iLOR v. Google: Rejected Claim Construction Does Not Render Case “Objectively Baseless”

By Jason Rantanen

iLOR, LLC v. Google, Inc. (Fed. Cir. 2011)
Panel: Rader, Linn, Dyk (author)

This case involved a district court exceptional case determination based a finding that the suit was objectively baseless and brought in bad faith.  iLOR, the assignee of Patent No. 7,206,839, sued Google for infringement of the '839 patent by Google's Notebook product.  In denying iLOR's request for a preliminary injunction, the district court rejected iLOR's proposed construction of the only claim term in dispute, subsequently granting summary judgment of noninfringement.  The Federal Circuit affirmed the district court's denial of the preliminary injunction, agreeing that the language of the claim, the specification and the prosecution history supported the district court's construction.  See iLOR, LLC v. Google, Inc., 550 F.3d 1067 (Fed. Cir. 2008).  Following the Federal Circuit's disposition of that appeal, the district court granted Google's request to recover its attorneys' fees and costs and expenses, finding the case exceptional on the ground that it was "not close" on the merits (i.e.: ("objectively baseless") and iLOR had acted in subjective bad faith.  iLOR appealed.

In reversing the district court, the CAFC first likened the exceptional case standard for a suit brought by a patent plaintiff (absent misconduct during patent prosecution or litigation) to that of willful infringement.  "The objective baselessness standard for enhanced damages and attorneys’ fees against a non-prevailing plaintiff under Brooks Furniture is identical to the objective recklessness standard for enhanced damages and attorneys’ fees against an accused infringer for § 284 willful infringement actions under In re Seagate Technology, LLC, 497 F.3d 1360 (Fed. Cir. 2007) (en banc)."  Slip Op. at 8-9.  Thus, just as willfulness requires an assessment of both objective and "subjective" (i.e.: known or so obvious that it should have been known) prongs, so too does the exceptional case determination. And just as for willfulness, the objective assessment "is to be determined based on the record ultimately made in the infringement proceedings."  Id. at 10.

Comment: At some points, the Federal Circuit's opinion is confusingly imprecise in its usage of "objective baselessness."  Although in some instances it refers to the "objective baselessness" standard as being identical to the overall objective recklessness standard for willfulness (which includes, according to the court, both objective and subjective elements), at other times it treats it as being identical to only the "objective" prong of the analysis.  The only reading that makes sense is that when the court indicates that "objective baselessness" is identical to the willfulness "objective recklessness" standard, what it is really referring to is the overall standard for an exceptional case determination based on a meritless case theory, while when it compares it to the "objective" prong of the willfulness analysis, it really is referring to "objective baselessness."

Applying this framework, the CAFC concluded that iLOR's claim construction was not objectively baseless, and thus it was unnecessary to consider the issue of subjective bad faith.  The CAFC pointed to iLOR's arguments supporting its proposed construction, which – although the court disagreed with them – had some merit.  The CAFC also commented on the difficulty of claim construction, "in which the issues are often complex and the resolutions not always predictable."  Id. at 13.  And the court noted that the fact that it "held oral argument and issued a precedential written opinion in the first appeal suggests that we did not regard the case as frivolous."  Id. at 13-14.  In short, "simply being wrong about claim construction should not subject a party to sanctions where the construction is not objectively baseless."  Id. at 14.

17 thoughts on “iLOR v. Google: Rejected Claim Construction Does Not Render Case “Objectively Baseless”

  1. “Imagine a world where the fear of sanctions makes patentees actually decide not to assert claim constructions that contradict the application or prosecution history – that would be a much better world than the Fed Cir established with this ruling.”

    Sacrilege! Doest thou not keepeth thine own faith pure and untarnished by such thoughts on evil such as that whence sprang forth from yon tongue? Thy valuest thy rights upon chattel for naught I doest conjecture!

  2. MM makes a very convincing showing and I agree the Fed Cir got it wrong. Of course, “simply being wrong” on claim construction should not subject you to sanctions. However, in this case it was a claim construction that was contrary to the clear teachings of the specification. In this case, it clearly was objectively baseless.

    Imagine a world where the fear of sanctions makes patentees actually decide not to assert claim constructions that contradict the application or prosecution history – that would be a much better world than the Fed Cir established with this ruling.

  3. We are in deep dodo:

    Let me get this straight . . . .
    We’re going to be “gifted” with a health care
    plan we are
    forced to purchase and fined if we don’t,
    Which purportedly covers at least
    ten million more people,
    without adding a single new doctor,
    but provides for 16,000 new IRS agents,
    written by a committee whose chairman
    says he doesn’t understand it,
    passed by a Congress that didn’t read it but
    exempted themselves from it,
    and signed by a President who smokes,
    with funding administered by a treasury chief who
    didn’t pay his taxes,
    for which we’ll be taxed for four years before any
    benefits take effect,
    by a government which has
    already bankrupted Social Security and Medicare,
    all to be overseen by a surgeon general
    who is obese,
    and financed by a country that’s broke!!!!!
    ‘What the heck could
    possibly go wrong?’

    link to youtube.com

    What’s up wit dat?

  4. We are in deep dodo:

    Let me get this straight . . . .
    We’re going to be “gifted” with a health care
    plan we are
    forced to purchase and fined if we don’t,
    Which purportedly covers at least
    ten million more people,
    without adding a single new doctor,
    but provides for 16,000 new IRS agents,
    written by a committee whose chairman
    says he doesn’t understand it,
    passed by a Congress that didn’t read it but
    exempted themselves from it,
    and signed by a President who smokes,
    with funding administered by a treasury chief who
    didn’t pay his taxes,
    for which we’ll be taxed for four years before any
    benefits take effect,
    by a government which has
    already bankrupted Social Security and Medicare,
    all to be overseen by a surgeon general
    who is obese,
    and financed by a country that’s broke!!!!!
    ‘What the hell could
    possibly go wrong?’

    link to youtube.com

    What up wit dat?

  5. IANAE:

    I don’t think I have posted on this board in the last six months without you nipping at my heels. Down boy.

    MM; (seems like you are the same person as IANAE, but maybe not.) What do you do besides disparage patents on this board?

  6. Sane Responder Had the decision been affirmed, it would have sent a dangerous precedent where every litigant who argued an incorrect claim construction position would be at risk for sanctions.

    News flash: every litigant who argues an incorrect claim construction is still at risk for sanctions.

    Sane I’ve watched this case closely.

    LOL. Sure you have.

    The courts based their disclaimer determination on arguments made in a parent application

    I’m not sure that’s true but it’s perfectly proper to construe terms based on arguments made in parent applications. Moreover, nearly identical disclaimers are in the specification, as indicated above.

    iLOR has literally one argument supporting its claim construction: the claim at issue did not expressly exclude “right clinking on the link” using those four words. But it doesn’t expressly exclude presenting a toolbar based on pupil vector scans either. Or voice command. Perhaps the claims is indefinite or not enabled in addition to being non-infringed.

    The attempt by the Federal Circuit to address the issues in the specification is beyond lame. Read that passage from the Abstract again:

    This invention permits the user to interact with a hyperlink in a variety of ways without necessarily having to open and/or follow the hyperlink. This is accomplished by detecting the presence of a cursor near a hyperlink. When the cursor has remained near the hyperlink for a predetermined time period, a toolbar is displayed

    Is the meaning of this passage changed by the presence of the term “necessarily”? Of course not, because the next two sentences (which the Federal Circuit ignores) leave no doubt about how the invention works. Note the absence of a statement along the lines of “Detection can occur automatically or by the user right clicking near the cursor.” The only mentions of “right clicking” in the specification are in the context of passages disparaging the prior art relative to the automatic toolbar presentation provided by the invention.

    This is a great example of an “objectively baseless” case. It’s also a great example of the Federal Circuit bending over backwards to kiss the bxtts of frivolous patent litigators.

  7. “Arguing against the interpretation you clearly put in your PH? Sounds a bit frivolous”

    Just not so. I’ve watched this case closely. In the iLOR case the claim at issue was never rejected or argued for patentability, nor was the claim term ever the subject of discussion in the prosecution history. The courts based their disclaimer determination on arguments made in a parent application which addressed different claim limitations. This was a garden variety claim construction case – the only exceptional thing about the case was the district court’s award of fees. 99 out of a 100 district court judges wouldn’t have done that, absent other litigation shenanigans. Had the decision been affirmed, it would have sent a dangerous precedent where every litigant who argued an incorrect claim construction position would be at risk for sanctions. Glad to see the Fed. Cir. recognizes good faith advocacy of a difficult issue.

  8. >> to both negligent AND intentional >>misrepresentations.

    But, then the problem is that MM falls into the category of “intentional misrepresentations” when discussing information processing patents, and into the category of “negligent” when discussing his smelly chemical patents.

  9. Mooney–

    Without commenting on the state of affairs within the patent bar, I think your ire would be better directed, in this case, toward the litigating attorneys.

    Acceptance of doublespeak and untrue statements is prevalent in general society in the US today.

    My favorite term is currently “misstatements”, a term used to refer to both negligent AND intentional misrepresentations.

    The term “irregularities” comes in a close second.

  10. Idk sane responder, while MM is perhaps overly concerned, this issue was ridiculously decided. Arguing against the interpretation you clearly put in your PH? Sounds a bit frivolous.

  11. OT but Iza find this interesting from my pal Hal:

    …the increased role the House of Representatives is expected to play in PTO oversight.

    Key players include Chairmen Lamar Smith and Darrell Issa, both experts on patents, with the former now Chair of the Judiciary Committee and the latter Chair of Government Oversight with subpoena power to delve deeply into the inner workings of a $ 2 billion-plus Agency.

    Yeps, looks like those instances of improper document destruction are going to be looked at. Oh, I wouldn’t want to be in those director and quality personnel shoes anytimes soon.

    sarah – perhaps the calvary is on its way.

  12. Someone was sanctioned! BOO HOO HOO HOO HOO HOO!!!!!

    Federal Circuit to the rescue! After all, we can’t deny those obnoxious, stooopit lawyers their fun and profit. They are like little children and we must encourage them to be creative, even if occasionally some of them advise their clients to jump out of a tree and flap their arms because “birds do it.”

    The CAFC pointed to iLOR’s arguments supporting its proposed construction, which – although the court disagreed with them – had some merit. The CAFC also commented on the difficulty of claim construction, “in which the issues are often complex and the resolutions not always predictable.” Id. at 13.

    Sure, claim construction can sometimes be complex and unpredictable. But was that the case here?

    Here’s the claim with the term at issue highlighted in bold:

    A method for enhancing a hyperlink, comprising:

    providing a user-selectable link enhancement for a toolbar, the toolbar being displayable
    based on a location of a cursor in relation to a hyperlink
    in a first page in a first window of an application…

    And here’s the proposed positions:

    Google argued that the “being displayable” limitation only covered methods where the toolbar was automatically displayed when a cursor was proximate to the hyperlink. iLOR contended that the claim also covered an embodiment where a right-mouse click was required to display the toolbar. The district court agreed with Google

    Now consider the following:

    The court also noted that the specification distinguished the current invention from Web browsers in which a user could open a new window by “right clicking on [a] link and then clicking on the ‘open in new window’ menu [item].” Id. at *5; see ’839 Patent col.6 ll.22–27). The court was also persuaded by the prosecution history, which suggested that iLOR contemplated a display of the toolbar without further user action. iLOR, 2007 WL 4259586, at *6–8.

    If you’ve got a strong stomach, read Rader et al.’s miserable attempt to turn iLOR’s interpretation of the spec and prosecution history into a “non-frivolous” one. In particular, watch these judges dig one word (“necessarily”) out of the Abstract to find dubious support for iLOR’s claim construction, while ignoring the vastly more clear disclaimers in the specification, prosecution history and Abstract itslef. Here’s the Abstract language:

    This invention permits the user to interact with a hyperlink in a variety of ways without necessarily having to open and/or follow the hyperlink. This is accomplished by detecting the presence of a cursor near a hyperlink. When the cursor has remained near the hyperlink for a predetermined time period, a toolbar is displayed ….

    You know what’s frivolous? This Federal Circuit opinion. It’s right up there with that awful inequitable decision where they say “no inequitable conduct if someone can come up with an argument for the behavior that does not cause a slow-witted patent-worshipper to immediately laugh his/her axx off.” Why can’t the patent bar be expected to grow up?

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