Cordance Corp.. v. Amazon.Com Inc.

• Decision Date: 23 September 2011
• Docket Number: Nos. 2010–1502,2010–1545.,s. 2010–1502
• Citation: 658 F.3d 1330,100 U.S.P.Q.2d 1230
• Parties: CORDANCE CORPORATION, Plaintiff–Cross Appellant,v.AMAZON.COM, INC., Defendant–Appellant.
• Court: U.S. Court of Appeals — Federal Circuit

658 F.3d 1330

100 U.S.P.Q.2d 1230

CORDANCE CORPORATION, Plaintiff–Cross Appellant,

v.AMAZON.COM, INC., Defendant–Appellant.

Nos. 2010–1502

2010–1545.

United States Court of Appeals, Federal Circuit.

Sept. 23, 2011.

Michael A. Albert, Wolf Greenfield & Sacks, P.C. of Boston, MA, argued for the plaintiff-cross appellant.With him on the brief was Robert M. Abrahamsen.J. David Hadden, Fenwick & West, LLP, of Mountain View, CA, argued for defendant-appellant.With her on the brief were Lynn H. Pasahow, Darren E. Donnelly, Saina Shamilov and Ryan Marton.Before LOURIE, LINN, and DYK, Circuit Judges.LINN, Circuit Judge.

Cordance Corporation(“Cordance”) filed a complaint with the United States District Court for the District of Delaware against Amazon.com, Inc.(“Amazon”) alleging that Amazon infringed, among others, U.S. PatentNos. 5,862,325(“the '325 Patent”), 6,088,717 (“the '717 Patent”), and 6,757,710 (“the '710 Patent”).The jury reached a verdict that Amazon infringes claims 1, 3, 5, 7, and 8 of the '710 Patent; that all the asserted claims of the '710 Patent are invalid; and that Amazon does not infringe any of the asserted claims of the other patents-in-suit.The district court then granted Cordance's post-verdict JMOL motion that insufficient evidence supported a finding that: (1) claims 7–9 of the '710 Patent lack written description support; (2) claims 1–3, 5, and 7–9 of the '710 Patent are invalid as anticipated; and (3) claims 1, 3, 5, 7, and 8 of the '710 Patent are invalid under § 102(f).Cordance Corp. v. Amazon.com, Inc.,687 F.Supp.2d 449(D.Del.2010)(“ JMOL Opinion ”).The district court denied Cordance's post-verdict JMOL motions as to the '325 and '717 Patents.Id.Amazon appeals and Cordance cross-appeals.For the reasons explained below, this court reverses the district court's JMOL determination that claims 1, 3, 5, 7, and 8 of the '710 Patent are not invalid, vacates the district court's JMOL determination that claim 9 is not invalid, and affirms the district court's judgment as to the '325 and '717 Patents.As a result, each asserted claim of the '710 Patent is invalid and the asserted claims of the '325 and '717 Patent remain valid and not infringed.

I.Background

A.Technology

The '710 Patent, titled “Object–Based On–Line Transaction Infrastructure,” covers an online purchasing system.Independent claim 1 of the '710 Patent is exemplary and recites:

1.A computer implemented method comprising:

providing customer data storing information for a customer usable to automatically complete an online purchase of an item from a seller;

providing the customer with information from the seller with respect to an item;

receiving from the customer an indication to initiate a purchase transaction for purchasing the item including metadata associating said customer data with said transaction;

in response to the received indication, automatically completing the purchase of an item from the seller by processing said metadata associating said customer data so as to complete the purchase transaction.

col. 144 ll. 37–52.

Independent claim 7 of the '710 Patent, the only other independent claim, is similar to claim 1 except that “information provider” replaces “customer,”“information consumer” replaces “seller,” and “indication to complete” replaces “indication to initiate.”The '710 Patent is a continuation of the '717 Patent.

The '717 and '325 Patents (collectively, “the Feedback Patents”), both titled “Computer–Based Communication System and Method Using Metadata Defining a Control–Structure,” cover computerized feedback systems.The '717 Patent is a continuation of the '325 Patent.Independent claim 109 of the '325 Patent is exemplary and recites:

109.A computer-based communication method, comprising operating one or more computers to communicate by performing the steps of:

in a provider memory, storing information including provider information;

in a consumer memory, storing information including consumer information;

creating metadata describing associations with portions of said information and defining a control structure which is processed at least at said consumer memory to associate one or more processes for controlling communications of said associated information, said metadata including data exchange metadata associating a process for controlling the transfer or feedback information, said feedback information including at least a portion of said consumer information, to said provider memory;

transferring said information, including said metadata defining said control structure, from said provider memory to said consumer memory;

processing said metadata to execute instructions external to said control structure to perform said processes; and

communicating said feedback information from said consumer memory to said provider memory.

col. 158 ll. 17–41.

B.Accused Products

Cordance accused Amazon's “1–Click®”(“1–Click”) purchasing features of infringing claims 1–3, 5, and 7–9 of the '710 Patent.Amazon's customers can store payment information and shipping addresses in their Amazon customer accounts.This information can then be retrieved later when that customer uses the 1–Click features.Cordance also alleged that Amazon's features allowing customers to enter reviews of products for sale on Amazon's website and to enter reviews of transactions with third-party sellers infringe the Feedback Patents.

C.Procedural History

After the district court construed the claims, Cordance Corp. v. Amazon.com, Inc.,636 F.Supp.2d 310(D.Del.2008), ECF No. 279 (“ Claim ConstructionOrder ”), a jury trial was conducted in August 2009.At trial, Cordance's expert, Dr. Shamos (“Shamos”), explained how Amazon's 1–Click features infringed the asserted claims of the '710 Patent.Amazon's expert, Dr. Alvisi (“Alvisi”), presented evidence that all asserted claims of the '710 Patent were invalid for derivation and for failure to satisfy the written description requirement and that claims 1, 3, 5, 7, and 8 were also invalid as anticipated.

The jury rendered a verdict concluding that Amazon infringed claims 1, 3, 5, 7, and 8 of the '710 Patent, but that claims 1–3, 5, and 7–9 of the '710 Patent were invalid.The verdict form did not specify the basis for the invalidity finding.The jury also found that Amazon's feedback features did not infringe any claims of the Feedback Patents.

Cordance filed post-verdict motions for JMOL and a new trial.Cordance sought, among other things, judgment of non-invalidity of the asserted claims of the '710 Patent and challenged the court's construction of “feedback information” as recited in the asserted claims of the Feedback Patents.The district court granted JMOL that Amazon failed to provide sufficient evidence to support a finding that (1) claims 7–9 of the '710 Patent lacked written description; (2) claims 1–3, 5, and 7–9 of the '710 Patent are invalid as anticipated; and (3) claims 1, 3, 5, 7, and 8 of the '710 Patent are invalid under § 102(f).JMOL Opinionat 463–80.The court denied Cordance's motion challenging the construction of “feedback information.”Id. at 481–83.

Amazon appeals the district court's grant of Cordance's JMOL motion and seeks to restore the jury's verdict that each asserted claim of the '710 Patent is invalid.Cordance raised several arguments in its cross appeal which fall into two categories.First, Cordance seeks to reverse or vacate the jury's finding of invalidity as to claims 1–3 and 5 of the '710 Patent.Second, Cordance seeks to modify the district court's construction of “feedback information” in the Feedback Patents.

II.Discussion

A.Standard of Review

“This court's review of a district court's grant of JMOL is governed by regional circuit law.”Uniloc USA, Inc. v. Microsoft Corp.,632 F.3d 1292, 1301(Fed.Cir.2011).“It is only on rare instances that a jury's verdict in a civil case should be overturned.”Pitts v. Delaware,646 F.3d 151, 152(3d Cir.2011).In the Third Circuit, the grant or denial of JMOL is reviewed de novo.Lightning Lube, Inc. v. Witco Corp.,4 F.3d 1153, 1166(3d Cir.1993).JMOL is proper when after “viewing the evidence in the light most favorable to the nonmovant and giving it the advantage of every fair and reasonable inference, there is insufficient evidence from which a jury reasonably could find” for the nonmovant.Id.A district court's claim construction is reviewed de novo.Cybor Corp. v. FAS Techs., Inc.,138 F.3d 1448, 1455–56(Fed.Cir.1998)(en banc).

B.Invalidity of Asserted Claims of the '710 Patent

1.Effective Date

The application for the '710 Patent was filed in February 2002 and claims priority to the '325 Patent, filed in September 1996.The '325 Patent is a continuation-in-part of U.S. PatentNo. 6,044,205(“the '205 Patent”), filed in February 1996.Amazon sought JMOL that the asserted claims of the '710 Patent could not claim priority to the '205 Patent because the '710 Patent contained new matter that was added with the filing of the application that matured to the '325 Patent.The district court granted Amazon's motion and concluded that the effective date of the '710 Patent was September 27, 1996.

Cordance argues that the district court should have found that the ' 710 Patent was entitled to an effective date of November 1, 1993—the date of an alleged conception document—or, at the latest, February 29, 1996—the filing date of the '205 Patent.As to the 1993 document, Cordance contends that the district court erroneously refused to consider Reed's testimony concerning the corroboration of his own prior conception and that the court erroneously required the corroborating evidence to provide written description support for the claims.As to the '205 Patent, Cordance contends that it satisfied its threshold burden of production through Reed's explanation at trial how each claim of the '710 Patent was supported by the disclosure of the '205 Patent.

Amazon responds that, as to the 199...