retains all other rights against MapQuest Customers that infringe the CIVIX patents using
technology supplied by someone other than MapQuest. (Id. at 94.) CIVIX only agreed not to
bring an action against products and services that use or incorporate MapQuest software. To the
extent that the accused products and services do not utilize “MAPQUEST Technology,” the
covenant not to sue does not cover those products and services.

As with the NavTech Agreement, these facts require denial of VIS’s motion seeking
summary judgment on the accused products and services that do not use “MAPQUEST
Technology.” CIVIX has only covenanted not to accuse of infringement those activities of VIS

that used “MAPQUEST Technology.”

13


accused of infringement in this case relate to or use in any way the “NAVTECH Technology.”
Dl. The MapQuest Agreement

CIVIX filed a patent infringement suit against MapQuest.com, Inc. (“MapQuest”) in 1999
in the United States District Court for the Northern District of Colorado. (Civil Action No. 99-B-
172.) CIVIX and MapQuest entered into a License Agreement and a Settlement Agreement on
May 3, 1999, thereby settling the pending lawsuit. (SUF Nos. 28 and 29.)

The MapQuest License Agreement granted MapQuest a license under the “CIVIX.

patents”:

(i) to make, create, modify, improve, design, have made, import, use, sell or offer
for sale, sublicense, transfer, and/or assign any and all past, present and future
MAPQUEST Technology covered by any claim of the CIVIX patents, (ii) to
sublicense, transfer, and/or assign to any MAPQUEST customer the right to
undertake and and all past, present, and future Permitted Uses with respect to the
MapQuest Technology, and (iii) with respect to (i) and (ii) above, the concurrent
tight of use by MapQuest’s end users, and by each such customer’s customers and
end users, of the MapQuest Technology and the Permitted Uses.

(SUF No. 32.) The MapQuest Settlement Agreement released and forever discharged:

MAPQUEST and its past and present customers and any of their respective
licensees or end users ...([] solely with respect to MAPQUEST Technology and
Permitted Users) from any and all claims, demands, or causes of action of any
nature whatsoever, at law or in equity, whether or not known, arising prior to the
date of this Agreement, that relate in anyway to the CIVIX Patents...

(SUF No. 34.) Additionally, in the MapQuest Settlement Agreement, CIVIX covenanted and
agreed never to:

bring any lawsuit, cause of action, claim, or demand of any kind against... (ii) any
MAPQUEST customer, with respect to the creation modification, improvement,
design of, or any manufacture, importation, use, sale, or offer for sale by any
customer of the MAPQUEST Technology of the Permitted Uses, or (iii) any
MAPQUEST end user, or any MAPQUEST customer’s customer or end user,
with respect to the MAPQUEST Technology or the Permitted Uses.



NavTech Technology” because the web site’s map and driving directions are obtained from
MapPoint who generates such data using NavTech data. VIS further argues that, even when the
Superpages web site does not use NavTech data, the map and driving directions generated
nonetheless involve or relate to NavTech Technology, and are thus covered by the NavTech
Agreement. CIVIX responds that it is not accusing Superpages’ functionality that uses NavTech
databases of infringement. Specifically, CIVIX contends that Superpages infringes the asserted
patent claims by generating and providing a listing of business names and addresses in a specified
category and geographic vicinity without using NavTech data.

At this point in the case, a genuine dispute exists as to which, if any, accused functions of
the Superpages web site involve or relate to NavTech databases and are therefore licensed. The
Court notes that it has not yet construed the patent claims and it is possible that after the
Markman process the Court may be able to resolve this issue as a matter of law.

3. CIVIX has Covenanted Not to Sue Only Activities Involving or
Relating to “NAVTECH Technology”

The NavTech Agreement states that CIVIX cannot “bring any claim, demand, and/or
causes of action of any kind against any direct or indirect customer or end user of a NAVTECH
Company, and/or and NAVTECH Technology, with respect to or in any way relating to the
NayTech Technology.” (R. 150-1; SUF Ex. 1 at §9.a..) VIS argues that CIVIX agreed to never
sue NavTech’s indirect customers whether or not the lawsuit targeted “NAVTECH Technology.”

The Court disagrees with VIS’s contention. Importantly, the NavTech Agreement states
that CIVLX would not bring a suit against an indirect customer of NavTech “with respect to or in

any way relating to the NavTech Technology.” Jd. As discussed above, CIVIX alleges that



evidence to rebut the motion. Equal Employment Opportunity Comm'n v. Roebuck & Co., 223
F.3d 432, 437 (7" Cir. 2000.)

B. Patent License Defense

The party asserting the affirmative defense of a patent license bears the burden of proving
its defense. See McCoy v. Mitsuboshi Cutlery, Inc., 67 F.3d 917, 920 (Fed. Cir. 1995). An
action can infringe a patent only if carried out “without authority.” 35 U.S.C. § 271(a),(f),(g).
The determination of whether a patent license protects a certain accused activity is typically a
question of contract interpretation. See Intel Corp. v. VIA Tech., Inc., 319 F.3d, 1357, 1361 (Fed.
Cir. 2003).

Cc. Contract Interpretation

Contract interpretation, including the preliminary question of whether a contract is
ambiguous, is a question of law. ECHO, Inc. v. Whitson Co., Inc., 52 F.3d 702, 705 (7" Cir.
1995). Under Illinois law, contract interpretation begins with the language of the contract itself.
Emergency Med. Care, Inc. v. Marion Mem’l Hosp., 94 F.3d 1059, 1060-61 (7" Cir. 1996). “Ifa
contract is clear on its face and the text contains no clue that the contract might mean something
different from what it says, then the inquiry is over - no evidence outside the contract may be
considered.” Home Ins. Co. v. Chicago & Northwestern Transp. Co., 56 F.3d 763, 767 (7% Cir.
1995). Thus, the threshold inquiry is whether the contract is ambiguous on its face. Bourke v.
Dun & Bradstreet Corp., 159 F.3d 1032, 1036 (7" Cir. 1998). A contract is intrinsically
ambiguous if the contract language is reasonably susceptible to more than one meaning. Jd. A
contract is not ambiguous simply because the parties do not agree on the meaning of its terms.

Id.



(SUF No. 35.)

Between March 1998 and July 2002, the VIS-owned entity operating the Superpages web
site was a customer of MapQuest. (SUF No. 38.) MapQuest provided the Superpages web site
with certain services, including maps that illustrate business listings. (SUF No. 39.) Whena
Superpages’ user requested a map, Superpages sent information reflecting that request to
MapQuest. /d. In response, MapQuest created the maps and packaged the map into a graphics
interchange format (“GIF”) computer file, which Superpages repackaged into a web page
provided to the user. (SUF No. 40.) The parties dispute whether any of the Superpages
functions accused of infringement in this case related to or used in any way the “MAPQUEST
Technology” or “Permitted Uses.”

ANALYSIS
IL Legal Standards

A. Summary Judgment

Summary judgment is proper when “the pleadings, depositions, answers to interrogatories,
and admissions on file, together with affidavits, if any, show that there is no genuine issue as to
any material fact and that the moving party is entitled to a judgment as a matter off law.” FED. R.
Civ. P. 56(c). In ruling on a motion for summary judgment, the Court must believe the evidence
of the non-movant, and draw all reasonable inferences in the non-movant’s favor. Anderson v.
Liberty Lobby, Inc., 477 U.S. 242, 249, 106 S.Ct. 2505, 2511, 91 L.Ed.2d 202 (1986). The party
seeking summary judgment has the burden of establishing the lack of any genuine issue of material
fact. Celotex Corp. v. Catrett, 477 U.S. 317, 322-23, 106 §.Ct. 2548, 2552, 91 L.Ed.2d 265

(1986). A party can successfully oppose summary judgment only if it presents definite competent



CIVIX attempts to create an ambiguity under the “NAVTECH GROUP” definition by
arguing that VIS is not a customer of NavTech because its use of NavTech databases is
insignificant. The NavTech Agreement, however, does not require that a member of the
“NAVTECH GROUP” engage in significant use of a NavTech database. Rather, the NavTech
Agreement only requires that the “NAVTECH GROUP” include any entity that is a direct or
indirect customer of any NavTech database.

VIS purchases maps, driving directions, and other information for its Superpages web site
from MapPoint, which in turn purchases this data from NavTech. (SUF No. 27). While CIVIX
disputes that “‘Superpages’ is an indirect customer of NavTech technology as that term is used in
the NavTech Settlement Agreement,” the Court determines the meaning of the contract. See
Bourke, 159 F.3d 1032, 1037 (holding that if the contract is unambiguous, the Court can interpret
the contract as a matter of law). In order to qualify as a member of the “NAVTECH GROUP,”
one need only be an indirect customer of one of the NavTech’s database products. (R. 150-1,
SUF at Ex. 1 at §J.k.) By using Navtech data with the Superpages web site, VIS is an indirect
customer of a NavTech database and is thus part of the NAVTECH GROUP as a matter of law.

2. Genuine Isssues of Material Fact Exist as to Which VIS Activities are
Licensed

The NavTech Agreement license only covers commercial activity involving or relating to
“NAVTECH Technology.” (R. 150-1; Ex. 1 at §6.a.) As noted above, “NAVTECH
Technology” includes NavTech’s database products. VIS, therefore, has a license for any
activities that involve or relate to NavTech database products.

VIS argues that the Superpages web site uses data “involving or relating in anyway to the


Minote Order Form (06/97)

United States District Court, Northern District of Illinois

Name of Assigned Judge Amy J. St. Eve Sitting Judge if Other
or Magistrate Judge than Assigned Judge
CASE NUMBER 03 C 3792 DATE 11/30/2004
CASE Civix vs. Motorola
TITLE

[In the following box (a) indicate the party filing the motion, e.g., plaintiff, defendant, 3rd party plaintiff, and (b) state briefly the nature

of the motion being presented.]

en)

MOTION:

DOCKET ENTRY:

(1) Oo Filed motion of [ use listing in “Motion” box above.]

(2) oO Brief in support of motion due

(3) im Answer brief to motion due___. Reply to answer brief due.

(4) Qo Ruling/Hearingon___set for__at

(5) Qo Status hearing[held/continued to] [set for/re-set for]on__——setfor__—_—at

(6) i] Pretrial conference[held/continued to] [set for/re-set for]on__setfor__—sat__—.

(7) oO Trial[set for/re-set for]on____att

(8) Oo [Bench/Jury trial] [Hearing] held/continued to____at

(9) QO This case is dismissed [with/without] prejudice and without costs[by/agreement/pursuant to]
OFRCP4(m) OLocal Rule 41.1 OFRCP41(a(1) 0 FRCP41(a)(2).

a0) «=x [Other docket entry] | Enter Memorandum Opinion and Order. Defendant Verizon Information

Services, Inc.'s Motion for Summary Judgment on the basis that its activities are licensed under previous
settlement agreements involving Plaintiff CTVLX-DDI, LLC is granted in part and denied in part.

| [For further detail see order attached to the original minute order.]

No notices required, advised in open court.

No notices required. number of notices

Notices mailed by judge’s staff. DEC 64 2004

Notified counsel by telephone.

date docketed
Docketing to mail notices.

Mail AO 450 form.
Copy to judge/magistrate judge.

J courtroom
TH deputy’s

initials

Date/time received in, \. “+ ;
central Clerk’s Office ailing deputy initials



VIS are “CIVIX patents” as defined by the MapQuest License Agreement.
1. VIS Was a Customer of MapQuest from March 1998 to July 2002

VIS contends the MapQuest Agreements protect from liability its accused activity from
March 1998 to July 2002 because during that time VIS was a customer of MapQuest.
Specifically, VIS contends that its operation of the Superpages web site made it a customer and
end user of MapQuest between March 1998 and July 2002. During this time, MapQuest provided
the Superpages web site with maps illustrating business locations. (SUF Nos. 38-40.) Under
these facts, VIS was a customer of MapQuest.

2. Only VIS’s Accused Activities that Used MapQuest Software Were
Licensed

The license, however, does not provide a blanket license to MapQuest customers to
undertake all “Permitted Uses.” Rather, the MapQuest License Agreement only provides
MapQuest customers the right to undertake Permitted Uses with respect to “MAPQUEST
Technology.” (SUF No. 32.) The MapQuest License Agreement defines “MAPQUEST
Technology” as including software products, equipment, systems, and services developed and
created by MapQuest. (SUF No. 30.) In turn, the MapQuest License Agreement defines the
range of “Permitted Uses” for the “MAPQUEST Technology” to include (i) the use of MapQuest
Technology by customers, (ii) the right of customers to incorporate MapQuest Technology into
software products, (iii) the right for customers to modify, enhance, or revise the MapQuest
Technology in connection with other software products, and (iv) the right for customers to
sublicense, and/or resell software, products, equipment, system, and services. (SUF No. 30.)

Read in context, the MapQuest License Agreement grants a license to those aspects of customer

1



certain Superpages’ functionality infringes without using “NAVTECH Technology.” The Court
cannot interpret the covenant not to sue as precluding CIVIX from suing even activities that do
not use “NAVTECH Technology.” Thus, to the extent the accused Superpages functionality
does not involve or relate to a NavTech database, the NavTech Agreement’s covenant does not
preclude CIVIX from bringing suit.

At this point in the case, a genuine dispute exists as to which, if any, of VIS’s accused
activities involve or relate to “NAVTECH Technology” and are thus covered by CIVIX’s
covenant not to sue.

4. CIVIX’s Covenant Not to Sue Extends to the “Go2 Patents”

VIS is correct that the covenant not to sue in Paragraph 9.a. of the NavTech Agreement is
broader than the license provision in Paragraph 6 because the Agreement limits the latter, but not
the former, to “CIVIX Patents.” (R. 150-1, SUF Ex. 1 at {6 and 9.) Rather, the covenant not to
sue is only limited to “any claim, demand, and/or any cause of action of any kind” relating to
“NAVTECH Technology.” (/d. at {9.a.) Therefore, as a matter of law, the covenant not to sue
covers the “Go2 Patents,” the ‘692 and ‘744 patents. As discussed above, whether or not CIVIX
is in fact accusing of infringement VIS activities that involve or relate in any way to “NAVTECH
Technology” is a separate issue and is genuinely disputed at this point in the case.

B. The MapQuest Agreement

In the MapQuest License Agreement, CIVIX granted a license under the CIVIX Patents
to MapQuest “to sublicense, transfer, and/or assign MAPQUEST customers the right to
undertake any and all past, present, and future Permitted Uses with respect to MAPQUEST

Technology.” (SUF No. 32.) The parties do not dispute that the patents-in-suit asserted against

10



D. Third Party Beneficiaries

It is not necessary that the contract identify a third party beneficiary by name. Rather, the
contract may define a third party by describing the class to which the third party belongs. Tax
Invs., Ltd. v. Federal Deposit Ins. Corp., 763 F. Supp. 1452, 1456 (N.D. Til. 1991). A third party
may sue for breach of a contract formed for its benefit. Golden v. Barenborg, 850 F. Supp. 716,
723-24 (N.D. Ill. 1994), aff'd, 53 F.3d 866 (7" Cir. 1995).

116 VIS’s License Defense to Patent Infringement

A. The NavTech Agreement

Under the NavTech Agreement, CIVIX granted a license under the “CIVIX Patents” to
the “NAVTECH GROUP” to engage in any Commercial Activity at its sole discretion involving
or relating in any way to “NAVTECH Technology.” (R. 150-1, SUF Ex. 1 at 6.2.) The parties
agree that the “CIVIX Patents” include the ‘622, ‘307, and ‘291 patents at issue here.

1. VIS is a Member of the “NAVTECH GROUP”

VIS contends that it is a member of the “NAVTECH GROUP” and therefore a third party
beneficiary to the NavTech Agreement. Pursuant to the NavTech Agreement, the “NAVTECH
GROUP” includes “any direct or indirect customer of any NAVTECH Technology; and/or any
direct or indirect end user of and NAVTECH Technology.” (dd. at 1k.) The NavTech
Agreement defines “NAVTECH Technology” as “any database of aay NAVTECH COMPANY,
purchased by any NAVTECH COMPANY and/or licensed to any NAVTECH COMPANY, such
as a geographic database including information about business, historical and other sites and/or
points of interest.” (Jd. at 1,j.) Therefore, the “NAVTECH GROUP” includes any entity that is

a direct or indirect customer of any NavTech database.



i. The NavTech Agreement

NavTech attempted, on October 27, 1998, to provoke an interference at the United States
Patent and Trademark Office (“PTO”) between itself and CIVIX by filing U.S. Patent Application
No. 09/179,299 (“Interference Application”). (SUF No. 11.) In the prosecution of the
Interference Application, NavTech sought to have itself declared as the first and true inventor of
certain mapping technologies described in both the Interference Application and an issued CIVIX
patent (U.S. Patent No. 5,682,525). Jd. In 1999, CIVIX filed a patent infringement suit against
NavTech in the Northern District of Illinois. (Civil Action No. 99 C 4140.)

CIVIX and NavTech entered into the NavTech Agreement on January 18, 2000, settling
the pending litigation and interference. (SUF No. 12.) The NavTech Agreement required
NavTech to assign the Interference Application to CIVIX, and provide all documentary evidence
related to the application to CIVIX. In return, CIVIX granted a license under the “CIVIX
Patents” to the “NAVTECH GROUP to engage in any Commercial Activity at its sole discretion
involving or relating in any way to NAVTECH Technology.” (R. 150-1; Ex. 1 at 6.2.)

In addition, in the NavTech Agreement, CIVIX covenanted never to sue:

any direct or indirect customer or end user of aNAVTECH COMPANY, and/or

of any NAVTECH Technology, with respect to or in any way relating to the

NAVTECH Technology, including without limitation any Commercial Activity by

any such customer or end user relating in any way to (1) all or part of the

NAVTECH Technology or (2) any products, processes, systems, and/or services

that use and/or incorporate all or any part of the NAVTECH Technology.

Id. at 9.a.ii.

VIS’s Superpages web site uses “NAVTECH Technology” in performing at least some its

functions. (SUF Nos. 21-27.) The parties dispute whether any of the Superpages functions



CONCLUSION

For the reasons discussed above, VIS’s Motion is granted in part because there is no
genuine dispute that VIS is a member of the “NAVTECH Group” under the NavTech Agreement
and has a license to the ‘622, ‘307, and ‘291 patents to the extent its accused activities involve or
relate in any way to “NAVTECH Technology.” CIVIX is subject to a covenant not to sue, under
the ‘622, ‘307, ‘297, ‘744, or ‘692 patents, any activities of VIS that relate in any way to
“NAVTECH Technology.” VIS’s Motion is also granted in part because there is no genuine
dispute that VIS is a MapQuest Customer from March 1998 to July 2002 and had a license to the
patents-in-suit to the extent its accused activities were “Permited Uses” of “MAPQUEST
Technology.” CIVIX has covenanted not to sue VIS’s activities relating to “Permitted Uses” of
“MAPQUEST Technology.” VIS’s Motion is denied in part because at this point in the case
genuine disputes exist as to which, if any, of VIS’s accused activities involve or relate to either
“NAVTECH Technology” under the NavTech Agreement or “Permitted Uses” of “MAPQUEST

Technology” under the MapQuest Agreements.

DATED: November 30, 2004 ENTERED

Ap.

United States District Court Judge

14



BACKGROUND

I. The Parties

CIVIX is a Colorado limited liability company having a principal place of business in
Virginia. (R. 150-1; Def.’s Stmt. Und. Facts No.1; R.185-1; Pl.’s Resp. to Def.’s Stmt. Und.
Facts No.1 (collectively “SUF”).) CIVIX owns various United States patents, including the
patents-in-suit. (SUF No. 2.)

VIS operates the web site www.superpages.com (“Superpages”) through its wholly
owned subsidiary, Verizon Directories Corp. (“VDC”). (SUF No. 20.)! Between June 27, 1996
and June 30, 2000, VDC was known as GTE News Media Services. Between June 30, 2000 and
January 31, 2002, VDC was known as Verizon New Media Services Inc. Jd.

VIS, through operating its Superpages web site, has been a customer of the MapPoint
business group of Microsoft Corporation (“MapPoint”) since July 2002. (SUF No. 21.)
MapPoint provides VIS with certain services, such as providing maps illustrating business listings.
Id. In creating these maps, MapPoint, at least in some instances, uses data obtained through a
licensing agreement with NavTech. (SUF No. 23.) Once MapPoint creates the maps, it provides
the maps to Superpages in the form of a universal resource locator (“URL”) packaged into a

responsive web page. (SUF No. 24.)

‘Although CIVIX disputes the process by which the Douglas Heatherly Declaration was
drafted, it does not dispute the underlying factual contention. The Court has reviewed the record
including both the Heatherly and Goode depositions and deems SUF No. 20 admitted to the
extent the Court cites such facts in this Opinion. To avoid confusion, the Court uses the term
VIS to include the entity directly operating the Superpages web site at issue in this case. As VIS
correctly points out, even if VIS is not a direct customer of either NavTech or MapQuest, each of
the relevant agreements pertains to both direct and indirect customers, which certainly covers
VIS.



IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS

EASTERN DIVISION .

CIVIX-DDI, LLC, ,)

) DEC 0 4 2004
Plaintiff, )
)

v. ) No. 03 C 3792
)
CELLCO PARTNERSHIP d/b/a )
VERIZON WIRELESS, EXPEDIA, )
INC., TRAVELSCAPE, INC., and )
VERIZON INFORMATION SERVICES, )
INC., )
)
Defendants. )
MEMORANDUM OPINION AND ORDER

AMY J. ST. EVE, District Court Judge:

Plaintiff CIVIX-DDI, LLC (“CIVIX”) filed this suit against several defendants, including
Defendant Verizon Information Services, Inc. (“VIS”), alleging infringement of various claims of
USS. Patent Nos. 6,385,622 (“the ‘622 patent”), 6,408,307 (“the ‘307 patent), 6,415,291 (“the
291 patent”), 6,339,744 (“the ‘744 patent”), and 6,473,692 (“the ‘692 patent”).

VIS moved for summary judgment of no liability for infringement on the basis that its
activities are licensed under previous settlement agreements between Navigation Technologies
Corporation (“NavTech”) and CIVIX (the “NavTech Agreement”), and between MapQuest.com,
Inc. (“MapQuest”) and CIVIX (the “MapQuest Agreements”). For the reasons discussed below,

the Court grants in part and denies in part VIS’s Motion.

Oe


products incorporating MapQuest software.

VIS argues that, as a customer of “MAPQUEST Technology,” VIS was granted a license
to any and all activities under the “CIVIX Patents.” This interpretation of the Agreement is too
broad. The MapQuest License Agreement and MapQuest Settlement Agreement only provide
customers with a license for software products to the extent the software uses or incorporates
MapQuest Software. Paragraph 4 of the Agreement further supports this interpretation by
expressly granting no rights to customers for “products, equipment, services, or systems not
supplied by MAPQUEST and which products, equipment, services, or systems infringe the
CIVIX patents.” (R. 183-1; PL.’s Resp. Def.’s Mot. Summ. Judgment Ex. 2 at 4.) As a result,
to the extent that the accused activities did not utilize “MAPQUEST Technology,” both of the
MapQuest Agreements do not cover those activities. VIS has failed to prove at this stage which
products and services accused of infringement by CIVIX, if any, used “MAPQUEST
Technology.”

3. CIVIX has Covenanted Not to Sue Only Activities Relating to
“MAPQUEST Technology”

VIS further argues that CIVIX agreed never to bring an action against any MapQuest
customer who sublicensed, purchased, or used “MAPQUEST Technology” or who otherwise
engaged in “Permitted Uses.” According to VIS, CIVIX covenanted not to sue any MapQuest
customer of “MAPQUEST Technology,” irrespective of the cause of action.

Once again, VIS interprets this clause to broadly. Paragraph 8 of the MapQuest
Settlement Agreement specifically states that the covenant not to sue applies “only with respect to

the MapQuest Technology and/or Permitted Uses.” (Jd. at §8.) Importantly, CIVIX specifically

12