Akamai Forces Reconsideration of Summary Judgment of No Induced Infringement

Having previously granted summary judgment of non-infringement on the plaintiff’s induced infringement claim because no one actor practiced the allegedly infringed claims, the court in Civix-DDI, LLC v. Hotels.com, LP, No. 05 C 6869 (N.D. Ill. Nov. 1, 2012), has now granted a request for reconsideration in light of the Federal Circuit’s en banc decision in Akamai Techs., Inc. v. Limelight Networks, Inc., 692 F.3d 1301 (Fed. Cir. 2012) (per curiam).

The court had granted Hotels.com’s motion for summary judgment that it did not directly or by inducement infringe certain claims of U.S. Patent Nos. 6,385,622 and 6,415,291.  The Federal Circuit then decided Akamai.  Upon the plaintiff’s motion requesting reconsideration of the summary judgment order, the court agreed that “the Federal Circuit’s decision in Akamai is a significant change in law warranting the Court to reconsider its summary judgment ruling.”  Specifically, as previously reported on this blog, Akamai “overruled the portion of BMC Resources, Inc. v. Paymentech, L.P., 498 F.3d 1373 (Fed. Cir. 2007), which required “that in order for a party to be liable for induced infringement, some other single entity must be liable for direct infringement.”  The doctrine of divided infringement is not the bulwark for accused patent infringers that it once was.

The claim at issue here was a dependent method claim reciting the step of “supplying one or more video clips and digitized images related to the one item of interest.”  The original summary judgment order “concluded that Hotels.com did not infringe” this claim “because (1) the accused method does not store or supply ‘advertising information about a business’ and (2) the Hotels.com database does not store video.”

On reconsideration, Hotels.com could be liable for infringement even if it did not store or supply advertising information about a business.  Akamai made clear that “inducement does not require that Hotels.com directed or controlled the third-party’s conduct.”  Instead, the plaintiff could simply show “that Hotels.com caused, urged, encouraged, or aided the infringing conduct and that the third-party carried out this conduct.”  Further, Hotels.com admitted as an undisputed fact that it had formerly stored a procedure for retrieving video from a third party.

Thus, the court found that, in light of Akamai, there now were genuine disputes of material fact to be resolved by a jury.  The plaintiff’s motion requesting reconsideration of the earlier summary judgment order was therefore granted. However, the court made clear that its summary judgment of no direct infringement still stood; Akamai explicitly did not affect the law governing direct infringement.

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