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Speedtrack, Inc. v. Amazon.Com, Inc.

United States District Court, N.D. California

November 21, 2017

SPEEDTRACK, INC., Plaintiff,
v.
AMAZON.COM, INC.; BARNES & NOBLE BOOKSELLERS, INC.; J & R ELECTRONICS, INC.; DELL, INC.; BEST BUY CO.; BESTBUY.COM, LLC; SYSTEMAX, INC.; NA TECH DIRECT, INC.; POCAHONTAS CORP.; SYX NORTH AMERICAN TECH HOLDINGS LLC; NA TECH COMPUTER SUPPLIES INC.; OFFICEMAX, INC.; MACY'S, INC.; MACYS.COM, LLC; OVERSTOCK.COM, INC.; RECREATIONAL EQUIPMENT, INC.; EVINE LIVE, INC.; B&H FOTO & ELECTRONICS CORP.; HEWLETT-PACKARD CO.; RETAIL CONVERGENCE.COM, LP DBA SMARTBARGAINS.COM, Defendants.

          ORDER GRANTING IN PART AND DENYING IN PART SPEEDTRACK'S MOTION FOR PARTIAL SUMMARY JUDGMENT Re: Dkt. No. 268

          JEFFREY S. WHITE, United States District Judge

         Now before the Court is the motion filed by plaintiff SpeedTrack, Inc. (“SpeedTrack” or “Plaintiff”) for partial summary judgment. SpeedTrack contends it is not precluded by collateral estoppel or prosecution history estoppel from asserting its infringement claims. Having considered the parties' papers, relevant legal authority, and the record in this case, the Court HEREBY GRANTS IN PART and DENIES IN PART SpeedTrack's motion.

         BACKGROUND

         On September 23, 2009, SpeedTrack brought this action for infringement of U.S. Patent No. 5, 544, 360 (“the '360 Patent”). SpeedTrack's Second Amended Complaint, filed November 1, 2017, asserts claims against: Amazon.com, Inc.; Barnes & Noble Booksellers, Inc.[1]; J & R Electronics, Inc.; Dell Inc.; Best Buy Co.; BestBuy.com, LLC; Systemax, Inc.; Officemax, Inc.; Macy's, Inc.; Macys.com, LLC[2]; Overstock.com, Inc.; Recreational Equipment, Inc.; EVINE Live, Inc.[3]; B&H Foto & Electronics Corp.; Hewlett-Packard Co.; Retail Convergence.com, LP dba Smartbargains.com[4]; and Systemax, Inc. subsidiaries, NA Tech Direct, Inc.; Pocahontas Corp.; SYX North American Tech. Holdings LLC; and NA Tech Computer Supplies Inc. (collectively “Defendants”). (See Dkt. Nos. 280, 283, Stipulation and Second Amended Complaint.)

         The '360 Patent is directed at the problem in prior art data storage systems in which user search terms, possibly mistyped or misspelled, could fail to yield results. SpeedTrack has asserted infringement of three independent claims-two method claims (Claims 1 and 20) and one system claim (Claim 15)-arising from Defendants' Internet retail websites. In general, the claims require three components: (1) a “category description table, ” (2) a “file information directory, ” and (3) a “search filter.” (See '360 Patent, Claims 1, 20.) The “category description table” contains “category descriptions, ” each comprising a “descriptive name, ” and having “no hierarchical relationship with such list or each other.” (See id., Claim 1.) The “file information directory” comprises entries corresponding to stored files, where each entry has “a unique file identifier for the corresponding file, and a set of category descriptions selected from the category descriptions table.” (See id.) Finally, the “search filter” allows the user to access the stored files with a set category descriptions, wherein each set is guaranteed to have at least one matching entry in the file information directory. (See id.) In other words, the claimed invention is a method and system for accessing stored files, in which the user can only search for terms (i.e., category descriptions) that have been associated with existing files (i.e., entries in the file information directory). (See id.)

         SpeedTrack now moves for partial summary judgment on two affirmative defenses: collateral estoppel and prosecution history estoppel. The Court shall address additional facts as necessary in the remainder of this Order.

         ANALYSIS

         A. Legal Standard.

         “A party may move for summary judgment, identifying each claim or defense . . . on which summary judgment is sought.” Fed.R.Civ.P. 56(a). A principal purpose of the summary judgment procedure is to identify and dispose of factually unsupported claims. Celotex Corp. v. Catrett, 477 U.S. 317, 323-24 (1986). Summary judgment, or partial summary judgment, is proper “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). “In considering a motion for summary judgment, the court may not weigh the evidence or make credibility determinations, and is required to draw all inferences in a light most favorable to the non-moving party.” Freeman v. Arpaio, 125 F.3d 732, 735 (9th Cir. 1997), abrogated on other grounds by Shakur v. Schriro, 514 F.3d 878, 884-85 (9th Cir. 2008).

         The party moving for summary judgment bears the initial burden of identifying those portions of the pleadings, discovery, and affidavits that demonstrate the absence of a genuine issue of material fact. Celotex, 477 U.S. at 323; see also Fed. R. Civ. P. 56(c). An issue of fact is “genuine” only if there is sufficient evidence for a reasonable fact finder to find for the non-moving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248-49 (1986). A fact is “material” if it may affect the outcome of the case. Id. at 248. If the party moving for summary judgment does not have the ultimate burden of persuasion at trial, that party must produce evidence which either negates an essential element of the non-moving party's claims or that party must show that the non-moving party does not have enough evidence of an essential element to carry its ultimate burden of persuasion at trial. Nissan Fire & Marine Ins. Co. v. Fritz Cos., 210 F.3d 1099, 1102 (9th Cir. 2000).

         Once the moving party meets its initial burden, the non-moving party must “identify with reasonable particularity the evidence that precludes summary judgment.” Keenan v. Allan, 91 F.3d 1275, 1279 (9th Cir. 1996) (quoting Richards v. Combined Ins. Co., 55 F.3d 247, 251 (7th Cir. 1995). It is not the Court's task “to scour the record in search of a genuine issue of triable fact.” Id.; see also Fed. R. Civ. P. 56(c)(3) (“The court need consider only the cited materials, but it may consider other materials in the record.”). If the non-moving party fails to point to evidence precluding summary judgment, the moving party is entitled to judgment as a matter of law. Celotex, 477 U.S. at 323.

         B. The Court Grants in Part and Denies in Part the Motion with Respect to Collateral Estoppel.

         SpeedTrack argues that it is not precluded by collateral estoppel from asserting infringement, literally or under the doctrine of equivalents. Regional circuit law governs general collateral estoppel principles. Aspex Eyewear, Inc. v. Zenni Optical Inc., 713 F.3d 1377, 1380 (Fed. Cir. 2013). The Ninth Circuit's prerequisites for offensive non-mutual collateral estoppel are whether:

(1) there was a full and fair opportunity to litigate the identical issue in the prior action; (2) the issue was actually litigated in the prior action; (3) the issue was decided in a final judgment; and (4) the party against whom collateral estoppel is asserted was a party or in privity with a party in the prior action.

Collins v. D.R. Horton, Inc., 505 F.3d 874, 882 n.8 (9th Cir. 2007) (quoting Syverson v. IBM, 472 F.3d 1072, 1078 (9th Cir. 2007)).

         1. The Prior Law Suits.

         SpeedTrack asserted the '360 Patent in two prior suits against different defendants. In the first action, SpeedTrack sued Walmart.com USA, LLC (“Walmart”) for infringement based on Walmart's retail website. SpeedTrack, Inc. v. Wal-Mart Stores, Inc., 2008 U.S. Dist. LEXIS 120644 (N.D. Cal. June 19, 2008). Specifically, SpeedTrack alleged infringement of independent claims 1 and 20, and dependent claims 2-4, 7, 11-14, and 21, all of which are method claims. Id. at *5. Endeca Technologies, Inc. (“Endeca”) intervened as the company that had provided Walmart the software at issue. Id. at *3-4. Among other terms, the court construed “category description, ” as used in both independent claims 1 and 20, to mean “information that includes a name that is descriptive of something about a stored file.” Id. at *46.

         The parties later raised new arguments, which caused the court to request additional briefing on a revised construction of the term “category description.” SpeedTrack, Inc. v. Wal-Mart Stores, Inc., 2012 WL 581338, at *7 (N.D. Cal. Feb. 22, 2012). SpeedTrack argued that the term should to be construed to mean “information that is descriptive of something about a stored file, ” while defendants advocated for the original construction. Id. The core dispute was “whether ‘category description, ' as used in the claim language, requires ‘information' that contains an alphabetic descriptive name, or whether it requires ‘information' that may include an alphabetic descriptive name or numeric identifiers.'” Id. The court held that its earlier construction of “category description” was correct, and within that construction, a “name that is descriptive of something about a stored file” required a solely alphabetic name. Id. at *7-8. The parties did not dispute that Endeca's “file information directory” had only numerical identifiers, rather than alphabetic names. Id. at *10. Accordingly, the court granted summary judgment of non-infringement, because Endeca's system could not meet the “category description” limitation. Id.

         The Federal Circuit affirmed the district court's grant of non-infringement, and its construction of “category description” as “information that includes a name that is descriptive of something about a stored file, ” where “‘name, ' as used in the claim language, requires ‘information' that must include, but is not limited to, a description in alphabetic form.” SpeedTrack, Inc. v. Endeca Techs, Inc., 624 Fed. App'x 651, 656-57 (Fed. Cir. 2013).

         In the second action, SpeedTrack sued a different set of defendants, all of whom used Endeca's system. SpeedTrack, Inc. v. Office Depot, Inc., 2014 WL 1813292, at *1-2 (N.D. Cal. May 6, 2014). The court held that SpeedTrack's infringement claims under the doctrine of equivalents were not barred by collateral estoppel, because the issue was never actually litigated in Wal-Mart. Id. at *7. The court still granted defendants' motion for summary judgment, however, as it found SpeedTrack's infringement claims barred in part by res judicata, and in whole by the Kessler doctrine. Id. at *9. The Federal Circuit affirmed solely on the basis of the Kessler doctrine. SpeedTrack, Inc. v. Office Depot, Inc., 791 F.3d 1317 (Fed. Cir. 2015).

         2. The Previously Asserted Claims (Claims 1, 2, 7, 11, 20, 21). ...


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