iLOR, LLC v. Google, Inc.
631 F.3d 1372
| Fed. Cir. | 2011Background
- iLOR appeals a district court ruling that the case is exceptional under 35 U.S.C. § 285 and awards attorney’s fees, costs, and expenses to Google.
- The patent at issue is the '839 patent, claim 26, directed to a method for adding a user-selectable function to a hyperlink via an automatically displayable toolbar based on cursor location.
- The district court construed “the toolbar being displayable based on a location of a cursor in relation to a hyperlink” to mean automatic display without further user action, and granted summary judgment of non-infringement against iLOR.
- On appeal, this court previously held that the language and specification could support an interpretation in which display could occur without further user action, and affirmed the non-infringement ruling in part; it also noted prosecution history suggesting automatic display.
- After remand, the district court again found the case exceptional under § 285, relying on objective baselessness and subjective bad faith, and increased the fee award; iLOR appealed that ruling.
- This court now reverses the district court’s § 285 ruling and vacates the fee award, holding iLOR’s proposed construction was not objectively baseless; costs and expert fees issues are remanded accordingly.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the district court abused § 285 by finding objective baselessness | iLOR’s construction was reasonable and supported by intrinsic record | Google argued the construction was baseless and unsupported | No abuse; objective baselessness not shown |
| Whether iLOR’s broad claim construction was frivolous or objectively baseless | Pre-filing interpretation was in line with claim language and record | Interpretation was not reasonably supported and was frivolous | Not frivolous; not objectively baseless |
| Whether expert fees can be awarded under § 285; remand on costs | Only certain costs, not expert fees, are recoverable under § 285 | Expert fees may be awarded under inherent power for bad faith in exceptional cases | Expert fees cannot be awarded under § 285; remand on costs; inherent-power award not supported by record |
Key Cases Cited
- Brooks Furniture Manufacturing, Inc. v. Dutailier International, Inc., 393 F.3d 1378 (Fed. Cir. 2005) (standard for exceptional case requires objective and subjective showing; strict)
- Seagate Technology, LLC v. Waymo LLC, 497 F.3d 1360 (Fed. Cir. 2007) (objective recklessness standard for willful infringement; informs § 285 analysis)
- Professional Real Estate Investors, Inc. v. Columbia Pictures Industries, Inc., 508 U.S. 49 (U.S. 1993) (frivolous litigation standard; objective baselessness prerequisite to punitive sanctions)
- Genentech, Inc. v. Chiron Corp., 112 F.3d 495 (Fed. Cir. 1997) (use of ‘comprising’ in claim construction context)
- Q-Pharma, Inc. v. Andrew Jergens Co., 360 F.3d 1295 (Fed. Cir. 2004) (pre-filing claim interpretation can be non-frivolous)
- Dominant Semiconductors Sdn. Bhd. v. OSRAM GmbH, 524 F.3d 1254 (Fed. Cir. 2008) (objective merit of infringement position governs § 285 analysis)
- Wedgetail Ltd. v. Huddleston Deluxe, Inc., 576 F.3d 1302 (Fed. Cir. 2009) (refusal to find patentee’s case exceptional when not objectively baseless)
- Takeda Chem. Indus., Ltd. v. Mylan Labs., Inc., 549 F.3d 1381 (Fed. Cir. 2008) (inherent-power considerations for sanctions; not § 285)