The petition for rehearing of an appeal related to internet shopping took another odd turn June 13, as the U.S. Court of Appeals for the Federal Circuit ordered briefing on an error related to exactly which claims had been litigated (Soverain Software L.L.C. v. Newegg Inc., Fed. Cir., No. 2011-1009, order 6/13/13).
The court held Jan. 22 that a pre-internet system for computer-based shopping rendered Soverain Software L.L.C.'s internet e-commerce patent claims obvious. 705 F.3d 1333, 105 U.S.P.Q.2d 1732 (Fed. Cir. 2013) (16 PTD, 1/24/13).
Soverain filed for rehearing and a former Federal Circuit clerk inadvertently assisted in filing Newegg Inc.'s response, causing the court--Judges Pauline Newman, Sharon Prost, and Jimmie V. Reyna--to issue a “strong admonishment,” but no sanctions (81 PTD, 4/26/13).
In the instant order, the court granted rehearing for a specific purpose related to the litigation of one of Soverain's patents (U.S. Patent No. 5,715,314). The court's Jan. 22 opinion referred to Claim 34 of the '314 patent as representative, but the lower court's judgment entered on the jury verdict referred to dependent Claim 35, which has additional limitations.
The parties' appellate arguments also focused on Claim 34. Newegg now contends that, in any case, the differences between the two claims have not been raised in Soverain's arguments, and thus the Federal Circuit should merely fix a typographical error.
“Although the confusion concerning the posture of claims 34 and 35 is a result of the parties' arguments at trial and appeal, we conclude that the matter warrants supplemental briefing,” according to the per curiam order.
Briefs are due June 23.
Robert B. Wilson of Quinn Emanuel Urquhart & Sullivan, New York, represents Soverain. Edward R. Reines of Weil, Gotshal & Manges, Redwood Shores, Calif., represents Newegg.
Text is available at http://www.bloomberglaw.com/public/document/Soverain_Software_LLC_v_Newegg_Inc_No_20111009_2013_BL_155786_Fed.
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