Illinois Computer Research LLC v. HarperCollins Publishers, Inc. et al

Filing 83

OPINION AND ORDER: For the reasons stated, Defendants' motion for judgment on the pleadings is DENIED. The Clerk is directed to terminate the motion listed at Docket #73. (Signed by Judge Paul A. Crotty on 7/28/2011) (jfe)

UNITED STATES DISTRICT COURT
SOUTHERl'l DISTRICT OF NEW YORK
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USDCSDNY
DOCUMENT
ELECTRONICALLY FILED
DOC#:
DATE FILED: July 28,2011

ILLINOIS COMPUTER RESEARCH LLC,
Plaintiff,
10 Civ. 9124 (PAC)
- againstOPINION & ORDER
HARPERCOLLINS PUBLISHERS, INC., et aI.,
Defendants.
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HONORABLE PACL A. CROTTY, United States District Judge:
Defendants Harper Collins Publishers, LLC, Random Honse, Inc., and Simon &
Schuster, Inc. (collectively "Defendants") move under Fed. R. Civ. P. 12(c) for partial judgment
on the pleadings of this patent infringement case. l Plaintiff Illinois Computer Research, LLC
("ICR") asserts that Defendants infringed five independent claims ofG.S. Patent No. 7,111,252
("'252 Patent,,). 2 The '252 Patent is a business method patent that enables users to preview
portions of books over the Internet prior to purchase. (Mem. in Supp. 1). Defendants argue that
ICR cannot establish infringement of patent claims 7,8,11,15,16, and 17 because, as drafted,
they require multiple users.
Specifically, Defendants claim that three of these independent claims (7, II, and 15)
require that some of the steps of the method be performed by the website users (i.e., the
consumers), and others by the website operators (i.e., Defendants). 3 When patent claims are

! Although the Complaint asserts infringement of claims I, 7, 8, 11, and 15-21, (Compl. W 11, 14, 17), the Initial

Infringement ('"ntentions submitted by ICR following the filing of this motion (in accordance with the Civil Case

Management Plan) only asserts inllingement ofclaims 1,7, 8, 11, and 18-21. (Mem. in Opp. Ex. A, at I).

, An independent claim satisfies all of the elements ofth. claim on its own, while a dependent clainl simply adds

elements to another claim. If an independent claim is not infringed, then the claims that depend on it cannot be

infringed either. Wahpeton Canvas Co., Inc. v. Frontier. Inc., 870 F.2d 1546, 1552 n.9 (Fed. CiT. 1989). One may,

however, infringe an independent claim without inllinging a claim that depends on it. rd.

'Independent claim 15 states:

A methed ofreading a book over the Internet, comprising

drafted such that no one party perfonns all the steps of a method, Defendants submit, there can
be no direct infringement, unless the plaintiff can establish an agency or contractual relationship
between the accused infringer and the other person perfonning the steps of the method (known
as 'joint infringement"). (Mem. in Supp. 2). Because ICR cannot establish infringement of these
independent claims, Defendants contend, the claims that depcnd on those claims (8, 16, and 17)
also fail.
ICR responds that this motion is premature and moot. Had Defendants waited for ICR's
lnitiallnfringement Contentions, they would have learned that ICR does not assert claims 15, 16,
and 17 in this litigation. (See Mem. in Opp. Ex. A). ICR, however, reserves its right to reassert
these claims should it discover infonnation to support them.
As to the remaining claims, ICR maintains that the motion is also premature, because
arguments concerning multiple-party perfonnance and joint infringement are properly addressed

(I) requesting a page of a book on a client of the Internet [i&, a computer];
(2) detennining, in a server of the Inteme~ if more than a speeified number of pages of said book have
been requested by a speeified user; and
(3) sending said page only if the speeific number of pages does not exceed a threshold.
(Mem. in Supp. 3). This first step of this method~requesting a page of a book-is taken by the user, not the
Defendants. Defendants argue that, based on the language of the claim, the second and third steps must be
performed by a different party-the server, or the operator. Beeause no single party controls every step of the
method, and there is no agency or contractual relationship between the website users and provider, Defendants argue
that tbere is no infringement.
Independent claims 7 and II relate to methods ofreeeiving requests from clients and displaying images in
response. aaim 7 states:
A method comprising
(4) receiving, at a client of a network, information about which of a specified plurality of images to be
displayed, each of specified plurality of images showing textual information and at least a plurality of
said images showing nontextual infonnation, said textual information representative of contents of a
book;
(5) displaying said images responsive to said requests; and
(6) displaying a screen tip, indicating what the reaction will be to a specified operation.

(Mem. in Supp. 6). Claim J 1 is nearly identical, but relates to an information media as opposed to a hook. (4).
Similarly, Defendants argue that the first steps of claims 7 and 11 are performed by the user, while the second and
third steps are performed by the operator.

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after discovery, during claim construction. 4 ICR contends that claims 7 and 11 do not require
multiple users; rather, all three steps are perfonned at, and therefore may be directly infringed at,
the client device level. ICR argues that it only accuses the Defendants of indirect infringement
(that is, encouraging and instructing others to commit direct infringement), not joint
infringement.
In light ofICR's concessions and clarifications at oral argument today, the motion for
judgment on the pleadings is DENIED.
Discussion
The legal standards for review of motions to dismiss and for judgment on pleadings are
"indistinguishable" and consistent with the pleading requirements articulated in Ashcroft v.
Iqbal, 129 S. Ct. 1937, 1949 (2009) and Bell Atlantic Corp. v. Twombly, 550 U.S. 544,570
(2007). LaFaro v. N.Y, Cardiothoracic Grp., PLLC. 570 F,3d 471,475-76 (2d Cir. 2009). The
Court assumes all facts alleged by the nonmovant to be true, and draws aU reasonable inferences
in favor of that party. Kassner v, 2nd Ave. Delicatessen, Inc., 496 F.3d 229, 237 (2d Cir. 2007).
In analyzing claims under the Patent Act, this Court is bound by the precedents of the
U.S. Court of Appeals for the Federal Circuit. See 28 U.S.C. § 1295(a)(4)(C); Midwest
Industries. Inc. v. Karavan Trailers, Inc., 175 F.3d 1356, 1359 (Fed.CiLl 999)(applying Federal
Circuit law to patent issues but local circuit court law to procedural issues); Astra Aktiebolag v.
Andrx Phannaeeuticals, Inc., 208 F.R,D. 92, 96 (S,D.N.Y. 2002). In order to establish direct

infringement of method claims, a patent owner must show that the accused infringer perfonns
every step of the claimed method. Muniacution, Inc. v. Thomson Com" 532 F.3d 1318,1328
(Fed. Cir, 2008). One party must exercise control or direction over the entire process so that
each step is attributable to that party. BMC Resources. Inc. v. Pavrnentech, L.P., 498 F.3d 1372,
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Defendants' opening claim construction brief is due on September 15,2011.

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1378-79 (Fed. Cir. 2007). "A claim for indirect patent infringement requires a showing of
specific intent to encourage another to infringe the patent as well as a predicate finding of direct
infringement by some party." Symantec Corp. v. Computer Associates International. Inc., 522
F.3d 1279, 1292 (Fed. Cir. 2008).
ICR conceded at today's oral arguments that ICR does not assert infringement of claims
15, 16, and 17 (which are, in part, the subject of Defendants' motion). Accordingly, ICR should
file an Amended Complaint formally withdrawing any assertions based on claims 15, 16, and 17.
ICR also clarified that its theory of recovery is limited to indirect infringement by
Defendants, not direct infringement, of claims 7, 8, and II. A claim of indirect infringement is
sufficient at this stage to reject Defendants' motion for judgment on the pleadings.

Conclusion
For the reasons stated, Defendants' motion for judgment on the pleadings is DENIED.
The Clerk is directed to terminate the motion listed at Docket #73.

Dated: New York, New York
July 28, 2011
SO ORDERED

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PAULA. CROTTY
United States District Judge

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