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Soverain Software v. J.C. Penney: Denying Summary Judgment of Non-Infringement of E-Commerce Patent Based on Divided Infringement Theory

Plaintiff Soverain Software alleged infringement of patents relating to e-commerce transactions over the Internet involving the use of a shopping cart and online statements. The claims at issue required a system with a client-side buyer computer that was programmed to receive requests.

Defendants contended that they were entitled to judgment as a matter of law of non-infringement because they did not put the entire claimed system into use, citing Centillion Data Sys., LLC v. Quest Comm. Intl., Inc., 631 F.3d 1279 (Fed. Cir. 2011) (holding that the use of a system for purposes of infringement required a party to “control the system as a whole and obtain a benefit from it” but that “supplying the system software for the customer to use is not the same as ‘using’ the system”). The patented system in Centillion required that the client-side buyer computer be adapted to perform additional processing using Quest software that the user had to download and install on their computer.

Defendants argued, as did Quest in Centillion, that they did not use the claimed system because they did not use a client-side buyer computer that was programmed to receive requests. The court rejected this divided infringement argument and made a key distinction with Centillion:

“Here, unlike Quest, Defendants do not require their customers to download and install software so that the buyer computer is able to interact with the shopping cart computer as required by the claims. Rather, the delivery of Defendants’ web page itself provides the programming required by the claims; the user is not required to install anything. Thus, Defendants’ web server, by delivering web pages containing embedded programming, puts the system as a whole into service so that Defendants may benefit from the system. Accordingly, Defendants use the system under ยง271(a) by putting the system into service, i.e. controlling the system as a whole and benefiting from it.”

Thus, the court focused its divided infringement analysis on whether a complete, operative system is provided to the user, or whether additional user modification is required for operation such that the system is not complete or within the control of the provider.

The authors of are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. We represent inventors, patent owners and technology companies in patent licensing and litigation. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Stan Gibson at 310.201.3548 or

Soverain Software LLC v. J.C. Penney Corporation, Inc., Civ. No. 6:09-cv-00274 (E.D. Tex August 9, 2012)