The U.S. Court of Appeals for the Federal Circuit has weighed in once again on the elements required for patent holders to prove induced infringement, this time in a fight over online mapping technology for real estate hunters.
A Federal Circuit panel ruled Monday that a U.S. district judge in Los Angeles must reconsider a summary judgment ruling for Move Inc., which has spent nearly six years battling claims that its online real estate websites infringed a now-expired patent for zooming in on mapped properties. The plaintiff, Real Estate Alliance Ltd. — a company that develops and licenses electronic mapping technology–had appealed Judge George King’s January 2012 ruling that Move hadn’t infringed the patent, arguing that there was evidence of direct infringement.
The appellate panel refused to revive REAL’s direct infringement claim, but the company’s lawyers at Cadwalader, Wickersham & Taft managed to eke out a win nonetheless. After analyzing the patent claims and the Federal Circuit’s own recent precedent, the panel decided to throw out King’s ruling on the grounds that Move may still be on the hook for indirect infringement by inducing users of its websites to infringe REAL’s patent. The judges cited the Federal Circuit’s August 2012 ruling in Akamai Technologies v. Limelight Networks Inc., which made it easier for plaintiffs to prevail in patent cases in which infringing acts are committed by multiple actors.
Move, which operates a suite of websites including Realtor.com, sued in 2007 for a declaratory judgment that REAL’s patents were invalid and not infringed. REAL counterclaimed, alleging that some of the functions on Move’s websites infringed REAL’s search methodologies.
In 2009, the parties stipulated to noninfringement based on the district court’s claim construction. After King entered judgment in favor of Move, REAL appealed regarding one claim of the patent. The Federal Circuit then remanded the case back to the district court in 2011, saying the lower court had erred in its claim construction.
On remand, the parties each moved for summary judgment and the district court sided with Move, ruling that the functions of its websites didn’t directly infringe REAL’s patent since they didn’t perform certain steps required by the claim. REAL appealed to the Federal Circuit yet again, prompting Monday’s ruling.
On appeal, Robin McGrath of Paul Hastings argued on behalf of Move, which was also represented by Frank Smith III of Alston & Bird. Rebekka Noll of Cadwalader, Wickersham & Taft argued for Real Estate Alliance, joined on the briefs by partners Louis Solomon and Colin Underwood. The panel hearing the case included Chief Judge Randall Rader, and Circuit Judges Alan Lourie and Kimberly Moore. Lourie wrote the opinion.
The Federal Circuit agreed with the district court "that there is no genuine issue of material fact that Move does not control or direct the performance of each step of the claimed method" and therefore there could be no direct infringement. But the panel found that Judge King incorrectly presumed that Move also couldn’t be liable for indirect infringement. Citing the intervening decision in Akamai, which clarified the law on inducement, the appellate court ruled that liability "may arise when the steps of a method claim are performed by more than one entity, provided that the other requirements for inducement are met."
The panel remanded the case to King to decide if Move is liable for indirect infringement under the standard set forth in Akamai. "That standard requires that the accused inducer, here, Move, knew of the asserted patent and performed or knowingly induced the performance of the steps of the claimed methods, and that all of those steps were in fact performed," the court wrote.
REAL had also asked the panel to reassign the case to a different judge, alleging that King lacked "an open mind" to consider its claims. The Federal Circuit summarily rebuffed the reassignment bid Monday, finding REAL’s arguments "wholly without merit."
Attorneys for Move and REAL didn’t immediately return calls seeking comment.