Newegg Case

Soverain v. Newegg, Supreme Court Case No. 13-477


Current Case Status:

  • On January 13, 2014, the Supreme Court denied cert in the Soverain v. Newegg case.
  • The Soverain v. Newegg case has now been docketed for the Supreme Court's certiorari conference on January 10, 2014.
  • After its patent trial verdict was overturned by the Federal Circuit Court of Appeals, Soverain filed a Petition for a Writ of Certiorari on October 16, 2013.
  • On November 18, 2013, amicus briefs in support of certiorari being granted were filed by i4i Limited Partnership, Law Professors, and MDB Capital Group.
  • On December 12, 2013, Newegg filed its Brief in Opposition, underscoring the importance of the case.
  • In its Reply Brief filed on December 20, 2013, Soverain says that the Federal Circuit violated Supreme Court precedent and the Constitution.

Case Summary:

In 2007, Soverain sued five major Internet retailers for infringing three of its patents. Four of the retailers settled, and one -- retailing giant Newegg -- went to trial.

At trial in 2010, Judge Leonard Davis ruled that Newegg didn't come close to proving obviousness and Soverain's patents were found infringed and not invalid.

Newegg appealed on many issues.

In the following three years, the patents were found non-obvious in a second round of reexaminations by the U.S. Patent Office as well as by a federal jury in a different case.

In August 2011, at oral argument before Judges Newman, Prost and Reyna of the U.S. Court of Appeals for the Federal Circuit, Newegg reiterated its request for a jury trial on obviousness, arguing that there were disputed factual issues at trial "of exactly the kind that the jury should consider."

In January 2013, the Court of Appeals for the Federal Circuit invalidated six of the asserted claims plus a claim that had not been asserted at trial, despite Newegg (1) having only asked for a remand for a jury trial, and (2) not having met its burden of proof.

Soverain filed its petition for a writ of certiorari with the U.S. Supreme Court. In January 2014, the Supreme Court denied Soverain's cert petition.


Case Chronology:

  • November 2, 2007 - Soverain filed suit against Internet retailers CDW, Newegg, Redcats, Systemax/TigerDirect, and Zappos, accusing them of infringing Patent Nos. 5,715,314; 5,909,492; and 7,272,639.
  • By May 2009, four of the retailers had settled and only Newegg remained in the case.
  • April 2010 - At trial, Newegg tried to prove obviousness by showing Compuserve user guides which lacked technical detail. Before sending the case to the jury, Judge Leonard Davis granted Soverain Judgment as a Matter of Law of non-obviousness, saying "I don't think it's a close call on obviousness. I don't think there's sufficient testimony to present an obviousness case to the jury." The jury found Soverain's three patents not invalid for anticipation, found the '314 and '492 patents infringed, and awarded damages of $2.5 million.
  • August 2010 - Judge Davis issued his post-trial opinion, granting Soverain Judgment as a Matter of Law of infringement of the '639 patent and ordering a new trial on damages. Judge Davis also denied Newegg's post-trial motions, expressly stating "Newegg did not meet its burden of establishing a prima facie case of obviousness."
  • December 2010 - Newegg appealed, raising numerous issues. On the issue of obviousness, addressed in just six pages of its 60-page brief, Newegg asked only for a jury trial.
  • January 2011 - An anonymous requester filed reexamination requests on the '314, '492, and '639 patents, citing invalidity references from the Newegg case and others.
  • July 2011 - The PTO reaffirmed all of the claims in the first '639 reexamination. The anonymous requester then filed a second '639 reexamination request, with some of the same references.
  • August 2011 - At oral argument before Judges Newman, Prost and Reyna of the U.S. Court of Appeals for the Federal Circuit, Newegg reiterated its request for a jury trial on obviousness, arguing that there were disputed factual issues at trial "of exactly the kind that the jury should consider."
  • While the Federal Circuit's decision was pending, two independent fact-finders -- the U.S. Patent Office and a federal jury in a separate case -- confirmed that the asserted claims were not obvious.
    • November 2011 - After a trial in which Avon and Victoria's Secret had tried to invalidate the '314 and '492 patents using Compuserve user guides as Newegg had done, a federal jury found the asserted claims infringed and not invalid. In August 2012, Judge Davis confirmed these findings in his post-trial opinion.
    • July to October 2012 - After reviewing the invalidity references (and more) that Newegg had used at trial, the U.S. Patent Office completed a second round of reexaminations on all three patents ('314, '492, and '639) reaffirming all of the asserted claims without amendment.
  • September 2012 - While the Newegg appeal is still pending, Avon and Victoria's Secret file to appeal their adverse trial verdicts.
  • November 2012 - While the Newegg appeal is still pending, Avon's and Victoria's Secret's appeals are selected for the Federal Circuit's mediation program, automatically extending their briefing due date until January 22, 2013 (two weeks after the mediation).
  • January 8, 2013 - Soverain, Avon and Victoria's Secret mediate for a day but are unable to settle either of those appeals.
  • January 22, 2013 - Suddenly, after seventeen months, the Federal Circuit issued its decision, which went far beyond the jury trial requested by Newegg, decided disputed factual issues in violation of the Seventh Amendment, and wrongly invalidated six of the seven asserted claims (and one claim that wasn't even asserted at trial).
    • Later that same day, Avon's and Victoria's Secret's appeal briefs were filed.
  • February 5 and 8, 2013 - Newegg and Soverain sent letters to the Court, noting errors in the opinion. Soverain's letter also clarified that Newegg had erroneously appealed unasserted claim 34 of the '314 patent, whereas Soverain's appeal brief had correctly addressed claim 35.
  • March 1, 2013 - Soverain filed its petition for rehearing and rehearing en banc.
  • March 11, 2013 - The Federal Circuit issued an "Errata" which deleted, without explanation, the claims it had quoted from the wrong patent but did not address the other errors, including its invalidation of unasserted claim 34.
  • April 24, 2013 - After Newegg's counsel disclosed that it had violated the court's rules by having a former Federal Circuit law clerk work on Newegg's appeal, the Federal Circuit issued a "strong admonishment" but did not levy sanctions, despite the attorney being named on Newegg's brief (suggesting a meaningful role). Such Rule 50 admonishments are rare, this being only the second.
  • June 13, 2013 - The Federal Circuit panel acknowledged that it had invalidated an unasserted claim and ordered supplemental briefing, questioning whether Soverain was responsible for Newegg's appeal of the wrong claim (and the panel's resulting error).
  • September 4, 2013 - Without a hearing, the Federal Circuit panel issued an order invalidating unasserted claim 34 as well as the claim 35 that it had missed in its January opinion. On the same day, the full Court denied Soverain's petition for en banc rehearing without issuing an opinion to explain its decision.
  • October 16, 2013 - Soverain filed its petition for a writ of certiorari with the U.S. Supreme Court, challenging the Federal Circuit's sweeping change to the patent law, which violates the Seventh Amendment and the Supreme Court's precedent.
  • November 18, 2013 - Amicus briefs were filed by i4i Limited, Law Professors, and MDB Capital Group.
  • December 12, 2013 - Newegg filed a brief opposing certiorari.
  • December 20, 2013 - Soverain filed its reply brief, saying that the Federal Circuit's decision violates the Supreme Court precedent and the Constitution.
  • December 24, 2013 - The Soverain v. Newegg case has now been docketed for the Supreme Court's certiorari conference on January 10, 2014.
  • January 13, 2014 - The Supreme Court denied cert in the Soverain v. Newegg case.



Related documents are also posted on the Court and USPTO Documents page.