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, Washington, 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 therefore 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 user desiring to buy products;

at least one shopping cart computer; and

a shopping cart database connected to said shopping cart computer;

said buyer computer and said shopping cart computer 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 identifying one of said plurality of products;

said shopping cart computer being programmed to 

receive said plurality of shopping cart messages, to modify said shopping cart in said 

shopping cart database to reflect said plurality 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 plurality of products added to said shopping cart 

and to cause said payment message to be activated to initiate a payment transaction for 

 
4 SOVERAIN SOFTWARE LLC v. VICTORIA'S SECRET

a hypertext statement so that users can access information about past orders.2

said plurality of products added to said shopping cart;

said shopping cart being a stored representation 

of a collection of products, said shopping cart 

database being a database of stored representations of collections of products, and said 

shopping cart computer being a computer that 

modifies said stored representations of collections 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 being interconnected by a public packet switched 

computer network;

at least one of the server computers being programmed to record information pertaining to 

purchase transaction records in a database, 

and to transmit a statement document comprising 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 details corresponding to a portion of the statement 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 defendants 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 infringement 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 dependent 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 programmed to respond to activation of the 

transaction detail hypertext link by transmitting the transaction details to the client computer 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 implicate 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 collateral 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 prohibits 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 applies issue preclusion where the following four conditions 

are satisfied: 

First, the issue under consideration in a subsequent action must be identical to the issue litigated 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 action. 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 determination of the issues was necessary to the resulting judgment; 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 determination 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 invalidated. 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 demonstrate 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 demonstrate, 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 adjudication 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 opportunity to litigate because most are inapplicable here. See 

generally Blonder-Tongue, 402 U.S. at 332–34; Restatement (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 nonobviousness and denied Newegg’s JMOL motion of obviousness. 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 obviousness, 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 question 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 grant4 Newegg was thus unlike Unitherm Food Systems, 

Inc. v. Swift-Eckrich, Inc., 546 U.S. 394, 398 (2006) (holding “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 challenge 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 argument 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 litigate. 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 deprived of crucial evidence or witnesses in the first litigation 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 nonobviousness 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 rehearing 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 opportunity to present its arguments in Newegg that “product 

identifiers,” a limitation in each of the asserted claims, 

distinguish the prior art CompuServe Mall system. Basically, 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 contended 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 identifiers, 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) (alterations 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 product 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 opportunity in Newegg to present its arguments that the confirmation 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 Software 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 information . . . .” 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 statement 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 relying 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 comparison 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 testimony established a prima facie case of obviousness, as 

Newegg argued. See id. We concluded that Tittel’s testimony 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 apply 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 unadjudicated 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 describe 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 previouslyinvalidated 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 pa7 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 hypertext 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.