Free Redacted Document - District Court of Delaware - Delaware

Case 1:04-cv-00360-JJF Document 201 -2 Filed 07/25/2006 Pagelj of 4
age 2 of 5
\/NELEW
·..»’
zoos we zsaaias Page 1
zoos we zscavss (D.Del.Â¥
For opinion see 2006 WL 47066, 2006 WL 38918, 405 F.Supp.2d 4TS, 2005 WL 3455555
Motions, Pleadings and riiings
United States Qistrict Court, D. Delaware.
IMM, INC., Plaintiff,
v.
LE§DINGTREE, INC., Defendant.
No. 03-1067-SLR.
September 6, 2005.
imx, Inc.'s Response to Lendingtree Llc'S Citation of Subsequent Authority
Of Counsel. John Allcock, M. Elizabeth Day, William G. Goldman, Christine K.
Corbett, Dia Piper Rudnick Gray Cary Us LLP, 2000 University Avenue, East Palo
Alto, CA 94303-2248, Tel: {650) 833-2000, Richard L. Horwitz (#2246}, David E.
Moore (#3983), Potter Anderson a Corroon Lip, Hercules Plaza, 6th Floor, 1313 N.
Market Street, P.O. Box 951, Wilmington, DE 19s99·0951, Tel: {302) 9B4~5G00,
rhorwitzepotteranderson.com, dmoors @potteranderson.com, Attorneys for Plaintiff
IMX, Inc.
I. INTRODUCTION
Contrary to LendingTree, LLC's (”LendingTree") representations, Soverain Soitware
LLC v. Amazon, Inc., 2005 WL 2003504 (E.D. Tex. August B, 2005) {Exhibit A to
Lending?ree’e Motion}, a non—binding case from the Eastern District of Texas, is
not on all fours with the present action. Indeed, Soverain is distinguishable from
the present action on at least two grounds. First, unlike the plaintiff in
soverain, IMM, Enc.‘s ("IMX"} patented invention is not its website and,
therefore, Imx had no duty to mark its website with the *947 patent. {FNl} second,
assuming, arguendo, that IMM had a duty to mark its website, unlike the
plaintiff*s licensees in Soverain, IMX did mark its website with multiple
references to the *947 patent. Therefore, to the extent applicable, the court’s
reasoning in Soverain creates several factual issues that require this Court to
deny LendingTree*s motion for partie} summary judgment and allow the trier of fact
to determine the sufficiency of IMX's marking.
FN;. United States Patent No. 5,995,947.
II. ARGUMENT
A. IM ’s Website Does Not Practice the Patented Invention and, Therefore, EMX Has
NO Duty To Mark.
LendingTree continues to characterize IMX's "patented product" as software.
B 2006 Thomsonfwest. No Claim to Orig. U.S. Govt. Works.
https:/{web2swestlaw.com/'pnntfprintstreaxn.aspx'?rs=WLW6.06&p:H=H'I`MI..E&tix¤wtop&... 7/},2/2006

Case 1 :04-cv-00360-JJF Document 201 -2 Filed 07/25/2006 Page}; of 4
_ age 3 of 5
2005 WL 2663755 Page 2
2005 KL 2603755 {¤.Del.)
However, unlike the software at iaeue in Soverain, the ”IMX Exchange" is a
distributed database system that allows remote client devices, through
communication with e transaction server, to poet loan profiles to the database.
Search those loan profiles, submit bids on those loan profiles and accept or
reject those bids. IMM'e website ie merely the way in which parties to a loan
transaction obtain a service which IME provides through the use of its patented
method and apparatus. In other words, lMX's website doee not represent a patented
article made, offered for sale or sold by EMX.
In contrast, each of the three patents—in-euitin Soverain required the use of a
webpage. See e.g., Claim 1 of United Staten ?atent No. 5,708,750 which requires
the use of a "hypertext transfer protocol; Claim 32 of United States Patent No.
$,715,314 which requires a “uniform resource locator," and Claim 10 of United
States ratent No. 5,909,492 which requires a “hypertext link." Ae briefly
deecribed in the Soverain opinion, the *780 patent relates to methods for
controlling and monitoring access to network servers through the use of a eession
identifier which allows web servers to recognize and service multiple requests
without repeated authentication. The specification of the *780 patent states that
"the present invention ie applicable to processing requests in an HTTP (Hypertext
Transfer Protocol) environment auch as the world wide Web {Web)." See Exhibit A
hereto, *780 patent, col. 3, lines 9-21. The *492 {Exhibit B hereto} and the *314
{Exhibit C hereto) patents describe a network based sales system that includes a
buyer computer, a merchant computer, a payment computer and a virtual shopping
cart application These patents allow for item advertisement, selection and payment
to be processed over the Snternet through the une of a universal resource locator
or URL and hypertext traneter protocol—epeci£ic messages. See Exhibits A—c.
he theee descriptions confirm, the inventions claimed in the Soverain patents
exist by virtue of a web site implementation of the claimed features ii.e.,
auniform resource locator," “hypertext Eink,” ”hypertext transfer protocol,“
”hypertext pagee,” and ”pnb1ic packet switched computer network.”} IMX'e claimed
invention, on the other hand, can be implemented outside of a web page/Internet
context. Indééd, as explained in ite opposition brief, IH 'e claimed apparatus is
a database of pending loan applications, a transaction server and the
communications necessary to allow a party to search and/or modify the claimed
database of pending loan applications. Given that EMM has never made, offered for
gale or sold the claimed apparatus, IMX has no duty to mark.
B. EMR Marked Its Website.
Assuming, arguendo, that IMX had e duty to mark its website, IM hea complied
with the marking statute. In Sovemin, the court granted, in part, the defendant'e
motion for partial eum ary judgment based on the fact that the plaintiff failed to
come forward with evidence that its licensees marked their websites. Id at *4.
Here, IMX has marked ite website.
Indeed, since 2000, any visitor to IMm*s website has the option to click on the
“About Us" section from the eplash page as illustrated below {Declaration of
Ranjit Mavinkurve In $upp. of IMX'e Response to LendingTree'e Citation of
subsequent Authority (“Mavinkurve Decl."), 11 2-4.);
° 2906 Thomeonfweet. No Claim to Orlg. U.S. Govt. works.
https:}/web2.west1aw.com/prinL'printstrem*n.aspx`?rs=WLW6.06&prii=HTMLE&ii1=_top&... ’7/12/2006

Case 1:04-cv-00360-JJF Document 201-2 Filed 07/25/2006 Page i; of?
__ age of 5
2005 wt zsoavss PBQB 3
2005 WL 2603755 {D.Del.§
TABULAR OH GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
Once a visitor clicks on the "About Us" link, on the left hand side of the
“About Us" page ie a link to "?atent,” which is iilustrated beiow:
TABULAR OR GRAPHIC MATEREAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
once a visitor clicks on the "Pate¤t" link, the visitor ia presented with a
discussion of the *947 patent, as well as link to the press release regarding the
•9¢? patent and a PQF copy of the actual text oi the '947 patent. (Mavinkurve
Dec}., ii 2~4.) A screen shot of the “Patents" webpage on IM¤’e website is
illustrated bel¢w=
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS PGINT IS NOT DISPLAYABLE
Additionally, throughout the IMI website, IMM makes several references to
"TMx•spatented pricing technology." (emphasis added}.
IMM submits that a press release reiating to the '947 patent and a link to the
actual text of the *947 patent in the "About Us" section of its website is
sufficient to comply with the marking statute. Indeed, in reaching its decision
that a webpage could be marked, the court in Soverain relied on the fact that the
original owner of the patents— in~¤uit required one of its licensees to include a
pabént mark identifying the patent in ite website's legal notices section. Id. at
*3. Here, IMX has done more than just identify the patent. IMM has includeé a link
to the actual text of the *947 patent and to the press release announcing the
issuance of the *947 patent.
LendingTree does not - because it cannot · cite any case law that éiscusses
whether marking an internet website with a discussion of the patent and a link to
a PDF copy of the patent is sufficient under the marking statute. To that and,
whether or not auch marking is sufficient pursuant to 35 U.S.C. S 2B7{a) is a
question that should be presented to the jury.
Iv. CONCLUSION
As ZMX has put forth evidence that it had no duty to mark, partial summary
judgment iimiting damages should be denied. However, if this Court finds that IMX
did have a duty to mark, IMM has put forth sufficient evidence that it satisfied
the marking requirement of Section § 2=7{a). Under either scenario, LendingTree*e
motion for partial summary judgment on damages should be denied.
Notions, Plaadings and Filings (Back to top)
• 2006 WL 1182408 (Trial Motion, Memorandum and Affidavit) Lendingtree*s Reply
Brief in Support of its Inequitable Conduct Defense and Counterciaim (Mar. 20,
20c6)original Image of this Document {PDF)
• 2006 WL 1182409 (Trio; Motion, Memorandum and Affidavit) Lendingtree, LLC':
Reply Brief in Support of its Renewed Motion for Judgment as A Matter of Law Or,
in the Alternative, for A New Trial (Mex, 20, 2006)Original Image of this Document
(PDF)
” 2006 Thomson/west. No Claim to Orig. U.S. Govt. works.
httpszf/web2.westlawtom/printlprintstremn.aspx'?rs¤WLW6.06&prfi=HTMLE&fxx=_t0p&... 7!12/2006

Case 1:04-cv-00360-JJF Document 201-2 Filed 07/25/2006 Page 6 of?
age oi`5
2005 HL 2603755 Page 4
2005 WL 2603755 (D.De1.}
• 2006 WL 1182406 {Trial Motion, Memorandum and Affidavit} IM . Inc.*e Opposition
to Lendingtree, LLC’s Opening Brief in Support of Znequitahle Conduct Defense and
Counterelaim (Mar. 8, 2006§Origina1 Image of this Document (PDF)
• 2006 WL l1B2407 (Trial Motion, Memorandum and Affidavit) Imx, Int.'e Opposition
to Lendingtree'e Motion for Judgment ae A Matter of Law (Mar. H, 2006)0rigine2
Image of this Document (?0F}
• 2006 WL S090&6 {Trial Motion, Memorandum and Affidavit) Opening Brief in
Support of Defendant Lendingtree, LLC's Inequitable Conduct Defense and
Counteroleim (Feb. 15, 2006)Original Image of this Document {PDF)
• 2006 we 819609 (Trial Motion, Memorandum and Affidavit) Lendingtree, LLC's
Opening Brief in Support of its Renewed Motion for Judgment as A Matter of Law or.
in the Alternative, for A New Trial (Feb. 15, 2006)0rigina2 Image of this Document
{pn?}
• 2005 WL 2603754 (Trial Motion, Memorandum and Affidavit) Defendant Lendingtree,
LLC‘S Citation of sunsqnent Authority Pursuant to L.R. ?.1.2(C) in Support of its
Motion fo; Partial Summary Judgment Limiting Damages Pursuant to 35 U.S.C. §
2B7{e) {Aug. 30, 2D05)Grigina1 Image of this Document with Appendix (PDF)
• 1;0acv0106v {Docket) {mov. 24, 2003)
ENE O? DGQUMENT
° 2006 Thomscnfweet. No Claim to Orig. U.S. Govt. Works.
https://wcb2.westIaw.co:n/print/;J:i11tst1*ea1n.aspx?rs=WLW6.06&prt’t=HTMLI3&ii1=“top&... 7/12/2006

Case 1:04-cv-00360-JJF

Document 201-2

Filed 07/25/2006

Page 1 of 4

Case 1:04-cv-00360-JJF

Document 201-2

Filed 07/25/2006

Page 2 of 4

Case 1:04-cv-00360-JJF

Document 201-2

Filed 07/25/2006

Page 3 of 4

Case 1:04-cv-00360-JJF

Document 201-2

Filed 07/25/2006

Page 4 of 4