Victory Nets Largest U.S. Real Estate Investment Trust Four Key Wins in Case
Madison, Wis., August 7, 2012. Perkins Coie LLP successfully represented Simon Property Group, the largest real estate investment trust (REIT) in the U.S., in NorthMobileTech v. Simon Property Group, No. 3:11-CV-287 (W.D. Wis.), pending in the Western District of Wisconsin. The case involved allegations that Simon’s iPhone and Android application infringed plaintiff’s patent, with a key issue being whether the asserted patent required a server to determine whether the mobile device running the application is "located at" a shopping mall.
"To win so many victories - on summary judgment, striking expert testimony, sanctions for discovery violations, the key claim construction ruling and otherwise - in one case is a vindication of both our client’s strong case and our focused defense strategy,” said Timothy Carroll, a partner in Perkins Coie’s Chicago office and lead lawyer for Simon Property Group. “This victory was a true cross-office effort and we couldn’t be more pleased with the results.”
Among the key wins were:
Summary Judgment of Non-Infringement. The Court granted Simon's motion for summary judgment of non-infringement of plaintiff's marketing method patent following claim construction. Therein, the Court noted that "[T]he [accused] App is designed to function the same way whether a user is standing in the middle of a mall or 300 miles distant... Adopting a literal construction of the phrase 'determining that said mobile wireless communications device is located at a given shopping facility,' the court finds that the [accused] service does not infringe the [patent-in-suit].” The court is still considering Simon's motion for summary judgment on invalidity. In this regard, the court determined that there was a “possibility, indeed possibility” that the patent is obvious, but has held off ruling on this issue pending further briefing from the parties.
Exclusion of Expert Testimony. The Court barred plaintiff's expert from testifying on any marketing-related issues. This ruling is important because the patent requires the server to send a "marketing incentive" to the mobile device once the server has determined that the mobile device is located at a mall. By obtaining this ruling, Simon eliminated any means for plaintiff to establish a key element of the claims.
Sanctions for Plaintiff's Discovery Misconduct. Through testimony and document investigation, and as a result of Perkins Coie’s pursuit of the plaintiff's concealment and disposition of evidence, the Court found that the plaintiff committed myriad violations of its discovery obligations. In sanctioning the plaintiff, the Court stated that it would grant Simon its fees for having to pursue and probe the plaintiff's discovery abuses. The fee award could be substantial, and Simon is also entitled to its fees as sanctions for two additional motion-practice wins effectuated by the Perkins Coie team.
Claim Construction. The Court's adopted Simon's proposed construction of what it means to be "located at a given shopping facility". While NorthMobileTech ('NMT') argued that a mobile device need only be "associated with" a shopping mall, Perkins Coie lawyers established - and the Court agreed – that the claims required a determination that the mobile device was actually located "at" a shopping mall. The Court subsequently applied this construction in its summary judgment order, finding that mobile application in question makes no such determination.
The cross-office Perkins Coie team included Tim Carroll (Partner, Chicago), David Jones (Partner, Madison), Steve Lubezny (Associate, Chicago), Manny Caixeiro (Associate, New York) and Sarah Walkenhorst (Associate, Madison).
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