Civix-DDI, LLC v. Hotels.com, L.P., No. 05 C 6869, Slip Op. (N.D. Ill. Jan. 19, 2011) (St. Eve, J.).
Judge St. Eve granted in part plaintiff Civix-DDI’s ("Civix") motion to strike defendants’ (collectively "Hotels.com") allegedly "new defenses and witnesses" in this patent case. The Court held as follows:
- Hotels.com was free to update its corporate witnesses based upon changed jobs and responsibilities, so long as the new witnesses were made available for deposition if they might potentially be called at trial.
- Disclosure of a new piece of prior art ten months after the close of fact discovery would prejudice Civix, and Hotels.com did not justify its late disclosure. The prior art was, therefore, excluded pursuant to Fed. R. Civ. P. 37.
- The Court also excluded a license for Google technology that was executed in relevant part in August 2010, about three months before Hotels.com’s supplemental interrogatory response disclosing the license. While a three month delay was sometimes acceptable, it was not in this case. Fact discovery closed seven months before the agreement was executed and ten months before the supplemental response identifying the license. And expert discovery was set to close four months after the supplement. Civix, therefore, would have been prejudiced by Hotels.com’s three month delay in this case. So, the license was excluded.
Civix-DDI, LLC v. Hotels.com, No. 05 C 6869, Slip Op. (N.D. Ill. Oct. 25, 2010) (St. Eve, J.).
Judge St. Eve construed the terms of the patents-in-suit to internet technology. From a procedural standpoint, the Court did the parties and readers of the opinion the favor of identifying the Court’s construction in a bulleted list at the beginning of the opinion, as well as at the end. Lists of the construed terms and their construction opinions make claim constructions far more readable.
Of particular note, the Court construed the following terms:
- "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 Court gave "little weight" to a construction from a prior case which the parties in that case stipulated to because defendants in this case were not parties to that case, nor did they have privity with the prior defendants.
- "Connected to" means "joined together or linked to, in a direct or indirect manner." Because neither the claim language nor the specification exclude an indirect connection, the construction included both direct and indirect connections.
- "Database" means "a collection of related information organized for convenient access." The Court accepted the construction from the prior case because it was supported by the intrinsic evidence. Nothing in the claims or specifications required a single device as proposed by defendants.
- "Internet" means "a system of linked computer networks, worldwide in scope, that is typically associated with using TCP/IP as a standard protocol." This was the Court’s construction from the prior case, but it was reached after a de novo review of the construction and all relevant evidence. Additionally, "Internet" and "internet" were construed to mean the same thing.
- "User" means "a human being."
- "Video" means "a presentation of multiple sequential frames of image data." The construction was intended to create a distinction between digital pictures and video.
- "Within a radius about the one port" means "within a circular area the center of which is the user’s present physical location."
Civix-DDI, LLC v. National Assoc. of Realtors, No. 05 C 6869, 2007 WL 178318 (N.D. Ill. Jan. 22, 2007) (St. Eve, J.).
Judge St. Eve granted defendant Hotels.com summary judgment that certain of its alleged activities are protected by plaintiff Civix’s covenant-not-to-sue with Hotels.com covenant-provider MapQuest and denied summary judgment as to activities that might be covered by Civix’s similar covenant-not-to-sue with Hotels.com content-provider Navteq. Another opinion on a similar issue with defendant Yahoo in the case is discussed in this post. The Court held that both covenants prevented suits against the licensee’s customers or end users with respect to or relating to the licensee’s technology. But in the case of the Navteq agreement, there was an issue of fact as to whether a third party in the stream of commerce between Navteq and Hotels.com added independent value to Hotels.com thereby giving Hotels.com more than the Navteq technology and kept Hotels.com from benefiting from the covenant-not-to-sue. In the case of the MapQuest technology, there was no such third party in the stream of commerce and, therefore, no question that Hotels.com was protected by MapQuest’s covenant-not-to-sue.