Alibaba.com Hong Kong Limited et al v. P.S. Products Inc et al
Filing
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ORDER DENYING MOTION FOR SUMMARY JUDGMENT by Hon. William Alsup denying 67 Motion for Summary Judgment.(whalc1, COURT STAFF) (Filed on 5/11/2012)
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IN THE UNITED STATES DISTRICT COURT
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FOR THE NORTHERN DISTRICT OF CALIFORNIA
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ALIBABA.COM HONG KONG LTD, and
ALIBABA.COM, INC.,
Plaintiffs,
For the Northern District of California
United States District Court
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ORDER DENYING MOTION
FOR SUMMARY JUDGMENT
v.
P.S. PRODUCTS, INC., and
BILLY PENNINGTON,
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Defendants.
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No. C 10-04457 WHA
AND RELATED COUNTERCLAIMS
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INTRODUCTION
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In this declaratory-relief action involving design patents covering stun guns, plaintiffs
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move for summary judgment of non-infringement. For the reasons stated below, the motion
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is DENIED.
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STATEMENT
In August 2010 defendants, P.S. Products, Inc., and Billy Pennington filed suit against
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plaintiffs Alibaba.com, Inc., and Alibaba.com Hong Kong LTD, in the Eastern District of
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Arkansas for direct and indirect patent infringement. The case was dismissed for lack of
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personal jurisdiction over Alibaba in Arkansas. Shortly thereafter, Alibaba filed this instant
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declaratory action for non-infringement.
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P.S. Products was (and is) a twelve-person company in Little Rock, Arkansas that sold
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self-defense supplies. The company’s owner, Billy Pennington, was the named inventor and
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owner of the design patents asserted in this action, U.S. Patent Nos. D561,294 S, D576,246 S,
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and D611,115 S. The patents claimed designs of stun guns. For example, the ’294S patent
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covered a stun-gun brass knuckle.
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Figure 6 in ’294S Patent
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For the Northern District of California
United States District Court
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Alibaba operated and promoted websites (www.alibaba.com and www.aliexpress.com)
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that provided an online market for sellers and buyers. Sellers posted images and information
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about the products that they wished to sell and paid Alibaba for listing their products. These
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third-party sellers were not owned, controlled, or affiliated with Alibaba, and manufactured and
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stored their own products (Wong Decl. ¶¶ 2–6).
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The www.alibaba.com website was designed to facilitate business to business sales. It
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was not a website like Amazon.com where goods could have been purchased on the site. Rather,
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the site only provided buyers with a mechanism to view sellers’ goods and then to contact the
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sellers to arrange the terms of the sale and delivery of goods outside the website. There was no
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“shopping cart” or payment facility on the website. Money could not have changed hands as
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between buyers and sellers (or anyone else) on the site, and Alibaba did not receive the purchase
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monies. Anyone could have joined the site for free and posted a limited number of listings.
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Alibaba derived revenues by selling premium memberships whereby users paid an annual fee in
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exchange for the right to post additional products on the site and have their products displayed
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more prominently (Wong Decl. ¶¶ 3–6).
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The www.aliexpress.com was also designed to facilitate viewing of product listings
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posted by third-party sellers. Unlike the www.alibaba.com website, the www.aliexpress.com
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website permitted site users to purchase products listed by third-party sellers using an “escrow”
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payment service. The escrow payment service allowed the buyer to place the purchase monies in
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an escrow account which then released the money to the third-party seller upon confirmation that
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the buyer had received the ordered goods. Alibaba received a commission on the revenue from
products actually sold (Wong Decl. ¶¶ 4–6).
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For the Northern District of California
United States District Court
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Alibaba did not manually pre-screen or inspect the hundreds of thousands of new product
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listings posted by third parties on the Alibaba websites each day and contended that such manual
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screening was (and is) impractical (Wong Decl. ¶ 6). Alibaba had the authority to remove the
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listing of third-party products from its websites and allowed intellectual property owners to
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submit complaints via email, fax, and mail, if they thought that a listed product was infringing.
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In January 2010, Pennington discovered that two allegedly infringing products were
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listed for sale on Alibaba’s website www.alibaba.com. One was produced by third-party Yijia
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Imports & Export Co., Ltd. The other product was made by Heng Wei Protective Equipment
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Manufacturing Co., Ltd. Both sellers were foreign companies. There is no evidence that these
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companies were affiliated with Alibaba in any way other than selling their products on Alibaba’s
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website. A few days after the discovery, Pennington sent Alibaba a letter advising that Alibaba
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was placing into the stream of commerce stun guns that were covered by his patents. Pennington
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included copies of his patents in the letter. It is unclear from the record when the allegedly
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infringing products were taken down.
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Afterward, more allegedly infringing products appeared on Alibaba’s websites (27 on
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www.alibaba.com and two on www.aliexpress.com) in the seven months prior to the lawsuit
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(Pennington Decl. Exhs. H–JJ). None of these 29 new products was sold by the same sellers
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listed in Pennington’s January 2010 notification. Like the previous sellers, there is no evidence
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that these new sellers had any affiliation with Alibaba other than selling their products on
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Alibaba’s website.
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In August 2010, both Pennington and Alibaba attended and had sales booths at a trade
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show in Las Vegas. Pennington was selling his stun guns at the trade show. Alibaba’s booth
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had computer terminals where people could view the Alibaba websites. Pennington went to
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Alibaba’s booth and viewed some of the allegedly infringing products on the websites using
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Alibaba’s computer terminals (Pennington Decl. ¶¶ 63–66; Marton Decl. Ex. 6 at No. 12;
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Pennington Dep. at 99–104). It is unclear which products Pennington viewed.
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Pennington did not notify Alibaba about the aforementioned 29 allegedly infringing
products that appeared on Alibaba’s websites between February and August 2010 until filing suit
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For the Northern District of California
United States District Court
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in August 2010. Alibaba took down these listings within two days (Wong Decl. ¶¶ 22–24).
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Now, Alibaba moves for summary judgment of non-infringement on all claims of direct
and indirect infringement.
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ANALYSIS
Summary judgment is proper when the “pleadings, depositions, answers to
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interrogatories, and admissions on file, together with the affidavits, show that there is no genuine
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issue as to any material fact and that the moving party is entitled to judgment as a matter of law.”
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FRCP 56(c). An issue is genuine only if there is sufficient evidence for a reasonable fact-finder
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to find for the non-moving party, and material only if the fact may affect the outcome of the case.
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Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248–49 (1986).
DIRECT INFRINGEMENT.
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In order to be liable for direct infringement, an accused infringer must make, use, offer to
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sell, or sell a product embodying the patented design in the United States, or import such a
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product into the United States. 35 U.S.C. 271(a).
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Determining whether there has been an offer-for-sale in the context of patent law requires
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the application of traditional contract law principles to the particular case. An offer is defined as
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“the manifestation of willingness to enter into a bargain, so made as to justify another person in
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understanding that his assent to that bargain is invited and will conclude it.” Linear Technology
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Corp. v. Micrel, Inc., 275 F.3d 1040, 1048–50 (Fed. Cir. 2001). There is no controlling decision
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as to whether an online marketplace, such as Alibaba’s websites, can be liable for direct patent
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infringement. Under an application of traditional contract law, the relevant inquiry is whether a
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person shopping on Alibaba’s websites would have reasonably believed that Alibaba, and not
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third-party sellers, was the seller with title or possession of a product who could have entered
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into a contract to transfer title or possession.
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There is a factual dispute as to whether a reasonable buyer going on www.aliexpress.com
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would have believed that Alibaba itself was making an offer to sell the allegedly infringing
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products. The name of the “supplier” is only in small font. Moreover, “supplier” may be
interpreted to mean manufacturer but that Alibaba is owner of the products. The buyer submits a
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For the Northern District of California
United States District Court
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payment to Alibaba, not the “supplier.” This order must construe these facts in a light favorable
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to Pennington. Therefore, the motion for summary judgment of no direct infringement
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is DENIED.
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Whoever actively induces infringement of a patent shall be liable as an infringer. 35
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U.S.C. 271(b). Liability for induced infringement “requires knowledge that the induced acts
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constitute patent infringement.” Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060,
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2068 (2011). It is not enough to show deliberate indifference to a known risk that a patent exists.
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If knowledge of infringement is not shown, then the patent owner must prove willful blindness,
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which requires that “(1) the defendant must subjectively believe that there is a high probability
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that a fact exists and (2) the defendant must take deliberate actions to avoid learning of that fact.”
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Id. at 1270. It is insufficient to show that defendant “merely knows of a substantial and
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unjustified risk of such wrongdoing.” Id. at 1271.
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INDUCED INFRINGEMENT.
There is a genuine factual dispute as to whether Alibaba took deliberate actions to avoid
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learning of infringement. The record shows that Pennington sent Alibaba a notice of
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infringement in January 2010. It is unclear when Alibaba took down those allegedly infringing
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items. Construing the facts in a light favorable to Pennington, a reasonable jury could find that
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Alibaba induced infringement by deliberately maintaining the allegedly infringing item on its
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website for an unduly long period.
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CONCLUSION
For the reasons stated, plaintiff’s motion for summary judgment of non-infringement
is DENIED.
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IT IS SO ORDERED.
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Dated: May 11, 2012.
WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE
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For the Northern District of California
United States District Court
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