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Civix-Ddi, LLC v. Hotels.Com

August 19, 2011

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



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

MEMORANDUM OPINION AND ORDER

AMY J. ST. EVE, District Court Judge:

Plaintiff Civix-DDI, LLC ("Civix"), accuses Defendants, Hotels.Com, LP, and Hotels.Com GP, LLC (collectively "Hotels.com" or "Defendants"), of infringing claims 20 and 26 of U.S. Patent No. 6,385,622 ("the '622 patent") and claim 23 of U.S. Patent No. 6,415,291 ("the '291 patent"). (R. 203.) Hotels.com has moved for summary judgment, arguing that, pursuant to the undisputed evidence in the record, no reasonable jury could find that it has infringed any of the asserted claims. (R. 678.) For the reasons explained below, the Court grants Hotels.com's motion for summary judgment.

BACKGROUND

I. The Litigation to Date

Civix brought this lawsuit on December 6, 2005, when it filed a patent-infringement lawsuit against Hotels.com, as well as other companies that are no longer part of these proceedings. (R. 1.) On August 24, 2006, Civix filed a Second Amended Complaint, alleging that Hotels.com had infringed the '291 and '622 patents, as well as other intellectual-property rights that are no longer pertinent to the case. (R. 203.) On September 17, 2007, the Court stayed the proceedings pending the U.S. Patent and Trademark Office's ex partereexamination of the '291, '622, and other patents. (R. 493 at 1.) The PTO issued reexamination certificates for the '622 and '291 patents, which cancelled many, though not all, of the claims. (R. 494-2; R. 494-3.) On October 25, 2010, the Court construed eight disputed claims. (R. 650.) Fact and expert discovery closed on January 22, 2010, and April 4, 2011, respectively. (R. 496; R. 672.)

Civix contends that Hotels.com has infringed claims 20 and 26 of the '622 patent, as well as claim 23 of the '291 patent. (R. 690 at 5.) It accuses "'location-based search services for hotels, condos, bed & breakfasts and the like through the Hotels.com web site at http:www.hotels.com and other URLs (such as www.hoteles.com) that access the same hotel database servers' for the period from May 3, 2004 to the present." (Id.) Civix submits that "Hotels.com has directly infringed the asserted claims both individually and jointly with consumer users by providing forms that require the insertion of input parameters and by returning results in response to the user inputs." (Id.) Civix further alleges that "Hotels.com has induced others to infringe the asserted claims through the design of the user interface of . . . the 'accused sites' . . . and by advertising and promoting such websites." (Id. at 6.) It also maintains that Hotels.com "'makes and uses' the accused system and 'practices' the accused method." (Id.)

Hotels.com now moves for summary judgment. (R. 678.) Specifically, Hotels.com argues that the evidence, construed in the light most favorable to Civix, entitles it to judgment as a matter of law as to no direct and no induced infringement of both claim 20 of the '622 patent and claim 23 of the '291 patent. (Id. at 1.) With respect to claim 26 of the '622 patent, it seeks summary judgment of no direct infringement, as well as partial summary judgment of no induced infringement, with respect to user-generated searches from the initial screen of the accused Hotels.com web sites. (Id.) Finally, Hotels.com seeks summary judgment of no willful infringement.

II. The Asserted Claims

Asserted dependent claim 20 of the '622 patent claims a "[s]ystem of claim 19, wherein the communications link comprises the Internet." (R. 690 at 7.) Claim 19, in turn, provides for a "[s]ystem according to claim 18, wherein the additional detail comprises video." (Id.) Claim 18 states a "[s]ystem according to claim 1, wherein the portion of information comprises additional detail for at least one of the items of interest." (Id.) Finally, independent claim 1 is directed to a:

[s]ystem for remotely determining the position of a selected category of items of interest in a selected geographic vicinity from a database, the system comprising

(A) a database for storing information about a plurality of items of interest, the information including, for each of the items of interest, a geographical position and at least one associated category,

(B) a communications link for communicating between a user of the system and the database,

(C) an information controller for transmitting a portion of the information in the database to the user via the link upon receipt of a request signal representative of a selected category and geographic vicinity, the transmitted portion of the information including identification of geographic position for at least one of the items of interest within the selected category and geographic vicinity, and

(D) a port for remotely accessing the portion of information via the link, the port generating the request signal in response to inputs by the user which are representative of the selected category and geographic vicinity, the port having a user interface for accepting the inputs and for indicating to the user the position [sic] at least one of the items of interest in the selected category and geographic vicinity. (Id. at 6-7.)

Asserted dependent claim 26 of the '622 patent claims a "[s]ystem of claim 25, wherein the communications link comprises the Internet." (Id. at 7-8.) Claim 25 provides for a "[s]ystem according to claim 18, wherein the additional detail comprises digital pictures." (Id.) Claim 18, as well as claim 1, upon which the former is dependent, are as recounted above. (Id.)

The last asserted claim is dependent claim 23 of the '291 patent, which is directed to "[a] method of claim 21, wherein the step of supplying information comprises supplying one or more video clips and digitized images related to the one item of interest." (Id. at 13.) Claim 21 comprises "[a] method of claim 14, wherein the step of supplying information comprises supplying advertising information about a business." (Id.) Finally, independent claim 14 claims:

A method for determining the position of one or more items of interest in a selected category, comprising: storing information about the items of interest in a database, the information including, for each of the items of interest, at least one associated category and spatial detail defining a geographic position; and supplying information about at least one of the items of interest to one of a plurality of ports, connected to the database at least in part through the Internet, in response to inputs at the one port, wherein a user at the port may locate the one item of interest. (Id. at 12-13.)

In moving for summary judgment, Hotels.com submits that, according to the undisputed evidence, user-generated searches from the initial screen of the accused sites do not, and have never, satisfied the "associated category" and "selected category" limitations common to asserted claims 20 and 26 of the '622 patent, thus entitling it to summary judgment. (R. 679 at 14.) Hotels.com also argues that all "asserted claims require the participation of third parties whose actions cannot be attributed to Hotels.com," thus entitling Defendants to summary judgment as to direct infringement of each asserted claim. (Id.) Further, it contends that the evidence does not support a finding that its accused sites satisfy the "video" limitation of claim 20 of the'622 patent, the "video-clip" element of claim 23 of the '291 patent, or the "advertising" limitation of claim 23 of the '291 patent. (Id.) Finally, Hotels.com submits that there is insufficient evidence in the record to sustain a reasonable jury verdict of willful infringement. (Id. at 29-30.)

LEGAL STANDARD

Although this is a patent case that is appealable to the Federal Circuit, Seventh Circuit law applies to procedural summary-judgment issues. See, e.g., Shum v. Intel Corp., 633 F.3d 1067, 1076 (Fed. Cir. 2010) ("We review grants of summary judgment . . . under the law of the regional circuit, since they present procedural issues not unique to patent law."); Arthur A. Collins, Inc. v. N. Telecom Ltd., 216 F.3d 1042, 1047-48 (Fed. Cir. 2000).

Direct infringement exists when one "without authority makes, uses, offers to sell, or sells" a patented product or process within the United States. 35 U.S.C. § 271(a). "To prove direct infringement, the plaintiff must establish by a preponderance of the evidence that one or more claims of the patent read on the accused device literally or under the doctrine of equivalents." Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1310 (Fed. Cir. 2005). Similarly, the Federal Circuit has held that "a method claim is directly infringed only if each step of the claimed method is performed." Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1328 (Fed. Cir. 2008).

Direct infringement can occur through the combined actions of multiple parties only if "one party exercises 'control or direction' over the entire process such that every step is attributable to the controlling party, i.e., the 'mastermind.'" Id. at 1329 (quoting NTP, Inc. v. Research in Motion, 418 F.3d 1282, 1380-81 (Fed. Cir. 2005)); see also Golden Hour Data Sys., Inc. v. emsCharts, Inc., 614 F.3d 1367, 1380 (Fed. Cir. 2010). "[T]he control or direction standard is satisfied in situations where the law would traditionally hold the accused direct infringer vicariously liable for the acts committed by another party that are required to complete performance of a claimed method." Muniauction, 532 F.3dat 1330.

Separately, Section 271(b) provides that "whoever actively induces infringement of a patent shall be liable as an infringer." 35 U.S.C. § 271(b). The Supreme Court recently rejected the view that "deliberate indifference to a known risk that exists" is appropriate and instead held that "induced infringement under § 271(b) requires knowledge that the induced acts constitute patent infringement." Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060, 2068 (2011).

ANALYSIS

I. The Law Entitles Hotels.com to Summary Judgment as to No Direct Infringement of Claims 20 and 26 of the '622 Patent Because It Can Neither "Make" nor "Use" the Accused System Independent claim 1 of the '622 patent, upon which asserted claims 20 and 26 of the '622 patent depend, requires "a port for remotely accessing the portion of information via the link, the port generating the request signal in response to inputs by the user which are representative of the selected category and geographic vicinity, the port having a user interface for accepting the inputs and for indicating to the user the position [sic] at least one of the items of interest in the selected category and geographic vicinity." (R. 690 at 7.) Hotels.com moves for summary judgment as to no direct infringement of the '622 patent based on this "port" limitation. (R. 679 at 19-20.) Hotels.com submits that it cannot itself satisfy this limitation because only its customers' personal-computer and web-enabled devices constitute "ports." (Id. at 19.)

Civix has alleged that Hotels.com "makes and uses" the accused system. (R. 690 at 6.) Hotels.com argues that neither allegation can stand as to the '622 patent in light of the undisputed evidence concerning the port limitation. (R. 679 at 19-20.) Relying on Centillion Data Sys., LLC v. Qwest Comm'ns Int'l, Inc., 631 F.3d 1279, 1288 (Fed. Cir. 2011), Hotels.com contends that it cannot "make" the accused system because a third party must supply a necessary claimed component. (Id. at 19.) Similarly, and again relying on Centillion, it maintains that it cannot directly infringe the '622 patent's asserted claims by "using" the accused system because the Hotels.com system only operates after a user loads her "port," connects the same to the Internet, loads the Hotels.com website, and performs a search. (Id. at 19-20.)

Civix opposes this argument, asserting instead that claims 20 and 26 of the '622 patent involve a "system" that Hotels.com can infringe without regard to the actions of a third-party user. (R. 688 at 24-27.) Civix maintains that it is not Centillion that controls in this matter, but Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292 (Fed. Cir. 2011). The Court agrees with ...


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