AMY J. ST. EVE, District 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.
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 parte reexamination 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, 2010 WL 4386475, 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
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.
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:
(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.)
(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.)
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, 1301-02 (Fed.Cir.
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., ___ U.S. ___, 131 S.Ct. 2060, 2068, 179 L.Ed.2d 1167 (2011).
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 Hotels.com, and grants summary judgment of no direct infringement of claims 20 and 26 of the '622 patent.
In early 2011, the Federal Circuit addressed the question of what constitutes "use" of a system under Section 271(a) in Centillion, a case that involved a patented "system for collecting, processing, and delivering information from a service provider, such as a telephone company, to a customer." Centillion, 631 F.3d at 1281. The first claim of the asserted patent, which was illustrative of the other asserted
In that case, the Federal Circuit considered for the first the time the question of "use" of "a system claim that includes elements in the possession of more than one actor." Id. at 1283. It held that, "to `use' a system for purposes of infringement, a party must put the invention into service, i.e., control the system as a whole and obtain benefit from it." Id. at 1284. Furthermore, "direct infringement by `use' of a system claim `requires a party to use each and every element of a claimed system.' In order to `put the system into service,' the end user must be using all portions of the claimed invention." Id. It found that the district court had erred, however, in holding that a party must exercise direct or physical control over each element of a system in order to "use" the same for the purpose of Section 271(a).
Applying these principles, the Federal Circuit held that the defendant's customer "used" the system as a matter of law when she created "a query and transmit[ted] it to Qwest's back-end." Id. at 1285. It explained:
Id. at 1285.
The Federal Circuit then proceeded to find that the defendant, "as a matter of law, ... does not `use' the patented invention[,]" explaining that, "[t]o `use' the system, Qwest must put the claimed invention into service, i.e., control the system and obtain benefit from it. While Qwest may make the back-end processing elements, it never `uses' the entire claimed system because it never puts into service the personal computer data processing means. Supplying the software for the customer to use is not the same as using the system." Id. at 1286. Because Qwest was not vicariously liable for the actions of its customers, the patentee-appellant could not establish "use" by Qwest. Id. at 1286-87.
The Federal Circuit also addressed the meaning of "make" for the purpose of Section 271(a) within the context of a claimed system, concluding that "Qwest does not `make' the patented invention under § 271(a) as a matter of law. Qwest manufacturers only part of the claimed system. In order to `make' the system under § 271(a), Qwest would need to combine all of the claim elements—this it does not do. The customer, not Qwest, completes the
Centillion entitles Defendants to summary judgment of no direct infringement of claims 20 and 26 of the '622 patent. Civix's expert report opined that Hotel.com satisfies the "port" element because "Hotels.com used the personal computers and other web enabled devices (each having interactive user interfaces) of Hotels.com's customers to obtain user input and deliver search results in response to user requests." (R. 682-1 at 10.) Thus, Hotels.com does not "use" or "make" the system in a manner cognizable under the Federal Circuit's opinion in Centillion. Indeed, Civix's expert testified in his deposition that the asserted claims of the '622 and '291 patents claim both front-end and back-end components. (R. 682-2 at 8.) His deposition on March 24, 2011, took place more than two months after the Federal Circuit rendered its decision in Centillion. (Id. at 2; Centillion, 631 F.3d at 1279.) He agreed that "a user's personal computer and other web-enabled devices access the Hotels.com site on the front end of the system," (id. at 11), and that Hotels.com's "internal networks" or "the databases that execute the queries and, basically, ... the web servers" are "on the back end of the system[.]" (Id. at 8, 11.) He conceded that "a user of Hotels.com starts a search on the front end of the Hotels.com system[,]" and that, "in response to the user's input on the Hotels.com site, the back end of the Hotels.com system processes that request and returns results." (Id. at 10.) He similarly agreed that a user's interaction with a database takes place on the front end. (Id. at 8.) He accepted the view that, "without any user input, the port cannot generate the request signal that the claim needs," and conceded that at least one element of the '622 patent would not be satisfied "if no one ever completed a search on the Hotels.com site." (Id. at 16-17.)
Civix's expert attempts to distance himself from these concessions in a declaration filed in opposition to Hotels.com's motion for summary judgment. (R. 690-2 at 3-5.) It is well settled, however, that parties cannot use a declaration to contradict the declarant's prior deposition testimony to create a genuine dispute. See, e.g., Pourghoraishi v. Flying J, Inc., 449 F.3d 751, 759 (7th Cir.2006) ("A plaintiff cannot, however, create an issue of material fact by submitting an affidavit that contradicts an earlier deposition."); see also Radar Indus., Inc. v. Cleveland Die & Mfg. Co., 424 Fed.Appx. 931, 936-37 (Fed. Cir.2011) (looking to the applicable law of the forum circuit for this rule).
In light of these undisputed facts, it follows under Centillion that Hotels.com does not directly infringe claims 20 and 26 of the '622 patent as a matter of law. See also Kenexa Brassring Inc. v. Taleo Corp., No. 07-CV-521, 2011 WL 2112386, at *2 (D.Del. May 26, 2011) (finding that the defendant "makes the back end processing elements, but it never `uses' the entire claimed system because it never puts into service the display of said source data stream. The user must click on a hyperlink in order to display said stream").
Civix's reliance on Uniloc is unavailing. Although the accused system in that case entailed the use of computers operated by third parties, the claims of the asserted patent did not encapsulate the same. A brief discussion of the relevant facts of that case, as well as of the Federal Circuit's opinion, reveals why.
Microsoft's product-activation feature, which—the plaintiff contended—infringed its patent, involved a number of user actions, beginning with a user's entering a 25-character product key and then agreeing to a license agreement. Uniloc, 632
After a jury verdict in favor of the patentee, Microsoft filed a motion for judgment as a matter of law because it "could not have directly infringed the system because [the claim required] acts to be taken on the user's local computer over which Microsoft [had] no control." Id. The district court denied the motion. Id. at 1301. On appeal, the Federal Circuit affirmed this holding. Id. at 1308-09. It observed that the asserted patent claim "severely hampered" Microsoft's argument because the patentee had structured its claim to capture infringement by a single party by focusing on one entity.
Uniloc does not benefit Civix in this case because, unlike that case, Hotels.com does not "make and use the [claimed device] in the environment required by the claims." Id. The claim asserted by Civix explicitly claims "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[.]" (R. 690 at 7-8.) In contrast to Uniloc, where the asserted claim focused on a single party's operation of the claimed system, the '622 patent claims a system operated by more than one party, being comprised of a database, a communications link, an information controller, and a port. (Id.) In light of Civix's own expert's concessions,
Centillion held that a party "uses" a system only if it "control[s] the system as a whole and obtain[s] benefit from it." Centillion, 631 F.3d at 1284. Direct infringement for "use" of a system "requires a party to use each and every element of a claimed system." Id. As with the defendant in Centillion, Hotels.com "never `uses' the entire claimed system because it never puts into service the [port]." Id. at 1286.
Civix does not argue that Hotels.com is vicariously liable for its customers' actions. Nor does the evidence, viewed in the light most favorable to Civix, support a finding that Hotels.com controlled or directed the actions of its customers to perform the steps of the claimed system. No evidence supports a finding that an agency relationship or other contractual obligation existed between Hotels.com and those who use its challenged website. See, e.g., R. 682-2, Dep. Testimony of Ophir Frieder, at 18 (commenting that Hotels.com employees "could be" users, but agreeing that he did not know whether any Hotels.com employees searched the website and booked hotels).
For that reason, the undisputed facts entitle Hotels.com to judgment as a matter of law of no direct infringement of claims 20 and 26 of the '622 patent. As such, Hotels.com is also entitled to judgment as a matter of law as to induced infringement of these claims. See Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1325 (Fed.Cir.2009) ("In the absence of direct infringement, SAAT cannot be liable for induced infringement."); see also Global-Tech, 131 S.Ct. at 2067.
As noted, asserted claims 20 and 26 of the '622 patent concern 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:
(R. 690 at 6-8) (emphasis added.)
Hotels.com moves for partial summary judgment of noninfringement of the '622 patent, arguing that, in light of the undisputed evidence, the initial screen search functionality of the accused site does not satisfy the patent's "associated category"/"selected category" limitation. (R. 679 at 22-27.) The Court has construed "associated category" to mean "a classification both stored in the database and provided or selected by a user that divides particular items of interest into subgroups." (R. 650 at 2.) The parties have stipulated that "request signal representative of a selected category and geographic vicinity" in the asserted claims of the '622 patent requires "a single electronic representation of a user's selection of at least one category and at least one geographic vicinity." (R. 690 at 23.)
In its fifth supplemental answer to Hotels.com's Interrogatory No. 2, which required Civix to "identify each claim that CIVIX alleges has been infringed by Hotels.com and [to] describe in detail each and every factual and legal basis for CIVIX's allegation that Hotels.com has infringed that claim[,]" Civix directed Hotels.com to its "representative" claim charts for Claims 20 and 26. (R. 691-2 at 3, 11.) Those charts both explained "at least one associated category" as "star rating, property type." (Id. at 16, 18.)
Nevertheless, Civix purports to dispute Hotels.com's statement of undisputed fact that "Civix has only explicitly identified Hotels.com's `star rating' and `property type' as meeting the claimed `associated category' limitation." (R. 690 at 24.) Civix contends that "[t]he associated categories of `star rating' and `property type' were ... examples in a set of `representative claim charts[,]'" and that prior claim charts "explicitly identify other examples of associated categories." (Id.) Civix does not explain, however, what those other examples are. Nevertheless, the Court has reviewed the "prior claim charts," which arguably reveal that Civix's contention as to the "category" limitation differed from the "star rating" and "property type" examples Civix proffered more recently. Exhibit 4 to Civix's fourth supplemental answers to Hotels.com's Interrogatory No. 2 gives an example of a "category" as "hotel room or rooms for a number of adults or children." (R. 691-5 at 19.) It highlights as a "category" a part of the hotels.com website that asks a user to input the check-in and check-out dates, as well as the number of rooms and of people. (Id. at 17.) It gives an additional example of "a desired category" as "[n]umber of adults, children[.]" (Id. at 20.)
Civix does not explain, however, how the evidence in the record could support a reasonable jury finding that the accused Hotels.com system satisfies the claimed "associated category" or "selected category" limitation other than as "star rating" or "property type." (R. 688 at passim.) A generalized reference to prior interrogatory responses, lacking any explanation as to how the evidence would support the contentions contained therein and accompanied only by conclusory assertions, is insufficient to demonstrate a genuine dispute. See, e.g., Lottie v. W. Am. Ins. Co., 248 Fed.Appx. 734, 739 (7th Cir.2007) ("Lottie sets forth a five-page series of questions which he asserts establish the existence of a genuine issue of material fact, but without providing any case citations in support of his litany of questions. Lottie's argument ... is inadequate."); Nolan v. Cleland, 686 F.2d 806, 812 (9th Cir.1982) ("[Plaintiff's] speculative and conclusory arguments do not constitute the significantly probative evidence required to create a genuine issue of material
In moving for summary judgment, Hotels.com argues that no initial screen search service of any accused site has ever permitted a user to provide or select a "category" for the purpose of the asserted claims of the '622 patent. (R. 679 at 23-27; R. 694 at 12-16.) Specifically, it submits that the evidence would not support a finding that the accused site satisfies the "category" limitation through a "star rating" or "property type." (Id.) The parties agree that "CIVIX's infringement expert is unaware of any Hotels.com site where a user could select the category of star rating on the initial screen of Hotels.com." (R. 690 at 25.) Thus, the parties' dispute concerns the question whether the accused site's input of "property type" satisfies the limitation. Hotels.com contends that a user's merely entering a city name into the initial screen search service does not involve a user input of "property type," thus entitling Hotels.com to summary judgment of noninfringement of the '622 patent as to searches run from the initial screen ("landing page") of the accused sites. (R. 694 at 13-14.) Hotels.com also maintains that the resulting search returns items of all property types, as opposed to the "selected" property type, which, it argues, similarly entitles it to summary judgment. (Id. at 13.)
In opposing Hotels.com's motion, Civix argues that the evidence creates a genuine dispute whether the accused system satisfies the "associated-category" limitation because there is a property-type classification stored in the database that a user provides or selects and that divides particular items of interest into subgroups, thus meeting the court's construction of "associated category." (R. 688 at 11.) Civix argues that the evidence supports such a finding on two alternative grounds. In the first place, Civix points to the "suites, condos, bed & breakfast" tab on the May 2006 landing page for the hotels.com website as the relevant property type. (Id.) By clicking on this tab, entering a geographical location, and clicking "Go," Civix maintains, a user leads the accused system to meet the associated-category limitation. (Id.) Second, and also as to the May 2006 landing page, Civix argues that a user could select the classification "hotels" directly from the landing page by simply entering a city name and clicking "Go." (Id. at 11-13.) This satisfies the associated-category limitation, Civix contends, because the accused system runs a query of a Hotels.com database for hotels in the selected city, and returns information about the same to the user. (Id. at 11-12.) In the alternative, Civix submits that, even if "hotels" alone do not constitute a "classification" for the purpose of "associated category," a basic search using cities alone constitutes a classification because such a search involves the implicit selection of "both a location and property type (i.e., `hotels')." (Id. at 13.)
Nor can Civix establish a genuine dispute as to whether the initial screen of the accused sites from 2006 satisfies the "associated-" or "selected-category" limitation based on a user's electing not to change the default search option (category) by simply entering a city name and clicking "Go." Pointing out that "hotels" are an associated category, Civix argues that a user can "select" hotels for the purpose of the asserted claims of the '622 patent by remaining on the landing page. (R. 688 at 11-12.) Because "the Hotels.com website preselects `hotels' over `air,' `suites,' `vacation packages,' `deals,' `destinations' or `road trips,'" Civix submits, a user "selects" hotels by declining to select another option from the initial screen. (Id. at 12.) Thus, Civix maintains, "[a] category and geographic vicinity are `input' from the May 2006 landing page when a user clicks the `Go' button, thereby transmitting a signal that represents both a category (`hotels') and a geographic vicinity (the city name)." (Id.)
Civix's argument fails. The evidence in the record, construed in the light most favorable to Civix, reveals that the default search for "hotels" does not in fact run a search for hotels—it runs a search for every property type. (R. 682-7 at 14.) In submitting that there is no factual dispute that "[t]he classification `hotels' could also be selected from the landing page[,]" Civix relies on Mr. Tulula's deposition testimony. (R. 690 at 39.) Mr. Tulula testified at his deposition, however, that "the default search returns all property types.... The default search is to do all of them." (R. 690-7 at 5.) It is true that Dr. Frieder opined that the accused device satisfies the fourth element of claims 20 and 26 of the '622 patent:
(R. 682-1 at 10-11.) Dr. Frieder testified in his deposition, however, that he "cannot speak with certainty" with respect to the question "whether or not any property type category was applied as a default to searches on the website[.]" (R. 682-2 at 124.)
Because the evidence, viewed in the light most favorable to Civix, establishes that the "default" selection of "hotels" does not entail a search for "hotels" alone, that default selection does not satisfy the "associated-category" limitation as a matter of law. That limitation requires "a classification... that divides particular items of interest into subgroups[.]" (R. 650 at 2.) The "default" provision for the purported category "hotels," therefore, does not divide items of interest into subgroups because there is no dispute that "the default search returns all property types." (R. 690-7 at 5.) Hotels.com correctly points out in reply that, if it were otherwise, the ensuing "selected-category" element would lack meaning because the relevant search returned all items of interest, rather than a subgroup of the same. (R. 694 at 16.) As a result, the landing page of the accused site does not satisfy the "associated-category" limitation.
Separately, Civix argues that items of interest within a user's vicinity ("hotels in and around a city") are themselves a "property type" that satisfy the "associated-category" limitation. (R. 688 at 12-13.) This argument is akin to Civix's unavailing contention that a user's input of a geographical position on the initial screen search interface and click of "Go" satisfies the "associated-category" limitation on account of its implicit selection of the category "hotels." (Id. at 13 ("[I]n entering a city name into the user interface on the May 2006 landing page and clicking the `Go' button, a user is not selecting a location `alone'; she is selecting both a location and a property type (i.e., `hotels.').").) This argument fails because there is no dispute that the default search returns all property types, rather than just hotels.
Because Hotels.com is entitled to partial summary judgment of no infringement by the accused initial screen search interface of the asserted claims of the '622 patent, it is also entitled to summary judgment of no induced infringement with respect to the
Asserted claim 23 of the '291 patent is directed to "[a] method of claim 14, wherein the step of supplying information comprises supplying advertising information about a business." (R. 690 at 13.) Civix's expert report contends that Hotels.com satisfies the limitation "supplying advertising information" because "Hotels.com transmits advertising (such as banner ads) to its customers who are connected to the hotels.com site and consequently the hotels.com databases via the Internet." (R. 682-1 at 13.) Hotels.com argues that the undisputed evidence entitles it to summary judgment of noninfringement of this claim because no Hotels.com database "supplies" or "stores" the banner ads that Civix accuses. (R. 679 at 27-28.)
There is no genuine dispute that the asserted claim of the '291 patent requires storage of the "advertising information." Civix's expert, Dr. Frieder, agreed in his deposition that, "if Hotels.com does not have an advertisement in its database, there's no infringement[.]" (R. 690 at 31.) In its response brief in opposition to summary judgment, Civix does not oppose the view that one cannot practice claim 23 without storing advertising information. (R. 688 at 27-28.) Nor does it identify, or point to any evidence showing the existence of, a Hotels.com database that stores advertising information. (Id.) Instead, Civix argues that "the Hotels system generates an `iFrame' that designates advertising space on the search results page," which "satisfies the claim." (R. 688 at 27.) In an attempt to create a genuine dispute on this point, Civix proffers the declaration of its expert, Ophir Frieder, to the effect that:
(R. 690-2 at 10) (emphasis added.)
Civix filed this declaration contemporaneously with its brief in opposition to summary judgment, after the close of expert discovery. (Id.) The views expressed in this declaration differ in important ways from the contents of Dr. Frieder's Rule 26 report, and so the Court declines to rely on it. See WMH Tool Group, Inc. v. Woodstock Int'l, Inc., No. 07-CV-3885, 2009 WL 6825247, at *1 n. 2 (N.D.Ill. Dec. 9, 2009) ("The declaration prepared by WMH's survey expert after Defendants filed their summary judgment brief and long after expert discovery closed on June 30, 2009, will not be considered. Summary judgment affidavits may not contain expert testimony not previously disclosed.") (emphasis
In addition, the declaration contradicts Dr. Frieder's deposition testimony in at least two significant ways. First, it contradicts his deposition testimony that he "do[es] not know" whether "the advertising that Hotels.com displays on its site is stored in a Hotels.com database[.]" (R. 682-2 at 109.) Second, his declaration to the effect that "[w]hether the advertising is stored in a database owned by Hotels.com or not is irrelevant to Hotels.com's infringement" (R. 690-2 at 9) contradicts his earlier deposition testimony that "if Hotels.com does not have an advertisement in its database, there's no infringement[.]" (R. 690 at 31.) The Court therefore declines to rely on Dr. Frieder's declaration for the purpose of revealing a genuine dispute. See Stein v. Foamex Int'l, Inc., No. 00-CV-2356, 2001 WL 936566, at *6 (E.D.Pa. Aug. 15, 2001) ("In essence, Stein would have the Court allow him to file preliminary expert reports and then freely supplement them with information and opinions that should have been disclosed in the initial report. That result would effectively circumvent the requirement for the disclosure of a timely and complete expert report."). Hotels.com is therefore entitled to summary judgment of noninfringement of Claim 23 of the '291 patent on the ground that there is no genuine dispute that no Hotels.com database stores advertising information.
The record, construed in the light most favorable to Civix, would also compel summary judgment to Hotels.com as to claim 23 of the '291 patent because it reveals that Hotels.com does not "supply" any advertising information. Hotels.com, in its Rule 30(b)(6) deposition, testified that it does not control "when and how the advertisement is delivered and placed on its results page" and explained that "a third party ... delivers the ad[,]" such that Hotels.com does not "actually ... control the content of it." (R. 682-7 at 6.) In response to Hotels.com's statement of undisputed fact that "[a] third-party delivers and controls the content of advertisements displayed on the accused Hotels.com sites[,]" Civix contends that "Hotels.com controls and determines when an advertisement is inserted into a search results page" and asserts further that "advertising on the Hotels.com website is handled by a sales team shared by Expedia and Hotels.com." (R. 690 at 31-32) (emphasis added.) This response does not reveal a genuine dispute whether a third party delivers and controls the content of advertisements displayed on the accused Hotels.com sites. First, the question "when" an advertisement is inserted into a search-results page has no bearing on the distinct questions of control or the fact of delivery. Second, Civix has not introduced any evidence to the effect that Hotels.com, as opposed to a third party, delivers advertising information about a business. (R. 688 at 27-28.)
Finally, to the extent Civix seeks to rely on Dr. Frieder's declaration to create a genuine dispute, it fails for the reasons discussed above.
Claim 20 of the '622 patent is directed to a system comprising "a database for storing information about a plurality of items of interest, the information including ... a geographical position and at least one associated category." (R. 690 at 6-7.) The claim recites a system wherein the portion of information comprises video for at least one of the items of interest. (Id.) Hotels.com moves for summary judgment of noninfringement of this claim on the ground that the evidence, construed in the light most favorable to Civix, reveals that the accused system does not satisfy the "video" limitation. (R. 679 at 28-29.)
The undisputed evidence entitles Hotels.com to summary judgment. According to the plain language of the asserted claim, the claimed system must comprise a database that stores video for at least one of the items of interest. Consistent with this interpretation, in response to the question "if Hotels.com does not store the Virtual Tours that Civix has accused of infringement on its database, it doesn't meet this element of the claim, correct?," Civix's expert, testified that, "[i]f it doesn't store, if it doesn't have possession of it, then that's correct." (R. 682-2 at 115-16.)
The evidence, construed in the light most favorable to Civix, makes clear that the Hotels.com database did not store the virtual tours. (R. 682-9 at 4; R. 690 at 34.) Civix does not introduce any evidence or argument to the contrary, but instead submits that "Hotels.com controls and uses virtual tours stored on a server of its sister company Expedia." (R. 690 at 34.) It also argues that Hotels.com "store[d] a procedure to obtain the virtual tours from an Expedia database." (R. 688 at 28.) Even if Plaintiff were correct in this respect, it would not create a genuine dispute whether the accused system satisfied the "video" element of claim 20 of the '622 patent. In other words, the undisputed fact that Hotels.com stored "a procedure to obtain the virtual tours from an Expedia database" (R. 697 at 30) is irrelevant. See De Marini Sports, Inc. v. Worth, Inc., 239 F.3d 1314, 1331 (Fed.Cir.2001) ("Literal infringement of a claim exists when every limitation recited in the claim is found in the accused device, i.e., when the properly construed claim reads on the accused device exactly.") (quoting Amhil Enters. Ltd. v. Wawa, Inc., 81 F.3d 1554, 1562 (Fed.Cir.1996)).
Asserted claim 23 of the '291 patent recites "[a] method ... wherein the step of supplying information comprises supplying one or more video clips ... related to the one item of interest." (R. 690 at 12-13.) There is no genuine dispute that this claim also requires the storage of one or more video clips. Civix's expert Dr. Frieder, in response to the question "as in the '291 patent, the information's that being sent to the user's computer must be stored in the system's database, correct?," testified: "It's a system that's capable of doing it for-to store it on the video, yes." (R. 682-2 at 115.) He further testified that Hotels.com would not satisfy the claim if it did not store video clips "in its own database." (Id. at 112.) He also agreed that, "[i]f Hotels.com does not store video clips or digitized images in its database, it doesn't meet this claim[.]" (Id. at 113.)
Civix disputes this interpretation, arguing that claim 23 of the '291 patent does not require video clips as "the claim is infringed if one or more elements from the group of video clips and digitized images are supplied." (R. 688 at 28-29.) This argument fails as a matter of law, however, because "supplying one or more video clips and digitized images" means supplying at least one video clip and at least one digital image. See, e.g., Super-Guide Corp. v. DirecTV Enters., 358 F.3d 870, 885-86 (Fed.Cir.2004) (holding that "the phrase `at least one of' means `one or more'" and concluding that, as applied to four categories, the phrase "modifies each category in the criteria list, i.e., one or more values in each category are required").
As explained above, there is no dispute that the Hotels.com database does not store video, and so Hotels.com is also entitled to summary judgment of no infringement of claim 23 of the '291 patent.
Finally, Hotels.com submits that Civix's allegation of willful infringement fails as a matter of law because the record, construed in the light most favorable to Civix, would not support a reasonable jury finding that clear and convincing evidence exists that Hotels.com infringed "despite an objectively high likelihood that its actions constituted infringement of a valid patent." (R. 679 at 29-30) (quoting In re Seagate Tech., LLC, 497 F.3d 1360, 1371 (Fed.Cir.2007) (en banc)). In light of the fact that Hotels.com is entitled to summary judgment of noninfringement of claims 20 and 26 of the '622 patent, as well as claim 23 of the '291 patent, the Court need not address the question of willful infringement.
For these reasons, the Court grants Hotels.com's motion for summary judgment.
