Cordance Corp. v. Amazon. Com, Inc.

United States Court of Appeals
for the Federal Circuit
__________________________

CORDANCE CORPORATION,
Plaintiff-Cross Appellant,

v.
AMAZON.COM, INC.,
Defendant-Appellant.
__________________________

2010-1502, -1545
__________________________

Appeals from the United States District Court for the
District of Delaware in case no. 06-CV-0491, Magistrate
Judge Mary Patricia Thynge.
__________________________

Decided: September 23, 2011
__________________________

MICHAEL A. ALBERT, Wolf Greenfield & Sacks, P.C. of
Boston, Massachusetts, argued for the plaintiff-cross
appellant. With him on the brief was ROBERT M.
ABRAHAMSEN.

J. DAVID HADDEN, Fenwick & West, LLP, of Mountain
View, California, argued for defendant-appellant. With
her on the brief were LYNN H. PASAHOW, DARREN E.
DONNELLY, SAINA SHAMILOV and RYAN MARTON.
__________________________
2 CORDANCE CORP v. AMAZON.COM

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. Patent Nos.
5,862,325 (“the ’325 Patent”), 6,088,717 (“the ’717 Pat-
ent”), 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 de-
scription 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). Cor-
dance Corp. v. Amazon.com, Inc., No. 06-cv-491 (D. Del.
Feb. 22, 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.
CORDANCE CORP v. AMAZON.COM 3

I. BACKGROUND

A. Technology

The ’710 Patent, titled “Object-Based On-Line Trans-
action Infrastructure,” covers an online purchasing sys-
tem. 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 on-
line 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 ini-
tiate a purchase transaction for purchasing the
item including metadata associating said cus-
tomer data with said transaction;

in response to the received indication, automati-
cally completing the purchase of an item from the
seller by processing said metadata associating
said customer data so as to complete the pur-
chase 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 “in-
formation 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.
4 CORDANCE CORP v. AMAZON.COM

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. Inde-
pendent 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 includ-
ing provider information;

in a consumer memory, storing information in-
cluding consumer information;

creating metadata describing associations with
portions of said information and defining a con-
trol structure which is processed at least at said
consumer memory to associate one or more proc-
esses for controlling communications of said as-
sociated 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 me-
tadata 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
CORDANCE CORP v. AMAZON.COM 5
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 re-
trieved later when that customer uses the 1-Click fea-
tures. 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., No. 06-491 (D. Del. Dec. 5,
2008), ECF No. 279 (“Claim Construction Order”), 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 invalid-
ity finding. The jury also found that Amazon’s feedback
features did not infringe any claims of the Feedback
Patents.
6 CORDANCE CORP v. AMAZON.COM

Cordance filed post-verdict motions for JMOL and a
new trial. Cordance sought, among other things, judg-
ment of non-invalidity of the asserted claims of the ’710
Patent and challenged the court’s construction of “feed-
back 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 writ-
ten 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
Opinion at 20-45. The court denied Cordance’s motion
challenging the construction of “feedback information.”
Id. at 47-49.

Amazon appeals the district court’s grant of Cor-
dance’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, Cor-
dance 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
CORDANCE CORP v. AMAZON.COM 7
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 Feb-
ruary 2002 and claims priority to the ’325 Patent, filed in
September 1996. The ’325 Patent is a continuation-in-
part of U.S. Patent No. 6,044,205 (“the ’205 Patent”), filed
in February 1996. Amazon sought JMOL that the as-
serted 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 concep-
tion 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 explana-
tion at trial how each claim of the ’710 Patent was sup-
ported by the disclosure of the ’205 Patent.
8 CORDANCE CORP v. AMAZON.COM

Amazon responds that, as to the 1993 conception doc-
ument, Reed never testified if or where any of the limita-
tions of the ’710 Patent claims were disclosed in that
document. Amazon contends that Cordance utterly failed
to provide any expert testimony showing how the concep-
tion document discloses the claim elements from the
perspective of one skilled in the art. Amazon further
contends that Cordance failed to present sufficient evi-
dence to show that the ’205 Patent supports all the limita-
tions of a single asserted claim of the ’710 Patent.
Amazon explains that a review of the ’205 Patent reveals
six lines, out of 142 columns, that even allude to product
ordering or online purchasing.

This court agrees with Amazon that the district court
did not err in granting Amazon’s motion. Cordance failed
to prove that the ’710 Patent was entitled to claim priority
to the 1993 conception document. To establish an earlier
effective date, Cordance was required to prove prior
conception. Conception “must be proven by evidence
showing what the inventor has disclosed to others and
what that disclosure means to one of ordinary skill in the
art.” In re Jolley, 308 F.3d 1317, 1321 (Fed. Cir. 2002).
Because of “a concern that inventors testifying in patent
infringement cases would be tempted to remember facts
favorable to their case by the lure of protecting their
patent or defeating another’s patent” conception must be
proven by corroborating evidence. Burroughs Wellcome
Co. v. Barr Labs., Inc., 40 F.3d 1223, 1228 (Fed. Cir.
1994). Although Cordance attempts to characterize the
district court’s error as relating to corroboration, the
district court expressly found no corroboration problem.
Instead, the district court found that Cordance failed to
link any disclosure contained within the 1993 conception
document to any limitations in the asserted claims of the
’710 Patent as construed by the district court. Trial Tr.
vol. I, 2118, Aug. 13, 2009 (“I said, fine, you’ve got cor-
roboration for that. But there was never any linking of
CORDANCE CORP v. AMAZON.COM 9
that conception document and what the invention was in
the ’710 Patent.”). Cordance failed to prove what this
disclosure means to one of skill in the art.

Cordance’s attempt to claim priority to the filing date
of the ’205 Patent fails for a similar reason. Under 35
U.S.C. § 120, “a claim in a later application receives the
benefit of the filing date of an earlier application so long
as the disclosure in the earlier application meets the
requirements of 35 U.S.C. § 112, ¶ 1, including the writ-
ten description requirement, with respect to that claim.”
Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316,
1326 (Fed. Cir. 2008). Here, the ’710 Patent issued from
the ’325 Patent, a continuation-in-part of the ’205 Patent.
Thus, in order for the asserted claims of the ’710 Patent to
receive the benefit of the filing date of the ’205 Patent,
filed in February 1996, written description support for the
asserted claims must be found in the ’205 Patent. Cor-
dance failed to link any disclosure contained within the
’205 Patent to any limitation in the asserted claims of the
’710 Patent as construed by the district court. Further-
more, a review of the ’205 Patent specification shows that
it does not support the claimed “automatically completing
the purchase of the item . . . by processing said metadata”
limitation. The district court did not err in granting
Amazon’s JMOL that the effective date of the ’710 Patent
is September 27, 1996.

2. Anticipation

At trial, Amazon presented an anticipation defense as
to claims 1, 3, 5, 7, and 8. See JMOL Opinion at 37 n.109
(“The anticipation of claims 2 and 9 was never submitted
to the jury.”). The jury found each of these claims invalid,
but did not specify the basis of its invalidity finding.
Cordance filed a post-verdict JMOL motion arguing that
Amazon presented insufficient evidence to support the
jury’s finding of invalidity premised upon a theory of
10 CORDANCE CORP v. AMAZON.COM

anticipation. The district court granted Cordance’s mo-
tion. See id. at 52.

Amazon argues that substantial evidence supports
the jury verdict that claims 1, 3, 5, 7, and 8 of the ’710
Patent are invalid as anticipated by Amazon’s 1995
shopping cart system (the “1995 System”). Amazon
explains that Paul Davis, an early Amazon employee,
described in detail the 1995 System that was in operation
in July 1995, more than one year before the September
1996 effective date of the ’710 Patent.

The 1995 System, according to Davis, operated much
like Amazon’s current system. The 1995 System pre-
sented the customer with items for sale on a web page. A
customer could add items to an electronic shopping cart.
To buy items, the customer would then click a “Checkout”
button. In response, the 1995 System would ask ques-
tions concerning the payment method and whether the
user had an Amazon account. Once the user provided the
requested information, the 1995 System then presented
an order summary page asking for credit card informa-
tion, or a confirmation of previously stored credit card
information, and shipping preferences. The 1995 System
then presented a final summary of the order along with a
“Confirm” button. Clicking the “Confirm” button created
an order with Amazon and displayed, to the user, a thank
you message.

Amazon explains that Alvisi then mapped each ele-
ment of the asserted claims to the functionality of Ama-
zon’s 1995 System in a manner that mirrored Shamos’s
infringement theory. Specifically, Alvisi detailed how the
limitations of independent claims 1 and 7 were satisfied
by the 1995 System. Alvisi performed a similar analysis
as to dependent claims 3, 5, and 8.
CORDANCE CORP v. AMAZON.COM 11
Amazon contends that the district court, in granting
Cordance’s motion, improperly imported a 1-click re-
quirement into the limitation of “automatically complet-
ing the purchase of the item.” Indeed, the district court
relied upon Alvisi’s admission that the 1995 System did
not use a 1-Click shopping process to conclude that Ama-
zon’s 1995 System could not anticipate these claims.

Cordance responds that the district court correctly re-
jected Amazon’s anticipation defense. Cordance contends
that Amazon’s 1995 System did not automatically com-
plete transactions nor did it include the required meta-
data. Cordance also discounts Amazon’s anticipation
defense as an improper “practicing the prior art” defense.

Cordance contends that Amazon’s 1995 System did
not automatically complete purchases because it relied on
human intervention in order to complete transactions.
Cordance argues that because Amazon employees had to
manually validate and process credit card transactions,
this system did not automatically complete purchases and
therefore could not anticipate this limitation.

Cordance also contends that Amazon’s 1995 System
does not satisfy the claimed metadata limitation. The
district court construed “metadata” to mean “data that
describes or associates other data.” Claim Construction
Order at 2. According to Cordance, Shamos explained
how Amazon’s accused shopping cart system satisfied the
metadata limitation whereas the 1995 System did not. A
sessionID number is often used in web applications to
associate a particular browsing “session” with a particular
user. The 1995 System used the HTTP POST method to
transfer the sessionID number. The accused system
utilized cookies to transfer the sessionID number. Ac-
cording to Cordance, Shamos explained that the sessionID
number in the 1995 system was just a number, e.g.
“1234567” and was not metadata because it was not in a
12 CORDANCE CORP v. AMAZON.COM

format such as “session-id=1234567,” as it would have
been stored in a cookie.

Finally, Cordance contends that Amazon’s invalidity
theory was that it was “practicing the prior art.” Accord-
ing to Cordance, this court has expressly rejected this
defense. Appellee’s Br. 45 (citing In re Omeprazole Patent
Litig. v. Apotex Corp., 536 F.3d 1361, 1377 (Fed. Cir.
2008) (“It is well-established . . . that ‘practicing the prior
art’ is not a defense to infringement.”)).

This court agrees with Amazon and concludes that
claims 1, 3, 5, 7, and 8 of the ’710 Patent are anticipated
by Amazon’s 1995 System as a matter of law. At trial,
Amazon’s experts described in detail the 1995 System and
how each limitation of claims 1, 3, 5, 7, and 8 of the ’710
Patent was satisfied by that system. The district court
construed the “automatically completing the purchase of
an item” limitation as “completing the purchase without
human input.” Alvisi explained how the 1995 System
satisfied this limitation because, once the user clicked the
“Confirm” button and Amazon received the sessionID
number, Amazon’s system automatically completed the
order without human input and sent an order confirma-
tion message. Cordance makes much of the fact that a
human user at Amazon had to manually verify credit
cards and, therefore, the 1995 System could not “auto-
matically complete” the purchase. In response, Alvisi
explained that, even in the accused system, which the
jury found to infringe, manual steps are still performed by
Amazon employees before customer credit cards are
charged for a purchase. The court’s construction of “au-
tomatically complete” does not require a complete absence
of human involvement from the moment an order is
placed, through the shipping of that order. Instead, Alvisi
explained, the limitation only requires an absence of
human involvement from either an indication to initiate
(claims 1-3, and 5) or an indication to complete (claims 7-
CORDANCE CORP v. AMAZON.COM 13
9) a purchase transaction through the completion of the
order. What Amazon does after an order is complete is
beyond the scope of the claims and wholly irrelevant.

Similarly, Amazon’s 1995 System also satisfies the
“metadata” limitations of claims 1, 3, 5, 7, and 8. As
explained above, the district court construed “metadata”
to mean “data that describes or associates other data.”
Claim Construction Order at 2. Amazon’s experts de-
scribed how its 1995 System used a sessionID number to
associate a current internet browsing session with a
particular Amazon customer account. The 1995 System
transmitted this sessionID number using the HTTP POST
protocol, whereas the accused system transmitted this
sessionID number using a cookie. Thus, both systems
satisfied the metadata limitation by use of a sessionID
number that associated a current internet browsing
session with a particular Amazon customer account.
Cordance’s reliance upon Shamos’s testimony is equally
unpersuasive. Shamos presented testimony that, in the
context of the HTTP POST protocol, the sessionID num-
ber was just a number, and not metadata. Shamos
reached this conclusion by opining that a sessionID num-
ber is simply a number when transmitted through the
HTTP POST protocol, but becomes metadata when
transmitted in a cookie. Because it is “data that describes
or associates other data,” a sessionID number, however
transmitted, is metadata under a proper claim construc-
tion of that term.

Finally, contrary to Cordance’s allegations, Amazon’s
theory of invalidity was not akin to the “practicing the
prior art” theory rejected by this court in Tate Access
Floors, Inc. v. Interface Architectural Resources, Inc., 279
F.3d 1357 (Fed. Cir. 2002). A “practicing the prior art”
defense typically refers to the situation where an accused
infringer compares the accused infringing behavior to the
prior art in an attempt to prove that its conduct is either
14 CORDANCE CORP v. AMAZON.COM

noninfringing or the patent is invalid as anticipated
because the accused conduct is simply “practicing the
prior art.” In Tate, this court explained that accused
infringers “are not free to flout the requirement of proving
invalidity by clear and convincing evidence by asserting a
‘practicing the prior art’ defense to literal infringement
under the less stringent preponderance of evidence stan-
dard.” Id. at 1367. Instead “[a]nticipation requires a
showing that each element of the claim at issue, properly
construed, is found in a single prior art reference. ‘It is
the presence of the prior art and its relationship to the
claim language that matters for invalidity.’” Zenith
Electrs. Corp. v. PDI Commc’n Sys., Inc., 522 F.3d 1348,
1363 (Fed. Cir. 2008) (quoting Tate, 279 F.3d at 1367).
Here, as explained above, Amazon’s experts explained
how each of the claim elements is disclosed by Amazon’s
1995 System. Amazon adequately satisfied its burden to
show by clear and convincing evidence that each limita-
tion of claims 1, 3, 5, 7, and 8 was found in its 1995 Sys-
tem and thus, these claims are invalid as anticipated.

The district court erred by granting Cordance’s post-
verdict JMOL motion that claims 1, 3, 5, 7, and 8 of the
’710 Patent were not invalid as anticipated. Because
these claims are anticipated as a matter of law, this court
reverses the district court’s grant of Cordance’s JMOL on
this ground.

3. Claims 2 and 9 of the ’710 Patent

Before considering the party’s contentions as to the
validity of claims 2 and 9 of the ’710 Patent, this court
will respond to concerns expressed at oral argument
regarding the nature of the jury’s verdict—an issue nei-
ther party briefed. At trial, Amazon presented two theo-
ries of invalidity as to claims 2 and 9 of the ’710 Patent.
Those two theories were written description and deriva-
tion. The jury, in a general verdict, found both claims to
CORDANCE CORP v. AMAZON.COM 15
be invalid. Therefore, due to the presentation of multiple
invalidity theories and the jury’s general verdict, it re-
mains unclear upon which ground(s) the jury based its
findings of invalidity. 1

Cordance filed a JMOL motion alleging that Amazon
presented insufficient evidence to support a finding that
claims 1-3, 5, and 7-9 are invalid under § 102(f). In grant-
ing this JMOL motion, the district court, without expla-
nation, did not include claims 2 and 9 in its order.
Cordance Corp. v. Amazon.com, Inc., No. 06-cv-491 (D.
Del. Feb. 22, 2010), ECF No. 515 at 2 (“Cordance’s motion
for JMOL that claims 1, 3, 5, 7, and 8 of the ’710 Patent
are not invalid under 35 U.S.C. 102(f) is GRANTED.”);
JMOL Opinion at 45 (“Accordingly, Cordance is entitled
to JMOL that claims 1, 3, 5, 7, and 8 of the ’710 patent
are not invalid under 35 U.S.C. § 102(f).”). Although it is
unclear why the district court did not grant Cordance’s
Rule 50(b) motion on § 102(f) as to claims 2 and 9, the
district court’s action is consistent with the fact that
Cordance never filed a Rule 50(a) motion challenging the
sufficiency of the evidence as to Amazon’s derivation
defense. Unitherm Food Sys., Inc. v. Swift-Eckrich, Inc.,
546 U.S. 394, 398 n.1 (2006) (“A post-trial motion for
judgment can be granted only on grounds advanced in the
pre-verdict motion.” (citation omitted)).

Cordance also filed a JMOL motion alleging that
Amazon presented insufficient evidence to support Ama-
zon’s written description theory as to claims 7-9. The
district court granted this motion. In doing so, the district
court found that claim 9 was not invalid under § 112, even

1 While multiple invalidity theories were presented
with respect to claims 1, 3, 5, 7, and 8, this court’s deter-
mination that claims 1, 3, 5, 7, and 8 are anticipated as a
matter of law renders any question as to the basis of the
jury’s verdict of invalidity as to these claims irrelevant.
16 CORDANCE CORP v. AMAZON.COM

though two theories of invalidity were presented and
Cordance failed to persuade the district court that the
evidence presented to the jury as to the other theory—
§ 102(f)—was insufficient.

After the district court’s JMOL rulings, the jury’s
finding of invalidity as to claim 2 was not disturbed by
any of the district court’s subsequent JMOL rulings and
remains in place. The remaining issue is the impact on
claim 9 of the district court’s grant of Cordance’s JMOL
motion on one theory (§ 112), but not on the other
(§ 102(f)).

When reviewing a general jury verdict, different rules
apply depending upon whether the flaw is in the legal
theory or the evidence. In Griffin v. United States, 502
U.S. 46 (1991), the Supreme Court explained, in the
context of a criminal case, that “[j]urors are not generally
equipped to determine whether a particular theory of
conviction submitted to them is contrary to law.” Id. at
59. “When, therefore, jurors have been left the option of
relying upon a legally inadequate theory, there is no
reason to think that their own intelligence and expertise
will save them from that error.” Id. A “legal error,” which
requires overturning a general verdict, “means a mistake
about the law, as opposed to a mistake concerning the
weight or the factual import of the evidence.” Id. “Quite
the opposite is true, however, when they have been left
the option of relying upon a factually inadequate theory,
since jurors are well equipped to analyze the evidence.”
Id.. In that situation, a court should not negate a verdict
“merely on the chance . . . that the jury convicted on a
ground that was not supported by adequate evidence
when there existed alternative grounds for which the
evidence was sufficient.” Id. at 59-60 (quoting United
States v. Townsend, 924 F.2d 1385, 1414 (7th Cir. 1991)).
CORDANCE CORP v. AMAZON.COM 17
This court and other circuits have applied this ration-
ale to uphold general jury verdicts in the civil context as
well. See, e.g., Northpoint Tech. v. MDS Am., 413 F.3d
1301, 1311-12 (Fed. Cir. 2005) (collecting cases). The
Third Circuit has applied Griffin in the criminal context,
see, e.g., United States v. Syme, 276 F.3d 131, 144 (3d Cir.
2002), but has not yet directly addressed this question,
post-Griffin, in the civil context. This court believes that
the Third Circuit would likely find the rationale of Griffin
persuasive and applicable in the civil context. See Agere
Sys., Inc. v. Atmel Corp., Case No. 02-cv-864, 2005 WL
2994702 (E.D. Pa. Aug. 17, 2005) (concluding that Grif-
fin’s principle is equally applicable in the civil context),
see also Hofkin v. Provident Life & Accident Ins. Co., 81
F.3d 365, 369 (3d Cir. 1996) (“A Rule 50 motion must be
denied if there is evidence reasonably tending to support
the recovery by [a party] as to any of its theories of liabil-
ity.” (emphasis added) (internal citation omitted)).

A general jury verdict of invalidity should be upheld if
there was sufficient evidence to support any of the alter-
native theories of invalidity. “A failure of proof with
respect to any single item of evidence does not justify a
grant of either JMOL or a new trial; even if some of the
proposed factual grounds . . . are not generally sufficient
to support a verdict, that is not fatal, because the critical
question is whether the evidence, taken as a whole, was
sufficient to support the jury’s verdict.” Northpoint Tech.,
413 F.3d at 1311. In the absence of any ruling on the
sufficiency of the evidence on both theories presented to
the jury with respect to claim 9, the district court had no
basis to find the jury’s general verdict unsustainable on
the written description theory alone. The JMOL ruling on
written description was, thus, improper and is vacated.

On cross-appeal, Cordance seeks a new trial with re-
gard to the jury’s invalidity verdict. In doing so, however,
Cordance does not contend that Amazon’s evidence on its
18 CORDANCE CORP v. AMAZON.COM

derivation defense was insufficient as to claims 2 and 9 or
that the district court erred in failing to grant its JMOL
motion on derivation as to claims 2 and 9. See Cordance
Br. 35 (“[T]his Court should affirm the District Court’s
grant of JMOL that Cordance’s claims are not invalid
under § 102(f).”). Instead, in asking this court for a new
trial, Cordance merely incorporated its arguments defend-
ing the district court’s grant of Cordance’s JMOL motions.
These arguments only relate to whether Amazon pre-
sented sufficient evidence to support a finding of deriva-
tion as to claims 1, 3, 5, 7, and 8. Cordance, on appeal,
never argued the separate issue of claims 2 and 9 and
glossed over the fact that the district court did not grant
its JMOL motion on derivation as to claims 2 and 9. See,
e.g., id. at 72 (“The District Court granted Cordance’s
requests for JMOL as to . . . derivation.”). Cordance did
not seek an amended judgment as to claims 2 and 9 and
waived its challenge to the sufficiency of the evidence as
to derivation before the district court and before this court
on appeal. Moreover, by failing to present any arguments
specifically relevant to Cordance’s entitlement to a new
trial as to the validity of claims 2 and 9, that issue is
similarly waived in this appeal.

For the foregoing reasons, this court concludes that
the jury’s verdict, finding claim 2 invalid, remains in
place and this court vacates the district court’s JMOL
ruling overturning the jury’s verdict of invalidity as to
claim 9.

4. Remaining Issues

Because claims 1, 3, 5, 7, and 8 of the ’710 Patent are
invalid as anticipated as a matter of law, and because the
jury’s verdict of invalidity as to claims 2 and 9 remains
undisturbed, this court need not decide the remaining
issues on appeal and cross-appeal concerning the ’710
Patent, for they are now moot.
CORDANCE CORP v. AMAZON.COM 19
C. Claim Construction of the “Feedback Information”
Limitation in the Feedback Patents

Cordance argues that the district court erred by con-
struing the “feedback information” limitation of the
Feedback Patents to mean “evaluation attributes and
corresponding value choices.” Claim Construction Order
at 8. According to Cordance, the proper construction of
“feedback information” is “information that includes an
evaluative review and may also include information
related to the review such as its subject or the evaluator.”
Cordance contends that the court’s construction improp-
erly reads a limitation into the claims that the feedback
information must be in the format of attributes and value
choices. Cordance also argues that “feedback informa-
tion” should include information other than “feedback
data,” such as a unique identification number correspond-
ing to the item about which feedback is being provided.

Amazon responds that the district court’s construction
was correct. According to Amazon, the specification
describes the use of an input form to collect feedback
information that “consists of the category attribute and
value choices.” Amazon notes that every embodiment in
the specification uses evaluation attributes that are
predefined and the feedback provider simply selects from
the value choices available for each predefined attribute.
Amazon contends that the specification never uses the
phrase “feedback information,” but instead uses the
synonymous term “feedback data” and describes no basis
for distinguishing the terms.

This court agrees with Amazon that the district court
did not err in construing “feedback information.” The
patent covers a system of collecting feedback information,
aggregating feedback information, and disseminating
statistical reports. The aggregation and reporting of
feedback information, as described in the specification,
20 CORDANCE CORP v. AMAZON.COM

was based upon the use of fixed, predefined attributes
with corresponding fixed, predefined value choices. See,
e.g., ’717 Patent, col.125 ll.56-62 (“The appropriate value
choices for each of these attributes would be displayed as
drop-down lists, radio buttons, and so on.”).

Furthermore, Cordance’s attempt to expand the defi-
nition of “feedback information” by equating it with the
“message object,” of which “feedback data” is a subset, is
equally unavailing. A message object is defined as a
generic structure for communicating between providers
and consumers. ’717 Patent, col.42 ll.54-61. The portion
of the specification cited by Cordance makes clear that
“feedback information” does not refer to the message
object, but instead to the narrower term “feedback data.”
See, e.g., id. col.125 l.67-col.126 l.3 (“Next, the data ex-
change method 141 creates a message object 110 contain-
ing the feedback data from the input form and the UID of
the target communications object 110.”).

In light of the disclosure that feedback information
“consists of” attributes and values, and the lack of support
for Cordance’s construction, the district court cannot be
said to have erred in its construction of “feedback infor-
mation.”

III. CONCLUSION

Because claims 1, 3, 5, 7, and 8 of the ’710 Patent are
invalid as anticipated, the district court’s order granting
Cordance’s JMOL to the contrary is reversed. This court
vacates the district court’s grant of Cordance’s JMOL on
written description and reinstates the jury’s verdict of
invalidity as to claim 9. Because the jury’s finding of
invalidity as to claim 2 was not disturbed by the district
court’s JMOL rulings, the jury’s finding of invalidity
stands. Because the parties have failed to show that the
district court erred as to any other issue, including its
CORDANCE CORP v. AMAZON.COM 21
construction of the “feedback information” limitation of
the Feedback Patents, this court affirms the remainder of
the district court’s determinations challenged on appeal.

AFFIRMED-IN-PART, REVERSED-IN-PART, AND
VACATED-IN-PART

COSTS

Each party shall bear its own costs.