904 F. Supp. 2d 864
N.D. Ill.2012Background
- Civix sued Hotels.com for infringement of the '622 and '291 patents, leading to a summary judgment in Hotels.com’s favor on August 19, 2011.
- Civix moved under Rule 54(b) for reconsideration based on the Federal Circuit’s en banc Akamai decision regarding induced infringement.
- The court granted reconsideration as to the induced infringement element of Claim 23 of the '291 patent, while denying direct infringement liability under Akamai’s framework.
- Akamai held that all steps of a claimed method must be performed to prove induced infringement, but not necessarily by a single entity.
- Akamai overruled aspects of BMC Resources to the extent they required a single entity to perform all steps for liability, and remanded cases applying the prior standard.
- The court summarized the dependent and independent claims at issue and addressed whether the accused Hotels.com method stores advertising information and video, affecting inducement analysis.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Akamai is a significant change in law warranting reconsideration | Civix contends Akamai altered the standard for induced infringement, justifying reconsideration. | Hotels.com argues standard remains correctly applied; no change in controlling law. | Yes; Akamai constitutes a significant change warranting reconsideration. |
| Whether there are genuine disputes of material fact on induced infringement of Claim 23 | Civix alleges Hotels.com induced infringement via third parties and did so with knowledge and intent. | Hotels.com asserts lack of direct or induced infringement under prior frameworks and arguments about control of third parties. | There are genuine disputes of material fact on inducement under Akamai. |
| Whether the accused method stores advertising information about a business | Civix shows third-party advertising sources and iFrame usage create inducement evidence. | Hotels.com relies on the absence of stored advertising information by Hotels.com itself. | Genuine disputes exist under Akamai whether Hotels.com induced and whether third parties performed the advertising steps. |
| Whether the accused method stores video content | Civix argues stored video or stored via third-party sources like Expedia creates infringement support. | Hotels.com contends no stored video by Hotels.com and no direct control over third-party storage. | Genuine disputes exist under Akamai about storage and inducement through third parties. |
Key Cases Cited
- Akamai Tech., Inc. v. Limelight Networks, Inc., 692 F.3d 1301 (Fed.Cir.2012) (all steps must be performed; single-entity requirement rejected for inducement)
- BMC Resources, Inc. v. Paymentech, L.P., 498 F.3d 1373 (Fed.Cir.2007) (previous single-entity requirement for liability rejected by Akamai)
- Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (Fed.Cir.2008) (describes the pre-Akamai single-actor standard for inducement)