United States District Court, N.D. Illinois, Eastern Division
Raymond P. Niro, David Joseph Mahalek, David J. Sheikh, Joseph Albert Culig, Paul K. Vickrey, Niro, Haller & Niro, Ltd., Chicago, IL, for Plaintiff.
Charles A. Laff, Michael Best & Fredrich LLC, Chicago, IL, Jonathan F. Putnam, Atif Khawaja, Craig D. Leavell, Robert A. Gretch, Sharon Helen Billington, Kirkland and Ellis, New York, NY, Charles A. Laff, Michael Best & Fredrich LLC, Chicago, IL, for Defendants.
MEMORANDUM OPINION AND ORDER
AMY J. ST. EVE, District Judge.
Plaintiff Civix-DDI, LLC (" Civix" ) accused Defendants Hotels.Com, LP, and Hotels.Com GP, LLC (collectively " Hotels.com" ) 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" ). On August 19, 2011, the Court granted Hotels.com's summary judgment motion disposing of Civix's infringement claims. The Court presumes familiarity with the August 29, 2011, Memorandum, Opinion, and Order. Before the Court is Civix's Federal Rule of Civil Procedure 54(b) motion to reconsider the Court's August 19, 2011 order in relation to Claim 23 of the '291 patent based upon the Federal Circuit's en banc decision in Akamai Tech., Inc. v. Limelight Networks, Inc., 692 F.3d 1301 (Fed.Cir.2012) (per curiam).
For the following reasons, the Court, in its discretion, grants Civix's motion for reconsideration because there are genuine disputes as to the material facts of whether Hotels.com induced infringement under 35 U.S.C. § 271(b) in relation to the elements of Claim 23 of the '291 patent. The Court, however, rejects any argument that under Akamai, Hotels.com and its users directly infringed Claim 23 of the '291 patent because the Akamai court made it abundantly clear that its decision was " not predicated on the doctrine of direct infringement," and thus it had " no occasion at th[at] time to revisit any of those principles regarding the law of divided infringement as it applies to liability for direct infringement under 35 U.S.C. § 271(a)." Id. at 1307.
On December 6, 2005, Civix filed the present patent infringement lawsuit against Hotels.com, as well as other companies that are no longer parties to this lawsuit. On August 24, 2006, Civix filed a Second Amended Complaint alleging that Hotels.com had infringed the '622 patent and the '291 patent, as well as other intellectual
property rights. On June 2, 2006, Hotels.com filed a motion for partial summary judgment based on the CIVIX-Navteq and CIVIX-Mapquest agreements in which Hotels.com invoked its status as a third-party beneficiary to the licenses and covenants-not-to-sue contained in these agreements. On January 22, 2007, 2007 WL 178318, the Court granted partial summary judgment as to Hotels.com with respect to certain alleged infringement for activities under the MapQuest-Hotels.com license agreement. The Court further concluded that although Hotels.com was a third-party beneficiary to the CIVIX-Navteq agreement, there were genuine issues of material fact for trial concerning whether Hotels.com's activities related to the Navteq technology.
On September 17, 2007, the Court stayed these proceedings pending the U.S. Patent and Trademark Office's (" PTO" ) ex parte reexamination of the '291, '622, and other patents. In August 2009, the PTO issued reexamination certificates for the '622 and '291 patents, which cancelled many, but not all of the claims. After the Court lifted the stay in this matter, Hotels.com filed a Second Amended Answer and Counterclaims on February 3, 2010. After the parties conducted discovery, on May 4, 2011, Hotels.com filed a motion for summary judgment arguing that there was no direct or induced infringement of both Claim 20 of the '622 patent and Claim 23 of the '291 patent. Civix, however, did not move for summary judgment to resolve any of Hotels.com's counterclaims. On August 19, 2011, the Court granted Hotels.com's summary judgment motion disposing of Civix's infringement claims and mistakenly entered a final judgment order without addressing Hotels.com's counterclaims. On September 15, 2011, Civix filed a notice of appeal to the Federal Circuit. On May 1, 2012, the Federal Circuit dismissed Civix's appeal for lack of jurisdiction. See 28 U.S.C. § 1295(a)(1).
Upon remand and after the Court denied Civix's motion for entry of judgment pursuant to Rule 54(b), the Court set a trial date of January 23, 2013 for Hotels.com's remaining counterclaims. Since then, the Federal Circuit issued its en banc decision in Akamai upon which Civix bases its motion for reconsideration of the Court's August 19, 2011, Memorandum, Opinion, and Order granting Hotels.com's summary judgment motion.
Federal Rule of Civil Procedure 54(b) permits the Court to exercise its inherent authority to reconsider its interlocutory orders. See Moses H. Cone Mem. Hosp. v. Mercury Constr. Corp., 460 U.S. 1, 12, 103 S.Ct. 927, 74 L.Ed.2d 765 (1983) (" every order short of a final decree is subject to reopening at the discretion of the district judge" ); Sims v. EGA Prods., Inc., 475 F.3d 865, 870 (7th Cir.2007) (" nonfinal orders are generally modifiable" ). Reconsideration motions under Rule 54(b) serve the limited function of correcting manifest errors of law or fact. See Rothwell Cotton Co. v. Rosenthal & Co., 827 F.2d 246, 251 (7th Cir.1987); Zurich Capital Mkt., Inc. v. Coglianese, 383 F.Supp.2d 1041, 1045 (N.D.Ill.2005). As the Seventh Circuit explains, " [i]t is well established that a motion to reconsider is only appropriate where a court has misunderstood a party, where the court has made a decision outside the adversarial issues presented to the court by the ...