In Soverain Software LLC v. Victoria's Secret Direct Brand Management, LLC, Nos. 12-1649, -1650 (Fed. Cir. Feb. 12, 2015), the Federal Circuit reversed the district court's judgment that the asserted patents were infringed and not invalid.
Soverain Software LLC ("Soverain") is the assignee of two patents, U.S. Patent Nos. 5,715,314 ("the '314 patent") and 5,909,492 ("the '492 patent"), which are directed to virtual shopping carts. Soverain asserted the '314 and '492 patents against multiple defendants in separate suits in the Eastern District of Texas, including against Victoria's Secret Direct Brand Management, LLC ("Victoria's Secret") and Avon Products, Inc. ("Avon"). Following a jury trial, the district court entered judgment that Victoria's Secret and Avon infringed the asserted claims and that the asserted claims were not invalid. Victoria's Secret and Avon appealed.
"Complete identity of claims is not required to satisfy the identity-of-issues requirement for claim preclusion." Slip op. at 15 (citing Ohio Willow Wood Co. v. Alps S., LLC, 735 F.3d 1333, 1342 (Fed. Cir. 2013)).
On appeal, the Federal Circuit reversed the district court's judgment, holding that issue preclusion applied in light of its previous decision in Soverain Software LLC v. Newegg Inc., 705 F.3d 1333 (Fed. Cir.), amended on reh'g, 728 F.3d 1332 (Fed. Cir. 2013), which held claims of the asserted patent invalid as obvious.
To determine whether issue preclusion should apply to the asserted claims as a result of the Newegg decision, the Court used the four-part test applied in the...
