Move, Inc. v. Real Estate Alliance Ltd.

• Decision Date: 01 December 2016
• Docket Number: Case No. CV 07cv–02185–GHK (AJWx)
• Citation: 221 F.Supp.3d 1149
• Parties: MOVE, INC., et al. v. REAL ESTATE ALLIANCE LTD., et al.
• Court: U.S. District Court — Central District of California

221 F.Supp.3d 1149

MOVE, INC., et al.

v.REAL ESTATE ALLIANCE LTD., et al.

Case No. CV 07cv–02185–GHK (AJWx)

United States District Court, C.D. California.

Signed December 1, 2016

Attorneys Present for Plaintiffs: None

Attorneys Present for Defendants: NoneProceedings: (In Chambers) Order re: Plaintiffs' 7/15/2016 Motion for Summary Judgment (Doc. 572), Plaintiffs' 10/18/2011 Motion for Summary Judgment (Doc. 475), and Defendants' 10/18/2011 Motion for Summary Judgment (Doc. 474)

The Honorable GEORGE H. KING, U.S. DISTRICT JUDGE

In about four months, this case will be ten years old. Because life is short and this case has already taken up too much of it, we are doing our best to move this case forward. On May 16, 2016, we agreed to resolve all outstanding summary judgment issues, even though these issues will be rendered moot if our April 25, 2016 order on divided direct infringement is affirmed on appeal. Resolving these issues now is the most expeditious manner of proceeding because it will allow for a single appeal to the Federal Circuit. We have considered the parties' joint brief on Plaintiffs' July 15, 2016 Motion for Summary Judgment (Doc. 572), the joint brief on the December 12, 2011 Summary Judgment Motions (Doc. 476), and the portions of the record cited by the parties. We deem this matter appropriate for resolution without oral argument. L.R. 7–15. Accordingly, we rule as follows:

I. Background

On July 16, 1991, Defendant Real Estate Alliance Ltd. ("REAL") was awarded U.S. Patent No. 5,032,989 (the " '989 Patent") for an invention by Mark A. Tornetta ("Inventor Tornetta" or "Tornetta"). The '989 Patent is a continuation-in-part patent of U.S. Patent No. 4,870,576 (the " '576 Patent"), also invented by Tornetta and also assigned to REAL. The '576 Patent has an effective filing date of March 19, 1986; the '989 Patent has an effective filing date of April 24, 1989. Both patents have expired.

According to its Abstract, the '989 Patent describes "a method for locating available real estate properties for sale, lease or rental using a database of available properties at a central location and remote stations which use a graphic interface to select desired regions on a map of the areas of interest." Doc. 575–1 at 2. The '989 Patent contains a single independent claim, and eleven dependent claims. Id. at 23. The sole independent claim, Claim 1, recites:

A method using a computer for locating available real estate properties comprising the steps of:

creating a database of the available real estate properties;

displaying a map of a desired geographic area;

selecting a first area having boundaries within the geographic area;

zooming in on the first area of the displayed map to about the boundaries of the first area to display a higher level of detail than the displayed map;

displaying the zoomed first area;

selecting a second area having boundaries within the zoomed first area;

displaying the second area and a plurality of points within the second area, each point representing the appropriate geographic location of an available real estate property; and

identifying available real estate properties within the database which are located within the second area.

Id. at 23.

On April 3, 2007, Plaintiffs Move, Inc., National Association of Realtors, and National Association of Home Builders (collectively, "Move") filed this action seeking a declaratory judgment that the '576 Patent and the '989 Patent are invalid, unenforceable, and not infringed. Doc. 1. On January 12, 2009, Move filed its second amended complaint. Doc. 198. REAL filed an answer and asserted a counterclaim for patent infringement. Doc. 210. Move responded and asserted several affirmative defenses. Doc. 221.

On November 25, 2009, we entered our claim construction order. Doc. 419. After stipulating to a finding of non-infringement based on our construction (Doc. 426), REAL appealed to the Federal Circuit, which reversed on some points. Doc. 450 (published at Move, Inc. v. Real Estate All. Ltd. , 413 Fed.Appx. 280 (Fed. Cir. 2011) ).

On October 18, 2011, the parties filed cross-motions for summary judgment. Docs. 474, 475. Move sought summary judgment on all infringement claims, arguing that "Move did not perform all steps of the claimed method and exercised neither direction nor control over users who may have performed those steps so as to render it liable for joint infringement." Doc. 476 at 32. We agreed, and granted summary judgment for Move. Doc. 493.

REAL appealed. Doc. 501. The Federal Circuit affirmed our conclusion that Move could not be liable for direct infringement, but remanded for us to consider whether Move might be liable for induced infringement. Doc. 511 (published at Move, Inc. v. Real Estate All. Ltd. , 709 F.3d 1117 (Fed. Cir. 2013) ). Thereafter, the Supreme Court decided Limelight Networks, Inc. v. Akamai Techs., Inc. , ––– U.S. ––––, 134 S.Ct. 2111, 189 L.Ed.2d 52 (2014), holding that a party could not be liable for inducing infringement if no party directly infringed the patent. Id. at 2115. We concluded that this decision totally undermined the Federal Circuit's prior mandate, and reinstated our entry of summary judgment. Doc. 522. REAL appealed again. Doc. 529. The Federal Circuit summarily affirmed. Doc. 536. REAL petitioned for rehearing, and the Federal Circuit granted this petition, vacated its prior affirmance, and remanded the matter to us for further consideration in light of Akamai Techs., Inc. v. Limelight Networks, Inc. , 797 F.3d 1020 (Fed. Cir. 2015) (en banc). Doc. 537 at 3. In doing so, the Federal Circuit expressed "no opinion on the question of whether [REAL] has waived any allegations of divided infringement." Id.

On April 25, 2016, we held that REAL had waived the divided direct infringement argument, and reinstated our grant of summary judgment in favor of Move. Doc. 563. We asked the parties to submit a Joint Status Report, which they did. Doc. 564. Based on this report, we concluded that "resolution of the remaining summary judgment issues would be the most expeditious manner of proceeding." Doc. 565. We also agreed with Move that "resolution of any issues related to Alice Corp. Pty. Ltd. v. CLS Bank International , ––– U.S. ––––, 134 S.Ct. 2347, 189 L.Ed.2d 296 (2014)" would also be prudent. Id. We asked the parties to file a joint brief on the Alice issues, and stated that we would resolve the remaining summary judgment issues on the original briefing. Id. On July 15, 2016, the parties filed their joint brief on Alice , and Move sought summary adjudication that the '989 Patent is invalid under 35 U.S.C. § 101. Docs. 572, 573.

II. Legal Standard

We may grant summary judgment only "if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(a). "Only disputes over facts that might affect the outcome of the suit under the governing law will properly preclude the entry of summary judgment."

Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). On a motion for summary judgment, the district court's "function is not ... to weigh the evidence and determine the truth of the matter but to determine whether there is a genuine issue for trial." Id. at 249, 106 S.Ct. 2505.

The moving party bears the initial responsibility to point to the absence of any genuine issue of material fact. Celotex Corp. v. Catrett , 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). Where the nonmoving party has the burden of proof at trial, the moving party can carry its initial burden either by submitting affirmative evidence that there is not a triable, factual dispute or by demonstrating that the nonmoving party "fail[ed] to make a showing sufficient to establish the existence of an element essential to that party's case." Id. at 322, 106 S.Ct. 2548. The burden then shifts to the nonmoving party "to designate specific facts demonstrating the existence of genuine issues for trial." In re Oracle Corp. Sec. Litig. , 627 F.3d 376, 387 (9th Cir. 2010) (citing Celotex Corp. , 477 U.S. at 324, 106 S.Ct. 2548 ). This means that the evidence is such that "a jury could reasonably render a verdict in the non-moving party's favor." Id. (citing Anderson , 477 U.S. at 252, 106 S.Ct. 2505 ). "The evidence of the non-movant is to be believed, and all justifiable inferences are to be drawn in his favor." Anderson , 477 U.S. at 255, 106 S.Ct. 2505. "When the party moving for summary judgment would bear the burden of proof at trial, it must come forward with evidence which would entitle it to a directed verdict if the evidence went uncontroverted at trial." Miller v. Glenn Miller Prods., Inc. , 454 F.3d 975, 987 (9th Cir. 2006) (internal quotation marks omitted). If the moving party meets its initial burden of demonstrating that summary judgment is proper, "the nonmoving party must come forward with specific facts showing there is a genuine issue for trial." Matsushita Elec. Indus. Co. v. Zenith Radio Corp. , 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986) (emphasis deleted; internal quotation marks omitted).

In ruling on a motion for summary judgment, we apply the "substantive evidentiary standard of proof that would apply at the trial on the merits." Anderson , 477 U.S. at 252, 106 S.Ct. 2505. Patents are "presumed valid," 35 U.S.C. § 282(a), and this presumption can be overcome only by clear and convincing evidence. Eli Lilly & Co. v. Barr Labs., Inc. , 251 F.3d 955, 962 (Fed. Cir. 2001). "Thus, a moving party seeking to invalidate a patent at summary judgment must submit such clear and convincing evidence of invalidity so that no reasonable jury could find otherwise." Id." Alternatively, a moving party seeking to have a patent held not invalid at summary judgment must show that the nonmoving party, who bears the burden of proof at trial, failed to produce clear and convincing evidence on an essential element of a defense...