GeoTag Inc v. Frontier Communications Corp et al

Filing 1783

MEMORANDUM OPINION AND ORDER -. Signed by Judge Rodney Gilstrap on 1/13/2014. (ch, )

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
§
§
§
Plaintiff,
§
§
v.
§
§
FRONTIER COMMUNICATIONS CORP., §
et al.,
§
§
Defendants.
§
§
GEOTAG, INC.,

CASE NO. 2:10-CV-00265-JRG
LEAD CASE

MEMORANDUM OPINION AND ORDER
Before the Court are various Defendants’ Motions for Summary Judgment (Dkt. Nos.
899, 1095, 1098, 1099, 1100, 1101, 1104, 1106, 1107, 1111, and 1113). The Court held a
hearing on these motions on November 8, 2013. The Court ruled from the bench on motions 899,
1098, 1104, 1106, and 1113, and carried for consideration motions 1095, 1099, 1100, 1101,
1107, and 1111. This opinion memorializes and explains those motions on which the Court ruled
from the bench. The Court will rule on the remaining motions in writing at a later date.
I.

BACKGROUND
Plaintiff GeoTag, Inc. (“GeoTag”) asserts United States Patent No. 5,930,474 (“the ’474

Patent”), titled “Internet Organizer for Accessing Geographically and Topically Diverse
Information.” The patent was issued on July 27, 1999. The Court has designated the abovecaptioned case as the lead case for numerous consolidated actions involving the same patent
(Dkt. No. 380). The accused instrumentalities are web sites or mobile applications involving
geographical data. With few exceptions, these fall into four broad categories: online “yellow
1

pages”-type sites that are designed to help consumers locate businesses near a geographical area;
store-locator functionalities on the web sites of brick-and-mortar retailers; mobile store locator
“apps”; and job locator sites that help potential applicants find nearby employment.
The Court held a Markman hearing to interpret the claims of the ’474 patent on February
12, 2013. The Court released an Order with its claim constructions on February 25, 2013 (Dkt.
No. 472).
II. LEGAL STANDARDS
Summary judgment is proper if the pleadings and evidence show that “there is no genuine
issue as to any material fact and the moving party is entitled to judgment as a matter of law.”
Fed. R. Civ. P. 56(c); Celotex Corp. v. Catrett, 477 U.S. 317, 322-23 (1986); Anderson v. Liberty
Lobby, Inc., 477 U.S. 242, 248-55 (1986). A “genuine issue” is an issue that “can be resolved
only by a finder of fact because . . . [it] . . . may reasonably be resolved in favor of either party.”
Anderson, 477 U.S. at 248. When the summary judgment movants demonstrate the absence of a
genuine dispute over any material fact, the burden shifts to the non-movant to show there is a
genuine factual issue for trial. Celotex, 477 U.S. at 323-24. The Court must draw all reasonable
inferences in favor of the non-moving party. Monarch Knitting Machinery Corp. v. Sulzer
Morat GmbH, 139 F.3d 877, 880 (Fed. Cir. 1998).
A determination of infringement requires a two-step analysis. Gentry Gallery, Inc. v.
Berkline Corp., 134 F.3d 1473, 1476 (Fed. Cir. 1998). “First, the claim must be properly
construed to determine its scope and meaning. Second, the claim as properly construed must be
compared to the accused device or process.” Id. (quoting Carroll Touch, Inc. v. Electro Mech.
Sys., Inc., 15 F.3d 1573, 1576 (Fed. Cir. 1993)). “Literal infringement requires that every

2

limitation of the patent claim be found in the accused device.” Gen. Mills, Inc. v. Hunt-Wesson,
Inc., 103 F.3d 978, 981 (Fed. Cir. 1997).
III. MOTION 899
In Defendants’ Motion for Summary Judgment of Non-Infringement for Defendants Who
Provide Access to a Third Party Locator System Which Is Accused of Infringment (Dkt. No.
899), the moving defendants argue that they are entitled to summary judgment because Plaintiff
has no evidence of infringement. Each of these Defendants’ accused locators are owned and
controlled by a third party vendor, from whom they allege GeoTag has not obtained source code.
Furthermore, moving Defendants argue that GeoTag has not served them with infringement
contentions referencing source code for any of their accused locators, and that GeoTag has not
served an infringement expert report for any accused locator system. Finally, after the Court
granted moving defendants permission to file this Motion, GeoTag filed a “Notice of NonAssertion of Claims Against Job Locators” (Dkt. No. 873), notifying the Court that it will “no
longer assert in this case the claims that GeoTag has previously asserted against Accused
Instrumentalities comprising ‘job locators’ or ‘career locators.’”
In response, GeoTag argues that the moving defendants should be treated in two
categories. First, with respect to defendants seeking summary judgment of non-infringement
with respect to their job locators, GeoTag argues that its Notice of Non-Assertion moots the case
with respect to those locators, effectively making the Notice function as a voluntary dismissal
without prejudice. Second, GeoTag argues that a triable issue of material fact exists with respect
to the remaining accused instrumentalities. 1

1

GeoTag also notes that some moving Defendants have since settled their cases. Obviously, this Order does not
affect moving defendants’ whose cases have been dismissed. Because the Court announced this ruling from the
bench and all parties should be aware of it for purposes of negotiating settlements, this Order does apply to any

3

A. Job Locators
With respect to accused job locators, GeoTag does not contend that it has enough
evidence of infringement to establish a triable question of material fact. Instead, it argues that its
notice of non-assertion dismisses the suit with respect to the non-asserted instrumentalities.
However, a “Notice of Non-Assertion” is not one of the avenues for dismissal outlined by
Federal Rule of Civil Procedure 41(a). That rule states that a plaintiff may dismiss a case without
prejudice “before the opposing party serves either an answer or a motion for summary judgment”
or after filing “a stipulation of dismissal signed by all parties who have appeared.” Id. If a
defendant has answered the Complaint and has not stipulated to dismissal, “an action may be
dismissed at the plaintiff’s request only by court order, on terms that the court considers proper.”
Id.
Requiring Court approval for dismissals after a defendant has answered serves the
interests of justice. If plaintiffs could proceed with a case for months or even, as in this case,
years, forcing defendants to incur legal fees, and then simply dismiss a suit at his or her option
without prejudice to the case, then rogue plaintiffs could simply sue until it became clear that
they were about to lose a case, dismiss the case, and then file it again, subjecting defendants to
the same cycle of expense without ever prejudicing their legal interests.
When a plaintiff files suit in court, it manifests not only a claim of right, but a willingness
to prove the validity of its claims and be bound by the result of the legal process. If, despite all
the available tools provided by the law, Plaintiff cannot muster sufficient evidence to uphold a
jury verdict in its favor, then moving defendants are entitled to final legal disposition of
Plaintiff’s claims. Here, they as for, and are entitled to, summary judgment of non-infringement

parties whose cases have been stayed pending settlement. However, the Court expects those cases to continue to file
timely dismissal papers reflecting their agreed settlements.

4

with respect to the store locators mentioned in GeoTag’s Notice of Non-Assertion (Dkt. No. 8731).
B. Mobile Locators
Defendants also argue that GeoTag lacks sufficient evidence to prove infringement
against several mobile store locators. Defendants allege that GeoTag did not review source code
for these mobile locators, nor provide infringement contentions referencing source code.
GeoTag, in contrast, asserts that it did serve claim charts on the accused instrumentalities, and
discuss them in its expert reports. It argues that the accused instrumentalities are merely the
accused web store locators accessed through mobile browsers, rather than separate mobile
platforms for store locators, and that these locators share source code with web locators analyzed
in detail. Defendants argue in reply that the accused instrumentalities are actually separate
mobile applications or special mobile versions of web sites, whose code GeoTag has not
reviewed.
Having considered the briefing and oral arguments closely, the Court holds that
Defendants Aeropostale, Inc., Crabtree 7 Evelyn, Ltd., Dick’s Sporting Goods, Inc., General
Nutrition Corporation and General Nutrition Centers, Inc., Geoffrey, LLC, Toys “R” US Inc.,
Toysrus.com, LLC, Toys “R” US-Delaware, Inc., Babiesrus.com, LLC, Quiksilver, Inc., and The
Sports Authority, Inc. have not met their burden of establishing that no triable issue of material
fact exists. The evidence produced to support their claims suggests that Plaintiff will have a
difficult time proving its case; however, it does not establish conclusively that GeoTag cannot
prove that the accused instrumentalities share common infringing mechanisms with the moving
defendants’ website locators.

5

IV. MOTION 1098
Defendants argue in their Motion for Summary Judgment of Invalidity Based on Lack of
Written Description (Dkt. No. 1098) that the specification of the ’474 patent does not
demonstrate possession of the “dynamic replication” limitation of the patent’s claims. The Court
has construed “dynamically replicated” to mean “automatically copied or inherited, within the
database, at the time needed rather than at a time decided or established in advance” (Dkt. No.
472, at 25). Defendants argue that the specification describes only the dynamic generation of
displays, rather than replication within the database.
35 U.S.C. § 112 requires that the specification of a patent must contain a written
description of the invention. This description must “‘clearly allow persons of ordinary skill in the
art to recognize that [the inventor] invented what is claimed.’ . . . In other words, the test for
sufficiency is whether the disclosure of the application relied upon reasonably conveys to those
skilled in the art that the inventor had possession of the claimed subject matter as of the filing
date.” Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
(quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562-63 (Fed. Cir. 1991)) (brackets in
original). The written description requirement presents an issue of fact. Id. Because of the
presumption of validity that attaches to an issued patent, invalidity for lack of written description
must be proven by clear and convincing evidence. Id. at 1354.
As evidence for the proposition that the patent’s written description would not
demonstrate possession to a person of ordinary skill in the art, Defendants present only attorney
argument that the patent describes only dynamic generation of displays. Though the Court is not
prepared to rule that an expert declaration is required for summary judgment of this type, in this
case Defendants have not carried their burden. The Court’s Markman Order cited to passages in
the specification discussing dynamic creation of HTML documents in a user’s browser (Dkt. No.
6

472, at 23). It also specifically rejected an interpretation of the term “database” that excluded a
database integrated with a user’s browser. Id. at 11. Defendants’ argument, in the absence of
expert testimony, is that it is logically impossible for the specification’s discussion of the
dynamic creation of HTML pages to be replication “within the database.” The Court’s Markman
Order, however, undercuts this argument, at least sufficiently to find that Defendants have not
carried their burden of proving the absence of a triable issue of material fact.
Defendants also argue that the “automatically inherited” language of the patent cannot
prove possession of dynamic replication because the automatic inheritance described happens
during data entry. Though Defendants cite to the specification for this proposition, it is hardly
self-evident from the patent whether a person of ordinary skill in the art would understand the
automatic inheritance referred to in the specification as happening “when needed” rather than “in
advance.” See ’454 Patent at 19:29-36; 23: 14-51.
Therefore, Defendants have failed to establish that no triable issue of material fact exists
as to whether the ’454 patent adequately demonstrates possession of the invention.
V. MOTION 1104
As confirmed by agreement of the parties, The Microsoft Customers’ Motion for
Summary Judgment of Non-Infringement (Dkt. No. 1104), is moot because the moving
defendants have all reached settlement with Plaintiff GeoTag.
VI. MOTION 1106
In Defendants’ Motion for Summary Judgment of Non-Infringement Based on Disavowal
of the Job Locator Functionality (Dkt. No. 1106), Defendants argue that the intrinsic record
demonstrates that the patentee of the ’474 patent disavowed any claim scope that might cover job

7

locator systems, and that their accused locators (those that remain after the disposition of Motion
899, supra) fall within the scope of GeoTag’s disavowal.
The claims of a patent, rather than the specification, determine the boundaries of the
invention. See Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005). “[A]n inventor may
use the specification to intentionally disclaim or disavow the broad scope of a claim,” but “this
intention must be clear.” Conoco, Inc. v. Energy & Environmental Intern., L.C., 460 F.3d 1349,
1357-58 (Fed. Cir. 2006).
It is true that the specification of the ’474 patent distinguishes “systems which have
geographically differentiated listings for the same topic (such as job search databases which
include information about jobs in different cities), since these listings are primarily related to the
topic (e.g., jobs), not to the geographical area.” ’474 Patent, 5:61-65. This distinction is not a
clear, intentional disavowal of all job locator systems, however. Rather, it is an illustration of a
preferred embodiment of the invention that organizes information primarily by geographical area
rather than by topic.
Even if the Court were to find an intentional disavowal, it would be a very narrow one.
By its terms the specification distinguishes only job locators whose listings “are primarily related
to the topic (e.g., jobs), not to the geographical area.” Whether the accused locators fell within
these confines would be a matter of fact for the jury to decide, and the moving defendants would
not be entitled to summary judgment of non-infringement.
Defendants are thus not entitled to summary judgment of non-infringement based on the
patentee’s alleged disavowal of all job locator functionality.

8

VII. MOTION 1113
Finally, Defendants’ Motion for Summary Judgment Related to Laches (Dkt. No. 1113)
asks the Court to grant summary judgment based on the moving defendants’ assertion that
Plaintiff has unreasonably delayed bringing suit, thus prejudicing the adverse party.
In order to prevail on a defense of laches, the defendant must prove that “(1) the Plaintiff
delayed filing suit for an unreasonable and inexcusable length of time from the time the plaintiff
knew or reasonably should have known of its claim against the defendant, and (2) the delay
operated to the prejudice or injury of the defendant.” A.C. Aukerman Co. v. R.L. Chaides Const.
Co., 960 F.2d 1010, 1032 (Fed. Cir. 1992). When six years of delay have elapsed, unreasonable
delay and material prejudice are both presumed. See Wanlass v. General Elec. Co., 148 F.3d
1334, 1337 (Fed. Cir. 1998).
The presumptions of unreasonable delay and prejudice are, however, rebuttable.
Defendants produce evidence that GeoTag knew or should have known of their accused
instrumentalities more than six years before filing the instant lawsuit. GeoTag, for its part, offers
evidence of circumstances which might excuse the delay. The Court finds that material facts
concerning Defendants’ laches defense are disputed and require further investigation. If
necessary, the Court will make a full factual inquiry into Defendants’ laches claims at a later
date. For the present, moving defendants have not presented sufficient evidence to show that they
are entitled to summary judgment of laches without further factfinding.
VII. CONCLUSION
In accordance with the opinion above, Defendants’ Motion for Summary Judgment of
Non-Infringement for Defendants Who Provide Access to a Third Party Locator System Which
Is Accused of Infringement (Dkt. No. 899) is GRANTED with respect to the accused

9

instrumentalities named in Plaintiff’s Notice of Non-Assertion (Dkt. No. 873) and DENIED with
respect to all other accused instrumentalities.
Defendants’ Motion for Summary Judgment of Invalidity Based on Lack of Written
Description (Dkt. No. 1098) is DENIED.
The Microsoft Customers’ Motion for Summary Judgment of Non-Infringement (Dkt.
No. 1104) is DENIED AS MOOT.
Defendants’ Motion for Summary Judgment of Non-Infringement Based on Disavowal of
the Job Locator Functionality (Dkt. No. 1106) is DENIED.
Defendants’ Motion for Summary Judgment Related to Laches (Dkt. No. 1113) is
DENIED.
So Ordered and Signed on this

Jan 13, 2014

10