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Chicago IP Litigation Tracking Northern District of Illinois IP Cases

Tag Archives: CIVIX-DDI

District Court Claim Constructions Not Controlling

Posted in Claim Construction

Costar Realty Info., Inc. v. CIVIX-DDI, LLC, Nos. 12 C 4968, 7091 & 8632, Slip Op. (N.D. Ill. Sep. 23, 2013) (Holderman, Sen. J.).

Judge Holderman construed the disputed claim terms in this patent case involving methods of locating points of interest in a geographic region by accessing a remote database.  Before construing the claims, the Court noted the uncertainty regarding the preclusive effect of prior district court constructions with some courts holding prior constructions should be deferred to absent clear error and other courts considering them merely instructive.  The Court held that other opinions were not controlling based upon the Supreme Court’s statements in Markman that making claim construction a matter of law would not create consistency, even within a single district.  Of particular note, were the following constructions:

  • “The request containing (a) at least one user-selected category and (b) a user-selected geographic vicinity” was” construed as “the request containing, in a single electronic representation, (a) at least one user-selected category and (b) a user-selected geographic vicinity”;
  • “Advertising information about a business” was construed as “paid promotion of a business name, service, or product”;
  • “Advertisements” was construed as “paid promotions”;
  • “Database” was construed as “a collection of related information organized for convenient access”;
  • “Geographical/geographic position” was construed as “a specific location within a geographic vicinity”;
  • “Wherein a user at the port may locate the one item of interest” was construed “so that a user at the port has sufficient information to locate an item of interest”;
  • “Spatial detail” was construed as “a system of linked computer networks, world-wide in scope that typically is associated with using TCP/IP as a standard protocol.”
  • “At a database, receiving at least in part through the Internet, a request from one of a plurality of ports” did not require construction; and
  • “Determining, at the database, a plurality of advertisements in response to the request . . .  from the database, transmitting, at least in part through the Internet, the response to the port” did not require a construction.

Motion to Add Counterclaim Granted Where Schedule has Ample Time for Discovery

Posted in Discovery

CIVIX-DDI, LLC v. Loopnet, Inc., No. 12 C4968, 7091 & 8632, Slip Op. (N.D. Ill. Feb. 6, 2013) (Holderman, C.J.).

Chief Judge Holderman granted defendant Loopnet’s Fed. R. Civ. P. 15(a)(2) motion to amend its answer and counterclaims add a counterclaim for breach of contract alleging that plaintiff CIVIX-DDI breached a license between the parties by filing this suit.  The Court held that the case schedule provided CIVIX-DDI ample time to seek discovery on Loopent’s counterclaim.  Additionally, Loopnet’s prior refusal to produce documents regarding the defense was not a reason to deny Loopnet’s motion.  Should Loopnet continue refusing to produce after entry of the counterclaim, CIVIX-DDI may move to compel the necessary information.


Akamai Reverses (Another) Summary Judgment Decision

Posted in Summary Judgment

CIVIX-DDI, LLC v. Hotels.com, No. 05 C 6869, Slip Op. (N.D. Ill. Nov. 1, 2012) (St. Eve, J.).

Judge St. Eve granted plaintiff CIVIX-DDI’s Fed. R. Civ. P. 54(b) motion to reconsider the Court’s finding of summary judgment of non-infringement.  The Court’s earlier finding was based upon the undisputed facts that defendant Hotels.com’s databases did not store advertising information or video.  However, based upon the Akamai decision, which the Federal Circuit decided after the Court’s earlier order, a question of fact remained as to whether a third party stored the information such that Hotel.com could have indirectly infringed.

Ability to Consolidate Prevents Transfer

Posted in Jurisdiction

CoStar Realty Information, Inc. v. CIVIX-DDI, LLC, No. 12 C 4968, Slip Op. (N.D. Ill. Oct. 18, 2012) (Holderman, C. J.).

Chief Judge Holderman denied patent holder CIVIX-DDI’s motion to transfer this patent dispute to the E.D. Virginia.

Convenience of the Parties

Plaintiff CoStar’s choice of forum was given deference - despite not being resident in Illinois -because of defendant CIVIX-DDI’s prior and existing litigation involving the same patents in this district.  The likely location of documents - in Washington, DC - did not weigh in favor of transfer because they would likely be transferred electronically.  The third party witnesses were in or near the E.D. Virginia, weighing in favor of transfer.

Public Interest

Both jurisdictions were familiar with the law.  The E.D. Virginia had a greater interest in the dispute because CoStar was located there.  The ability to try related cases together, however, weighed against transfer.  Balancing the locations, the ability to consolidate outweighed the other factors.