Judge Rakoff’s summary judgment order simplifies e-reader case against B&N

by Robins Kaplan LLP
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Adrea, LLC, v. Barnes & Noble, Inc., et al.

Case Number: 1:13-cv-04137-JSR

Judge Rakoff granted several of defendants’ summary judgment motions in Adrea’s suit alleging infringement of U.S. Patents Nos. 7,298,851 (“Electronic book security and copyright protection system”), 7,299,501 (Electronic book selection and delivery system having encryption and security features”), and 7,620,703 (“Topical service provides context information for a home network”). The patents generally claim systems and methods for securely distributing electronic books and retrieving a user’s usage thereof. The accused products include B&N’s Nook e-reader; Adrea had previous sued Amazon for infringement of these patents by the Kindle.

Judge Rakoff granted summary judgment of noninfringement of claim 1 of the ´851 patent. He based this grant on the claim language requiring books be encrypted after they are selected by a user, whereas B&N encrypts the books before selection. Adrea also asserted that B&N was liable for inducement of infringement, since the content delivery network Akamai re-encrypted books post-selection. But Judge Rakoff, citing Limelight (134 S.Ct. 2111 (2014)), said that “when no individual defendant executes all the steps of a method patent, though the steps of two businesses do, when taken as a whole, execute all the steps of the method, one of the two businesses cannot be held liable for inducing the infringement of the other, where there is no direct infringement to begin with.” Accordingly, the court seems to have concluded that the initial pre-selection encryption removed the possibility of any direct infringement. In any event, Judge Rakoff noted that the record contained no evidence of B&N having a specific intent to induce Akamai’s infringement. With respect to infringement under the doctrine of equivalents, Judge Rakoff found for B&N as claim 1 had been amended during prosecution to claim only post-selection encryption, and so he concluded that prosecution history estoppel defeated the DOE claim.

Judge Rakoff granted a summary judgment of noninfringement for products concerning which Adrea had provided no evidence or expert opinion. He noted that discovery had closed, and that Rule 56(c) thus mandated entry of summary judgment.

Concerning the starting date for damages, Judge Rakoff said that damages began to accrue on the date plaintiff sent B&N a claim chart identifying claims and relevant devices. He refused to begin the damages on the date plaintiff sent a letter identifying a “portfolio of over 300 patents related to eBooks,” and stating that Adrea is “currently in litigation with Amazon related to the Discovery Networks eBook patents,” one of which was the ´851 patent. As “[a]ctual notice requires the affirmative communication of a specific charge of infringement by a specific accused product or device,” Adrea’s earlier communication “cannot reasonably constitute communication of a specific charge against a specific device, given that the communication mentioned no charge, no device, and indeed, no patent.”

The court denied other motions for summary judgment, including Adrea’s motion for infringement of some claims “in light of the many factual disputes enumerated at length during oral argument.”

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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