Judges: Rader, Lourie (author), Moore
[Appealed from C.D. Cal., Judge King]
In Move, Inc. v. Real Estate Alliance Ltd., No. 12-1342 (Fed. Cir. Mar. 4, 2013), the Federal Circuit vacated the district court's decision granting SJ of noninfringement of U.S. Patent No. 5,032,989 ("the '989 patent") and remanded for a determination of liability for induced infringement under 35 U.S.C. § 271(b).
Real Estate Alliance Ltd. ("Real") owns the '989 patent, which covers a method of using a computer for locating available real estate properties within a selected area on a map. Move, Inc. ("Move") operates interactive websites that allow users to search for available real estate properties. In 2007, Move brought suit against Real seeking a DJ of noninfringement and invalidity of the '989 patent. Real counterclaimed, alleging infringement by Move's websites. In 2009, both parties stipulated to noninfringement based on the district court's claim construction. The district court entered judgment for Move, and Real appealed.
On the initial appeal, the Federal Circuit found error in the district court's claim construction, vacated the judgment, remanded the case, and issued an opinion construing claim terms of the '989 patent. In the remanding opinion, the Court construed two steps of the method claim in the '989 patent that involved "selecting an area." The Court determined that the "selecting" steps meant that "the user or a computer chooses an area having boundaries." Slip op. at 4 (quoting Move, Inc. v. Real Estate Alliance Ltd., 413 F. App'x 280, 286 (Fed. Cir. 2011)). On remand, the district court granted SJ of noninfringement in favor of Move, because Move's websites and computer did not perform the "selecting" steps required by claim 1 of the '989 patent, based on the Federal Circuit's claim construction. Real appealed, resulting in this subsequent appeal.
On this subsequent appeal, the Court first addressed direct infringement under 35 U.S.C. § 271(a), which required Move to perform each and every step of the method or process, or to have "control or direction" of others over the performance of each step in claim 1 of the '989 patent. Id. at 8. The Court agreed with the district court and found that Move did not directly infringe the '989 patent. In particular, the Court found that Move's computer did not perform the "selecting" steps, and that Move did not exercise direction or control over users of its websites. Instead, it was users who performed steps of freely selecting area boundaries on a map, and Move's computer retrieved a map based on preprogrammed coordinates of the user-selected area boundaries. Because Move's computer did not make any choices or selection, the Court held that Move was not liable for direct infringement.
"[L]iability under § 271(b) may arise when the steps of a method claim are performed by more than one entity, provided that the other requirements of inducement are met." Slip op. at 10 (citing Akamai Techs. Co. v. Limelight Networks, Inc., 692 F.3d 1301, 1306, 1318 (Fed. Cir. 2012) (en banc)).
The Court next discussed indirect infringement and inducement under 35 U.S.C. § 271(b), which the Court noted was not analyzed by the district court. The Court explained that to find inducement, "all the steps of a claimed method must be performed . . . , but that it is not necessary to prove that all the steps were committed by a single entity." Id. at 10 (citing Akamai Techs. Co. v. Limelight Networks, Inc., 692 F.3d 1301, 1307 (Fed. Cir. 2012) (en banc)). The Court found that the district court had not determined whether a genuine issue of material fact existed as to the performance of all the claim steps—whether by one entity or several, or whether Move had actual knowledge of the '989 patent and induced users to perform the steps of the '989 patent that Move itself did not perform. Therefore, the Court held that the district court legally erred by not analyzing indirect infringement and inducement in granting SJ. Accordingly, the Court remanded the case for the district court to determine whether Move was liable for indirect infringement under 35 U.S.C. § 271(b) based on the Akamai standard.
Finally, regarding Real's request for reassignment of the case to a different district court judge on remand, the Court found no merit in Real's accusations regarding the district court judge and denied Real's request for reassignment.
Last Month at the Federal Circuit - April 2013
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