The opinion of the court was delivered by: Matthew F. Kennelly, District Judge
MEMORANDUM OPINION AND ORDER
Illinois Computer Research, LLC (ICR) has sued Harpo Productions, Inc. (Harpo), contending that portions of Harpo's website relating to Oprah's Book Club infringe ICR's U.S. patent number 7,111,252 (the '252 patent). Harpo denies infringement and asserts the affirmative defenses of inequitable conduct and invalidity of the '252 patent. Harpo has moved for summary judgment on ICR's infringement claim, and ICR has moved for summary judgment on Harpo's inequitable conduct claim. For the reasons stated below, the Court grants Harpo's motion in part and denies it in part and also denies ICR's motion.
ICR owns the '252 patent, which was originally granted to its inventor, Scott Harris. The patent is for a method that aims to enhance the experience of shopping on the Internet by allowing users to view a product for sale from various angles. The patent includes claims covering use of the patented technology when shopping for a book: a potential purchaser can view the front and back covers and front and back flaps of a book. The user can also browse pages, but access is limited to a certain predetermined number of pages so the user cannot read the whole book over the Internet for free. When used to browse pages, the invention contemplates the use of a higher degree of resolution for text portions than non-text portions (for example, illustrations or cover art), to ensure that the user can read the text portions.
Harpo is the company that produces "The Oprah Winfrey Show" for television broadcast. Harpo operates a website, Oprah.com ("the website"), which has over 30,000 individual web pages. One section of the website is devoted to web pages pertaining to Oprah's Book Club (OBC), which corresponds to a popular segment on the television show. In the OBC section of the website, users can learn what books have been selected for OBC, read reviews of those books, and discuss the books with other OBC fans. Users can also read excerpts of the OBC selections. Those excerpts are typed in by Harpo employees, not scanned from the actual book.
In its suit against Harpo, ICR alleges that the Harpo website infringes claims 1, 7, 9, 13, and 18 of the '252 patent by allowing users to access excerpts from the books selected for OBC. The claims at issue read as follows:
In a server of a network, storing a plurality of images representing pages of a book, said images stored with a resolution effective to enable said book to be read;
responsive to a request over the network, sending one of said images to a remote node; and
determining if the request for pages exceeds a certain threshold, and sending said information only if said threshold is not exceeded.
receiving, at a client of a network, information about which of a specified plurality of images to be displayed, each of specified plurality of images showing textual information and at least a plurality of said images showing non-textual information, said textual information representative of contents of a book;
displaying said images responsive to said requests; displaying a screen tip, indicating what the reaction will be to a specified operation.
9. A method comprising: receiving, at a client of a network, information about which of a specified plurality of images to be displayed, each of specified plurality of images showing textual information and at least a plurality of said images showing non-textual information, said textual information representative of contents of a book;
displaying said images responsive to said requests; and wherein each of said images use a graded resolution, which provides readable resolution for readable parts and a different resolution for non-readable parts.
13. A method comprising: receiving, at a client of a network, information about which of a specified plurality of images to be displayed, each of specified plurality of images showing textual information and at least a plurality of said images showing non-textual information, said textual information representative of contents of an entertainment media;
displaying said images responsive to said requests; and detecting a number of pages that have been read, and limiting use of said number of pages.
18. An apparatus comprising: a computer, providing limited pages of books that can be viewed over a publically available network, and including a connection to the network, and which receives information indicative of at least one desired page of a book over the connection to the network; and returns information indicative of only limited images of pages of the book based on said information; and
wherein said computer limits a number of pages that can be displayed. '252 Patent, cols. 7:44-53; 8:1-10, 13-19, 39-50; 9:1-10.
Harpo asserted an inequitable conduct counterclaim against ICR, arguing that Harris, the inventor, misrepresented the prior art to the Patent and Trademark Office (PTO) during the prosecution of the '252 patent. Specifically, Harpo alleges that Harris failed to disclose to the PTO the fact that BarnesandNoble.com, the web store of bookseller Barnes and Noble, allowed users to read excerpts of books for sale on that site at the time that Harris applied for the '252 patent. This, Harpo contends, violated Harris' duty of disclosure and justifies invalidation of the '252 patent.
Harpo has moved for summary judgment on ICR's infringement claim. Harpo contends that the OBC section of the website does not infringe any disputed claim of the '252 patent. It argues that the excerpts it provides of the OBC books on its website are typed-in sections of text, not images of the actual pages of a physical book, and that its website does not have any system for limiting the number of pages a user can view, does not have screen tips, and does not employ graded resolution.
ICR has moved for summary judgment on Harpo's inequitable conduct claim. It contends that at the time Harris applied for the patent, he was unaware of the feature on BarnesandNoble.com that allowed users to read excerpts from books for sale and thus lacked the requisite intent to deceive the PTO.
Summary judgment is appropriate in a patent case, as in any other case, when there is no genuine issue of material fact and the moving party is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(c); Avia Grp. Int'l, Inc., v. L.A. Gear Calif., Inc., 853 F.2d 1557, 1561 (Fed. Cir. 1998). In determining whether there is a genuine issue of material fact, the Court views the evidence and draws reasonable ...