         NOTE: This disposition is nonprecedential.


  United States Court of Appeals
      for the Federal Circuit
                 ______________________

              SOVERAIN SOFTWARE LLC,
                   Plaintiff-Appellee,

                            v.

                    NEWEGG INC.,
                  Defendant-Appellant.
                 ______________________

                       2011-1009
                 ______________________

   Appeal from the United States District Court for the
Eastern District of Texas in No. 07-CV-0511, Judge
Leonard Davis.
                ______________________

          ON PETITION FOR REHEARING
               ______________________

   Before NEWMAN, PROST, and REYNA, Circuit Judges.
PER CURIAM.
    The court grants rehearing for the purpose of clarifi-
cation of the status of claims 34 and 35 of Patent No.
5,715,314.
    This court’s opinion, reported at 705 F.3d 1333 (Fed.
Cir. 2013), discussed claim 34 as representative of the
“shopping cart” claims, and held claim 34 invalid on the
2                             SOVERAIN SOFTWARE   v. NEWEGG
ground of obviousness. The parties state, on petition for
rehearing, that our ruling should have been for claim 35,
to conform to the judgment entered on the jury verdict.
Soverain requests further proceedings, and Newegg
proposes that we correct the “typographical error.” We
now order additional briefing.
                        DISCUSSION
    Claim 34 is reproduced in the court’s opinion, at 705
F.3d at 1337–38. Claim 35 depends from claim 34, and
includes an additional limitation:
    35. A network-based sales system in accordance
    with claim 34, wherein said shopping cart com-
    puter is programmed to cause said payment mes-
    sage to be created before said buyer computer
    causes said payment message to be activated.
    The district court, on motion for post-verdict JMOL,
discussed the shopping cart claims in terms of claim 34,
as had the parties at the trial and in the motion for
JMOL; see, e.g., 836 F. Supp. 2d 462, 468 (“Newegg first
argues that there was no legally sufficient evidence from
which a reasonable jury could conclude that the accused
Newegg system meets all the limitations of independent
claim 34 of the ’314 patent . . . .”); id. at 478 (discussing
expert testimony on the limitations of claim 34). The
district court did not mention the limitation in claim 35 in
its JMOL discussion of either infringement or invalidity.
This was commensurate with the trial proceedings and
record, which were primarily to claim 34. However, the
jury verdict form, on which judgment was entered, re-
ferred to claim 35, not claim 34.
    On the appeal to this court, the parties again focused
on claim 34. Newegg’s opening brief stated that Soverain
“asserted” claim 34, and that claim 34 is “representative
of the shopping cart claims.” Newegg Br. 6. Soverain’s
brief on this appeal mentioned that claim 35 was in suit,
but did not discuss the limitation in that claim or other-
 SOVERAIN SOFTWARE   v. NEWEGG                          3
wise differentiate it from claim 34. Soverain focused on
the limitations of claim 34, as did Newegg. E.g., Soverain
Br. 45–46. Soverain’s brief did not dispute or correct
Newegg’s characterization of claim 34 as asserted and
representative.
    On January 22, 2013, the court issued its opinion on
this appeal. The court’s opinion treated claim 34 as
representative of the shopping cart claims, and gave
particular attention to the claim limitations of claim 34,
in order to determine whether there were material dis-
putes warranting remand, 705 F.3d at 1337 (citing KSR
International Co., v. Teleflex, Inc., 550 U.S. 398, 427
(2007)).
     After release of the court’s ruling, Newegg wrote the
court stating that claim 34 was not the subject of the
district court’s judgment, and suggested that the court
correct its “clerical error” by substituting claim 35.
Soverain responded, stating that the error was “substan-
tive, not clerical.” Soverain then submitted a petition for
rehearing, stating that “the panel’s decision analyzed the
wrong claim” and “claim 35 contains additional limita-
tions.” Soverain’s petition did not discuss the limitation
of claim 35, but re-argued several limitations in claim 34
such as “product identifier” and “shopping cart database.”
     Newegg responded that Soverain failed to rely on
claim 35 “as a basis for its panel or en banc rehearing
request” and pointed out that Soverain mentioned claim
35 “only in a footnote to its background section” of its
appeal brief. Newegg then addressed the substantive
arguments Soverain raised, which did not include the
differences between claims 34 and 35.
    On this record, we do not have enough information to
determine whether there is a “genuine” dispute as to
whether the prior art taught the limitation of claim 35, or
the role of such limitation in the shopping cart teachings
of the prior art. See Anderson v. Liberty Lobby, Inc., 477
4                             SOVERAIN SOFTWARE   v. NEWEGG
U.S. 242, 248 (1986) (“A factual dispute is only ‘genuine’ if
the evidence is such that a reasonable jury could return a
verdict for the nonmoving party.”).
    It is also unclear on this record, because it has not
been briefed, whether Soverain agreed that claim 34 is
representative of the shopping cart claims, or whether
Soverain’s silence constituted a waiver of this aspect.
    Although the confusion concerning the posture of
claims 34 and 35 is a result of the parties’ arguments at
trial and appeal, we conclude that the matter warrants
supplemental briefing on the following aspects:
    1. The treatment at trial of the additional limitation
       in claim 35; and

    2. Whether claim 34 was treated as, or is properly
       deemed “representative” of the shopping cart
       claims including claim 35.
The supplemental briefs shall be filed simultaneously, no
later than ten days following the date of this order.
Responsive briefs may be filed no later than ten days
thereafter. The briefs shall not exceed 10 pages double-
spaced for each party. The parties are instructed to
attach copies of any materials relied upon in their briefs
that are not in the existing appendices.
    IT IS SO ORDERED.

    June 13, 2013
       Date

    cc: Edward R. Reines, Esq.
        Robert B. Wilson, Esq.
