Searching over 5,500,000 cases.


searching
Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

Civix-DDI, LLC v. National Association of Realtors

January 22, 2007

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 Defendants Hotels.com, L.P.'s and Hotels.com, GP, LLC's (collectively "Hotels.com") Motion for Partial Summary Judgment pursuant to Federal Rule of Civil Procedure 56(c).*fn1 In its motion, Hotels.com argues that Plaintiff CIVIX-DII, LLC's ("Civix") patent infringement claims are partially barred because the Hotels.com activities at issue fall within the scope of Civix's covenant-not-to-sue arising from the Civix-MapQuest settlement agreement (the "MapQuest Agreement") or within the scope of Civix's covenant-notto-sue arising from the Civix-Navteq settlement agreement (the "Navteq Agreement"). For the reasons discussed below, the Court denies Hotels.com's Motion for Partial Summary Judgment with respect to the alleged infringement of the '692, '622, '307, and '291 Patents for activities licensed under the Maporama-Hotels.com License Agreement. The Court grants Hotels.com's Motion for Partial Summary Judgment with respect to the alleged infringement of the '622, '307, and '291 Patents for activities licensed under the MapQuest-Hotels.com License Agreement, but denies Hotels.com's motion as to the '692 Patent for activities under the MapQuest-Hotels.com License Agreement.

BACKGROUND

I. Parties

Civix is a Colorado limited liability company with its principal place of business at 125 South Wacker Drive, Chicago, Illinois. (R. 107-1, Def.'s Stmt. Facts ¶ 1.) Hotels.com, L.P. is a Texas limited partnership with a place of business at 10440 North Central Expressway, Suite 400, Dallas, Texas. (Id. ¶ 2; R. 212-1, Def.'s Second. Am. Answer ¶ 4.) Hotels.com GP, LLC is a Texas limited liability company with a place of business at 10440 North Central Expressway, Suite 400, Dallas, Texas. (Id.) Hotels.com operates the www.hotels.com website, which allows customers to book hotel reservations online. (Def.'s Stmt. Facts ¶ 8.) Hotels.com, L.P. and Hotels.com GP, LLC are direct or indirect subsidiaries of Expedia, Inc., which owns Travelscape. (R. 158-1, Pl.'s Stmt. Facts ¶ 1.)

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.) Civix brought this lawsuit against Hotels.com alleging infringement of various claims of the patents-in-suit. (Def.'s Stmt. Facts ¶ 5.) 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 2, 5, 13-15, 17, 19, 25, and 30 of the '307 patent, claims 5-7, 14, and 18-23 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. ¶ 18.)

III. Civix - Navteq Litigation & Settlement Agreement

Navteq, formerly known as NavTech, gathers, formats, and licenses geographic data to numerous companies. In 1999, Civix sued Navteq for patent infringement in the United States District Court for the Northern District of Illinois. (Def.'s Stmt. Facts ¶ 28; Def.'s Confidential Ex. 11, Navteq Agreement, pmbl.) Civix and Navteq settled the lawsuit in 2000. (Def.'s Stmt. Facts ¶ 28.) 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." (Navteq Agreement, ¶ 6.a.) The Navteq Agreement contains a covenant-not-tosue, which states 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. (Def.'s Stmt. Facts ¶ 29; 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." (Def.'s Stmt. Facts ¶ 30.b; 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." (Def.'s Stmt. Facts ¶ 30.b; Navteq Agreement, ¶ 1.d.) Furthermore, the Navteq Agreement 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. Civix - MapQuest Litigation & Settlement Agreement

In 1999, Civix sued MapQuest.com for patent infringement in the United States District Court for the District of Colorado. (Def.'s Stmt. Facts ¶ 20; Def.'s Confidential Ex. 5, Ex. A., Stipulated Order of Dismissal ¶ 2.) Civix and MapQuest settled the lawsuit in May 1999.

(Def.'s Stmt. Facts ¶ 20.) Under the integrated settlement agreement (the "MapQuest Agreement")*fn2 Civix granted a fully paid-up, personal, non-transferable, perpetual, non-assignable, non-exclusive license under the CIVIX Patents to MAPQUEST

(i) to make, create, modify, improve, design, have made, import, use, sell or offer for sale, sublicense, transfer and/or assign any and all past, present and future MAPQUEST Technology covered by any claim of the CIVIX Patents,

(ii) to sublicense, transfer and/or assign to any MAPQUEST customer the right to undertake any and all past, present, and future Permitted Uses with respect to the MAPQUEST Technology, and

(iii) with respect to (i) and (ii) above, the concurrent right of use by MAPQUEST's end users, and by each such customer's customers and end users, of the MAPQUEST Technology and the Permitted Uses.

(Def.'s Stmt. Facts; Def.'s Confidential Ex. 5, MapQuest License Agreement, ¶ 3.) The MapQuest Agreement contains a covenant-not-to-sue, stating in relevant part:

7. CIVIX hereby covenants and agrees that neither CIVIX nor any successor or assign of CIVIX will bring any lawsuit, cause of action, claim or demand of any kind against

(i) MAPQUEST, with respect to the creation, modification, improvement, design of, or any manufacture, importation, use, license, sale or offer for sale by MAPQUEST of, the MAPQUEST Technology or the Permitted Uses to any of its customers who sublicense, purchase, or use MAPQUEST Technology, or

(ii) any MAPQUEST customer, with respect to the creation, modification, improvement, design of, or any manufacture, importation, use, sale or offer for sale by any such customer, of the MAPQUEST Technology or the Permitted Uses, or

(iii) any MAPQUEST end user, or any MAPQUEST customer's customer or end user, with respect to the MAPQUEST Technology or the Permitted Uses.

(Def.'s Stmt. Facts ¶ 21; Def.'s Confidential Ex. 5, MapQuest Settlement Agreement, ¶ 7.) The MapQuest Agreement defines "MAPQUEST Technology" as "proprietary software, products, equipment, systems and services, and related know-how" that "MAPQUEST has created and developed and will continue to create and develop." (Def.'s Stmt. Facts ¶ 22.a; Def.'s Confidential Ex. 5, MapQuest License Agreement, pmbl.) The ...


Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.