computer over the network;
the client computer being programmed to display
the statement document to receive a request
from the client user to display transaction de-
tails corresponding to a portion of the state-
ment document displayed by the client
computer, and to cause a transaction detail
SOVERAIN SOFTWARE LLC v. VICTORIA'S SECRET 5
On November 18, 2011, a jury determined that de-
fendants infringed the asserted claims and that those
claims were not invalid as anticipated or obvious. The
district court subsequently entered judgment in favor of
Soverain. Defendants appealed on September 7, 2012.
Subsequent to the filing of the appeal, on January 22,
2013, this court decided Newegg, a case from the Eastern
District of Texas in which Soverain also alleged infringe-
ment of the ’314 and ’492 patents. There, the district court
had entered judgment that the asserted claims were
infringed and not invalid. On appeal, we reversed, holding
invalid as obvious claims 34 and 51 of the ’314 patent and
claims 17, 41, and 61 of the ’492 patent. Newegg, 705 F.3d
1333 at 1347. In a subsequent panel rehearing decision,
we clarified that claim 35 is also invalid. We “confirm[ed]
that claim 34 is representative of the ‘shopping cart’
claims, including claim 35, and conclude[d] that depend-
ent claim 35 is invalid on the ground of obviousness.”
Soverain Software LLC v. Newegg Inc., 728 F.3d 1332,
1336 (Fed. Cir. 2013) (hereinafter “Newegg II”). 3
hypertext link corresponding to the portion of
the statement document to be activated;
at least one of the server computers being pro-
grammed to respond to activation of the
transaction detail hypertext link by transmit-
ting the transaction details to the client com-
puter over the network as a transaction detail
document.
’492 patent col. 13 l. 61–col. 14 l. 17.
3 In its briefs in the Newegg appeal, Newegg had
stated that claim 34 was asserted and was representative
of the shopping cart claims. However, “although claim 34
was the subject of litigation of the shopping cart claims,
the district court’s judgment referred to claim 35, not
6 SOVERAIN SOFTWARE LLC v. VICTORIA'S SECRET
We apply the law of the regional circuit to the general
procedural question of whether issue preclusion applies.
RF Del., Inc. v. Pac. Keystone Techs., Inc., 326 F.3d 1255,
1261 (Fed. Cir. 2003). We apply this court’s precedent to
questions involving substantive issues of patent law,
issues of issue preclusion that implicate substantive
patent law issues, or issues of issue preclusion that impli-
cate the scope of our own previous decisions. Ohio Willow
Wood Co. v. Alps S., LLC, 735 F.3d 1333, 1342 (Fed. Cir.
2013) (citing Aspex Eyewear, Inc. v. Zenni Optical Inc.,
713 F.3d 1377, 1380 (Fed. Cir. 2013)). “[T]he issue of
whether to apply collateral estoppel is a question of law,
making our review de novo.” Bradberry v. Jefferson Cnty.,
Tex., 732 F.3d 540, 549 (5th Cir. 2013) (citation omitted).
DISCUSSION
I
The first question is whether issue preclusion, or col-
lateral estoppel, should apply to claims 34 and 51 of
the ’314 patent and claims 15 and 17 of the ’492 patent as
a result of the Newegg judgment. “Issue preclusion pro-
hibits a party from seeking another determination of the
litigated issue in the subsequent action.” State Farm Mut.
Auto. Ins. Co. v. LogistiCare Solutions, LLC, 751 F.3d 684,
689 (5th Cir. 2014) (quoting United States v. Shanbaum,
10 F.3d 305, 311 (5th Cir. 1994)). The Fifth Circuit ap-
plies issue preclusion where the following four conditions
are satisfied:
First, the issue under consideration in a subse-
quent action must be identical to the issue litigat-
ed in a prior action. Second, the issue must have
claim 34. This court granted rehearing, to assure that the
claims at issue in th[e] litigation were adequately and
fairly assessed at trial and on appeal.” Newegg II, 728
F.3d at 1333.
SOVERAIN SOFTWARE LLC v. VICTORIA'S SECRET 7
been fully and vigorously litigated in the prior ac-
tion. Third, the issue must have been necessary to
support the judgment in the prior case. Fourth,
there must be no special circumstance that would
render preclusion inappropriate or unfair.
Id. (quoting Shanbaum, 10 F.3d at 311). Our own law is
similar. Jet, Inc. v. Sewage Aeration Sys., 223 F.3d 1360,
1366 (Fed. Cir. 2000) (issue preclusion requires four
conditions: “(1) identity of the issues in a prior proceeding;
(2) the issues were actually litigated; (3) the determina-
tion of the issues was necessary to the resulting judg-
ment; and, (4) the party defending against preclusion had
a full and fair opportunity to litigate the issues” (citations
omitted)).
In Newegg, we explicitly held that claims 34 and 51 of
the ’314 patent and claim 17 of the ’492 patent were
obvious. 705 F.3d at 1341. Although claim 15 of the ’492
patent, at issue here, was not explicitly invalidated in
Newegg, we invalidated claim 41, which depends from
claim 15. Id. at 1344. Therefore, the invalidity determina-
tion as to claim 41 extended to claim 15, as well. See
Callaway Golf Co. v. Acushnet Co., 576 F.3d 1331, 1344
(Fed. Cir. 2009) (“A broader independent claim cannot be
nonobvious where a dependent claim stemming from that
independent claim is invalid for obviousness.”) (citation
omitted).
The Supreme Court has held that a defense of issue
preclusion applies where a party is “facing a charge of
infringement of a patent that has once been declared
invalid,” even though the party asserting the defense was
not a party to the action where the patent was invalidat-
ed. Blonder-Tongue Labs., Inc. v. Univ. of Ill. Found., 402
U.S. 313, 349–50 (1971). We have similarly held that
“once the claims of a patent are held invalid in a suit
involving one alleged infringer, an unrelated party who is
sued for infringement of those claims may reap the bene-
8 SOVERAIN SOFTWARE LLC v. VICTORIA'S SECRET
fit of the invalidity decision under principles of collateral
estoppel.” Mendenhall v. Barber-Greene Co., 26 F.3d 1573,
1577 (Fed. Cir. 1994); see In re Cygnus Telecomms. Tech.,
LLC, Patent Litig., 536 F.3d 1343, 1349 (Fed. Cir. 2008);
Pharmacia & Upjohn Co. v. Mylan Pharm., Inc., 170 F.3d
1373, 1379 (Fed. Cir. 1999). It is also established that
issue preclusion applies even though the precluding
judgment (Newegg) comes into existence while the case as
to which preclusion is sought (this case) is on appeal.
Mendenhall, 26 F.3d at 1583–84 (invalidity decision
rendered while case on appeal); Dana Corp. v. NOK, Inc.,
882 F.2d 505, 508 (Fed. Cir. 1989) (invalidity decision at
Federal Circuit issued while case being briefed on appeal).
As to the four claims listed above, Soverain agrees
that issue preclusion would normally be applicable but
argues that it should not apply here because Soverain has
not had a full and fair opportunity to litigate the issue of
obviousness.
Under issue preclusion law generally and under both
our law and Fifth Circuit law, a judgment of invalidity
will not have a preclusive effect if a patentee can demon-
strate that it did not have a full and fair opportunity to
litigate the issue. Blumcraft of Pittsburgh v. Kawneer Co.,
482 F.2d 542, 546–47 (5th Cir. 1973); see Blonder-Tongue,
402 U.S. at 333 (a patentee “must be permitted to demon-
strate, if he can, that he did not have ‘a fair opportunity
procedurally, substantively and evidentially to pursue his
claim the first time’” (citation omitted)); Pharmacia, 170
F.3d at 1379 (“[A] judgment of invalidity will have no
collateral estoppel effect if the patentee can show that it
did not have a full and fair opportunity to litigate.”);
Restatement (Second) of Judgments § 28(5) (1982) (a
party is not precluded where “the party sought to be
precluded, as a result of the conduct of his adversary or
other special circumstances, did not have an adequate
opportunity or incentive to obtain a full and fair adjudica-
tion in the initial action”).
SOVERAIN SOFTWARE LLC v. VICTORIA'S SECRET 9
We need not here review the various grounds that are
relevant to whether a party had a full and fair opportuni-
ty to litigate because most are inapplicable here. See
generally Blonder-Tongue, 402 U.S. at 332–34; Restate-
ment (Second) of Judgments §§ 28, 29. For example, the
issue of incentive to litigate arises where “[t]he stakes in
the first action may be so small that extensive effort is not
reasonable if the risk is limited to the first action.” 18
Charles Alan Wright, Arthur R. Miller & Edward H.
Cooper, Federal Practice & Procedure § 4423 (2d ed.
2002). That circumstance does not exist here. Soverain
does not dispute that it was represented by distinguished
counsel in that appeal and that the amount in controversy
was significant.
The unusual full and fair opportunity argument made
here requires an understanding of the appeal in Newegg.
In the district court in Newegg, at the close of evidence,
Soverain and the defendant Newegg Inc. (“Newegg”) filed
cross-motions for judgment as a matter of law (“JMOL”);
the district court granted Soverain’s JMOL motion of non-
obviousness and denied Newegg’s JMOL motion of obvi-
ousness. See Newegg, 705 F.3d at 1336. As a result of the
grant of Soverain’s motion, the jury did not address
obviousness. Id.
After the jury’s verdict, the district court denied
Newegg’s renewed JMOL motion and alternative motion
for a new trial. Id. Newegg appealed from the district
court’s judgment of non-obviousness. Id. While Newegg
had preserved in the district court the argument that it
should have been granted JMOL on the issue of obvious-
ness, on appeal Newegg explicitly argued only that the
district court erred in granting JMOL for Soverain on the
issue of non-obviousness and in not granting Newegg’s
10 SOVERAIN SOFTWARE LLC v. VICTORIA'S SECRET
motion for a new trial. 4 See id. Newegg also requested
“any other and further relief to which it may be justly
entitled.” J.A. 37701.
We acknowledged that Newegg on appeal had argued
only for a new trial but noted that, “[h]owever, questions
of law must be correctly decided . . . .” Newegg, 705 F.3d
at 1337. On “th[o]se premises, we determine[d] the ques-
tion of obviousness.” Id. The primary evidence before us in
Newegg regarding invalidity was the “CompuServe Mall”
system, a prior electronic commerce system, including two
books describing the system which disclosed the use of
electronic shopping carts. Id. at 1337–38, 1340–41, 1343–
44. Soverain’s arguments for nonobviousness relied on
features that were either “not embodied in the claims and
not reflected in the claim construction,” id. at 1339; see id.
at 1341, or related to incorporation of known internet
technology, id. at 1340, 1343–44.
Soverain petitioned for rehearing and rehearing en
banc. Soverain argued that the court improperly ordered
JMOL when, on appeal, Newegg had asked only for a new
trial. Additionally, Soverain and Newegg both noted that
claim 35 of the ’314 patent had not been addressed in our
decision, even though it had been included in the district
court’s judgment of no invalidity. We subsequently grant-
4 Newegg was thus unlike Unitherm Food Systems,
Inc. v. Swift-Eckrich, Inc., 546 U.S. 394, 398 (2006) (hold-
ing “that since respondent failed to renew its preverdict
motion as specified in Rule 50(b), there was no basis for
review of respondent's sufficiency of the evidence chal-
lenge in the Court of Appeals”). The Supreme Court has
recognized that, under Federal Rule of Civil Procedure 50,
a court of appeals can direct entry of judgment in cases
where the sufficiency of the evidence is challenged, and a
JMOL motion was made in the district court. See Neely v.
Martin K. Eby Constr. Co., 386 U.S. 317, 328–30 (1967).
SOVERAIN SOFTWARE LLC v. VICTORIA'S SECRET 11
ed panel rehearing and, after considering supplemental
briefing and arguments, “confirm[ed] that claim 34 is
representative of the ‘shopping cart’ claims, including
claim 35, and conclude[d] that dependent claim 35 is
invalid on the ground of obviousness.” Newegg II, 728
F.3d at 1336. We implicitly rejected the patentee’s argu-
ment that the court should have granted a new trial
rather than JMOL, id., implicitly rejecting the idea that
Soverain did not have a full and fair opportunity to liti-
gate. Rehearing en banc was denied. Soverain Software
LLC v. Newegg Inc., No. 2011-1009 (Fed. Cir. Sept. 4,
2013) (order denying en banc rehearing). Soverain’s
petition for a writ of certiorari to the Supreme Court was
denied. Soverain Software LLC v. Newegg Inc., 134 S. Ct.
910 (2014).
We note that Soverain does not argue that it was de-
prived of crucial evidence or witnesses in the first litiga-
tion or that it would present additional evidence at a new
trial. See Blonder-Tongue, 402 U.S. at 333. Nor is there
any contention that Soverain did not have a full and fair
opportunity to litigate the question of obviousness at the
district court. Rather, Soverain’s argument is that it did
not have the incentive to fully litigate the issue of non-
obviousness on appeal. 5
5 Soverain also argues that it lacked the ability to
appeal our judgment in Newegg, under the exception to
preclusion which applies where a party “could not, as a
matter of law, have obtained review of the judgment in
the initial action.” Restatement (Second) of Judgments
§ 28(1). But the ability to appeal generally concerns the
ability to appeal from the court of first instance (here, the
district court). And here, Soverain petitioned for rehear-
ing and to the Supreme Court for certiorari. The ability to
appeal exception “applies only when review is precluded
as a matter of law. It does not apply in cases where review
12 SOVERAIN SOFTWARE LLC v. VICTORIA'S SECRET
Specifically, Soverain contends that it would have
raised different or additional arguments on appeal if it
had known that this court might reverse the district court
on invalidity rather than only granting a new trial. But
Soverain does not cite any case to support the notion that
a full and fair opportunity to litigate is lacking where a
party might have argued differently on appeal. In
Newegg, the same basic issue of obviousness was central
whether the focus was on insufficiency of the evidence as
a ground for JMOL or on insufficiency of the evidence as a
ground for a new trial. Not surprisingly, Soverain has not
identified any significant new arguments that were not in
fact raised in the earlier appeal.
With respect to the shopping cart patents (claims 34
and 51 of the ’314 patent and claim 17 of the ’492 patent),
Soverain argues that it did not have a full and fair oppor-
tunity to present its arguments in Newegg that “product
identifiers,” a limitation in each of the asserted claims,
distinguish the prior art CompuServe Mall system. Basi-
cally, a product identifier identifies which product a user
has placed in a shopping cart. 6 See ’314 patent col. 3 ll.
45–47, col. 5 ll. 29–30, col. 14 ll. 9–10. But Soverain
presented the same arguments about product identifiers
in Newegg that it puts forward here. Here, Soverain
points to expert testimony to argue that the CompuServe
Mall system did not utilize product identifiers because
that system was a single computer system that always
recognized the identity of the user and which product the
user was viewing. Similarly, in Newegg, Soverain con-
tended that “Newegg’s fact witness, Mr. Trevor, testified
is available but is not sought. Nor does it apply when
there is discretion in the reviewing court to grant or deny
review and review is denied . . . .” Id. § 28 cmt. a.
6 The term “product identifier” was not construed at
the district court.
SOVERAIN SOFTWARE LLC v. VICTORIA'S SECRET 13
that the CompuServe Mall did not employ product identi-
fiers, and was therefore not programmed to send shopping
cart messages . . . each of which comprises a product
identifier.” Brief of Plaintiff-Appellee Soverain Software
LLC at 45, Newegg, 705 F.3d 1333 (No. 2011-1009) (alter-
ations in original) (internal quotation marks and citation
omitted). Soverain argued that, “[a]s Soverain’s expert,
Dr. Shamos, explained, the basic architecture of the
CompuServe Mall was specifically designed so that the
system would be able to ascertain which products the
customer had selected for purchase without the use of a
separate product identifier.” Id. (internal quotation marks
and citation omitted). This court in Newegg considered
and rejected Soverain’s arguments about the product
identifier. We discussed the testimony by Soverain’s
expert that the CompuServe system lacked the product
identifier limitation and rejected the expert’s conclusions.
Newegg, 705 F.3d at 1339–40. We found that “[t]he prod-
uct identifier message term does not distinguish the
shopping cart claims from the prior art CompuServe
Mall.” Id. at 1340.
Soverain also argues that it did not have the oppor-
tunity in Newegg to present its arguments that the con-
firmation numbers from the CompuServe Mall system did
not satisfy the limitations of the hypertext statement
claims (claims 15 and 39 of the ’492 patent). Soverain
argues that its expert testimony established that the
CompuServe system did not provide online access to
information or suggest providing hyperlinked transaction
documents, as required by the claims. But Soverain made
this same argument in its Newegg briefing, stating that
“[t]he CompuServe Mall did not have the capability for
customers to review their order status or transaction
history online.” Brief of Plaintiff-Appellee Soverain Soft-
ware LLC at 46, Newegg, 705 F.3d 1333 (No. 2011-1009).
In Newegg, we addressed Soverain’s argument that, in the
“CompuServe Mall[,] it might be necessary to resort to the
14 SOVERAIN SOFTWARE LLC v. VICTORIA'S SECRET
telephone or email to get the transaction infor-
mation . . . .” 705 F.3d at 1343. We reasoned that the
patentee “did not invent the Internet, or hypertext, or the
URL. . . . [T]he use of hypertext to communicate ‘a state-
ment document’ or ‘transaction detail document’ was a
routine incorporation of Internet technology into existing
processes.” Id. at 1344 (citations omitted).
Soverain further argues that it did not focus on the
credibility of Newegg’s expert witness “because Soverain
was seeking to affirm JMOL of non-obviousness by rely-
ing on [Newegg’s expert’s] failure to establish that certain
claim elements were prima facie present.” Appellee’s Br.
29. Specifically, Soverain argues that it would have
presented evidence that Newegg’s expert, Mr. Tittel, was
discredited on cross-examination because he admitted
that he did not conduct an element-by-element compari-
son of the claims to the prior art, apply the district court’s
claim construction, or review the prosecution history of
the patents. But Soverain did have the incentive to raise
these arguments in the Newegg appeal. The district court
had issued JMOL for Soverain, having found that Newegg
failed to present a prima facie case of obviousness.
Newegg, 705 F.3d at 1337. On appeal, the question was
whether JMOL was inappropriate because Tittel’s testi-
mony established a prima facie case of obviousness, as
Newegg argued. See id. We concluded that Tittel’s testi-
mony established that each element of the claims was
present in the CompuServe system and relied on that
testimony. Id. at 1338, 1342–43. Soverain did have the
incentive to argue that Tittel’s testimony did not support
Newegg’s obviousness arguments because Mr. Tittel, for
example, did not conduct an element-by-element analysis.
The fact that Soverain had arguments which it did not
make does not mean that Soverain lacked the incentive to
make them.
SOVERAIN SOFTWARE LLC v. VICTORIA'S SECRET 15
II
The remaining question is whether issue preclusion
applies to invalidate claim 39 (a hypertext statement
claim) of the ’492 patent. Claim 39 depends from claim 15.
Claim 15 was invalidated as obvious in Newegg. See
Newegg, 705 F.3d at 1344 (invalidating as obvious claim
41, which depends from claim 15). The only additional
limitation in claim 39 concerns the Internet. Claim 39
recites “[a] hypertext statement in accordance with claim
15, 7 wherein the network is an Internet.” ’492 patent
Reexamination Certificate C1 col. 1 ll. 21–22.
Soverain argues that issue preclusion should not ap-
ply because claim 39 was not previously found obvious
and does not present identical issues. Complete identity of
claims is not required to satisfy the identity-of-issues
requirement for claim preclusion. Ohio Willow Wood, 735
F.3d at 1342; see Aspex, 672 F.3d at 1341 (in the claim
preclusion context). “If the differences between the unad-
judicated patent claims and adjudicated patent claims do
not materially alter the question of invalidity, collateral
estoppel applies.” Ohio Willow Wood, 735 F.3d at 1342
(citing Bourns, Inc. v. United States, 537 F.2d 486, 493
(Ct. Cl. 1976)). In Ohio Willow Wood, we applied issue
preclusion to invalidate a claim where a different claim in
another patent had previously been invalidated because
“the[] patents use[d] slightly different language to de-
scribe substantially the same invention.” Id. We also
found that a difference in claim scope was not fatal to the
application of estoppel. Id. at 1343. The previously-
invalidated claim contained a limitation requiring only
polymeric gel, whereas the unadjudicated claim required,
more specifically, block copolymer gel. Id. We held that,
because the patentee failed to explain how the additional
limitation would change an invalidity analysis, the pa-
7 The language of claim 15 is quoted, supra, n.2.
16 SOVERAIN SOFTWARE LLC v. VICTORIA'S SECRET
tentee had not met its burden in opposing summary
judgment. Id.
The additional limitation here—transmitting a hyper-
text statement over the Internet, rather than over a
generic network—does not materially alter the question of
the validity of claim 39. In Newegg, as to the hypertext
statement claims, the court noted that Newegg’s expert
Tittel had testified that CompuServe was not on the
Internet. Newegg, 705 F.3d at 1343. We explained that, as
conceded by Soverain’s expert Shamos, the patentee “did
not invent the Internet, or hypertext, or the URL.” Id. at
1344 (citing Shamos testimony). “[T]he use of hypertext to
[perform the limitations of the hypertext statement
claims] was a routine incorporation of Internet technology
into existing processes.” Id. (citations omitted). Here, too,
the routine incorporation of Internet technology in claim
39 does not change the invalidity analysis.
The invalidity of the asserted claims of the ’314
and ’492 patents is established by issue preclusion. The
judgment of infringement and no invalidity accordingly is
reversed.
REVERSED
COSTS
Costs to appellants.