Patent Troll Tries To Reanimate Dead Patent With Desperate Ploy Over Effective Typo; Court Shoots Zombie Claim Dead

from the die-troll-die dept

Back in January, we wrote about Newegg’s fairly complete victory over patent troll Soverain Software’s attempt to claim it had patents on basic online shopping cart technology. This was a fight that had gone on for many, many years, in which many e-commerce companies just paid off Soverain rather than fight it. Newegg has taken a “we won’t settle with patent trolls” pledge, and successfully destroyed the patent. Everyone thought the patent and the case were finally dead… except it appears that Soverain sought one last desperate attempt to reanimate the corpse, basically by focusing on what was, in reality, a typographical error.

The short version is this: Soverain had earlier stated that it would be asserting claim 35 of its key patent, 5,715,314, against Newegg. 35 is a dependent claim, which is reliant on the independent claim, in this case 34. It’s the independent claims that are generally the key to a patent, as the dependent ones just build off of the independent ones and maybe add a minor thing or two. Wipe out the independent claims and the dependent ones generally go with them. So, throughout the case, Newegg and Soverain, basically argued over claim 34. That’s what mattered. But, remember, Soverain had said it was asserting 35 against Newegg. So in that final appeals court ruling, the court invalidated claim 34, which most people recognized to mean that 35 was gone as well, even if it wasn’t explicitly noted. Soverain apparently decided that one slight error was a chance to reanimate their dead patent (and dead patent trolling operation).

The court heard both companies out and basically told Soverain to piss off, first noting that Soverain itself never even bothered to distinguish 34 from 35, and further, that it presents no evidence at all that the same prior art that invalidated 34 doesn’t also invalidate 35.

On the question of whether the payment step of claim 35 was embodied in the prior art CompuServe Mall, no contrary argument is here proffered. Soverain devotes most of its supplemental briefing to reargument of issues resolved in the court’s prior opinion, especially relating to the terms “product identifier” and “shopping cart database.” We discern no basis for departing from the court’s analysis in its prior opinion….

[….] On consideration of the additional briefing and arguments, we confirm that claim 34 is representative of the “shopping cart” claims, including claim 35, and conclude that dependent claim 35 is invalid on the ground of obviousness

And, boom, that nascent attempt to reanimate a patent trolling corpse has been shot dead. There’s still a small chance of an appeal to the Supreme Court, though it seems unlikely that the Court would be interested in hearing this case. Either way, Newegg says it would relish a chance to go before the Supreme Court on this one. Here’s Newegg’s chief patent slayer, Lee Cheng, responding to Joe Mullin’s questioning:

Asked this week whether Soverain might continue its fight, Cheng himself appealed to an even higher power than the courts. “Please God, let Soverain file a petition for cert to the Supreme Court,” said Cheng. “That would be so funny. Please make my day.”

Of course, seeing that Soverain was even willing to fight over a pretty clear typo, I wouldn’t put it past the company (really a group of patent lawyers) from trying once again.

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Companies: newegg, soverain

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Comments on “Patent Troll Tries To Reanimate Dead Patent With Desperate Ploy Over Effective Typo; Court Shoots Zombie Claim Dead”

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James Burkhardt (profile) says:

Re: Well. Guess Soverain has new egg on its face.

The logic of your argument is thus:

Assumption: you must have an actual physical product, no other claims are patentable
Given: A Software Patent covering an obvious function with existing prior art
Given: A court ruling declaring that the prior art invalidates the patent
Given: An assumption from the ruling being questioned
Given: A court ruling that clarifies that the key patent claim is in fact invalidated
Conclusion: Lawyers are evil and should be outlawed.

First, most people read the givens, and decide if there is a problem, it exists in the patent system which grants the patent. I can believe that you think have an arguement that lawyers are the root of all the problems in the patent system, so why don’t you explain your solution, given we have told you what policies tech dirt thinks would solve the problems from the law side.

6 says:

“that it presents no evidence at all that the same prior art that invalidated 34 doesn’t also invalidate 35.”

How exactly does someone “present evidence” that some prior art that invalidates one claim doesn’t also invalidate another totally different claim?

Mike come on bro, I know you’re not a lawyer, but you can do better.

James Burkhardt (profile) says:

Re: Re:

Simple, to win at this motion, Sovarian Software (SS) would have needed to demonstrate that insomuch as prior art had invalidated claim 34, it was not representative of claim 35. This would have involved a through analysis of claims 34 and 35, their differences, and how the prior art applied to one and not the other. This analysis is known as evidence. However, the judge pointed out that SS’s filing made no such attempt to produce any legal or evidentiary standard that could allow the court to change its ruling, instead attempting to reargue their original case stating “On the question of whether the payment step of claim 35 was embodied in the prior art CompuServe Mall, no contrary argument is here proffered. Soverain devotes most of its supplemental briefing to reargument of issues resolved in the court?s prior opinion, especially relating to the terms ?product identifier? and ?shopping cart database.? We discern no basis for departing from the court?s analysis in its prior opinion…. “. Mike has reduced this to the line you quoted, which as I have pointed out is an accurate summation.

staff (user link) says:

more dissembling by Masnick

‘ Wipe out the independent claims and the dependent ones generally go with them. ‘

That is incorrect. If independent claims are invalidated, dependent claims may still be valid. That’s why patentees file dependent claims.

All you know about patents is…you don’t have any.

?patent troll?

infringers and their paid puppets? definition of ?patent troll?:

anyone who has the nerve to sue us for stealing their invention

This is just spin control by large infringers to cover up their theft.

The patent system now teeters on the brink of lawlessness. Call it what you will…patent hoarder, patent troll, non-practicing entity, shell company, etc. It all means one thing: ?we?re using your invention and we?re not going to stop or pay?. It?s a pure red herring by large invention thieves and their paid puppets to kill any inventor support system. Their goal is to legalize theft. The fact is, many of the large multinationals and their puppets who defame inventors in this way themselves make no products in the US or create any American jobs and it is their continued blatant theft which makes it impossible for the true creators to do so. To them the only patents that are legitimate are their own -if they have any. Meanwhile, the huge multinationals ship more and more US jobs overseas.

It?s about property rights. They should not only be for the rich and powerful -campaign contributors. Our founders: Jefferson, Franklin, Madison and others felt so strongly about the rights of inventors that they included inventors rights to their creations and discoveries in the Constitution. They understood the trade off. Inventors are given a limited monopoly and in turn society gets the benefits of their inventions (telephone, computer, airplane, automobile, lighting, etc) into perpetuity and the jobs the commercialization of those inventions bring. For 200 years the patent system has not only fueled the US economy, but the world?s. If we weaken the patent system, we force inventors underground like Stradivarius (anyone know how to make a Stradivarius violin?) and in turn weaken our economy and job creation. Worse yet, we destroy the American dream -the ability to prosper from our ingenuity for the benefit of our families and communities. To kill or weaken the patent system is to kill their futures. Show me a country with weak or ineffective property rights and I?ll show you a weak economy with high unemployment. If we cannot own the product of our minds or labors, what can we be said to truly own. Life and liberty are fundamentally tied to and in fact based on property rights. Our very lives are inseparably tied to our property.

Prior to the Supreme Court case eBay v Mercexchange, small entities had a viable chance at commercializing their inventions. If the defendant was found guilty, an injunction was most always issued. Then the inventor small entity could enjoy the exclusive use of his invention in commercializing it. Unfortunately, injunctions are often no longer available to small entity inventors because of the eBay decision so we have no fair chance to compete with much larger entities who are now free to use our inventions. Essentially, large infringers now have your gun and all the bullets. Worse yet, inability to commercialize means those same small entities will not be hiring new employees to roll out their products and services. And now those same parties who killed injunctions for small entities and thus blocked their chance at commercializing now complain that small entity inventors are not commercializing. They created the problem and now they want to blame small entities for it. What dissembling! If you don?t like this state of affairs (your unemployment is running out), tell your Congress member. Then maybe we can get some sense back into the patent system with injunctions fully enforceable on all infringers by all patentees, large and small.

Those wishing to help fight big business giveaways should contact us as below and join the fight as we are building a network of inventors and other stakeholders to lobby Congress to restore property rights for all patent owners -large and small.

For the truth about trolls, please see

James Burkhardt (profile) says:

Re: more dissembling by Masnick

While Patent troll tends to be a bit nebulus, a few major points have been recognized by scholars or the courts as signs of a patent troll:

A company who uses patents not as a basis for producing and selling goods but, instead, primarily for obtaining licensing fees (not on its own a deciding factor)

Patents cover obvious or unoriginal functions (e.g. A shopping cart on a computer, a method to automate the process of scanning something and emailing it, clicking a button to buy something with preset default payment and shipping options, just to note a few existing examples)

Demanding licensing fees from end consumers with small pockets rather than actual infringers who might contest the patent

Assigning patents to a number of smaller shell entities to hide that you are actually a billion dollar a year company

Demanding licences for the same patent multiple times

Demanding licences over unrelated technology

Waiting to sue until companies are large and valuable rather than small and vulnerable


No single factor here (and there are others as well) solidly indicates a patent troll, you’ll find many of them involved with most patent trolls. I enjoy that you used THIS article to claim this whole process. Because the ebay ruling came after the key patents in the Newegg case. You argument that SS couldn’t compete in the market because it couldn’t get injunctions against its competitors is flawed. Had it sued newegg in 2003, 5 years after the patent was issued, it could have gotten an injuction. but it waited until 2010, 12 years after the patent was issued, to sue newegg, who then clearly showed prior art and got the patent invalidated.

Consider Myriad Genetics. They won the ‘race’ to isolate the breast cancer gene. But nothing in the patent is truely original or non obvious, as a least a dozen labs across the country were days away from making the same findings. Nothing in that patent was uniquely Myriad’s work. They were eventually shot down. So now, in retrospect, its not ‘their work’ and labs who ‘infringed’ weren’t stealing their work because its not not infringing.

The ebay decision does not revoke injunctions. It revokes automatic injunctions. The core problem being that only if irrevocable harm would result without one then one should be issued. There is no reason a fine to cover lost licensing fees and an order for Ebay to license the patents would not repair the damage MercExchange suffered. Therefore, no injunction. As the court ruled:

…some patent holders, such as university researchers or self-made inventors, might reasonably prefer to license their patents, rather than undertake efforts to secure the financing necessary to bring their works to market themselves. Such patent holders may be able to satisfy the traditional four-factor test, and we see no basis for categorically denying them the opportunity to do so.

This is where the court clearly rules that a NPE clearly have a right to an injunction, if and when they can satisfy the normal 4-factor test.

You in your long post seem to blame large transnationals, without actually explaining how to keep the large transnationals from abusing automatic injunctions as effectively as they have supposedly abused the lack.

As for independent versus dependent claims, dependent claims are dependent for a reason. If the prior art only managed to invalidate a specific case that only the independent claim applies to, then yes, you are right. The patent holder obviously felt no need to distinguish the claims in court however, indicating that the dependent claim hinged on the independent claim that was actualy debated, and no subsequent filing proved otherwise.

Mike is not hiding or concealing his feelings. You just prefer your personal war against big business over considering how to change patents so that everyone benefits.

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