Full opinion text
MEMORANDUM OPINION AND ORDER ST. EVE, District Judge. Plaintiff CIVIX-DDI, LLC (“Civix”) filed this suit against several defendants, including Expedia, Inc. (“Expedia”), and Travelscape, Inc. (“Travelscape”) alleging infringement of various claims of U.S. Patent Nos. 6,885,622 (“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”). Expedia moves for summary judgment of both noninfringement and invalidity of all asserted claims. Expedia also moves for partial summary judgment on Civix’s failure to comply with 35 U.S.C. § 287(a), willfulness, and conception. Civix moves for partial summary judgment of no inequitable conduct. For the reasons discussed below, the Court grants in part and denies in part both Expedia’s motion and Civix’s motion. BACKGROUND I. Parties Civix is a Colorado limited liability company having a principal place of business in Virginia. (R. 388-1; PL’s Resp. Def.’s Stmt. Undisputed Facts (“DSUF”) ¶1.) Expedia is a corporation organized and existing under the laws of the state of Washington with its principal place of business in Washington. (Id.) Travelscape is a wholly-owned subsidiary of Expedia organized and existing under the laws of the state of Nevada with its principal place of business in Nevada. (Id.). II. Expedia’s Website The Expedia website (www. expe-dia, com), the Travelscape website (vnvw.travelscape.com), and the related WWTE sites (referred to collectively as the “Expedia website”) include a portion that is referred to as the Lodging Wizard and a portion that is referred to as the Car Wizard. (R. 388-1; DSUF ¶ 7.) The Ex-pedía website includes a web server, several internal servers, and database servers. (Id. ¶ 8.) Expedia’s users employ computing devices such as personal computers to transmit requests to the Lodging and Car Wizard portions of the Expedia website. (Id. ¶ 9.) More particularly, Expedia’s users select the Hotel Wizard or the Car Wizard, specify a location, and generate a request signal using their computer. (Id.) Expedia’s users, also use their computers to view the results received from the Ex-pedía website. (Id.) Expedia’s users communicate their requests from the user’s computing device to their internet service provider (“ISP”). (Id. ¶ 10.) The user’s ISP communicates with an ISP providing access to the Expedia website. (Id.) The Expedia web server receives the requests from Expedia’s users. (Id. ¶ 11.) The web server communicates with internal servers. (Id.) The web server and the internal servers communicate with Expe-dia’s internal databases. (Id.) III. The Prior Art A. CompuServe Expedia’s Exhibit 18 is a publication by Jill Ellsworth, Ph.D. & Matthew Ells-worth, titled “Using CompuServe.” (DSUF ¶ 35.) “Using CompuServe” states that “CompuServe” had been in existence for more than a decade in 1994 and that it had over one million “members.” (Id.) During the period 1981-1996, Alexander Trevor held the position of Executive Vice President and Chief Technical Officer of CompuServe, Inc. (Id. ¶ 36.) During the period of 1974-1996, CompuServe, Inc. employed David Eastburn and from 1991 through 1993 he was responsible for all of CompuServe, Inc.’s online content and services. (Id. ¶ 37.) In December 1993, Eastburn formed and headed CompuServe, Inc.’s Advanced Technology Group, which was responsible for assessing evolving technologies and their impact on CompuServe’s business. (Id.) In 1993, CompuServe members were able to use personal computers and the CompuServe network to access information stored in CompuServe’s databases located in Ohio and in third-party databases located elsewhere. (Id. ¶38.) CompuServe required subscribers to first establish an account before they could access CompuServe’s databases. (Id.) Thereafter, subscribers could dial the CompuServe network using a local access number and connect through leased telephone lines to CompuServe host computers in Ohio. (Id.) B. Sabre The book “How to Get the Most Out of CompuServe” (5th ed.1993) by Charles Bowen and David Peyton states that as of the writing of that book there existed a system called “Easy Sabre” that stored information on airlines, hotels, and car rental companies. (Id. ¶ 39.) During the period 1992-1996, Michael Robinson was involved with the Sabre Holdings, Inc. (“Sabre”) hotel package. (Id. ¶ 40.) Robinson testified that prior to 1994, Sabre maintained a database in Tulsa, Oklahoma. (Id. ¶ 39.) According to Robinson, travel agents could use computers located anywhere in the United States to obtain information relating to airlines, hotels, and car rental companies stored in the Tulsa database. (Id. ¶ 41.) Robinson testified that prior to 1994, Sabre developed “EAA-sy Sabre,” which provided home computer users a “consumer friendly” way, through CompuServe, to access airline, hotel, and car rental information stored in Sabre’s Tulsa database. (Id. ¶ 41.) The book “How to Get the Most Out of CompuServe” provides that EAAsy Sabre enabled users to look for information regarding 18,000 hotels and 45 car rental companies. (Id. ¶ 42.) Prior to 1994, CompuServe members were able to use their personal computers and EAAsy Search to search a database for information on hotels and car rental companies. (Id. ¶ 42.) Robinson testified that prior to 1994, the Sabre database stored hotel information such as location, rates, availability, descriptive content, credit card rules, and everything necessary to make a reservation. (Id. ¶ 43.) According to Robinson, the Sabre database stored hotel locations using address and zip code. (Id.) IV. The Asserted Patents Civix asserts that the patents in suit relate to systems used to locate points of interest in geographical regions by accessing a remote database. The parties logically divide the four asserted patents into two categories. The parties refer to the ’622, ’307, and ’291 patents as “the Civix patents.” These patents all derive from U.S. Patent Application No. OS/371,-425. The second category consists of the ’692 patent, which the parties refer to as the “Go2 patent.” Unlike the Civix patents, the Go2 patent did not derive from the ’08/371,425 application. Instead, Civix acquired the ’692 patent from Go2, one of the original Defendants in this case. The Go2 patent derives from a chain of applications filed by other inventors, beginning with U.S. Patent Application No. 08/701,-586. Y. Facts Related To Expedia’s Inequitable Conduct Claims A. The Patents The ’291 patent and ’622 patent are continuations of United States Patent No. 6,408,307 (“the ’307 patent”), which is a continuation of United States Patent No. 5,682,525 (“the ’525 patent”). (PSUF ¶ 1.) The effective filing date of the ’307 patent, the ’291 patent, and the ’622 patent is January 11, 1995. (Id. ¶ 2.) Hosain Alam was the Patent Examiner for the applications for the ’525, ’307, ’291, and ’622 patents. (Id. ¶ 3.) Curtis Vock was the attorney responsible for the prosecution of the applications for the ’307, ’291, and ’622 patents. (Id. ¶ 4.) B. The Colorado Action On January 26, 1999, Civix brought suit against a number of companies alleging infringement of the ’525 patent and United States Patent No. 4,974,170 in Civil Action 99-B-172 in the United States District Court for the District of Colorado (the “Colorado litigation”). (Id. ¶ 5.) At his deposition, Mr. Vock testified that he informed Examiner Alam of the existence of the Colorado litigation in a telephone interview that took place in January or February, 2001. (Id. ¶20.) Mr. Vock spent several weeks creating an Information Disclosure Statement (“IDS”) that listed the prior art cited by the defendants in the Colorado litigation. (Id. ¶ 36.) Mr. Vock submitted to Examiner Alam an IDS on February 8, 2001 in the ’307 patent application (“the ’307 IDS”), and an IDS on January 17, 2002 in the ’391 patent application. (Id. ¶ 37.) The ’307 IDS and ’291 IDS listed all references cited by the defendants in the Colorado litigation because “someone had deemed this relevant enough to cite to us, so that [Mr. Vock], in fact, did not want to remove anything from the IDS.” (Id. ¶ 38.) In an office action dated August 12, 2001, Examiner Alam wrote that the IDS “has been placed in the application file, but the information referred to therein has not been considered. The references have not been provided.” (Id. ¶ 39.) Examiner Alam further explained: The IDS received on February 12, 2001, contains a mountain of material including approximately 244 U.S. patents, 64 published patent applications, and 290 non-patent references. The number of references is unusually high. Since the applicants have filed the IDS, it can be reasonable [sic] inferred that they are more likely to know which of the 598 references are relevant to the claimed invention. If the applicants have filed the IDS without knowing the relevance of references to the claims, then it would be reasonable to explore the necessity of such filing. (Id. ¶ 39.) On December 14, 2001, Examiner Alam initialed almost all of the references on the ’307 IDS. (Id. ¶ 41.) On March 15, 2002, Examiner Alam initialed the majority of the references on the ’291 IDS. (Id. ¶ 42.) The Notice of Allowability for the ’307 patent states “[t]he Applicant have [sic] also indicated that none of the references in the Information Disclosure Statement, filed on February 8, 2001, teach the fetching of spatial data from a remote database as recited in the claims.” (Id. ¶ 49.) The Notice of Allowability for the ’291 patent states “[t]he prior art of record, as discussed at length in the interview dated October 17, 2001, teaches the retrieval of spatial item of interest, however, does not teach the fetching of the item from a remote database as claimed.” (Id. ¶ 50.) C. The NavTech Litigation On June 22, 1999, Civix brought suit against NavTech for infringement of the ’525 patent in Civil Action 99-C-4140 in the United States District Court for the Northern District of Illinois (the “NavTech litigation”). (Id. ¶ 51.) Mr. Vock testified at his deposition that he informed Examiner Alam of the existence of the NavTech litigation. (Id. ¶ 52.) On October 27, 1998, NavTech attempted to provoke an interference between the 09/179,299 application by Behr (the “Behr ’299 application”) and the ’525 patent by copying claims from the ’525 patent. (Id. ¶ 53.) The Behr ’299 application was a continuation of United States Patent No. 5,543,789 (the “Behr ’789 patent”). (Id. ¶ 54.) Examiner Alam was the Patent Examiner for the Behr ’299 application. (Id. ¶ 55.) Mr. Vock testified at his deposition that he discussed the potential interference with Examiner Alam in an interview on October 17, 2001. (Id. ¶ 56.) Civix and NavTech settled the NavTech litigation on January 18, 2000. (Id. ¶ 56.) Under the settlement agreement, NavTech assigned to Civix the Behr ’299 application. (Id. ¶ 58.) Under that agreement, Nav-Tech also provided Civix with a box of documents relating to the “conception and reduction to practice” of the invention described in the Behr ’299 application (the “NavTech documents”). (Id. ¶ 59.) Mr. Vock cited the Behr ’789 patent in the ’307 IDS and the ’291 IDS. (Id. ¶61.) The ’307, ’291, and ’622 patents list the Behr ’789 patent on their faces. (Id. ¶ 62.) In fact, the Behr ’789 patent was one of nine references selected by Examiner Alam to be listed on the face of the ’622 patent. (Id. ¶ 63.) The filing date of the Behr ’789 patent is June 24, 1994. (Id. ¶ 65.) Mr. Vock did not provide Examiner Alam with copies of the NavTech documents. (Id. ¶ 66.) The United States Patent and Trademark Office declined to declare an interference between the Behr ’299 application and the ’525 patent. (Id. ¶ 69.) VI. The Court’s Claim Construction A. The Civix Patents On March 1, 2005, the parties submitted to the Court a Jointly Submitted Chart Of Agreed Claim Terms And Claim Terms Remaining in Dispute. (R. 264-1.) The parties agreed to the following claim constructions for terms from the Civix patents. “Associated category/ Category associated with the items of interest” means “a class with which items of interest have a relationship in a database.” “Communicating” means “transmitting or otherwise conveying.” “Database” means “a collection of related information organized for convenient access.” “Geographic position/ Geographical position/ Geographic location/ Geographical location” means “a place within a geographic vicinity.” “Geographic vicinity” means “a geographic region that includes and surrounds selected items of interest.” “Indicating” means “pointing out or to, making known, showing.” “Items of interest” means “services, products, geographic sites, architectural sites, stores, restaurants, public services and other items which the user of the invention may which (sic) to locate.” “Locating” means “determining the place of.” “Port/ Remote port/ Port of remotely accessing” means “a terminal; e.g., a personal computer with a modem, from which a user of the invention can access the database storing the information about the items of interest.” “Position” means “the place occupied by a thing, person, etc. or in which a thing etc. is put; (a) situation, (a) site, (a) station.” For the term “relative to,” the parties provided that “this term is not a claim limitation.” “Request signal representative of a selected category and geographic vicinity” means “a single electronic representation of a user’s selection of at least one category and at least one geographic vicinity.” “User” means “human being.” The parties also disputed the construction of several terms from the Civix patents. After briefing, and a Markman hearing on March 14, 2005, the Court made the following claim construction rulings. “Spatial detail” means “geographic information relating to an area or region.” “Internet” means “a system of linked computer networks, worldwide in scope, that typically is associated with using TCP/IP as a standard protocol” and “internet” means “a group of networks that have been connected by means of a common communications protocol.” “Remote” or “Remotely” means “separated by an interval or distance” with “separated” meaning “to be set or kept apart.” (R. 273-1.) B. The Go2 Patents For the Go2 Patents, the parties agreed to the following constructions. “Associating/Associated with” means “bringing into relationship.” “Locational address” means “a ULA (a Universal Location Address) or a PLA (Proprietary Locational Address).” “User” means “a human being.” As with the Civix patents, after briefing and a Markman hearing, the Court construed other terms that the parties disputed in the Go2 patents. “ULA” means “a universal locational address, which is defined by subdividing a geographic location into several independent districts, each with a name and a reference point. The reference point has a known locational address within a global referencing system. A coordinate system is placed on the district relative to the reference point, yielding a position indicator for locations within district. Combining the district name and the position indicator defines the local location.” “PLA” means “proprietary locational address, which is a name, which will be unique within the district, that distinctly identifies a location with the district. A proprietary address is created by selecting a name, capturing positional information about the location associated with the name, checking that the name is unique in the district and storing the name with its associated locational information and feature data. Once stored, the name and the associated information may be selectively disseminated to users of locational systems.” “Locational address defined based on a latitude/longitude” means “a ULA (Universal Locational Address) or a PLA (Proprietary Locational Address) that has a defined relationship with a global latitude/longitude coordinate system.” (R. 273-1.) ANALYSIS I. Legal Standard A. Summary Judgment Summary judgment is proper when “the pleadings, depositions, answers to interrogatories, and admissions on file, together with the 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 of law.” Fed.R.Civ.P. 56(c). A genuine issue of material fact exists only if “the evidence is such that a reasonable jury could return a verdict for the nonmoving party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 2510, 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, 323, 106 S.Ct. 2548, 2552, 91 L.Ed.2d 265 (1986). The Court considers the evidentia-ry record in a light most favorable to the nonmoving party, drawing all reasonable inferences in that party’s favor. Saucier v. Katz, 533 U.S. 194, 201, 121 S.Ct. 2151, 150 L.Ed.2d 272 (2001). B. Local Rule 56.1 Local Rule 56.1(a)(3) “requires a movant to submit a statement of undisputed material facts that, according to the movant, entitles that party to judgment as a matter of law.” Malec v. Sanford, 191 F.R.D. 581, 583 (N.D.Ill.2000). That rule provides that the “statement [ ] shall consist of short numbered paragraphs, including within each paragraph specific refer-enees to the affidavits, parts of the record, and other supporting material, relied upon to support the facts set forth in that paragraph.” L.R. 56.1(a)(3). As the Malec court explained: “the numbered paragraphs should be short; they should contain only one or two individual allegations, thereby allowing easy response. Again, it is inappropriate to confuse the issues by alleging multiple facts in a single paragraph in hopes of one’s opponent missing one.” Malec, 191 F.R.D. at 583. Local Rule 56.1(b)(3)(A) requires that a non-movant’s response contain “a response to each numbered paragraph in the moving party’s statement, including in the case of any disagreement specific references to the affidavits, parts of the record, and other supporting materials relied upon.” L.R. 56.1(b)(3)(A). Both Civix and Expedia have failed to comply with Local Rule 56.1, creating needless expense and work. Expedia attempted to circumvent the Court’s page limits for summary judgment briefing by including legal argument in its response and reply Rule 56.1 statements. Arguments related to the relevance of evidence are properly made in the memoranda supporting or opposing summary judgment, not in the Local Rule 56.1 statements or responses. Civix also failed to comply with Rule 56.1. Civix’s statement of additional undisputed facts contain lengthy paragraphs purporting to be individual facts, violating the requirement that the numbered paragraphs be “short.” Malec, 191 F.R.D. at 583. II. Infringement Of Civix’s Non-Asserted Claims Expedia moves for summary judgment of noninfringement on all of the claims from the patents in suit that Civix is not currently asserting. During the course of this litigation, Civix has narrowed the number of claims that it is asserting against Expedia. (DSUF ¶ 3.) As Civix dropped claims from the case, Expedia never indicated that it desired to keep those claims as part of the case. In fact, Expedia repeatedly requested the Court’s assistance to encourage Civix to narrow the claims. Accordingly, Expedia’s argument that it is entitled to summary judgment because Civix fails to provide infringement contentions for claims that it is not asserting fails. The record does not contain any indication that the parties have been litigating the non-asserted claims. Also, Expedia’s conduct throughout this case has indicated that it has consented to Civix dropping claims from this suit. On the facts of this case, it would be inequitable for Expedia to encourage Civix to narrow its asserted claims, and then later seek summary judgment on those same dropped claims, arguing that Civix failed to prosecute those claims. Expedia is not entitled to summary judgment on claims that are not part of this dispute. Also, the doctrine precluding claim splitting does not entitle Expedia to summary judgment on these non-asserted claims. Expedia is not currently attempting to split its claims, and this issue is not before the Court. Granting summary judgment of noninfringement on the basis of the doctrine precluding claim splitting, at this stage, would amount to an improper advisory opinion. See Hinrichs v. Whitburn, 975 F.2d 1329, 1333 (7th Cir.1992) (“Under Article III of the Constitution, federal courts may only adjudicate ‘cases or controversies’ and may not render advisory opinions.”) III. Infringement Of Civix’s Asserted Claims A determination of patent infringement is a two-step process in which the Court first construes the claims. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed.Cir.1998) (en banc). The trier of fact then compares the properly construed claims to the accused product to determine, as a question of fact, whether all of the claim limitations are present in the accused product. Id. at 1454; Int’l Rectifier Corp. v. IXYS Corp., 361 F.3d 1363, 1369 (Fed.Cir.2004). To prove infringement, the patentee must show that the accused product satisfies each claim limitation. Deering Precision Instruments, L.L.C. v. Vector Distrib. Sys., Inc., 347 F.3d 1314, 1324 (Fed.Cir.2003). This is known as the “All Elements Rule.” See Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 29, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997); Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931, 935-36 (Fed.Cir.1987) (en banc). The Patent Act expressly provides for claims for indirect infringement. 36 U.S.C. § 271(b), (c). Indirect infringement “can only arise in the presence of direct infringement, though the direct infringer is typically someone other than the defendant accused of indirect infringement.” Dynacore Holdings Corp. v. U.S. Philips Corp., 363 F.3d 1263, 1272 (Fed.Cir.2004) (“To prevail under a theory of indirect infringement, [the patentee] must first prove that the defendants’ actions led to direct infringement”). Under an indirect infringement theory, one who actively induces infringement of a patent is liable as an infringer. 35 U.S.C. § 271(b); Alloc Inc. v. Int’l Trade Com’n, 342 F.3d 1361, 1374 (Fed.Cir.2003) (a “patentee must show that an alleged infringer knowingly induced another to commit an infringing act to establish induced infringement under section 271(b)”); C.R. Bard Inc. v. Advanced Cardiovascular Sys., Inc., 911 F.2d 670, 674-75 (Fed.Cir.1990) (“A person induces infringement under 271(b) by actively and knowingly aiding and abetting another’s direct infringement”). A. Claims 6 And 26 Of The ’622 Patent Claim I of the ’622 patent states: 1. System for remotely determining the position of a selected category of items of interest in selected geographic vicinity from a database, the system comprising: (A)a database for storing information about a plurality of items of interest, the information including, for each of the items of interest, a geographical position and at least one associated category, (B) a communications link for communicating between a user of the system and the database, (C) an information controller for transmitting a portion of the information in the database to the user via the link upon receipt of a request signal representative of a selected category and geographic vicinity, the transmitted portion of the information including identification of geographic position for at least one of the items of interest within the selected category and geographic vicinity, and (D) a port for remotely accessing the portion of information via the link, the port generating the request signal in response to inputs by the user which are representative of the selected category and geographic vicinity, the port having a user interface for accepting the inputs and for indicating to the user the position at least one of the items of interest in the selected category and geographic vicinity. (DSUF ¶ 6.) Claims 6 and 26 depend from Claim 1 and therefore include each of the limitations of Claim 1. 35 U.S.C. § 112, ¶ 4 (“A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers”). Expedia first argues that it does not infringe Claims 6 and 26 because it does not use the claimed port or communications link. The Court has construed the term “port” to mean a “terminal, e.g., a personal computer with a modem, from which a user of the invention can access the database storing the information about the items of interest.” The Court has also ruled that “user” refers to a “human being.” In opposing summary judgment, Ci-vix argues that Expedia does use the claimed system by controlling its customers’ use of the ports. 1. Whether Expedia Uses A System Comprising Each Claim Element Expedia argues that there is no evidence that Expedia uses third party users’ “ports” for “remotely accessing” information in its own database. Expedia essentially argues that in order for it to infringe claims 6 and 26, which are system claims, Civix must prove that Expedia, itself, uses each component of the claimed systems. Expedia, however, does not cite any law supporting this proposition. Rather, claims 6 and 26 require “a system” comprising certain components. In arguing that Expedia does “use” the claimed system, Civix points to evidence that Ex-pedía is connected to its customers and suppliers in such a way that Expedia does in fact use the claimed system. In the context of method claims, several courts have recognized that even when different entities perform the claimed steps of the method, a party is still liable for infringement if it is connected with the entity performing the other steps. See Marley Mouldings Ltd., v. Mikron Indus., Inc., No. 02 C 2855, 2003 WL 1989640, *2-3 (N.D.Ill. April 30, 2003) (“A party cannot avoid direct infringement merely by having another entity perform one or more of the required steps when that party is connected with the entity performing one or more of the required steps”); also see Cordis Corp. v. Medtronic AVE, Inc., 194 F.Supp.2d 323, 349 (D.Del.2002) (rev’d on other grounds); Faroudja Lab., Inc. v. Dwin Elecs., Inc., No. 97-20010 SW, 1999 WL 111788 (N.D.Cal. Feb. 24, 1999). The Federal Circuit has recently addressed the issue of what constitutes use of a patented system in the United States. See NTP, Inc. v. Research In Motion, 418 F.3d 1282, 1313-18 (Fed.Cir.2005). In NTP, the plaintiff asserted system and method claims against Research in Motion’s (“RIM”) “BlackBerry” networks. RIM argued that its networks did not infringe because it housed the BlackBerry Relay component in Canada. Because the Relay component was an element of the asserted system claims, RIM contended that it did not use the claimed system in the United States as required by § 271(a). After recognizing the differences in method claims and system claims, the Federal Circuit held that the “use of a claimed system under section 271(a) is the place at which the system as a whole is put into service, i.e., the place where control of the system is exercised and beneficial use of the system obtained.” Id. at 1316 (citing Decca Ltd. v. United States, 210 Ct.Cl. 546, 544 F.2d 1070 (1976)). The Court recognizes that the Federal Circuit in NTP addressed the issue of when a system is used “in the United States” under § 271(a), rather than the question of what the law requires for an accused infringer to “use” a system under § 271(a). Nonetheless, the Court finds the above analysis highly instructive. The NTP court first recognized that the “situs of the infringement ‘is wherever an offending act [of infringement] is committed.’ ” NTP, 418 F.3d 1282, 1316 (citing North Am. Philips Corp. v. American Vending Sales, Inc., 35 F.3d 1576, 1579 (Fed.Cir.1994)). In order to determine where an act of infringement occurred, the Court must first determine what constitutes the act of infringement. In analyzing where the act of infringement occurred in NTP, the Federal Circuit recognized that courts have interpreted the term “use” broadly. NTP, 418 F.3d 1282, 1316 (citing Bauer & Cie v. O’Donnell, 229 U.S. 1, 33 S.Ct. 616, 57 L.Ed. 1041 (1913) (noting that the predecessor to title 35 used the term “use” as “a comprehensive term” that embraced “within its meaning the right to put into service any given invention”)); Webster’s Third New International Dictionary 2523 (1993) (defining “use” as to “put into action or service”). Based on the framework of its analysis, the Court interprets the Federal Circuit’s holding as defining both where and when a “use” of a claimed system occurs. Accordingly, under the Federal Circuit’s holding in NTP, an alleged infringer uses a claimed system when the alleged infringer exercises control over the system and obtains beneficial use of the system. The question then becomes whether genuine issues of material fact exist whether Expedia exercises control over, and obtains beneficial use of, the claimed system. In arguing that Expedia uses the claimed system, Civix relies on the declaration of Clifford Kraft (the “Kraft Declaration”), as well as other evidence in the record. Because Expedia moves to strike the Kraft Declaration, the Court addresses each of these categories of evidence separately. a. The Kraft Declaration Expedia moves to strike the Kraft Declaration, arguing that Civix failed to disclose Kraft as either a fact or expert witness. Whether the Kraft Declaration offers fact testimony, expert testimony, or both, its disclosure is untimely and unfairly prejudices Expedia. Even if Kraft offers solely fact testimony, as Civix argues, Ci-vix neither disclosed Kraft on its initial disclosures pursuant to Rule 26(a)(1) nor supplemented these disclosures to include Kraft. Moreover, Civix offers no justifiable reason for failing to disclose Kraft until this late stage. Although Civix argues that it submits the Kraft Declaration in “direct response to Expedia’s newly articulated argument that it neither controls nor empowers use of its website,” (R. 377-1; Civix Resp. to Expedia’s Mot. to Strike at 6), Civix offers no proof that Expedia’s argument is in fact a surprise to Civix. Notably, Civix does not move to strike Expedia’s “new argument.” Indeed, from the record before the Court, it is difficult to see how Civix could claim surprise at Expedia’s argument that it does not “use” the claimed invention. Civix bears the burden of proving infringement, Centricut, LLC v. Esab Group, Inc., 390 F.3d 1361, 1367 (Fed.Cir.2004) (“The patentee has the burden of proving infringement by a preponderance of the evidence”), which includes proving that Expedia committed an infringing “act,” ie., that it made, used, offered to sell, or sold the patented invention within the United States. 35 U.S.C. § 271(a). Civix has had ample time to discover the facts to prove its affirmative case. Further, to the extent that Civix is offering Kraft as a mere fact witness to provide testimony on his use of the Expe-dia website, Civix has not shown why it could not have used a witness that was already fairly disclosed in this case. To the extent Civix offers Kraft’s testimony as opinion testimony, Civix failed to properly disclose Kraft pursuant to Rule 26(a)(2). As Expedia points out, the Advisory Committee note to Federal Rule of Evidence 701 provides: Rule 701 has been amended to eliminate the risk that the reliability requirements set forth in Rule 702 will be evaded through the simple expedient of proffering an expert in lay witness clothing. Under the amendment, a witness’ testimony must be scrutinized under the rules regulating expert opinion to the extent that the witness is providing testimony based on scientific, technical, or other specialized knowledge within the scope of Rule 702 ... By channeling testimony that is actually expert testimony to Rule 702, the amendment also ensures that a party will not evade the expert witness disclosure requirements set forth in Fed.R.Civ.P. 26 ... by simply calling an expert witness in the guise of a layperson. Fed.R.Evid. 701, advisory committee’s note (citations omitted). Indeed, portions of the Kraft Declaration offer plain opinion testimony under Rule 702. In Paragraph 8, for example, Kraft opines that “it clearly would not be possible for Expedia to operate these services without the use of a personal computer or other device connected to communications links, including the Internet.” (R. 358-1; Ex. 4, ¶ 8.) Kraft also opines that various elements of the asserted claims are satisfied by Expedia’s accused web site, (id. ¶ 11), and “the Expe-dia website controls what I can gain access to and the format and type of information I received,” (id. ¶ 11.) This testimony goes beyond Kraft’s personal observations from operating the Expedia website. Rather, Kraft bases this testimony on scientific, technical, or other specialized knowledge and therefore this testimony is opinion testimony under Rule of Evidence 702. The Kraft Declaration is untimely. As with Kraft’s fact testimony, and for the same reasons, Civix’s delay is inexcusable. Further, at this late stage in the case, Civix’s delay in providing the Kraft Declaration unfairly prejudices Expedia. Expe-dia did not have time to depose Kraft to address his testimony in the context of summary judgment briefing. Accordingly, the Court strikes the Kraft Declaration. b. Other Evidence In The Record Besides the Kraft Declaration, Civix also points to other evidence that it alleges shows that Expedia uses the claimed system with both its Car Wizard and Lodging Wizard. Civix relies on confidential Expe-dia documents that describe Expedia’s car database. (R. 388-1; PL’s Ex. 15.) An Expedia witness testified that users on Exedia’s website search Expedia’s databases to search for car rental locations. (Id., Ex. 13 at 23.) An Expedia witness testified that Expedia stores data about hotels. (Id., Ex. 2 at 16.) The information provided on Expedia’s website in response to a user’s search is information stored on Expedia’s databases. (Id., Ex. 2 at 70.) Civix further points to advertising by Ex-pedía that shows the use of Expedia’s website featuring Expedia returning a listing of hotels. (Id., Ex. 5 at 46.) Also, Civix relies on usability studies that Expedia performed related to its design of its user interface. (PSAUF ¶ 6.) This evidence, viewed in its entirety, creates a triable issue of fact whether Expedia exercises control over its system and obtains beneficial use from its system, such that it “uses” the system under § 271(a). These same genuine issues of fact also defeat Expedia’s argument that it does not use the claimed communication link. 2. Whether Expedia Induces Infringement Of Claims 6 And 26 Civix also argues that Expedia actively induces the infringement of claims 6 and 26. Expedia’s lone argument against this theory is that because Expedia’s users do not use Expedia’s internal or remote databases, the Court cannot find direct infringement by some third party. Met-Coil Sys., Corp. v. Korners Unlimited Inc., 803 F.2d 684, 687 (Fed.Cir.1986) (“Absent direct infringement of the patent claims, there can be neither contributory infringement nor inducement of infringement”) (internal citations omitted). As discussed above, however, Expedia’s argument that in order to directly infringe a system claim, a party must directly use each component of the system fails. B. Claims 47 and 56 Of The ’622 Patent Claim 47 of the ’622 patent states: 47. Remote access port for remotely accessing a selected category of items of interest in a selected geographic vicinity from a remote database, the database being of the type which stores information about a plurality of items of interest, the information including, for each of the items of interest, a geographical location and at least one associated category, the remote access port generating a request signal representative of a selected category and a selected geographic vicinity of the items of interest in response to inputs by the user, the remote access port having a user interface for accepting the inputs and for indicating to the user the position of at least one of the items of interest within the selected category and geographic vicinity- (DSUF ¶ 6.) Expedia argues that Civix has failed to prove that Expedia uses the claimed remote access port under § 271(a). 1. Whether Expedia Directly Infringes Claims 47 and 56 Unlike claims 6 and 26 of the ’622 patent, which were system claims, claims 47 and 56 are product claims, directed at a “remote access port.” As discussed above, the Federal Circuit has recently addressed the meaning of “use” under the Patent Act. The court recognized that courts interpret “use” broadly and that the Supreme Court has stated that “use” “embraces within its meaning the right to put into service any given invention.” NTP, 418 F.3d 1282, 1316 (quoting Bauer & Cie, 229 U.S. 1, 33 S.Ct. 616, 57 L.Ed. 1041). The Federal Circuit also cited the dictionary definition of “use” as to “put into action or service.” Webster’s Third New International Dictionary 2523 (1993). Here, genuine issues of fact exist whether Expedia “puts into service” the claimed remote access port. (R. 388-1; Pl.’s Ex. 2 at 16, 70; Ex. 5 at 46; Ex. 13 at 23; Ex. 15; PSAUF ¶ 6.) While Expedia does not own, or directly operate, the computer terminals that its customers use to access and use the Expedia website, Civix points to sufficient evidence showing that Expedia provides its website to those computer terminals, and, upon doing so, “puts into service” the claimed port. 2. Whether Expedia Indirectly Infringes Claims 47 and 56 Civix also argues that Expedia actively induces the infringement of claims 47 and 56. Expedia first argues that Civix did not disclose this theory during expert discovery and therefore waived this argument. Expedia does not argue, however, that Civix never set forth its indirect infringement theory during fact discovery. Although Civix may not rely on expert testimony in support of this theory, it may still advance this theory at trial without such testimony. Absent Expedia demonstrating that Civix failed to disclose this theory during fact discovery, the Court cannot find that Civix is improperly arguing indirect infringement at this stage. Next, Expedia contends that Expedia’s users do not use Expedia’s internal databases and therefore the Court cannot find that they directly infringe. See Met-Coil Sys., 803 F.2d at 687. The plain language of claim 47 does not require that the user of the port also use the internal database. Rather, claim 47 merely requires that the claimed port be used for the purpose of “remotely accessing a selected category of items of interest in a selected geographic vicinity from a remote database.” Accordingly, even if Expedia’s users do not use its databases, this fact alone does not prevent the jury from finding that Expedia’s user directly infringes claim 47. C. Claims 1, 6, Or 22 Of The ’307 Patent Claim 1 of the ’307 Patent states: 1. A method for locating items of interest relative to a first location, comprising the steps of: selecting the first location at a port situated at a second location; selecting, at the port, a category associated with the items of interest; communicating the first location and the category to a database that is connected to the port and that is not located at the second location; and receiving, at the port, information defining geographic locations of the items of interest, the information deriving from spatial detail within the database. (DSUF ¶ 6.) Claims 6 and 22 depend from claim 1 and therefore contain each of the limitations of claim 1. 35 U.S.C. § 112, ¶ 4. Expedia argues that it does not indirectly infringe claims 1, 6 and 22 because Civix has failed to prove that any third-party users have carried out the step of “communicating the first location and category to a database.” Specifically, Expedia contends that when third-party users transmit a request to the Expedia website, a web server receives the request, not a database. The web server, then, and not the third-party user, communicates with Expe-dia’s internal database. Civix correctly points out that when a claim uses the term “comprising,” the inclusion of additional steps to the claimed process does not negate infringement. Dow Chem. Co. v. Sumitomo Chem. Co., 257 F.3d 1364, 1380 (Fed.Cir.2001) (noting the “well-established principle that the mere addition of elements in the accused product or process cannot negate infringement”) (internal quotations omitted). During the Markman process, the parties agreed that the term “communicating” means “transmitting or otherwise conveying.” (R. 330-1; Def.’s Ex. 14.) As Civix points out, the plain language of the claims does not limit the claimed process to directly communicating. Therefore, under the agreed construction of “communicating,” the mere fact that Expedia’s website first transmits to a web server, and then to a database, does not avoid infringement as a matter of law. Accordingly, the Court denies Expedia’s motion for summary judgment on claims 1, 6, and 22 of the ’307 patent. D. Claims 1, 5, Or 7 Of The ’291 Patent Claim 1 of the ’291 patent states: 1. A system for determining the position of one or more items of interest in a selected category, comprising: a database for storing information about the items of interest, the information including, for each of the items of interest, at least one associated category and spatial detail defining a geographic position; and a plurality of ports for accessing the database through the Internet, each port having a user interface for accepting inputs by a user of the system and for indicating to the user the geographic position of one or more of the items of interest, the user inputs defining the category associated with items of interest. (DSUF ¶ 6.) Claims 5 and 7 depend from claim 1 and therefore contain each of its limitations. 35 U.S.C. § 112, ¶4. In contending that it does not “use” the claimed system, Expedia relies on the same arguments that it makes regarding claims 6 and 26 of the ’622 patent. As discussed above, genuine issues of fact exist whether Expedia uses the claimed system such that it directly infringes claims 1, 5, and 7, and whether Expedia induces the infringement of those claims. E. Claims 14, 21, Or 23 Of The ’291 Patent Claim 14 of the ’291 patent states: 14. A method for determining the position of one or more items of interest in a selected category, comprising: storing information about the items of interest in a database, the information including, for each of the items of interest, at least one associated category and spatial detail defining a geographic position; and supplying information about at least one of the items of interest to one of a plurality of ports, connected to the database at least in part through the Internet, in response to inputs at the one port, wherein a user at the port may locate the one item of interest. (DSUF ¶ 6.) Claims 21 and 23 depend from claim 14 and therefore contain each of the limitations of claim 14. 35 U.S.C. § 112, ¶ 4. Expedia contends that Civix has offered no evidence that Expedia determines “the position of one or more items of interest in a selected category” or “locate[s] the one item of interest” as claimed. 1. Whether Expedia Waived Its Arguments Regarding The ’291 Patent Civix first argues that Expedia waived its two noninfringement arguments regarding the ’291 patent when it failed to raise these issues during claim construction proceedings. In a footnote in its Reply, Expedia argues that it properly raises this issue now because the Markman proceeding determined the meaning of disputed claim terms, whereas now, the Court must determine whether or not the preamble or “wherein” clause embrace the accused product. Expedia misstates the circumstances. It is not simply asking the Court to analyze whether the preamble and “wherein” clause cover the accused product. Instead, Expedia is asking the Court to decide the limiting effect of those clauses — an issue that is plainly one of claim construction that one or both of the parties should have raised during the Markman process. Civix, however, fails to prove that Expe-dia waived its argument on these issues. Notably, Civix does not contend that Ex-pedia has not previously asserted that it did not meet either of the limitations at issue. Assuming Civix had notice of these noninfringement arguments, Civix does not explain why the burden was Expedia’s, alone, to raise the construction of these disputed claim terms in the Markman process. In other words, if Civix had notice that Expedia was contending that it did not satisfy these limitations, then Civix should have proposed its construction of these claims covering the accused methods, just as Expedia should have proposed its own construction. Accordingly, the Court cannot find, on the record before it, that Expedia has waived these arguments. 2. Whether Expedia “determin[es] the position of one ore more items of interest in a selected category” The issue before the Court is whether the preamble of claim 14 of the ’291 patent limits that claim, and if it does, what effect does that have on the claimed method. A claim preamble is limiting “if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed.Cir.2002). Conversely, the Federal Circuit has explained: If [] the body of the claim fully and intrinsically sets forth the complete invention, including all of its limitations, and the preamble offers no distinct definition of any of the claimed invention’s limitations, but rather merely states, for example, the purpose or intended use of the invention, then the preamble is of no significance to claim construction because it cannot be said to constitute or explain a claim limitation. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed.Cir.1999). Although the claim body relies on the preamble for the antecedent basis of the term “the items of interest,” that alone is not dispositive on the limiting effect of the preamble. The Federal Circuit has found a statement of intended use in a preamble to be non-limiting, even where the body of the claim relied on the preamble for antecedent basis. See Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368 (Fed.Cir.2001) (holding that the preamble “[a] method for treating a patient suffering from a taxol-sensitive tumor comprising [ ]” did not limit the claim even though the body of the claim relied on the term “a patient” for antecedent basis). Rather, the Federal Circuit has recognized that there is no litmus test for determining the limiting effect of a preamble, see Pitney Bowes, 182 F.3d at 1305 (no “litmus test” exists for determining the effect of a preamble), and the Court must decide the issue on a case by case basis, looking to the claim as a whole, the specification, and the prosecution history. Applied Mat’ls, Inc. v. Advanced Semiconductor Mat’ls Am., Inc., 98 F.3d 1563, 1572-73 (Fed.Cir.1996) (“Whether a preamble stating the purpose and context of the invention constitutes a limitation of the claimed process is determined on the facts of each case in light of the overall form of the claim, and the invention as described in the specification and illuminated in the prosecution history”). Here, neither party fully addresses whether the specification and prosecution history support treating the preamble as limiting, and to what extent. The parties have not sufficiently developed these issues in their briefing in order for the Court to make a decision on this issue of law. The parties may submit additional briefing on the limiting effect of the preamble and “wherein” clause of claim 14 of the ’291 patent by September 15, 2005. Even if the preamble were limiting, as Expedia contends, genuine issues of fact would still exist whether Exedia satisfies this limitation. Given the fact that Expe-dia concedes, at least for purposes of this motion, that it performs the steps of storing, and supplying information, triable issues of fact exist whether Expedia, itself, is the entity that “determin[es] the position of one or more items of interest in a selected category.” 3. Whether Expedia “Iocate[s] the one item of interest” Expedia asserts that the clause “wherein a user at the port may locate the one item of interest” is limiting and Expedia does not satisfy that limitation because Expedia, itself, does not use a port to locate the one item of interest. As with the preamble, even if the “wherein” clause is limiting as Expedia contends, genuine issues of fact exist whether Expedia meets that limitation. Accordingly, the Court denies Ex-pedia’s motion for summary judgment of noninfringement of claims 14, 21, and 23 of the ’291 patent. F. The Go2 Patents Claim 27 of the ’692 patent provides: 27. A locational information system capable of being used to provide a location, said locational information system comprising: a repository capable of receiving and storing said location; a receiver capable of receiving a request including a locational address, wherein a search of said repository acquires said location; and a transmitter capable of transmitting said location to a user; wherein said locational address is defined based on a latitude/longitude. (DSUF ¶ 6.) Claim 28 depends on claim 27 and therefore contains each of its limitations. 35 U.S.C. § 112, ¶ 4. Claim 41 provides: 41. A method of providing a location, said method comprising: storing said location in a repository; receiving a request including a locational address; searching said repository based on said locational address; acquiring said location; and transmitting said location to a user; wherein said locational address is defined based on a latitude/longitude. (DSUF ¶ 6.) Claim 42 depends from claim 41 and contains each of its limitations. 35 U.S.C. § 112, ¶ 4. The parties agreed that the term “request” means “a communication indicating the desire to obtain information,” and the term “locational address” means “either a ULA (Universal Locational Address) or a PLA (Proprietary Locational Address).” The parties disputed the construction of “PLA” and the Court construed “PLA” to mean “proprietary locational address, which is a name, which will be unique within the district, that distinctly identifies a location with (sic) the district. A proprietary address is created by selecting a name, capturing positional information about the location associated with the name, checking that the name is unique in the district and storing the name with its associated locational information and feature data. Once stored, the name and the associated information may be selectively disseminated to users of locational systems.” Expedia first argues that Civix has failed to show that Expedia receives PLAs. Next, Expedia argues that even if the evidence reflected that Expedia selected, checked, and received PLAs, Civix has failed to show that Expedia’s Hotel and Car Wizards transmit PLA locations to users. Expedia also argues that if Civix were able to show that Expedia did infringe claims 27, 28, 41, and 42, Civix would also have shown that the claims were invalid for anticipation. The Court address these arguments in turn. 1. Expedia’s Motion to Strike The Gehani Declaration Before turning to the parties’ arguments, the Court first addresses Expedia’s motion to strike the declaration of Narain Gehani that Civix provided in opposition to Expedia’s motion for summary judgment (the “Gehani Declaration”). Ex-pedía contends that the Gehani Declaration offers expert testimony that was not disclosed according to Rule 26(a)(2) or the Court’s order. Civix counters by arguing that the Gehani Declaration relates to validity issues and merely addresses deposition questions asked by Expedia’s counsel that improperly related to validity, rather than infringement, issues. Therefore, Civix argues that Expedia “opened the door” to this declaration by asking Gehani questions related to validity. Civix’s argument does not address the entire Gehani Declaration. Only paragraphs 27 and 27 address validity issues. The Gehani Declaration primarily addresses the functionality of Expedia’s website, and therefore squarely confronts infringement issues. Accordingly, paragraphs 5-26 provide untimely expert testimony and the Court strikes those paragraphs. Civix has the burden of proving infringement and has offered no excuse for providing this untimely expert testimony relating to infringement issues. Further, Expedia would be unfairly prejudiced by this testimony because it did not have an opportunity to provide rebuttal expert testimony. Paragraphs 26 and 27 of the Gehani Declaration address the issue of validity. Gehani expressly stated at his deposition that he required more time to review the ’622 patent in light of Expedia’s questions before he could answer those questions. Although Gehani ultimately did offer answers to those questions, his express statements that he needed additional time to respond reserved his right to provide further testimony on those questions at a later time. Accordingly, the Court denies Expedia’s motion to strike paragraphs 26 and 27 of the Gehani Declaration. 2. Whether Expedia Receives PLAs Expedia contends that it does receive PLAs as required by the claims of the Go2 patents because Civix has failed to show that any locations that Expedia receives are formed according to the process required by the Court’s claim construction of “PLA.” Specifically, Expedia argues that Expedia does not: (1) select or choose from among names; (2) capture positional information about selected names; (3) check names to be used to ensure that they are unique within a given district or geographical area; (4) store selected names with associated locational information and feature data; or (5) selectively disseminate names together with associated information to users. In particular, Expedia contends that Civix’s expert does not address whether these claim construction requirements are present in the accused system and method. Even if Expedia is correct that Civix’s expert ignored these requirements, Civix may still present evidence to demonstrate that a triable issue of fact exists whether Expedia receives PLAs. a. Selecting A Name Expedia’s expert concedes that there are multiple possibilities for identifying a location that Expedia receives from a user. (PSAUF ¶ 25.) In the light most favorable to Civix, this creates an issue of fact whether Expedia receives a PLA that is created using the step of selecting a name. b. Capturing Positional Information About the Location Associated With The Name Expedia’s own expert further indicated that Microsoft performs geo-coding under contract for Expedia. (PSAUF ¶ 25.) Also, Civix identifies evidence that Expe-dia employees create and input coordinate data describing the geometric boundaries of the locations stored in Expedia’s databases. (PSAUF ¶ 27.) This creates a triable issue of fact whether Expedia receives a PLA that is created using the step of capturing positional information about the location associated with the name. c. Checking That The Name Is Unique Within The District Civix relies on a declaration from Lee Hancock, one of the named inventors on one of the Go2 patents at issue (the “Hancock Declaration”). Mr. Hancock used Expedia’s website, performing a search for hotels in the vicinity of “park.” (Hancock Decl. ¶ 11.) Mr. Hancock provided the results of that search (Id., Ex. C) and testified that “[t]here were no duplicates in the list of attractions Expedia returned in response to [his] second search.” (Id. ¶ 16.) Viewing this evidence in the light most favorable to Civix, this evidence creates a genuine issue of fact whether Expe-dia’s system receives a PLA that is created using the step of “checking that the name is unique within the district.” d.Storing The Name With Its Associated Locational Information And Feature Data Expedia contends that it does not “store selected names with associated locational information and feature data.” (DSUF ¶ 22; Widajaja Decl. ¶ 6; Coldham Decl. ¶ 6.) The Court’s construction of the term “PLA,” however, merely requires that one create the PLA using the step of “storing the name with its associated locational information and feature data.” In other words, in arguing that it does not meet this requirement, Expedia inserts the word “selected” into its assertions. Other than the above conclusory assertions, Expedia does not further develop this argument and therefore the Court cannot determine whether Expedia is arguing that it does not store any names, or whether Expedia is merely re-stating its contention that it does not “s^ect” the names. For the reasons discussed above in Section II.F.2.a., genuine issues of fact exist whether one creates the PLAs by “selecting a name.” Accordingly, the Court cannot find as a matter of law that this requirement is not present in the accused system and method. e. Selectively Disseminating To Users The Court’s construction of “PLA” does not require Expedia to actually “selectively disseminatef ] the associated information to users.” Rather, the construction states that the associated information “may be selectively disseminated to users.” Expe-dia has not argued that its system is incapable of selectively disseminating the associated information to users, and the Court cannot find as a matter of law that Civix cannot prove that the accused systems meets this claim requirement. 3. Whether Expedia’s Hotel And Car Wizards Transmit PLA Locations To Users Civix points out that Expedia confuses the terms “locational address” and “location.” Although Expedia contends that it does not transmit a PLA to its users, the claims only require that the system transmit a “location” to the user. The inventor used both the term “locational address” and “location” in the Go2 claims, and therefore the Court presumes that they have different meanings. See CAE Screenplates Inc. v. Heinrich Fiedler GmbH & Co. K.G., 224 F.3d 1308, 1317 (Fed.Cir.2000) (“In the absence of any evidence to the contrary, we must presume that the use of these different terms in the claims connotes different meanings”). Further, claim 45 adds the limitation “wherein said location is an area” and claim 47 (depending from claim 45) adds the limitation “wherein said area is based on a PLA.” Because a “location” can be “based on a [type of locational address],” a “location” must have a different scope than a “locational address.” Accordingly, the Court cannot decide as a matter of law that Expedia does not infringe the Go2 claims merely based on the fact that Expe-dia does not transmit the location of a PLA to the user. 4. Whether Claims 27, 28, 41, And 42 Must Be Invalid In Order For Ex-pedía To Infringe Them Expedia asserts that even if it did infringe claims 27, 28, 41, and 42 of the ’692 patent, those claims would necessarily be invalid for anticipation in light of the prior art ’622 patent. Expedia relies on the admissions of Civix’s expert, Gehani, from his deposition. As discussed above, Civix submits paragraphs 26-27 of the Gehani Declaration where Gehani explains his alleged deposition admissions. Declarations that contradict earlier deposition testimony are typically insufficient to create genuine issues of fact. See Amadio v. Ford Motor Co., 238 F.3d 919, 926 (7th Cir.2001) (“where a deposition and affidavit are in conflict, the affidavit is to be regarded unless it is demonstrable that the statement in the depositi