Ilor, LLC v. Google, Inc.

• Decision Date: 11 December 2008
• Docket Number: No. 2008-1178.,2008-1178.
• Citation: 550 F.3d 1067
• Parties: ILOR, LLC, Plaintiff-Appellant, v. GOOGLE, INC., Defendant-Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

550 F.3d 1067

ILOR, LLC, Plaintiff-Appellant, v. GOOGLE, INC., Defendant-Appellee.

No. 2008-1178.

United States Court of Appeals, Federal Circuit.

December 11, 2008.

David E. Schmit, Frost Brown Todd LLC, of Cincinnati, OH, argued for plaintiff-appellant.

Frank E. Scherkenbach, Fish & Richardson P.C., of Boston, MA, argued for

defendant-appellee. With him on the brief were Kurt L. Glitzenstein, and John A. Dragseth, of Minneapolis, MN. Of counsel was Shelley K. Mack, of Redwood City, California.

Before MAYER, LINN, and MOORE, Circuit Judges.

LINN, Circuit Judge.

iLOR, LLC ("iLOR") appeals from a judgment of the U.S. District Court for the Eastern District of Kentucky, iLOR, LLC v. Google, Inc., No. 5:07-CV-109, Doc. 71, 2007 WL 4259586 (E.D.Ky. Nov. 30, 2007), which dismissed the "action" with prejudice after the district court denied iLOR's motion for preliminary injunctive relief on claim 26 of U.S. Patent No. 7,206,839 ("the '839 patent") and granted Google, Inc.'s ("Google's") motion for summary judgment of noninfringement of that claim, iLOR, LLC v. Google, Inc., No. 5:07-CV-109, Doc. 70, 2007 WL 4259586 (E.D.Ky. Nov. 30, 2007) ("Decision"). As a threshold matter, the finality of the judgment, which controls the scope of our review, is at issue. We conclude that the judgment is not final, and as a result, we exercise jurisdiction only over the district court's denial of preliminary injunctive relief. On the merits, we conclude that the district court correctly construed the sole claim limitation at issue, and did not abuse its discretion by denying iLOR's motion for preliminary injunctive relief because noninfringement was undisputed under that construction. Thus, we affirm the district court's denial of injunctive relief and dismiss the remaining issues raised in this appeal, which relate to matters that remain before the district court.

I. BACKGROUND

iLOR is the assignee of the '839 patent, which 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." Claim 26, the only claim at issue in this appeal, recites:

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, wherein said first page is associated with a first uniform resource locator (URL), wherein said hyperlink is associated with a second URL and a second page, wherein said user-selectable link enhancement is adapted to display a graphical element based on said first URL;

receiving an indication of a first user selection of said link enhancement; and

as a result of said first user selection,

capturing said first URL associated with said first page; and

displaying a graphical element, said graphical element associated with said captured first URL, said graphical element adapted to cause said first page to be displayed as a result of a second user selection of said graphical element.

iLOR sued Google alleging that Google's "Google Notebook" product infringed the '839 patent. Google counterclaimed, seeking a declaratory judgment of noninfringement, invalidity, and unenforceability of the '839 patent. iLOR subsequently moved for a preliminary injunction. Relying only on claim 26, iLOR requested that Google be enjoined from using or inducing others to use Google Notebook in a way that infringed that claim. Google filed a cross-motion in response for summary judgment of noninfringement. In the course of resolving these motions, the district court focused, as the parties did, only on claim 26. 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.

In the decision resolving these motions, the district court also sua sponte ordered "that [iLOR's] claims pending against [Google] in this matter shall be and the same hereby are dismissed with prejudice." Id. at 21 (emphasis omitted). Contemporaneously with entry of the decision, the district court also entered the judgment, which reads, in full:

In accordance with the Order of even date and entered contemporaneously herewith,

IT IS HEREBY ORDERED:

(1) That this action be, and the same hereby is, DISMISSED WITH PREJUDICE AND STRICKEN FROM THE ACTIVE DOCKET.

(2) That all pending motions be, and the same hereby are, DENIED AS MOOT.

(3) That all scheduled proceedings be, and the same hereby are, CONTINUED GENERALLY.

(4) That this Order is FINAL AND APPEALABLE and THERE IS NO JUST CAUSE FOR DELAY.

iLOR timely appealed from the district court's decision and judgment.

II. DISCUSSION

A. Standard of Review

Claim construction is a question of law, see Markman v. Westview Instruments, Inc., 52 F.3d 967, 970-71 (Fed.Cir. 1995) (en banc), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996), over which we exercise plenary review. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456 (Fed.Cir.1998) (en banc).

A district court's decision granting, denying, or modifying an injunction in a patent case is reviewed for abuse of discretion. Lab. Corp. of Am. Holdings v. Chiron Corp., 384 F.3d 1326, 1331 (Fed.Cir. 2004).

B. Analysis

1. Jurisdiction

"Federal courts are not courts of general jurisdiction; they have only the power that is authorized by Article III of the Constitution and the statutes enacted by Congress pursuant thereto. For that reason, every federal appellate court has a special obligation to `satisfy itself ... of its own jurisdiction....'" Bender v. Williamsport Area Sch. Dist., 475 U.S. 534, 541, 106 S.Ct. 1326, 89 L.Ed.2d 501 (1986) (citations omitted). Thus, before reaching the parties' arguments, we must first address the scope of our jurisdiction, which depends on how the judgment is construed. iLOR contends that the judgment disposes of all claims and counterclaims and therefore is final. Thus, according to iLOR, we have jurisdiction under 28 U.S.C. § 1295(a)(1) to address all issues raised below, including the district court's grant of summary judgment of noninfringement and the district court's sua sponte dismissal of its remaining claims. Alternatively, iLOR argues that if it does not dispose of Google's counterclaims, the judgment certifies the decision for immediate appeal under Federal Rule of Civil Procedure 54(b), and consequently vests us with jurisdiction to consider—in addition to the denial of the preliminary injunction—the grant of summary judgment of noninfringement and the dismissal of iLOR's remaining claims. Google contends that the judgment neither disposes of its counterclaims nor meets the requirements under Rule 54(b) to certify the decision for immediate appeal. Thus, according to Google, our jurisdiction is limited under 28 U.S.C. § 1292(a)(1) to the district court's denial of preliminary injunctive relief.

We agree with Google. We do not interpret the judgment to dispose of Google's counterclaims or to certify the decision for immediate appeal under Rule 54(b). iLOR's contention that the judgment dismisses Google's counterclaims rests largely on its argument that the judgment's dismissal of the "action" necessarily encompasses all claims at issue in the case— both iLOR's claims and Google's counterclaims. For this contention iLOR relies upon our decision in Walter Kidde Portable Equipment, Inc. v. Universal Security Instruments, Inc., 479 F.3d 1330 (Fed. Cir. 2007). iLOR's reliance on Walter Kidde in this case is misplaced.

In Walter Kidde, we addressed the propriety of a district court's grant of a plaintiff's motion to voluntarily dismiss pursuant to Rule 41(a)(2) over the objection of a defendant who had filed counterclaims. The plaintiff in Walter Kidde had filed a Rule 41(a)(2) motion to dismiss the "action" so that it could correct a jurisdictional deficiency and refile the case. Walter Kidde, 479 F.3d at 1334. The defendant objected and requested dismissal with prejudice or without prejudice but with conditions. Id. The district court dismissed the "action" without prejudice, and without further comment on the nature of the dismissal. Id. at 1334, 1335. Because the district court's order did not explicitly address the defendant's counterclaims, the defendant argued on appeal that the judgment was not final and thus not appealable. We disagreed, stating that "[t]he term `action' encompasses the entire proceedings in the district court, signifying that the order of dismissal terminated [the defendant's] counterclaims." Id. at 1335.

iLOR appears to contend that following Walter Kidde, a district court's use of the word "action" robotically signifies all claims, counterclaims, cross-claims, etc., regardless of the context in which that word is used. Walter Kidde did not go so far. Indeed, our primary citation for the proposition that "action" included the defendant's counterclaims was a Second Circuit case which stated that "[t]he word `action,' without more, is arguably broad enough to encompass any type of judicial proceeding, including counterclaims." See Local Union No. 38, Sheet Metal Workers' Int'l Ass'n AFL-CIO v. Pelella, 350 F.3d 73, 81 (2d Cir.2003) (emphases added, citation omitted). We agree that the word...