Civix-Ddi, LLC v. Cellco Partnership

387 F.Supp.2d 869

CIVIX-DDI, LLC, Plaintiff, v. CELLCO PARTNERSHIP d/b/a Verizon Wireless; Expedia, Inc., Travelscape, Inc., and Verizon Information Services, Inc., Defendants.

No. 03 C 3792.

United States District Court, N.D. Illinois, Eastern Division.

September 14, 2005.

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Raymond P. Niro, David Joseph Mahalek, David J. Sheikh, Gregory P. Casimer, Niro, Scavone, Haller & Niro, Ltd., Chicago, IL, for Plaintiff.

Dale M. Heist, Henrik D. Parker, John P. Donohue, Jr., John E. McGlynn, Woodcock Washburn LLP, Philadelphia, PA, Jonathan F. Putnam, Kirkland and Ellis, New York City, Gianni L. Cutri, Kirkland & Ellis LLP, Louis E. Fogel, Richard A. Cederoth, Richard Francis O'Malley, Sidley Austin Brown & Wood LLP, Joel Gerald Chefitz, Thomas W. Jenkins, Howrey Simon Arnold & White, LLP, Bryna Joyce Roth Dahlin, Winston & Strawn, Timothy Quinn Delaney, Brinks, Hofer, Gilson & Lione, Chicago, IL, Roger Joseph Bartos, Morgan Stanley, Riverwoods, IL, Mark D. Weis, Deere & Company, Moline, IL, for Defendants.

MEMORANDUM OPINION AND ORDER

ST. EVE, District Judge.

Plaintiff CIVIX-DDI, LLC ("Civix") filed this suit against several defendants including Expedia, Inc. ("Expedia"), and Travelscape, Inc. ("Travelscape")¹ alleging infringement of various claims of U.S. Patent Nos. 6,385,622 ("the '622 patent"), 6,408,307 ("the '307 patent"), 6,415,291 ("the '291 patent"), 6,339,744 ("the '744 patent"), and 6,473,692 ("the '692 patent").² Expedia moves for summary judgment of both noninfringement and invalidity of all asserted claims. Expedia also moves for partial summary judgment on Civix's failure to comply with 35 U.S.C. § 287(a), willfulness, and conception. Civix moves for partial summary judgment of no inequitable conduct. For the reasons discussed below, the Court grants in part and denies in part both Expedia's motion and Civix's motion.

BACKGROUND

I. Parties

Civix is a Colorado limited liability company having a principal place of business in Virginia. (R. 388-1; Pl.'s Resp. Def.'s Stmt. Undisputed Facts ("DSUF") ¶ 1.)³ Expedia is a corporation organized and existing under the laws of the state of Washington with its principal place of business in Washington. (Id.) Travelscape is a wholly-owned subsidiary of Expedia organized and existing under the laws of the state of Nevada with its principal place of business in Nevada. (Id.).

II. Expedia's Website

The Expedia website (www.expedia.com), the Travelscape website (www.travelscape.com), and the related WWTE sites (referred to collectively as the "Expedia website") include a portion that is referred to as the Lodging Wizard and a portion that is referred to as the Car Wizard. (R. 388-1; DSUF ¶ 7.) The Expedia website includes a web server, several internal servers, and database servers. (Id. ¶ 8.) Expedia's users employ computing devices such as personal computers to transmit requests to the Lodging and Car Wizard portions of the Expedia website. (Id. ¶ 9.) More particularly, Expedia's users select the Hotel Wizard or the Car Wizard, specify a location, and generate a request signal using their computer. (Id.) Expedia's users also use their computers to view the results received from the Expedia website. (Id.) Expedia's users communicate their requests from the user's computing device to their internet service provider ("ISP"). (Id. ¶ 10.) The user's ISP communicates with an ISP providing access to the Expedia website. (Id.) The Expedia web server receives the requests from Expedia's users. (Id. ¶ 11.) The web server communicates with internal servers. (Id.) The web server and the internal servers communicate with Expedia's internal databases. (Id.)

III. The Prior Art

A. CompuServe

Expedia's Exhibit 18 is a publication by Jill Ellsworth, Ph.D. & Matthew Ellsworth, titled "Using CompuServe." (DSUF ¶ 35.) "Using CompuServe" states that "CompuServe"⁴ had been in existence for more than a decade in 1994 and that it had over one million "members." (Id.) During the period 1981-1996, Alexander Trevor held the position of Executive Vice President and Chief Technical Officer of CompuServe, Inc. (Id. ¶ 36.) During the period of 1974-1996, CompuServe, Inc. employed David Eastburn and from 1991 through 1993 he was responsible for all of CompuServe, Inc.'s online content and services. (Id. ¶ 37.) In December 1993, Eastburn formed and headed CompuServe, Inc.'s Advanced Technology Group, which was responsible for assessing evolving technologies and their impact on CompuServe's business. (Id.)

In 1993, CompuServe members were able to use personal computers and the CompuServe network to access information stored in CompuServe's databases located in Ohio and in third-party databases located elsewhere. (Id. ¶ 38.) CompuServe required subscribers to first establish an account before they could access CompuServe's databases. (Id.) Thereafter, subscribers could dial the CompuServe network using a local access number and connect through leased telephone lines to CompuServe host computers in Ohio. (Id.)

B. Sabre

The book "How to Get the Most Out of CompuServe" (5^th ed.1993) by Charles Bowen and David Peyton states that as of the writing of that book there existed a system called "Easy Sabre" that stored information on airlines, hotels, and car rental companies. (Id. ¶ 39.) During the period 1992-1996, Michael Robinson was involved with the Sabre Holdings, Inc. ("Sabre") hotel package. (Id. ¶ 40.) Robinson testified that prior to 1994, Sabre maintained a database in Tulsa, Oklahoma. (Id. ¶ 39.) According to Robinson, travel agents could use computers located anywhere in the United States to obtain information relating to airlines, hotels, and car rental companies stored in the Tulsa database. (Id. ¶ 41.) Robinson testified that prior to 1994, Sabre developed "EAAsy Sabre," which provided home computer users a "consumer friendly" way, through CompuServe, to access airline, hotel, and car rental information stored in Sabre's Tulsa database. (Id. ¶ 41.) The book "How to Get the Most Out of CompuServe" provides that EAAsy Sabre enabled users to look for information regarding 18,000 hotels and 45 car rental companies. (Id. ¶ 42.) Prior to 1994, CompuServe members were able to use their personal computers and EAAsy Search to search a database for information on hotels and car rental companies. (Id. ¶ 42.) Robinson testified that prior to 1994, the Sabre database stored hotel information such as location, rates, availability, descriptive content, credit card rules, and everything necessary to make a reservation. (Id. ¶ 43.) According to Robinson, the Sabre database stored hotel locations using address and zip code. (Id.)

IV. The Asserted Patents

Civix asserts that the patents in suit relate to systems used to locate points of interest in geographical regions by accessing a remote database. The parties logically divide the four asserted patents into two categories. The parties refer to the '622, '307, and '291 patents as "the Civix patents." These patents all derive from U.S. Patent Application No. 08/371,425.

The second category consists of the '692 patent, which the parties refer to as the "Go2 patent." Unlike the Civix patents, the Go2 patent did not derive from the '08/371,425 application. Instead, Civix acquired the '692 patent from Go2, one of the original Defendants in this case. The Go2 patent derives from a chain of applications filed by other inventors, beginning with U.S. Patent Application No. 08/701,586.

V. Facts Related To Expedia's Inequitable Conduct Claims

A. The Patents

The '291 patent and '622 patent are continuations of United States Patent No. 6,408,307 ("the '307 patent"), which is a continuation of United States Patent No. 5,682,525 ("the '525 patent"). (PSUF ¶ 1.) The effective filing date of the '307 patent, the '291 patent, and the '622 patent is January 11, 1995. (Id. ¶ 2.) Hosain Alam was the Patent Examiner for the applications for the '525, '307, '291, and '622 patents. (Id. ¶ 3.) Curtis Vock was the attorney responsible for the prosecution of the applications for the '307, '291, and '622 patents. (Id. ¶ 4.)

B. The Colorado Action

On January 26, 1999, Civix brought suit against a number of companies alleging infringement of the '525 patent and United States Patent No. 4,974,170 in Civil Action 99-B-172 in the United States District Court for the District of Colorado (the "Colorado litigation"). (Id. ¶ 5.) At his deposition, Mr. Vock testified that he informed Examiner Alam of the existence of the Colorado litigation in a telephone interview that took place in January or February, 2001. (Id. ¶ 20.) Mr. Vock spent several weeks creating an Information Disclosure Statement ("IDS") that listed the prior art cited by the defendants in the Colorado litigation. (Id. ¶ 36.) Mr. Vock submitted to Examiner Alam an IDS on February 8, 2001 in the '307 patent application ("the '307 IDS"), and an IDS on January 17, 2002 in the '391 patent application. (Id. ¶ 37.) The '307 IDS and '291 IDS listed all references cited by the defendants in the Colorado litigation because "someone had deemed this relevant enough to cite to us, so that [Mr. Vock], in fact, did not want to remove anything from the IDS." (Id. ¶ 38.) In an office action dated August 12, 2001, Examiner Alam wrote that the IDS "has been placed in the application file, but the information referred to therein has not been considered. The references have not been provided." (Id. ¶ 39.) Examiner Alam further explained:

The IDS received on February 12, 2001, contains a mountain of material including approximately 244 U.S. patents, 64 published patent applications, and 290 non-patent references. The number of references is unusually high. Since the applicants have filed the IDS, it can be reasonable [sic] inferred that they are more likely to know which of the 598 references are relevant to the...