In Brief: iLOR v. Google

Posted on | June 23, 2008 | No Comments

2008-1178 iLOR v. Google
ED/KY 5:07-cv-00109
Judge Joseph Hood

The appeal briefs are in for iLOR v. Google.  iLOR alleged that Google Notebook utilizes the enhanced hyperlink feature claimed in 7,206,839.  Judge Hood ultimately denied iLOR’s motion for preliminary injunction and, simultaneously, granted Google’s motion for summary judgment of non-infringement.

The decision turned on construction of the limitation "the toolbar being displayable based
on a location of a cursor in relation to a hyperlink" in claim 26.  The court construed it to mean "one in which the toolbar is automatically displayed upon the
placement of the cursor in proximity to the hyperlink with no further
action on the part of a user."  Google’s toolbar is apparently not automatically displayed.

You can download iLOR’s brief here, and Google’s here.   The Summary of Arguments from each brief are posted below the fold.

Oral argument has not yet been calendared by the Federal Circuit.

Note:  In addition to the substantive arguments, there is a pending procedural issue before the Federal Circuit.  The district court’s order granting summary judgment to Google stated: “that Plaintiff’s claims pending against Defendant in this matter shall be and the same hereby are DISMISSED WITH PREJUDICE.”
[(emphasis in original)] The Judgment entered the same day stated: “this Order
is FINAL AND APPEALABLE and THERE IS NO JUST CAUSE FOR DELAY.” [(emphasis in original)]  However, Google’s counterclaims were never expressly dismissed or resolved, and Google’s brief argues that the appeal is premature as its counterclaims are technically still pending and the order is not "final and appealable" despite the language quoted above.

Summary of Argument of iLOR.  Frost Brown Todd, Cincinnati (David E. Schmit) on brief.

1. The primary issue in this appeal is the construction of the phrase “the toolbar being displayable based on a location of a cursor in relation to a hyperlink” in claim 26 of the ‘839 patent Properly construed, this term means that the toolbar can become visible (but doesn’t necessarily in fact become visible) when the cursor is positioned in a certain relationship to the enhanced hyperlink, regardless of whether additional user action, for example a right mouse click on or near the enhanced hyperlink, is necessary to cause the toolbar to actually display. The district court erroneously construed this phrase to mean that the toolbar must be “automatically displayed’ upon the placement of the cursor in proximity to a hyperlink with no further action on the part of a user.” This construction improperly excludes from the scope of claim 26 other user actions, for example a right mouse click on or near the enhanced hyperlink, necessary to cause the toolbar to actually display. This legal error drove disposition adverse to iLOR of the preliminary injunction and summary judgment motions.

2. There is nothing in the plain language itself that limits claim 26 to “automatic” display of the toolbar. “Being display able” simply means that the toolbar is “capable of” being displayed. “Based on” indicates a but-for causal relationship and thus a necessary logical condition. Accordingly, the claim only requires that a necessary (but not sufficient) condition for display of the toolbar be met: the positional relationship of the cursor and enhanced hyperlink. What happens thereafter is irrelevant to the claim phrase under discussion. The claim’s use of the open-ended transitional term “comprising” compels such a construction. See Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 1271 n6 (Fed Cir. 1986)(claim employing transitional term “comprising” does not exclude additional unrecited steps in a method claim); Georgia-Pacific Corp. v. U.S. Gypsum Co., 195 F.3d 1322, 1327-28 (Fed. Cir. 1999)(”comprising is inclusive … or open- ended and does not exclude additional, unrecited elements or method steps”). Accordingly, additional user actions, for example a right mouse click to cause the toolbar to actually appear, are not excluded from the scope of the claim.

3. The patent specification, including the abstract, does not limit claim 26 to “automatic” display of the toolbar, since there is no intentional disclaimer or disavowal in the specification of other user actions that may be necessary to cause actual toolbar display. See Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005). The district court impermissibly imported narrowing limitations relating to “automatic” toolbar display from the specification into the claims. See CollegeNet, Inc. v. ApplyYourself, Inc., 418 F.3d 1225, 1231 (Fed. Cir. 2005)(”this court will not at any time import limitations from the specification into the claims”); Innova/Pure Water, Inc. v. Safari Water Filtration Sys. Inc., 381 F.3d 1111, 1117 (Fed. Cir. 2004) (“[P]articular embodiments appearing in the written description will not be used to limit claim language that has broader effect.) The specification also describes alternative embodiments where toolbar display is not “automatic.” The district court’s construction would impermissibly exclude at least one of those embodiments. See Verizon Serv. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1305 (Fed. Cir. 2007). Certainly, claim 26 may cover embodiments not expressly described in the specification. See Nazomi Communications, Inc. v. ARM Holdings, PLC, 403 F.3d 1364, 1369 (Fed. Cir. 2005).

The district court also incorrectly reasoned that claim 26 cannot cover a “right click” in connection with display of the toolbar because “[n] part of the ‘839 patent, including Claim 26, suggests the possibility of an embodiment in which the user would ‘right click’ in order to display the toolbar.” Apx. 0014. This was error. See Stiftung v. Renishaw PLC, 945 F.2d 1173 (Fed Cir. 1991).

The district court’s reliance for its claim construction on the specification’s discussion of “single click” advantages over the prior art Netscape Navigator was also erroneous — that description related to opening a complete new window, not the displayability of a toolbar within a window. Nowhere in the specification is there an intentional disclaimer or disavowal of the scope of the invention actually claimed in the ‘839 patent. See LG Elecs., Inc. v. Bizcom Elecs., Inc., 453 F.3d 1364, 1378 (Fed. Cir. 2006).

4. Other claims in the ‘839 patent show that claim 26 is not limited to “automatic” display of the toolbar. For example, since claims 1 and 9 require the toolbar to actually display while the cursor is in proximity to the enhanced hyperlink (which might imply “automatic” toolbar display), different words than used in claim 26, it is presumed that claim 26 does not require “automatic” toolbar display. Karlin Tech, Inc. v. Surgical Dynamics, Inc., 177 F.3d 968, 971-72 (Fed. Cir. 1999). The district court’s reliance on the prosecution history to limit claim 26 was misplaced because:

a. The claims considered in the parent application lacked the “being displayable” and “based on” limitations of claim 26. The applicants’ statements in the parent application related to different limitations (detecting a cursor in proximity to the hyperlink and displaying the toolbar while the cursor is in proximity to the hyperlink) not present in claim 26. These statements do not clearly and unmistakably surrender in claim 26 further user action, for example a right mouse click, to make the tool bar appear. See Cordis Corp. v. Medtronic, Inc., 511 F.3d 1157, 1177 (Fed Cir. 2008); Elbex Video Ltd. v. Sensormatic Electronics Corp., 508 F.3d 1366, 1371 (Fed. Cir. 2007).

b. Read in context, iLOR’s statement that claim 26 was “similar” to other claims and should be allowed for the same reasons did not suggest that the claim was limited to “automatic” display of the toolbar.

c. The examiner’s “reasons for allowance” of the ‘839 patent (1) show that claim 26 was allowed for reasons other than the “displayable” limitation in dispute, and (2) do not show an intent by the applicants to exclude a right mouse click or other user action. iLOR’s lack of response to the examiner’s “reasons” does not show a clear and unmistakable disavowal of claim scope. Salazar v. Procter & Gamble Co., 414 F.3d 1342, 1344-45, 1347 (Fed. Cir. 2005).

5. The district court’s erroneous construction of claim 26 resulted in an unwarranted grant of summary judgment of no infringement. Baldwin Graphic Systems, Inc. v. Siebert, Inc., 512 F.3d 1338, 1346 (Fed. Cir. 2008).

6. The district court’s erroneous construction of claim 26 was legal error leading to an abuse of discretion in denying iLOR’s motion for preliminary injunction. Outside the Box Innovations, LLC v. Travel Caddy, Inc., 2008 U.S. App. LEXIS 813 at *6 (Fed. Cir. 2007); Bell and Howell Document Mgmt. Prods. Co. v. Altek Sys., 132 F.3d 701, 707 (Fed. Cir. 1997).

7. The district court erred as a matter of law in dismissing iLOR’s claims in the action with prejudice. Google’s motion, in effect for partial summary judgment, and iLOR’s preliminary injunction motion, both of which only addressed claim 26, were not case dispositive.

8. The district court’s claim construction, grant of summary judgment of non-infringement, and denial of iLOR’s preliminary injunction motion must be vacated, and the case remanded for further proceedings using the proper construction of claim 26; and the dismissal with preju
dice of iLOR’s claims against Google must be vacated and remanded for further proceedings.

Summary of Argument of Google.  Fish & Richardson (Frank E. Scherkenbach, Kurt L. Glitzenstein, John Dragseth) on brief.

Every component of the intrinsic evidence here – claim, specification,
and prosecution history – requires an automatic toolbar pop-up based on
the positioning of a cursor in relation to a hyperlink, without any
need to click on the hyperlink. The claim itself says as much, and
recites nothing else. The specification resolves any question about the
claim language by showing nothing but automatic pop-up menus and by
plainly criticizing, and distinguishing, the prior art’s requirement
that a user right-click his mouse to display a toolbar. The  prosecution history reiterates this theme, because iLOR (i)
distinguished clicking when it prosecuted the parent application, (ii)
never notified the examiner that it had allegedly changed that feature
in the child application, and, in fact, (iii) explicitly tied claim 26
to the prior claims. It is no surprise then that the examiner cited
automatic pop-ups as a basis for allowing all of the claims – the final
independent basis on which to affirm the district court’s claim
construction and resulting denial of iLOR’s preliminary injunction
motion.

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