On Thursday, December 11, 2008, in iLOR v. Google, the United States Court of Appeals for the Federal Circuit awarded Google a victory in the patent litigation brought against the Internet giant by iLOR, LLC. iLOR had sued Google in the United States District Court for the Eastern District of Kentucky alleging that Google’s Google Notebook product was infringing upon US Patent No. 7,206,839, which is owned by iLOR and is directed to a “method for adding a user selectable function to a hyperlink.” As stated in the abstract of the patent, 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.” At issue in the appeal to the Federal Circuit was the district court’s denial of iLOR’s motion for preliminary injunction. Relying only on claim 26 of the ‘839 patent iLOR requested that Google be enjoined from using or inducing others to use Google Notebook in a way that infringed that claim.

The only disputed limitation of that claim was the contained in the phrase “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. 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. Ultimately, the Federal Circuit would agree with the district court and find that Google Notebook does not infringe upon the ‘839 patent. The district court construed the “displayable” limitation 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.” Based on this construction the district court concluded that iLOR could not demonstrate a reasonable likelihood of success on the merits and accordingly denied its motion for preliminary injunction.

The Federal Circuit agreed 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. Adding to this being the correct interpretation of the claim was the fact that the specification did not disclose any version of the invention in which the user must further act in order to display the toolbar, such as by right-clicking. Still further, the prosecution history of the ‘839 patent demonstrated that iLOR intentionally gave up the ground that they were seeking in this trial to capture. Specifically, in order to distinguish a prior art reference iLOR’s representatives argued that the independent claims did not cover a hyperlink requiring any additional action. The relevant argument made was:

Newfield does not teach detecting a cursor in proximity to a hyperlink. Instead, Newfield teaches that a user must click on or select a hyperlink to access the breadth-first search system of Newfield. In contrast, the present invention detects a cursor in proximity to the hyperlink. Therefore Newfield does not teach detecting a cursor in proximity to a hyperlink.

The Federal Circuit did acknowledge that this argument was not made in association with claim 26, but rather with respect to claims 1 and 9. Nevertheless, when iLOR added claim 26 during prosecution, it argued that the claim was “similar to” and “allowable for at least the same reasons” as the pending claims, including claims 1 and 9. iLOR’s representation that this newly added claim was similar to the pending claims, and its contemporaneous failure to put the examiner on notice that it was attempting to capture previously surrendered subject matter, rendered the representations it made with respect to the Newfield reference applicable to claim 26. As a result, the only conclusion that could be reached by the Federal Circuit was that claim 26 simply did not cover the hyperlink functionality contained in Google Notebook.