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Civix-DDI, LLC v. Hotels.Com

October 25, 2010

CIVIX-DDI, LLC, PLAINTIFF,
v.
HOTELS.COM, L.P. AND HOTELS.COM GP LLC, DEFENDANTS.



The opinion of the court was delivered by: Hon. Amy J. St. Eve

MEMORANDUM OPINION AND ORDER

Plaintiff Civix-DDI, L.L.C., accuses Defendants, Hotels.Com, L.P., and Hotels.Com GP, L.L.C., of infringing U.S. Patents Nos. 6,385,622 (the '622 patent) and 6,415,291 (the '291 patent). (R. 203.) The parties have jointly stipulated to the meaning of ten terms, namely "advertising information about a business," "geographic vicinity," "information controller," "items of interest," "port," "remotely," "request signal representative of a selected category and geographic vicinity," "spatial detail," "supplying," and "user interface." (R. 612 at 1-2; R. 642 at 4-7.) They contest the meaning of eight terms that are of importance to the asserted claims of the '622 and '291 patents. The disputed terms are "associated category," "connected to," "database," geographic/geographical position," "internet," "user," "video," and "within a radius about the one port." (R. 642 at 4-7.) The parties have tendered their respective claim-construction briefs and the Court is now prepared to rule on the legal meaning of the relevant terms.

For the reasons explained below, the Court construes the contested claims as follows:

* "Associated category" means "a classification both stored in the database and provided or selected by a user that divides particular items of interest into subgroups"

* "connected to" means "joined together or linked to, in a direct or indirect manner"

* "database" means "a collection of related information organized for convenient access"

* geographic/geographical position" means "a place within a geographic vicinity"

* "internet" means "a system of linked computer networks, worldwide in scope, that is typically associated with using TCP/IP as a standard protocol"

* "user" means "a human being"

* "video" means "a presentation of multiple sequential frames of image data"

* "within a radius about the one port" means "within a circular area the center of which is the user's present physical location"

BACKGROUND

The Court presumes familiarity with its previous orders in this litigation and the related Expedia litigation, see Civix-DDI, L.L.C. v. Hotels.Com, L.P. et al., 711 F. Supp. 2d 839 (N.D. Ill. 2010); Civix-DDI, L.L.C. v. Cellco P'ship, 387 F. Supp. 2d 869 (N.D. Ill. 2005), but nevertheless provides the following account of the proceedings leading up to the this opinion.

On August 24, 2006, Civix filed a Second Amended Complaint, alleging that Defendants had infringed the '291 and '622 patents, as well as other intellectual-property rights that are no longer pertinent to the present case. (R. 203.) On September 17, 2007, the Court stayed the present litigation pending the Patent and Trademark Office's ("PTO") ex parte reexamination of the '291, '622, and other patents. (R. 493 at 1.) Reexamination certificates were issued for the '622 and '291 patents, which cancelled many, though not all, of the claims. (R. 494-2; R. 494-3.) As a result, Civix now asserts only claims 18, 22, and 23 of the '291 patent, as well as claims 20 and 26 of the '622 patent, against Defendants. (R. 625 at 8.) As noted above, the Court has accepted a joint stipulation of the parties as to ten terms relevant to these claims. (R. 612 at 1-3.) The parties remain at issue as to eight terms that are pertinent to the asserted claims. The matter being fully briefed, the Court now adopts the appropriate construction of the relevant claims.

LEGAL STANDARD

It is, of course, well established that innovators receive patent protection not for what they actually invent, but what they claim. See, e.g., Dan L. Burk & Mark A. Lemley, Fence Posts or Sign Posts? Rethinking Patent Claim Construction?, 157 U. PA. L. REV. 1743, 1744 (2009). Determining the boundaries of a patentee's exclusive rights depends necessarily on how the relevant claims are construed, which, since 1996, has been a question of law for the courts. See Markman v. Westview Instruments, Inc., 517 U.S. 370, 391 (1996).

Although "claim construction frequently poses difficult questions over which reasonable minds may disagree," (Haemonetics Corp. v. Baxter Healthcare Corp., 607 F.3d 776, 783 (Fed. Cir. 2010)), district courts are not bereft of guidance. The Federal Circuit issued its definitive opinion, en banc, on the subject of claim construction in 2005. Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). In that decision, the Federal Circuit reoriented the claim-construction process toward intrinsic evidence, including the specification and the words of the claims themselves, giving them their ordinary and customary meaning. That construction, the court explained, is the "meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention." Id. at 1313. The person of ordinary skill in the art is assumed to read the claim terms "in the context of the entire patent, including the specification." Id.Unless the meaning of the claim language is "readily apparent even to lay judges" (id. at 1314), the court should "rely heavily" on the written description. Id. at 1317. In addition to reading the claims in the context of the specification, district courts may also consider the prosecution history. Id. at 1317. Courts must, however, be mindful that the prosecution history represents an "ongoing negotiation," such that it "often lacks the clarity of the specification and thus is less useful for claim construction purposes." Id. Extrinsic evidence, such as dictionaries, treatises, expert testimony, and inventor testimony, can be useful in claim construction. Id. at 1317-18. Nevertheless, such evidence is, "in general[,] . . . less reliable than the patent and its prosecution history in determining how to read claim terms." Id. at 1318. Despite acknowledging the soundness of the purpose underlying the Texas Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193 (Fed. Cir. 2002) line of cases, which was "to avoid the danger of reading limitations from the specification into the claim," the en banc court declined to follow the Texas Digital methodology because of its "greater emphasis to dictionary definitions of claim terms" and its granting "a less prominent role to the specification and the prosecution history." Id. at 1319-24.

ANALYSIS

I. "Associated Category" Means "A Classification Both Stored In The Database And Provided Or Selected By A User That Divides Particular Items Of Interest Into Subgroups"

The first disputed term is "associated category." Plaintiff propounds the construction: "A class within which items of interest have an established relationship in a database." (R. 642 at 4.) Hotels.com advocates an opposing construction: "A classification both stored in the database and provided or selected by a user that divides particular items of interest into subgroups." (Id.) The Court adopts Hotels.com's construction.

In construing the term, the Court looks to the intrinsic evidence. Phillips, 415 F.3d at 1311-12. The relevant question is the meaning that a person of ordinary skill in the art would ascribe to "associated category" "not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification." Id. at 1313.

A. "Associated Category" As Used Within the Patent Document

The relevant patents' "summary of the invention" provides that, "[i]n one aspect, the invention provides a system for remotely determining the position of a selected category of items of interest in a selected geographic vicinity from a database. A database stores information about a plurality of items of interest, including, for each of the items of interest, positional coordinates, a geographic vicinity, and at least one associated category." (R. 627-2 at 29; R. 626-2 at 17.)*fn1

B. The Court Is Not Bound By The Expedia Litigants' Stipulation As To The Meaning Of "Associated Category," Since Hotels.com Was Neither A Party, Nor Privy To Parties, In That Case

In prior litigation, Civix accused Expedia, Inc., Travelscape, Inc., and Verizon Information Servs., Inc., of infringing the '622 and '291 patents. Pursuant to that lawsuit, the parties stipulated to the construction of "associated category," which they agreed meant "[a] class with which items of interest have an [sic] relationship in a database." (Civix-DDI, L.L.C. v. Expedia, Inc., et al., 03-CV-3792, R-264 at 3.) The Court accepted that agreed, proposed construction. Civix-DDI, L.L.C. v. Cellco P'ship, No. 03-CV-3792, 2005 WL 831307, at *2 (N.D. Ill. Apr. 6, 2005).

Civix urges the Court to adhere to that prior stipulation. (R. 633 at 17.) In considering the proper construction of "associated category," the Court places little weight on that earlier agreement because Defendants in the present case were neither parties in Expedia nor were they in privity with those parties. See Nilssen v. Motorola, 80 F. Supp. 2d 961, 924 n.4 (N.D. Ill. 2000); see also Fuji Photo Film Co., Int'l Trade Comm'n, 386 F.3d 1095, 1101 (Fed. Cir. 2004); cf. Verizon California, Inc. v. Ronald A. Katz Tech. Licensing, P.A., 326 F. Supp. 2d 1060, 1069 (C.D. Cal. 2003) (noting that another district court's prior claim construction did not have issue-preclusive effect as asserted against a non-participant in the earlier litigation, but nevertheless concluding that "to the extent that the AT & T Order addresses identical or similar issues of claim construction, it can be viewed as persuasive and highly relevant, rather than binding, authority").

C. The Intrinsic Evidence Supports Defendants' Proposed Construction

The intrinsic evidence, in particular the specification, supports Defendants' proposed construction of "associated category." In contrast, the definition advocated by Civix is somewhat indeterminate and ultimately begs the question that the claim-construction process is supposed to answer. Specifically, what is the meaning of "relationship" in "[a] class with which items of interest have an established relationship in a database"? Hotels.com proffers a construction that fits with the claims and specification. The Court therefore construes the term to mean "a classification both stored in the database and provided or selected by a user that divides particular items of interest into subgroups."

1. "Associated Category" Means a Classification That Is "Stored" In The Database

The first issue is whether "associated category" involves, as Defendants contend, a classification that is "stored" in the database. (R. 642 at 4.) The summary of the invention provides that "[a] database stores information about . . . items of interest, including, for each of the items of interest, . . . at least one associated category." (R. 626-2 at 17; 627-2 at 29.) This provision clearly implies that "associated category" is information stored for each item of interest. See PSN Illinois, L.L.C. v. Ivoclar Vivadent, Inc., 525 F.3d 1159, 1166 (Fed. Cir. 2008) (placing significant weight on the summary of the invention in engaging in claim construction).

2. "Associated Category" Means A Classification That Is "Provided or Selected By A User"

The second question is whether "associated category" involves a classification that is "provided or selected by a user." The Court concludes that it does. Civix seeks to negate this construction, contending that "Hotels.com's position that a user provides or selects the 'associated category' contradicts the plain language of the claims[,] which separately recite 'at least one associated category' and 'a selected category.'" (R. 633 at 18.)

Civix's argument is foreclosed by the detailed written description of the '622 and '291 patents, which explicitly states: "FIG. 5 illustrates one embodiment of the invention wherein a user selects the associated category for the items of interest from a display menu of possible items of interest." (R. 626-2 at 20; R. 627-2 at 32) (emphasis added).) See, e.g., Old Town Canoe Co. v. Confluence Holdings Corp., 448 F.3d 1309, 1318 (Fed. Cir. 2006) (finding that the patentee was "not entitled to a claim construction divorced from the context of the written description"); Network Commerce, Inc. v. Microsoft Corp., 422 F.3d 1353, 1359-60 (Fed. Cir. 2005).

Although the claims speak separately of "associated category" and "selected category," (see, e.g., R. 626-2 at 23 (claim 1)) this does not disprove Defendants' proposed construction because "selected category" refers to the "associated category" that the user has in fact selected. Not only does the specification explicitly envision a user's selecting the associated category for the items of interest (R. 626-2 at 20; R. 627-2 at 32), it explains that the database stores information, including at least one "associated category," for each of the items of interest. (R. 626-2 at 17; R. 627-2 at 29.) It then states that "[t]he system also provides for transmitting a portion of the information . . . to a user . . . upon receipt of a request signal representative of a request signal representative of a selected category." (Id.) The Court agrees with Hotels.com that "the 'selected category' that is being requested and then transmitted to the user refers back to the 'associated category' that is stored in the database." (R. 637 at 15.)

3. "Associated Category" Is A Classification "That Divides Particular Items Of Interest Into Subgroups"

The final question is whether "items of interest" are "divided into subgroups." Plaintiff says no; Defendants say yes. (R. 625 at 20.) Civix is correct to point out that neither the claims nor the specification contains the term "subgroup." (R. 633 at 18.) Defendants, however, characterize "items of ...


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