epicRealm, Licensing, LLC v. Autoflex Leasing, Inc., --- F.Supp.2d ----, 2007 WL 1828014(E.D.Tex. Jun 26, 2007) (NO. 205CV163, 205CV356)
Judge: David Folsom/Caroline Craven
Holding: Defendant's Motion for Summary Judgment of No Infringement GRANTED
In her Report and Recommendation dated February 21, 2007, Judge Craven recommended Macerich's Motion for Summary Judgment of No Infringement be granted and that Plaintiff's claims against Macerich be dismissed with prejudice. Specifically, regarding direct infringement, she found no genuine issues of material fact regarding whether Macerich performs any of the steps of the claimed methods. Therefore, she concluded Macerich could not be liable for direct infringement of those claims as a matter of law. Regarding indirect infringement (inducing infringement), she found insufficient evidence to demonstrate that Macerich had specific intent to cause the acts which constitute the infringement. Judge Craven further found there were no genuine disputes of material fact on the issue of whether Macerich intended to induce infringement. Therefore, she concluded Macerich could not be liable for active inducement as a matter of law.
Plaintiff raised three primary objections to Judge Craven's Report and Recommendation. First, Plaintiff asserted that Judge Craven's direct infringement analysis improperly applied the statutory mandate of 35 U.S.C. § 271(a) by focusing only on whether Macerich directed or controlled its web hosting services provider - Red 5 Interactive, Inc. - in making one of the infringing systems named in Plaintiff's Preliminary Infringement Contentions (“PICs”)-the system including Apache and Tomcat software. According to Plaintiff, making the software is only one way to infringe Plaintiff's patents under 35 U.S.C. § 271(a), and Macerich is also liable for infringement by using the infringing systems and methods. Plaintiff argues the Magistrate Judge's analysis ignored evidence showing that Macerich used the infringing combination of Apache and Tomcat software.
Second, Plaintiff claimed that Judge Craven incorrectly required Plaintiff to produce evidence that Macerich directed Red 5 to “customize” the infringing combination of Apache and Tomcat software. According to Plaintiff, its PICs accuse Macerich of infringement by employing a system that used an Apache web server in combination with a Tomcat page server, and neither Plaintiff's patents nor its PICs require that Macerich “customize” the Apache/Tomcat combination. Again, Plaintiff argues the use of the combination, by itself, is sufficient for infringement.
Third, Plaintiff claimed that Judge Craven's analysis of infringement by inducement improperly applied the statutory mandate of 35 U.S.C. § 271(b) by again focusing only on whether Macerich induced Red 5 in making the infringing system. Plaintiff claimed that the analysis did not consider evidence that Macerich induced web patrons to use the allegedly infringing combination of Apache and Tomcat software when browsing Macerich's websites.
On de novo review, Judge Folsom first observed that the Plaintiff in its objections attempted to raise new factual and legal issues by putting forth "entirely new" arguments that he held had never before been briefed. "The Fifth Circuit has held that issues raised for the first time in objections to a Report and Recommendation of a magistrate judge are not properly before the district judge," he wrote. "Thus, the Court is under no obligation to address the arguments raised for the first time in Plaintiff's objections." However, Judge Folsom considered the new arguments anyway, and found them to be without merit.