Patent Law

Blue Grass

By Gary Odom and Jordan Kuhn

iLOR sued Google for infringing 7,206,839. Losing claim construction, the Kentucky district court judge denied iLOR's preliminary injunction motion, granted Google's summary judgment of noninfringement, and sua sponte dismissed the "action" with prejudice. On appeal, the CAFC figured the goose wasn't yet cooked, as Google had outstanding counterclaims. The single disputed claim term shows that stretching claim construction to incredulity is a surefire formula for throwing away money on lawyers.

iLOR v. Google (CAFC 2008-1178)

'839... is directed to a "method for adding a user selectable function to a hyperlink." As stated in the abstract, the method described in the claims "permits the user to interact with a hyperlink in a variety of ways without necessarily having to open and/or follow the hyperlink."

The only disputed limitation of that claim was "the toolbar being displayable based on a location of a cursor in relation to a hyperlink," which the district court construed to require that the "toolbar is 'automatically displayed' upon the placement of the cursor in proximity to a hyperlink with no further action on the part of a user." Decision at 14. Because it was undisputed that Google Notebook does not automatically display its toolbar, but instead requires the user to right-click on the hyperlink to display the toolbar, the district court granted Google's motion for summary judgment of noninfringement and denied iLOR's motion for preliminary injunction. Id. at 20-21.

We agree with the district court that "the toolbar being displayable based on a location of a cursor in relation to a hyperlink" is properly limited to toolbars that are automatically displayed based on the location of the cursor without further user action. The language of the claim itself suggests that the toolbar is automatically displayed, as opposed to requiring some further action on the part of the user. The claim recites, "the toolbar being displayable based on a location of a cursor in relation to a hyperlink." (emphasis added). While iLOR contends that the emphasized language is merely a necessary, as opposed to a sufficient, condition for display of the toolbar, the claim language does not provide any indication that the display is "based in part" on the cursor position, nor does either the claim language or the specification illustrate any other condition which, along with the cursor position, may cause display of the toolbar. Assuming for the sake of argument, however, that the language of the claim is ambiguous as to whether further user action is contemplated, such ambiguity is eliminated when the claim language is viewed in light of the specification and prosecution history.

The abstract of the '839 patent, for example, provides that "[w]hen the cursor has remained near the hyperlink for a predetermined time period, a toolbar is displayed containing one or more link enhancements that the user may select." (emphasis added).

District court claim construction affirmed, as well denying preliminary injunctive relief.

Full post as published by The Patent Prospector on December 14, 2008 (boomark / email).