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CIVIX-DDI, LLC v. National Association of Realtors

November 6, 2006

CIVIX-DDI, LLC, PLAINTIFF,
v.
NATIONAL ASSOCIATION OF REALTORS, HOMESTORE, INC., HOTELS.COM, L.P. , HOTELS.COM GP LLC, YAHOO! INC., ORBITZ LLC, TRAVELOCITY.COM INC., TRAVELOCITY.COM, LP, AND YELLOWPAGES.COM LLC, DEFENDANTS.



The opinion of the court was delivered by: Amy J. St. Eve, District Court Judge

MEMORANDUM OPINION AND ORDER

Before the Court is Defendant Yahoo! Inc.'s ("Yahoo!") Motion for Summary Judgment pursuant to Federal Rule of Civil Procedure 56(c). In its motion, Yahoo! argues that Plaintiff CIVIX-DII, LLC's ("Civix") patent infringement claims are barred because the Yahoo! activities at issue fall within the scope of Civix's convenient-not-to-sue arising from the Civix-Navteq settlement agreement (the "Navteq Agreement"). Because genuine issues of material fact exist as to which, if any, of Yahoo!'s accused activities relate in any way to "NAVTECH Technology" under the Navteq Agreement, the Court denies Yahoo!'s motion.

BACKGROUND

I. Parties

Civix is a Colorado limited liability company with its principal place of business at 125 South Wacker Drive, Chicago, Illinois. (R. 104-1; Def.'s Rule 56.1 Stmt. Facts ¶ 1.) Civix owns patents in the field of location-based searching and mapping and licenses its patents to third parties. (Id. ¶ 17; R. 147-1, Pl.'s Resp. Def.'s Stmt. Facts ¶ 17.) Yahoo! is a Delaware corporation with its principal place of business at 701 First Avenue, Sunnyvale, California. (Def.'s Stmt. Facts ¶ 2.) Yahoo! offers a variety of services, including Yahoo! Maps, Yahoo! Yellow Pages, Yahoo! Local, Yahoo! Travel, and Yahoo! Farechase. (Id. ¶¶ 8-12.)

II. Patents-in-Suit

Civix is the exclusive owner of U.S. Patent Nos. 6,385,622 (the "'622 patent"), 6,408,307 (the "'307 patent"), 6,415,291 (the "'291 patent"), and 6,473,692 (the "'692 patent"). (R. 203-1; Pl.'s Second Am. Compl. ¶¶ 11, 13.) In January 2006, Civix brought this lawsuit against Yahoo! alleging that Yahoo! Maps, Yahoo! Yellow Pages, Yahoo! Local, Yahoo! Travel, and Yahoo! Farechase Services infringed various claims of the patents-in-suit. (Def.'s Stmt. Facts ¶ 3.) Specifically, Civix alleges infringement of claims 6, 12-20, 25, 26, 28, 29, 31, 38, 42-45, 47, 55, 56, 61, and 63 of the '622 patent, claims 13-15, 17, 19, 25, and 30 of the '307 patent, claims 5-7, 14, 21, and 23 of the '291 patent, and claims 27, 28, 30, 31, 41, 42, 44, 45, and 50 of the '692 patent. (Pl.'s Second Am. Compl. ¶ 24.)

III. Navteq Litigation and Settlement Agreement

Navteq, formerly known as NavTech, gathers, formats, and licenses geographic data to numerous companies. (Def.'s Stmt. Facts ¶ 15.) In 1999, Civix sued Navteq in the United States District Court for the Northern District of Illinois for patent infringement. (Id. ¶ 19.) Civix and Navteq settled the lawsuit in 2000. (Id. ¶ 20.) Under the integrated settlement agreement (the "Navteq Agreement"), Civix granted "a worldwide, irrevocable, unlimited, unrestricted, paid-up license under the CIVIX Patents and the INTERFERENCE Patents to the NAVTECH GROUP to engage in any Commercial Activity at its sole discretion involving or relating in any way to NAVTECH Technology." (Id. ¶¶ 21, 22; Def.'s Confidential Ex. 2, Navteq Agreement, ¶ 6.a.) The Navteq Agreement contains a covenant-not-to-sue, stating in relevant part:

9. COVENANTS NOT TO SUE

a. CIVIX hereby covenants and agrees, on a worldwide and irrevocable basis, that neither CIVIX, nor any successor or assign of CIVIX, nor any successor or assign or licensee of the CIVIX Patents and/or the INTERFERENCE Patents, will ever bring any claim, demand and/or cause of action of any kind against:

i. any NAVTECH COMPANY with respect to or in any way relating to the NAVTECH Technology, including without limitation any Commercial Activity by any NAVTECH COMPANY or any third party on behalf of any NAVTECH COMPANY.

ii. any direct or indirect customer or end user of a NAVTECH COMPANY, and/or of any NAVTECH Technology, with respect to or in any way relating to the NAVTECH Technology, including without limitation any Commercial Activity by any such customer or end user relating in any way to (1) all or any part of the NAVTECH Technology or (2) any products, processes, systems, and/or services that use and /or incorporate all or any part of the NAVTECH Technology. (Id. ¶ 21; Navteq Agreement, ¶ 9.)

The Navteq Agreement defines a "NAVTECH COMPANY" as "any and all entities that form all or a part of NAVTECH; and/or its direct and indirect subsidiaries, affiliates, joint ventures, and partnerships; and/or distributors, agents, and representatives thereof." (Id. ¶ 27, Navteq Agreement, ¶ 1.h.) Further, the Navteq Agreement defines "Commercial Activity" as "making, using, selling, offering for sale and/or importing and any and all other activity, including without limitation creation, development, manufacture, manufacture by another, licensing, offer to license, disposition, transfer, distribution, advertising, promotion, and/or exportation." (Id. ¶ 25, Navteq Agreement, ¶ 1.d.) The Navteq Agreement also defines "NAVTECH Technology" as:

. . . any past, present, and/or future invention, product, process, system, and/or service (including, but not limited to, information, data, software and hardware) (1) created, developed, made, used, sold, offered for sale, licensed, offered for license, imported and/or exported by any NAVTECH COMPANY; and/or (2) created for, developed for, made for, and/or purchased by any NAVTECH COMPANY; and/or (3) licensed by any entity to any NAVTECH COMPANY. Without limiting the foregoing in any way, NAVTECH Technology expressly includes any database of any NAVTECH COMPANY, purchased by any NAVTECH COMPANY, and/or licensed to any NAVTECH COMPANY, such as a geographic database including information about business, historical and other sites and/or points of interest. (Navteq Agreement, ¶ 1.j.)

IV. Sublicense Agreement between Navteq and Yahoo!

Yahoo has licensed geographic data from Navteq since 2001. (Def.'s Stmt. Facts ¶ 33.) Relevant language of the Navteq--Yahoo! License Agreement ("Navteq Sublicense Agreement") includes:

4.1 License: Subject to LICENSEE's performance of its obligations under this Agreement, NT hereby grants LICENSEE with respect to each Territory License a non-exclusive, worldwide, non-transferable (except as set forth in Section 3.1 (Successors and Assigns)), non-sublicensable (except as may expressly be provided in the Territory License) license under NT's Intellectual Property rights to use the NAVTECH Data solely as further specified as the "Use Rights" in such Territory License and solely for the term and Licensed Territory and in the Application(s) specified in such Territory License. (Def.'s Confidential Ex.1, Data License Agreement, at 2 (as amended by Def.'s Confidential Ex.1, Addendum 4, at 3).)

SUMMARY JUDGMENT STANDARD

Summary judgment is proper when "the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Fed. R. Civ. P 56(c). A genuine issue of material fact exists only if "the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 2510, 91 L.Ed. 2d 202 (1986). The party seeking summary judgment has the burden of establishing the lack of any genuine issue of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 2552, 91 L.Ed. 2d 265 (1986). In determining whether a genuine issue of material fact exists, the Court construes the facts in a light most favorable to the non-moving party and draws all reasonable inferences in favor of that party. Anderson v. Liberty Lobby, Inc., 477 U.S. at 255. The existence of a factual dispute is not sufficient to defeat a summary judgment motion, instead the non-moving party must present definite, competent evidence to rebut the summary judgment motion. Butts v. Aurora Health Care, Inc., 387 F. 3d 921, 924 (7th Cir. 2004); see also Fed R. Civ. P. 56(e) (adverse party must set forth specific facts showing genuine issue for trial);see also Fed R. Civ. P. 56(e) (adverse party must set forth specific facts showing that there is a genuine issue for trial).

ANALYSIS

I. ...


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