Soverain Software LLC v. eBay, Inc. et al

Filing 1

***FILED IN ERROR. PLEASE IGNORE.*** COMPLAINT against GSI Commerce, Inc., PayPal, Inc., Radioshack Corporation, eBay, Inc. ( Filing fee $ 350 receipt number 0540-3491095.), filed by Soverain Software LLC. (Attachments: # 1 Exhibit A - US 5,715,314, # 2 Exhibit B - Reexamination Certificate - US 5,715,314, # 3 Exhibit C - US 5,909,492, # 4 Exhibit D - Reexamination Certificate - US 5,909,492 CI, # 5 Civil Cover Sheet)(Ward, Thomas) Modified on 3/14/2012 (gsg).

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
TYLER DIVISION
§
§
§
Plaintiff,
§ Civil Action No. 6:12cv142
v.
§
§ JURY TRIAL DEMANDED
INTERNATIONAL BUSINESS MACHINES §
CORP., FOSSIL, INC., THE HOME
§
DEPOT, INC., THE HOME DEPOT U.S.A., §
§
INC., QUILL CORPORATION, and
§
STAPLES, INC.,
§
Defendants.
SOVERAIN SOFTWARE LLC,

COMPLAINT FOR PATENT INFRINGEMENT
Plaintiff Soverain Software LLC, by its undersigned attorneys, for its complaint against
Defendants International Business Machines Corp., Fossil, Inc., The Home Depot, Inc., The
Home Depot U.S.A., Inc., Quill Corporation, and Staples, Inc., (collectively, “Defendants”)
hereby alleges the following:
INTRODUCTION
1.

This is an action arising under the patent laws of the United States, Title 35 of the

United States Code, for Defendant’s infringement of U.S. Patent Nos. 5,715,314 and 5,909,492
(collectively, the “patents-in-suit”).
2.

Plaintiff Soverain Software LLC (“Soverain”) is a Delaware limited liability

company organized and existing under the laws of Delaware, with its principal place of business
at 233 South Wacker Driver, Suite 9425, Chicago, IL 60606.
3.

Upon information and belief, Defendant International Business Machines

(“IBM”) is a corporation organized and existing under the laws of the state of New York, with its
principal place of business at 1 New Orchard Road, Armonk, NY 10504.

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4.

Upon information and belief, Defendant Fossil, Inc. (“Fossil”) is a corporation

organized and existing under the laws of the state of Delaware, with its principal place of
business at 901 S. Central Expressway, Richardson, TX 75080.
5.

Upon information and belief, Defendant The Home Depot, Inc. is a corporation

organized and existing under the laws of the state of Delaware, with its principal place of
business 2455 Paces Ferry Road, N.W., Atlanta, Georgia 30339. Upon information and belief,
Defendant The Home Depot U.S.A., Inc. is a corporation organized and existing under the laws
of the state of Delaware, with its principal place of business 2455 Paces Ferry Road, N.W.,
Atlanta, Georgia 30339.

The Home Depot, Inc. and The Home Depot U.S.A., Inc. will

hereinafter be referred to collectively as “the Home Depot Defendants.”
6.

Upon information and belief, Defendant Staples, Inc. is a corporation organized

and existing under the laws of the state of Delaware with its principal place of business at 500
Staples Drive, Framingham, Massachusetts 01702.

Upon information and belief, Quill

Corporation, a wholly owned subsidiary of Staples, Inc., is a corporation organized and existing
under the laws of the state of Delaware with its principal place of business at 100 Schelter Road,
Lincolnshire, IL 60069. Staples, Inc. and Quill Corporation will hereinafter be referred to
collectively as “the Staples Defendants.”
JURISDICTION AND VENUE
7.

This Court has subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331 and

1338(a).
8.

This Court has personal jurisdiction over Defendants because Defendants have

committed acts of infringement in violation of 35 U.S.C. § 271 and have placed infringing
products into the stream of commerce, through an established distribution channel, with the

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knowledge and/or understanding that such products are used in this District. These acts cause
injury to Soverain within the District. On information and belief, Defendants derive substantial
revenue from the infringing products used within the District, and/or expect or should reasonably
expect their actions to have consequences within the District, and derive substantial revenue
from interstate and international commerce.
9.

Venue is proper in this District pursuant to 28 U.S.C. §§ 1391 and 1400(b).

Moreover, Plaintiff Soverain has previously asserted the patents-in-suit in this Division, during
which this Court issued several orders and opinions, conducted claim construction proceedings,
and presided over trial. See Soverain Software LLC v. Amazon.com, Inc. and The Gap, Inc.,
Case No. 6:04-cv-014 (filed Jan. 12, 2004); Soverain Software LLC v. CDW Corp., et al., Case
No. 6:07-cv-511 (filed Nov. 23, 2007); Soverain Software LLC v. J.C. Penney Corp., Inc. et al.,
Case No. 6:09-cv-274 (filed Jun. 25, 2009).
10.

IBM and the other Defendants are properly joined in this action because IBM

owns the accused WebSphere software. Upon information and belief, IBM has licensed its
WebSphere software to the other Defendants, each of which utilizes the WebSphere software for
its e-commerce websites.
THE PATENTS-IN-SUIT
11.

Plaintiff Soverain is the owner of all right, title, and interest in U.S. Patent No.

5,715,314 (the “’314 patent”) entitled “Network Sales System.” The ’314 patent was duly and
properly issued by the United States Patent and Trademark Office on February 3, 1998 and
assigned to Soverain. The PTO reexamined the ’314 patent and issued Ex Parte Reexamination
Certificate No. 5,715,314 C1 on October 9, 2007. A copy of the ’314 patent is attached hereto as
Exhibit A. A copy of the Ex Parte Reexamination Certificate 5,715,314 C1 is attached hereto as

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Exhibit B.
12.

Plaintiff Soverain is the owner of all right, title, and interest in U.S. Patent No.

5,909,492 (the “’492 patent”) entitled “Network Sales System.” The ’492 patent was duly and
properly issued by the United States Patent and Trademark Office on June 1, 1999 and assigned
to Soverain.

The PTO reexamined the ’492 patent and issued Ex Parte Reexamination

Certificate No. 5,909,492 C1 on August 7, 2007. A copy of the ’492 patent is attached hereto as
Exhibit C. A copy of the Ex Parte Reexamination Certificate No. 5,909,492 C1 is attached
hereto as Exhibit D.
13.

Plaintiff Soverain has marked its product with the numbers of one or more of the

patents in suit.
COUNT I: INFRINGEMENT BY IBM
14.

Upon information and belief, Defendant International Business Machines

Corporation, through its development, use, sale, and offer for sale of the WebSphere e-commerce
software and also through its systems and methods related to shopping for and purchasing items
through websites, including but not limited to www.ibm.com/products/us/en, has infringed and
continues to infringe, either literally or under the doctrine of equivalents, the ’314 and ’492
patents in violation of 35 U.S.C. §271 by: (a) making, using, offering for sale or selling within
the United States, products or processes that practice inventions claimed in those patents; (b)
inducing others to make, use, offer for sale or sell within the United States, products or processes
that practice inventions claimed in those patents; or (c) contributing to the making, using,
offering for sale or selling within the United States, products or processes that practice
inventions claimed in those patents.
15.

Plaintiff Soverain has been damaged by Defendant IBM’s infringement and will

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continue to be damaged by such infringement.
16.

Plaintiff Soverain has suffered and continues to suffer irreparable harm and will

continue to do so unless Defendant IBM is enjoined therefrom by this Court.
COUNT II: INFRINGEMENT BY FOSSIL
17.

Upon information and belief, Defendant Fossil, Inc., through its use of systems

and methods related to shopping for and purchasing items through Fossil’s websites including
but not limited to www.fossil.com, has infringed and continues to infringe, either literally or
under the doctrine of equivalents, the ’314 and ’492 patents in violation of 35 U.S.C. §271 by:
(a) making, using, offering for sale or selling within the United States, products or processes that
practice inventions claimed in those patents; (b) inducing others to make, use, offer for sale or
sell within the United States, products or processes that practice inventions claimed in those
patents; or (c) contributing to the making, using, offering for sale or selling within the United
States, products or processes that practice inventions claimed in those patents.
18.

Plaintiff Soverain has been damaged by Defendant Fossil’s infringement and will

continue to be damaged by such infringement.
19.

Plaintiff Soverain has suffered and continues to suffer irreparable harm and will

continue to do so unless Defendant Fossil is enjoined therefrom by this Court.
COUNT III: INFRINGEMENT BY HOME DEPOT
20.

Upon information and belief, the Home Depot Defendants, through their use of

systems and methods related to shopping for and purchasing items through Home Depot’s
websites including but not limited to www.homedepot.com, have infringed and continue to
infringe, either literally or under the doctrine of equivalents, the ’314 and ’492 patents in
violation of 35 U.S.C. §271 by: (a) making, using, offering for sale or selling within the United

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States, products or processes that practice inventions claimed in those patents; (b) inducing
others to make, use, offer for sale or sell within the United States, products or processes that
practice inventions claimed in those patents; or (c) contributing to the making, using, offering for
sale or selling within the United States, products or processes that practice inventions claimed in
those patents.
21.

Plaintiff Soverain has been damaged by the Home Depot Defendants’

infringement and will continue to be damaged by such infringement.
22.

Plaintiff Soverain has suffered and continues to suffer irreparable harm and will

continue to do so unless the Home Depot Defendants are enjoined therefrom by this Court.
COUNT IV: INFRINGEMENT BY STAPLES
23.

Upon information and belief, the Staples Defendants, through their use of

systems and methods related to shopping for and purchasing items through Staples’ websites
including

but

not

limited

to

www.staples.com,

www.stapleslink.com,

www.staplesadvantage.com, and www.quill.com, have infringed and continue to infringe, either
literally or under the doctrine of equivalents, the ’314 and ’492 patents in violation of 35 U.S.C.
§271 by: (a) making, using, offering for sale or selling within the United States, products or
processes that practice inventions claimed in those patents; (b) inducing others to make, use,
offer for sale or sell within the United States, products or processes that practice inventions
claimed in those patents; or (c) contributing to the making, using, offering for sale or selling
within the United States, products or processes that practice inventions claimed in those patents.
24.

Plaintiff Soverain has been damaged by the Staples Defendants’ infringement and

will continue to be damaged by such infringement.
25.

Plaintiff Soverain has suffered and continues to suffer irreparable harm and will

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continue to do so unless the Staples Defendants are enjoined therefrom by this Court.
JURY DEMAND
26.

Pursuant to Rule 38(b) of the Federal Rules of Civil Procedure, Plaintiff Soverain

respectfully requests a trial by jury on all issues.
PRAYER FOR RELIEF
WHEREFORE, Plaintiff Soverain requests entry of judgment in its favor and against
Defendants as follows:
A.

Declaring that IBM, Fossil, the Home Depot Defendants, and the Staples
Defendants have infringed U.S. Patent Nos. 5,715,314 and 5,909,492.

B.

Awarding the damages arising out of IBM, Fossil, the Home Depot Defendants,
and the Staples Defendants’ infringement of U.S. Patent Nos. 5,715,314 and
5,909,492, including enhanced damages pursuant to 35 U.S.C. § 284, to Soverain,
together with prejudgment and post-judgment interest, in an amount according to
proof;

C.

Permanently enjoining IBM, Fossil, the Home Depot Defendants, and the Staples
Defendants and their respective officers, agents, employees, and those acting in
privity with them, from further infringement, including contributory infringement
and/or inducing infringement, of U.S. Patent Nos. 5,715,314 and 5,909,492.

D.

Awarding attorneys’ fees pursuant to 35 U.S.C. § 285 or as otherwise permitted
by law; and

E.

Awarding such other costs and further relief as the Court may deem just and
proper.

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DATED: March 14, 2012

Respectfully submitted,

By: /s/ John Ward, Jr.
T. John Ward, Jr.
State Bar No. 00794818
[e-mail]
J. Wesley Hill
State Bar No. 24032294
[e-mail]
Claire Abernathy Henry
State Bar No. 24053063
[e-mail]
WARD AND SMITH LAW FIRM
111 W. Tyler St.
Longview, Texas 75601
Telephone [phone]
Facsimile [phone]
Max L. Tribble, Jr. – Lead Counsel
State Bar No. 20213950
[e-mail]
John P. Lahad
State Bar No. 24068095
[e-mail]
SUSMAN GODFREY L.L.P.
1000 Louisiana Street, Suite 5100
Houston, Texas 77002
Telephone: [phone]
Facsimile: [phone]
Justin A. Nelson
State Bar No. 24034766
[e-mail]
SUSMAN GODFREY L.L.P.
1201 Third Ave, Suite 3800
Seattle, WA 98101
Telephone: [phone]
Facsimile: [phone]
Victoria Cook
State Bar No. 24031912
[e-mail]
Kalpana Srinivasan
CA State Bar No. 237460
[e-mail]
SUSMAN GODFREY L.L.P.
1901 Avenue of the Stars, Suite 950
Los Angeles, CA 90067
Telephone: [phone]
Facsimile: [phone]

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Michael C. Smith
State Bar No. 18650410
SIEBMAN, BURG, PHILLIPS & SMITH L.L.P.
113 East Austin St.
P.O. Box 1556
Marshall, Texas 75671
Telephone: [phone]
Facsimile: [phone]
[e-mail]
S. Calvin Capshaw
State Bar No. 03783900
Elizabeth L. DeRieux
State Bar No. 05770585
CAPSHAW DERIEUX, LLP
1127 Judson Road, Suite 220
P. O. Box 3999
Longview, Texas 75601-5157
Telephone: [phone]
Facsimile: [phone]
[e-mail]
[e-mail]
Attorneys for Soverain Software LLC

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