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Intellectual Property

Appeals Court Decides That Search-Related Infringement Case Against Google Isn’t Frivolous

A search-related tech company’s patent infringement lawsuit against Google wasn’t frivolous and deserved a full hearing even though the smaller company’s CEO publicly proclaimed in a blog post that its technology is different from Google’s, and even though the legal system agreed with that conclusion, ruled a federal appeals court on Tuesday.



A search-related tech company’s patent infringement lawsuit against Google wasn’t frivolous and deserved a full hearing even though the smaller company’s CEO publicly proclaimed in a blog post that its technology is different from Google’s, and even though the legal system agreed with that conclusion, ruled a federal appeals court on Tuesday.

In a 3-0 opinion, the three Federal Circuit appeals court judges said that Google had not met the exacting legal standards needed to prove that the case was frivolous, and that the online blog post by the plaintiff company’s CEO Steve Mansfield claiming that its technology is different from Google’s is irrelevant.

Instead, the “finding of objective baselessness” of the case has to be determined by the record made in the infringement proceedings, the court ruled.

“Google has not met its high burden to show by clear and convincing evidence that this suit was brought frivolously or that iLOR’s position on claim construction was obviously baseless,” wrote Federal Circuit Judge Timothy B. Dyk regarding iLOR’s appeal of a lower court’s decision to award Google more than half a million dollars in attorneys’ and other fees when it agreed with Google that iLOR’s suit was bogus.

“The question is whether iLOR’s broader claim construction was so unreasonable that no reasonable litigant could believe it would succeed,” Dyk added. “In light of the claim terms, specification, and prosecution history, we believe that iLOR could reasonably argue for the claim construction that it proposed.”

Federal Circuit Chief Judge Randall Rader and Judge Richard Linn were the other two judges on the case.

The case is notable because it’s the latest development in a broader movement by many deep-pocketed tech companies, in the absence of movement on patent reform legislation in Congress, to try to discourage patent infringement lawsuits against themselves by making the prospect of bringing such suits riskier and potentially more expensive for the would-be litigants.

The appeal court’s Tuesday decision illustrates that at least three of the judges of the court– including the chief judge — believe in upholding strict standards when deeming a patent infringement lawsuit frivolous.

“This ruling shows the high burden of proving an “exceptional case” to obtain an award of attorney fees under § 285,” according to the intellectual property law firm Oblon Spivak.  “In this ruling, however, the court ruled that “simply being wrong about claim construction should not subject a party to sanctions where the construction is not objectively baseless.”  Though a party can win easily on an issue, as Google did here, showing objective baselessness to support an attorneys’ fees award may require a nearly vacuous case from the other party.”

Large companies that incorporate many different tech ideas into their complex products, such as Google, Microsoft and  Intel, are frequent targets of patent infringement lawsuits over very specific and seemingly esoteric functions.

To change this state of affairs, Netflix, led by Stanford Law School’s patent guru Mark Lemley, who is also a litigator at the San Francisco law firm of Durie Tangri, is challenging the Federal Circuit’s legal standards concerning defendants and attorneys’ fees.

Netflix argues that the Federal Circuit’s interpretation of the legal standards prescribing attorneys’ fees violates a 1994 Supreme Court precedent that said that prevailing plaintiffs and defendants have to be treated alike under the Copyright Act.

The Federal Circuit’s legal standards are actually different for plaintiffs and defendants, with some arguing that the standards are higher for defendants.

A Who’s Who of internet companies and online retailers have filed friend-of-the-court arguments supporting Netflix. They include, Crutchfield, Facebook, J.C. Penney, L.L. Bean, Newegg, Oracle,, Microsoft, Samsung Electronics, Toyota Motor Sales, and Yahoo!,

Netflix has asked for a full-on hearing of its appeal regarding attorneys’ fees from the Northern District of California from the entire group of  judges at the Federal Circuit.

If the court decides to hear the case and depending on what it decides, the case could head to the Supreme Court, which has had a record in recent years of disagreeing with the Federal Circuit on landmark patent law issues.

For its part, the iLOR v. Google case dates back to 2007 when tech company iLOR filed a patent infringement suit in the Eastern District of Kentucky against Google.

iLOR was a search-related tech company that earned praise from Search Engine Watch’s Danny Sullivan for its innovative technology that enhances search to make the experience less cumbersome.

The company’s suit claimed that a Google Notebook feature that allows a user to right-click on a hyperlink and save it for later through a pop-up toolbar infringes upon one of the claims in one of iLOR’s patents.

Google countersued for a declaratory judgement of non-infringement. It also wanted the judge to declare the patent invalid and unenforceable based on inequitable conduct.

The court sided with Google, but Google followed up by asking the court to award it attorneys’ fees, costs and expenses, which if granted, is usually a humiliating development for the lawyers representing the losing side.

In this case, the district court for the Eastern District of Kentucky sided with Google again, and decided that iLOR had acted in subjective bad faith.

iLOR appealed that decision, after which the court increased the amount that iLOR had to pay. The company appealed that decision too, and that is when the case moved to the Federal Circuit.

Broadband Breakfast is a decade-old news organization based in Washington that is building a community of interest around broadband policy and internet technology, with a particular focus on better broadband infrastructure, the politics of privacy and the regulation of social media. Learn more about Broadband Breakfast.


Public Knowledge Celebrates 20 Years of Helping Congress Get a Clue on Digital Rights



Screenshot of Gigi Sohn from Public Knowledge's 20th anniversary event

February 27, 2021 – The non-profit advocacy group Public Knowledge celebrated its twentieth anniversary year in a Monday event revolving around the issues that the group has made its hallmark: Copyright, open standards and other digital rights issues.

Group Founder Gigi Sohn, now a Benton Institute for Broadband and Society senior fellow and public advocate, said that through her professional relationship with Laurie Racine, now president of Racine Strategy, that she became “appointed and anointed” to help start the interest group.

Together with David Bollier, who also had worked on public interest projects in broadcast media with Sohn, and is now director of Reinventing the Commons program at the Schumacher Center for a New Economics, the two cofounded a small and scrappy Public Knowledge that has become a non-profit powerhouse.

The secret sauce? Timing, which couldn’t have been better, said Sohn. Being given free office space at DuPont Circle at the New America Foundation by Steve Clemmons and the late Ted Halstead, then head of the foundation, was instrumental in Public Knowledge’s launch.

The cofounders met with major challenges, Sohn and others said. The nationwide tragedy of September 11, 2001, occurred weeks after its official founding. The group continued their advocacy of what was then more commonly known as “open source,” a related grandparent to the new “net neutrality” of today, she said.

In the aftermath of September 11, a bill by the late Sen. Ernest “Fritz” Hollings, D-S.C., demonstrated a bid by large copyright interest to force technology companies to effectively be the copyright police. Additional copyright maximalist measures we launched almost every month, she said.

Public Knowledge grew into something larger than was probably imagined by the three co-founders. Still, they shared setbacks and losses that accompanied their successes and wins.

“We would form alliances with anybody, which meant that sometimes we sided with internet service providers [on issues like copyright] and sometimes we were against them [on issues like telecom],” said Sohn. An ingredient in the interest group’s success was its desire to work with everyone.

Congress didn’t have a clue on digital rights

What drove the trio together was a shared view that “Congress had no vision for the future of the internet,” explained Sohn.

Much of our early work was spend explaining how digitation works to Congress, she said. The 2000s were a time of great activity and massive growth in the digital industry and lawmakers at the Hill were not acquainted well with screens, computers, and the internet. They took on the role of explaining to members of Congress what the interests of their constituents were when it came to digitization.

Public Knowledge helped popularize digital issues and by “walking [digital information] across the street to [Capitol Hill] at the time created an operational reality with digitization,” said Bollier.

Racine remarked about the influence Linux software maker Red Hat had during its 2002 initial public offering. She said the founders of Red Hat pushed open source beyond a business model and into a philosophy in ways that hadn’t been done before.

During the early days of Public Knowledge, all sorts of legacy tech was being rolled out. Apple’s iTunes, Windows XP, and the first Xbox launched. Nokia and Sony were the leaders in cellphones at the time, augmenting the rise of technology in the coming digital age.

Racine said consumers needed someone in Washington who could represent their interests amid the new software and hardware and embrace the idea of open source technologies for the future.

Also speaking at the event was Public Knowledge CEO Chris Lewis, who said Public Knowledge was at the forefront of new technology issues as it was already holding 3D printing symposiums before Congress, something totally unfamiliar at the time.

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Intellectual Property

U.S. and EU Privacy and Intellectual Property Landscape Complicate Data Use Requirements



Photo of Lee Tiedrich in February 2020 from the Regulatory Review on Twitter

February 7, 2021 – Differences in the intellectual property and privacy landscape between Europe and the United States account are among the forces complicating the regulatory landscape around commercial data, partners at Covington’s Second Annual Technology Forum said on January 27.

Further, because intellectual property laws do not provide robust protection for databases, organizations are increasingly relying on contracts that define rights and restrictions to protect their data.

When learning how to best to handle data, companies need to know what sources it is coming from, said Lee Tiedrich, a partner at Covington. Knowing the type of data is quite important, he said, since data comes in many forms. For example, open or proprietary data should be handled differently than user contributions and scraped data that comes off of public websites.

Differences between U.S. and European intellectual property laws also factor into database protection. Clients need to know how to source data properly because they want to protect their rights to their data and reduce their liability risks, Tiedrich said.

There is no sui generis database protection in the U.S., a term which means databases do not have strong legal protections. This is not unusual as intellectual property laws in the U.S. typically do not provide protection for databases, said Tiedrich.

From a EU legal perspective, there may be some form of IP protection in data but that does not eliminate privacy requirements applying to that data, said Freddie Argent, a partner at Covington.  

The panelists also discussed key terms of contracts for data licensors. Data licensors need to employ best practices, have standardized terms, and apply consistency across deals, said Adrian Perry, partner at Covington. Terms of service and privacy policies require clarity with the licensee acknowledging and accepting it, Perry added.

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In Google v. Oracle, Supreme Court Hears Landmark Fair Use Case on Software Copyright



Photo of Tom Goldstein from the Peabody Award used with permission

October 12, 2020 – The Supreme Court on Wednesday publicly struggled with the copyrightability of software in a uniquely contested case between Google and Oracle, the outcome of which could play a significant role in the future of software development in the United States.

The oral arguments were the culmination of a battle that started 10 years ago, when tech company Oracle accused Google of illegally copying its code. Oracle owns the copyright to the Java application programming interface that Google utilized to establish a new mobile operating system.

The company has sued Google for more than $9 billion in damages.

Yet Google claimed a “fair use” defense to its copying. Google copied less than 1 percent of the Java code. Even though the law generally treats computer programs as copyrightable, Google’s attorney before the Supreme Court, Thomas Goldstein, said that by adapting Oracle’s code to serve a different purpose, Google’s use was “transformational,” and entitled to fair use protections.

Goldstein said that this form of unlicensed copying is completely standard in software, and saves developers time and lowers barriers to innovation.

He referenced a famous Supreme Court precedent about public domain works, Baker v. Selden, which in 1880 declared that once information is published to the public, the public has a right to use it.

“Google had the right to do this,” said Goldstein.

Still, Oracle attorney Joshua Rosenkranz asserted that the Java code is an expressive work eligible for copyright protections. Rosenkranz further argued that Google’s use of the code was not transformational.

Justice Sonia Sotomayor appeared to suggest that jurors in the lower court case properly found Google’s use to be transformational because it took the APIs from a desktop environment to smartphones.

“Interfaces have been reused for decades,” said Goldstein. Google had to reuse Oracle’s code to respond to interoperability demands.

“It has always been the understanding that this purely functional, non-creative code that is essentially the glue that keeps computer programs together could be reused, and it would upend that world to rule the other way,” he said.

Supreme Court observers said that the high court appeared leaning toward upholding the 2016 jury verdict vindicating Google’s fair use defense.

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