iLOR, LLC v. Google, Inc.

Filing 12

MOTION for Preliminary Injunction by iLOR, LLC (Attachments: # 1 Memorandum in Support Part 1# 2 Memorandum in Support Part 2# 3 Proposed Order # 4 Exhibit A# 5 Exhibit B# 6 Exhibit C# 7 Exhibit D# 8 Exhibit E# 9 Exhibit F# 10 Exhibit G# 11 Exhibit H# 12 Exhibit I# 13 Exhibit J# 14 Exhibit K# 15 Exhibit L# 16 Exhibit M# 17 Exhibit N# 18 Exhibit O# 19 Exhibit P# 20 Exhibit Q# 21 Exhibit R# 22 Exhibit S# 23 Exhibit T# 24 Exhibit U# 25 Exhibit V# 26 Exhibit W# 27 Exhibit X# 28 Exhibit Y# 29 Exhibit Z# 30 Exhibit AA# 31 Exhibit BB# 32 Exhibit CC# 33 Exhibit DD# 34 Exhibit EE# 35 Exhibit FF# 36 Exhibit GG# 37 Exhibit HH# 38 Exhibit II# 39 Exhibit JJ# 40 Exhibit KK# 41 Exhibit LL# 42 Exhibit MM# 43 Exhibit NN# 44 Exhibit OO# 45 Exhibit PP# 46 Exhibit QQ# 47 Exhibit RR# 48 Exhibit SS# 49 Exhibit TT# 50 Exhibit UU)(Faller, Susan)

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iLOR, LLC v. Google, Inc. Doc. 12 Att. 1 Case 5:07-cv-00109-JMH Document 12 Filed 08/27/2007 Page 1 of 24 UNITED STATES DISTRICT COURT EASTERN DISTRICT OF KENTUCKY LEXING TON DIVISION iLOR, LLC Plaintiff, v. CIVIL ACTION NO. 5:07-cv-00109-JMH Chief Judge Joseph M. Hood GOOGLE, INC. Defendant. iLOR's MEMORANDUM IN SUPPORT OF ITS MOTION FOR PRELIMINARY INJUNCTION CINibrary 0111090.0549889 1759659\'6 1 Dockets.Justia.com Case 5:07-cv-00109-JMH Document 12 Filed 08/27/2007 Page 2 of 24 TABLE OF AUTHORITIES....................................................................................................... ii i. BACKGROUND............................................................................................................. 1 II. LEGAL FRAME WORK................................................................................................. 7 III. ARGUMENT.................................................................................................................. 8 A. Plaintiff Can Demonstrate a Clear Showing of Reasonable Likelihood of Success on the Merits . ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... .. 8 B. Movant Will Suffer Irreparable Harm Absent the Preliminary Injunction .......... 31 C. The Balance of Hardships is Clearly in iLOR's Favor .....................................35 D. The Public Has a Strong Interest il Enforcing Patent Rights ............................. 36 IV. CONCLUSION............................................................................................................. 37 CERTIFICATE OF SERVICE.................................................................................................. 38 CINibrary 0111090.0549889 1759659\'6 Case 5:07-cv-00109-JMH Document 12 Filed 08/27/2007 Page 3 of 24 TABLE OF AUTHORITIES FEDERAL CASES Apex Inc., v. Raritan Computer, Inc., 325 F.3d 1364 (Fed. Cir. 2003) ..........................10 Byrne v. Black & Decker Corp., 2006 WL 1117685; 2006 u.s. Dist. LEXIS 27, 2006) aff'd, Byrne v. Black & Decker Corp. 2007 WL 492101 (Fed. Cir., May 21, 2007) .................................................................. 10 24104 (E.D.KY, April DSU Medical Corp. v. JMS Co., 471 F.3d 1293 (Fed. Cir. 2006) ...........................28, 30 Guttman, Inc. v. Kopykake Enters., 302 F.3d 1352 (Fed. Cir. 2002) ...............................8 Hybritech, Inc. v. Abbott Labs., 849 F.2d 1446 (Fed. Cir. 1988) .........................8, 31, 35 InnovaiPure Water, Inc. v. Safari Water Filtration Systems, Inc., 381 F.3d 1111 (Fed. Cir. 2004) ..................................................................................................... 10 Iron Grip Barbell Co. v. USA Sporls, Inc., 392 F.3d 1317 (Fed. Cir. 2004) ....................9 Jacobson v. Cox Paving Co., 19 USPQ 2d 1641 (D. Ariz 1991) aff'd949 F.2d 404 (Fed. Cir. 1991) ............................................................................................. 32 Johnson Worldwide Assocs. v. Zebco Corp., 175 F.3d 985 (Fed. Cir. 1999) ...................9 LambtonMfg. v. Young, 833 F. Supp. 610, 616 (W.D. Ky. 1993) ................................ 35 Lopes v. IntlRubber Distributors, Inc., 309 F.Supp. 2d 972 (N.D.OH, February 5, 2004) .. ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... 10 Manvile Sales Corp. v. Paramount Systems, Inc., 917 F.2d 544 (Fed. Cir. 1990) ........ 30 Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995), aff'd, 517 U. S. 370 (1996) . ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... 10 NC Elec. Materials, Inc. v. Mitsubishi Materials Silcon Corp. 420 F.3d 1369 (Fed. Cir. 2005) .. ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... 30, 31 Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd., 545 US 913 (2005) .................. 30 Novo Nordisk ofN.Am., Inc. v. Genentech, Inc., 77 F3d 1364 (Fed. Cir. 1996) ...............8 On Demand Machine Corp. v. Ingram Industries, 442 F.3d 1331 (Fed. Cir. 2006) cert. denied On Demand Mach. Corp. v. Ingram Indus., 127 S. a. 683 (D. S. 2006) ..................................................................................................................... 18 In re Paulsen, 30 F.3d 1475 (Fed. Cir. 1994) ............................................................... 10 CINibrary 0111090.0549889 1759659\'6 Page ii 8/27/2007 Case 5:07-cv-00109-JMH Document 12 Filed 08/27/2007 Page 4 of 24 Pfizer, Inc. v. TevaPharms. USA, Inc., 429 F.3d 1364,1381 (Fed. Cir. 2005) .......31,36 PHG Technologies, LLC v. Timemed Labeling Systems, 2006 WL 2670967; 2006 u.s. Dist. LEXIS 66828 (M.D.TN, September 18,2006) .....................................8,9 Philips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) .........................................10, 11 Polymer Techs. v. Bridwell, 103 F.3d 970 (Fed. Cir. 1996) .........................................8,9 Purdue PharmaL.P v. Boehringer Ingelheim, GNfH, 237 F 3d 1359 (Fed. Cir. 2001) ....................................................................................................................... 9 Smith Intl v. Hughes Tool Co., 718 F.2d 1573 (Fed. Cir. 1999) ...................................... 9 Water Technologies Corp. v. Calco, Ltd., 850 F.2d 660 (Fed. Cir. 1988) .....................30 FEDERAL STATUTES 35 U. S. C. 101 .............................................................................................................. 7 35 U . S.C. 112 .............................................................................................................. 7 35 U. S. C. 271 ( a) .......................................................................................................... 7 35 U.S.C. 271(b) .................................................................................................. 7, 27 35 U. S.C. 283 .............................................................................................................. 7 ADMINISTRATIVE GUIDELINES Manual of Patent Examining Procedure, 719 (USPTO, 8th Edition Revision 5, August 2006; accessed August 13, 2007) http://www.uspto.gov/web/offces/pac/mpep/documents/0700719.htm#sect7 19 .. .. . .. . .. . .. . .. . .. . .. . .. . .. . .. . .. . .. . .. . .. . .. . .. . .. . .. . .. . .. . .. . .. . .. . .. . .. . .. . .. . .. . .. . .. . .. . .. . .. . .. . .. . .. . .. . .. . .. . .. ... 7 DICTIONARIES The American Heritage Dictionary of the English Language )ittp://www.bartleby.com/61/) (4th ed., Boston: Houghton Miffin, 2000, accessed August 13, 2007) ..................................................................................... 20 EXHIBITS A. US Patent 7,206,839. B. WIKIPEDIA, Social Software, available at http://en.wikipedia.org/wiki/Social software (accessed August 24, 2007) CINibrary 0111090.0549889 1759659\'6 Page iii 8/27/2007 Case 5:07-cv-00109-JMH Document 12 Filed 08/27/2007 Page 5 of 24 C. Tim O'Reilly, What Is Web 2.0 - Design Patterns and Business Modelsfor the Next Generation of Software, 9/30/2005, http://www.oreillynet.comllpt/a/6228 (visited August 24, 2007). D. WIKIPEDIA, Danny Sullivan available at http://en wikipedia.org/wiki/Danny Sullvan (technologis( (accessed August 24, 2007). E. About Search Engine Watch - http://searchenginewatch.comlshow Page.html ?page=about (accessed August 24, 2007). F. About Incisive Media http://www.incisivemedia.comlpublic/show Page.html ?page= 1133 8 (accessed August 24, 2007). G. Danny Sullivan, iLOR Makes Google Even Better, SEARCH ENGINE WATCH (April 19, 2001) available at http://searchenginewatch.coml2163651/print (accessed August 24, 2007). H. About MarketWatch available at http://www3.ll....ketwatch.comlsiteinfo/ (accessed August 24, 2007). I. Bambi Francisco, Google Going Verlical, MARKETW A TCH (May 11, 2006) available at http://www.marketwatch.comiN ews/Story/Story. aspx?guid=% 7B 174948FE- E62F-40E5-846A-4C0948CC45B3%7D (accessed 8/24/2007). J. Answers.com, beta: DefinilonandMuchMorefromAnswers.com, June 7, 2004, available at http://www.answers.comltopic/beta- definition?cat=technology&pnnt=true (accessed August 24,2007). K. Google Notebook F AQ available at http://www.google.comlgooglenotebooklfaq.html (accessed August 24, 2007). L. Google Notebook Tour available at http://www.google.comlgoo glenote boo klto ur 1.html (accessed August 24, 2007). CINibrary 0111090.0549889 1759659\'6 Page iv 8/27/2007 Case 5:07-cv-00109-JMH Document 12 Filed 08/27/2007 Page 6 of 24 M. Google Notebookfrom Google Labs, (May 10,2006) available at http://www.google.com!intl/ en/press/pressre Vnew tech.html (accessed Auguat 24, 2007). N. Whatis.coni Browser (September 25, 2006) available at http://searchvb. techtarget. com! sDefinition/O "sid8 gci21170 8, 00 .html (accessed August 24, 2007). O. Burt Helm, Google 's Desktop Offensive, BUSINESS WEEK (May 11, 2006) available at http://www.businessweek.com!print/techno lo gy/ content/may2006/tc20060 5 11_ 493243.htm (accessed August 24,2007). P. About the Motley Fool available at http://www.fool.com!Server/printarticle.aspx&file=/press/about.htm (accessed August 24, 2007). Q. Rick Aristotle Munarriz, Google 's Sticky Litle Fingers, THE MOTLEY FOOL (May 11, 2006) available at http://www.fool.com!server/printaricle .asp x?fie=/investing/value/2006/05 / l1/googles-sticky-little-fingers.aspx (accessed August 24, 2007). R. Affdavit of Stephen Manifeld (August 27, 2007). S. 5 Questions with PreFound.com CEO Steve Manifeld, REPRISE MEDIA (May 24, 2006) available at http://www.searchviews.com!index. php/ archives/2006/0 5/ 5-questions- with- prefoundcom-ceo-steve-mansfield. phpprint/ (accessed August 24, 2007). T. About Reprise Media, available at http://www.reprisemedia.comlabout.aspx (accessed August 24, 2007). u. About Susan Kuchinskas, available at http://'''''''-,yu' (accessed August 24, 2007). v. About Us ICJvj, available at http://www.cmp.com!about/index.ihtml (accessed August 24, 2007). w. Susan Kuchinskas, Prefound on Competing with Google, THE 360 (Oct. 27, 2006) available at http://36Otechblog.com!prefo und-on-competing - with- google/2006/1O/27/ (accessed August 24, 2007). CINibrary 0111090.0549889 1759659\'6 Page v 8/27/2007 Case 5:07-cv-00109-JMH Document 12 Filed 08/27/2007 Page 7 of 24 x. Google Goes Multi-Lingual, THE OFFICIAL GOOGLE BLOG (March 29, 2007) availab le at http://googleblog. blo gspot. com!2007 1031 google-note book- goes- multi-lingual.html (accessed August 24, 2007). Y. Manual of Patent Examining Procedure 719 (USPTO, 8th Edition Revision 5, August 2006) available at http://www.uspto.gov/web/offces/pac/mpep/documents/0700719.htm#sect 719 (accessed August 24, 2007). Z. THE 360, About the 360, available at http://36Otechblog.com!about/ (accessed August 24, 2007). AA. American Heritage Dictionary (2000) available at http://www.barleby.om!61/26/A0542600.html (accessed August 24,2007). BB. WHA TIS.COM, URL, November 27, 1999, http://we b.archive .org/we b/20000407183 83 5/http://www.whatis.com! (visited August 24, 2007). CC. Offce Action mailed January 28, 2004 (reJecting application 09/594,786). DD. Response to January 28, 2004, Offce Action regarding 09/594,786. EE. US Patent 6,567,830. FF. WHATIS.COM; Plug-in (May 12,2003) available at http://searchsmb. techtarget.com!sDefinition/O"sid44 gci212800,00 .html (accessed August 24, 2007). GG. WHATIS.COM, Screen Shot (July 31,2001), available at http://whatis.techtarget.com!definition/O..sid9 gci 497372,00.html (accessed August 24, 2007). HH. Michael Kanellos Bio available at http://www.idema.org/ smarsite/modules/news/show news.php?cmd=displ ay&news_id=1393 (accessed August 24,2007). II Michael Kanellos, The Scary Math Behind Web 2.0 (April 17, 2007) available at http://new,,.com.com!8301-10784 3-9710510- 7.html?part=rss&subi=news&tag=2547-1 3-0-20 (accessed August 24, 2007). CINibrary 0111090.0549889 1759659\'6 Page vi 8/27/2007 Case 5:07-cv-00109-JMH Document 12 Filed 08/27/2007 Page 8 of 24 JJ. Rich Mieslen, The New York Times Newsroom Navigator, NEW YORK TIMES (February 25, 2007) available at http://tech.nytimes .com!top/news/techno lo gy / cybertimesna vigator/index. html (accessed August 24, 2007). KK. Search of the Google Blog for occurrences of the term "Google Notebook" from April 17, 2007 through August 17, 2007 at http://blogsearch.google .com!b logsearch?as q =&num= 1 0&hl=en&c2co ff= 1 &as oq =&as eq=&lr=&safe=active&q=%22 goo gle+notebook%22&ie=UTF - 8&as mind=l7&as minm=4&as miny=2007&as maxd=17&as maxm=8&as max y=2007 &as. =2 F F 7%2 tnD=Go (accessed August 24, 2007). LL. Tom Eid and Nikos Drakos, The Emerging Enterprise Social Software Marketplace (abstract) (July 23, 2007) (search for articles pertaining to social software in http://www.garner.com!(search run August 24,2007). MM.WIKIPEDIA, Garner (August 3,2007) available at http://en.wikipedia.org/wiki/Gartner (accessed August 24, 2007). NN. The Kentucky Derby Roundtable (May 5-6, 2006) available at http://www.prefound.comlroundtable (accessed August 24, 2007). 00. WIKIPEDIA, InfoWorld (April30, 2007) available at http://en.wikipedia.org/wiki/lnfoWorld (accessed August 24,2007). PP. Elizabeth Montalbano, Prefound.com to Wed Social Networks, Search, INFOWORLD (April 12, 2006) available at http://www.infoworld.com!archivei-/emailPrint. isp?R =printThis&A=/article/ 06/04/12/77379 HNprefound l.html (accessed August 24, 2007). QQ. Nasdaq Summary Quotes, Google, August 24, 2007, http://quotes.nasdaq.com!asp/SummaryQuote. asp ?symbo l=GOOG&selected =GOOG (accessed August 24, 2007). RR. Ari Levy, Google Isn't Threatened by Slowdown, Economist Says (Update2), BLOOMBERG (August 24, 2007) available at http://www.bloomberg.com!apps/news ?pid=conewsstory&refer=conews&tk r=GOOG:US&sid=awY5Vfh7.dXM (accessed August 27,2007). ............................ CINibrary 0111090.0549889 1759659\'6 Page vii 8/27/2007 Case 5:07-cv-00109-JMH Document 12 Filed 08/27/2007 Page 9 of 24 ss. WIKIPEDIA, Bloomberg L.P (August 19,2007) available at http://en.wikipedia.org/wiki/Bloomberg L.P. (accessed August 27, 2007). TT. Paul R. LaMonica, What Google should do with its $10 bilion war chest, CNN MONEY (April 11, 2006) available at http://money.cnn.com!2006/04/11/news/companies/googlecash! index. htm (accessed August 27,2007). UU. WIKIPEDIA, CNN (August 23, 2007) available at http://en.wikipedia.org/wiki/Cnn (accessed August 27,2007). CINibrary 0111090.0549889 1759659\'6 Page viii 8/27/2007 Case 5:07-cv-00109-JMH Document 12 Filed 08/27/2007 Page 10 of 24 iLOR'S MEMORANDUM IN SUPPORT OF ITS MOTION FOR PRELIMINARY INJUNCTION Plaintiff requests that this Court preliminarily enjoin Google from using or inducing others to use the Google Notebook in a manner which infringes claim 26 of U.S. Patent 7,206,839. Accordingly, for its Motion for Preliminary Injunction pursuant to Fed.R.Civ.P 65, the Plaintiff iLOR, LLC ("iLOR"), states as follows: I. Back!!round Since its founding in 2000, PlaintiffiLOR has been a technology innovator in the field of utilizing the Internet, particularly via hyperlinks. 1 Tools in this field will be critical to the larger picture of social software such as MySpace .http://www.myspace.com. Social software is a label which is generally applied to web-enabled software programs which allow users to interact, share, and/or meet with other users? Social software is a key component of the even bigger picture ofthe Web 2.0 movement which rose from the ashes of the dot.com era.3 Plaintiff applied for a patent for a social software tool as early as May 4, 2000, the fiing date ofthe U. S. 4 Provisional Application No. 60/202,029 from which the patent-in-suit claims priority. Early on, industry watchers recognized iLOR as a pioneer. "Check out the site. The features are useful, enough so that you'll probably wonder why they aren't available at Google text or a computer graphic that a user can "click" with the mouse pointer, which will immediately load a new browser page that the hyperlin is programmed to present to the user." US Patent 7,206,839, Co!. 1,11.24-28 (Exhibit A). ( xhib t B). 3ETimiO'Reilly, What Is Web 2. 0 - De:signPatterns and Business Modelsfor the Next Generation of Software i "A hyperlink is simply a string of 2 WIKIPEDIA, Social Software, available at http://en.wikipedia.org/wiki/Social software (accessed August 24,2007) (9/30/2005) available athttp://www.oreillynet.com/lpt/a/6228(accessedAugust24.2007).(TimO.Reilly is the founder and CEO of O'Reilly Media, Inc., a prolific publisher of computer books.) (hereinqfter, 0 'Reily) (Exhibit CA 4 ). provisional patent application is an abbreviated version of a full or non-provisional application which allows an inventor/applicant to secure a filing date for up to one year to determine whether or not they wish to commit the resources to file a non-provisional application. See, 35 U.S.C. 111(b). CINibrary 0111090.0549889 1759659\'6 -1- Case 5:07-cv-00109-JMH Document 12 Filed 08/27/2007 Page 11 of 24 itself" Danny Sullivan,5 iLOR Makes Google Even Better, SEARCH ENGINE W A TCH6 (April 19, 2001) available at http://searchenginewatch.com!2163651/print (accessed August 24,2007) (Exhibit G). But in 2006, MARKETWATCH7 reported Google's interest in community-based searching, an application of social software, in an interview with Eric Schmidt, CEO of Google. Bambi Francisco, Google Going Vertical, MARKETW A TCH (May 11, 2006) available at http://www.marketwatch.comlN ews/Story/Story. aspx?guid=% 7B 174948FE- E62F -40E5-846A- 4C0948CC45B3%7D&print=true&dist=printTop (accessed 8/24/2007) (Exhibit I). Google, now interested in the social software movement, launched a beta version8 ofa product called the Google Notebook on May 15, 2006. Google Notebook provides a small window, the "Google Mini-Notebook," in which users can exploit the Internet via hyperlinks. Users may store information in the Google Mini-Notebook by clicking the right mouse button while the cursor is positioned on a hyperlink on a webpage. The user may then select the "Note this Item" option which will store a notebook entry relatmg to the currently viewed webpage. An example of a Mini-Notebook with a notebook entry taken from a website maintained by Google 5 Danny Sullivan is the founder of Search Engie Watch and a prolific writer and speaker in the field of internet search engines. See, WIKIPEDIA, Danny Sullvan available at http://en.wikivediaorg/wiki/Danny Sullivan (technologist) (accessed August 24,2007) (Exhibit D). (i "Search Engie Watch provides tips and information about searching the web, analysis of the search engine industry and help to site owners trying to improve their ability to be found in search engines." http://searchenginewatch.com/showPage.html?page=about (accessed August 24, 2007). (Exhibit E). Search Engie Watch is currently owned by Incisive Media, a leading provider of business information to the UK personal finance industry. See generally, http://www.incisivemedia.com/public/showPage.html?page= 11338 (accessed August 24, 2007) (Exhibit F). 7 Marketwatch.com is operated by MarketWatch, Inc., a wholly-owned subsidiary ofDow Jones & Company. See, About Market 8 A "beta" version of a program is a version of Watch available at http://www3.marketwatch.com/siteinfo/ (accessed August 24,2007) (Exhibit H). the program which is made available to specific users for testing nsers. puroses before the program's release. Answers.com, beta: Definition and Much More from A com, June 7, 2004, available at http://www.answers.com/topic/beta-definition ?cat=technologY&IJrint=true (accessed August 24, 2007) (Exhibit J). CINibrary 0111090.0549889 1759659\'6 Page 2 8/27/2007 Case 5:07-cv-00109-JMH Document 12 Filed 08/27/2007 Page 12 of 24 is set forth as Figure I (below). The Mini-Notebook provides a user-friendly way to utilize the Internet via hyperlinks because it allows users to save information regarding web pages they have visited or wish to visit at a later date.9 Google Notebook Tour . Noteboks r C i i .~..nlt=..i A Buyers Guida I Toos I Save .- I:Q'.i:()-i3.!j'....",().u~in.~", T Timbuktu Bike Zon" Welcome", the Timbuktu Blka ZO, your sourc... ~ " Typ. Notebook 1 en try Figui'c 1. An cxcmplary' Mini-Notchool... 10 The Google Notebook has been heavily promoted by Google and has received significant media attention. Google featured the Google Notebook in its May 2006 press release: Google Notebook is a simple way for users to save and organize their thoughts when conducting research online. This personal browser11 tool permits users to clip.. links from the pages they're browsing, save them to an online "notebook" and share them with others. Goog/e Notehookfrom Goog/e ,ahs, (May 10, 2006) available at http://www.google.com/intl/en/press/pressrel/new tech.html (accessed August 24, 2007) (Exhibit M). The press release noted how the tool fit into social software by encouraging the sharing of results across a community of users. Id. The Google Notebook was also featured in BusINSS WEEK12 r) Coogle J'v'otebook FAQ -r 1-3, 7 available at http://ww\v.google.coinlgooglenotebook/faq.html (accessed August 24, 2(07) (Exhibil K). 10 Coogle Notebook Tour available at http://w\vw.google.com/googlenotebook/tourLhtml (accessed August 24, 2(07) (Exhibil L). 11 "A browser is an application program that provides a way to look at and interact with all the iiofliiation on the World Wide Web." WHA'lis.cm'l, /Jrowser (Sepleniber 25,2(06) available at hUp:llsearchvb.techtar~eLconi/sDelniton/O,.sidg ~ci211708.00.htnil (accessed AiigiiSI 24, 2(07) (Exhibil N). i Burt Helm, Coogle's Desktop Offnsive, BCSINESS WEEK (May 1 L 2006) available at hUp:llwww. biisinessweek.coni/print/lechnolo~v/content!may 2006/tc20060511 493243 .htm) (accessed A iigliSI 24, 2(07) (Exhibil 0). c!',i .brary 0111 ()')().054')gg') i 75%59v2(, Page 3 8/2 7 12007 Case 5:07-cv-00109-JMH Document 12 Filed 08/27/2007 Page 13 of 24 and THE MOTLEY FOOL. 13 The latter article, which includes the Google Notebook, emphasized Google's ability to use its size to compete even in areas where it was not the innovator. Rick Aristotle Munarriz, Google 's Sticky Little Fingers, THE MOTLEY FOOL (May 11, 2006) available at http://www.fool.com!server/printaricle. asp x?fie=/investing/value/2006/0 5/ 11/ goo gles-stickylittle-fingers.aspx ("Not all of the new offerings are unique to Google, but they all bear checking out because of the hu!!e Internet audience that the search kin!! commands. ") (emphasis added) (accessed August 24, 2007) (Exhibit Q). Following the beta release of Google Notebook and as the Google Notebook received more publicity, iLOR's efforts were directed away from promoting its tools and significant time was expended to assure the media that it was still viable even though Google was offering an identical service. Affdavit of Stephen Manifeld at 118 (August 27, 2007) (Exhibit R). Google's beta release devastated a planned media campaign in progress by iLOR which had been directed at establishing iLOR's place as an industry leader. Id. The goal ofiLOR's media campaign was to establish enough momentum to achieve a self-sustaming critical mass of users. Id. Google Notebook's entrance on the scene, however, forced iLOR to engage in damage control tactics in the face of Google's overwhelming market power. Id. MARKETW A TCH, itself, on the heels ofthe Google Notebook launch, characterized Google as the new giant in social search. See, Google Going Vertical (Exhibit I). ilOR attempted to distinguish itself 5 Questions with PreFound.com CEO Steve Mansfield, REPRISE MEDIA 14 (May 24, 2006) available at 13 THE MOTLEY FOOL is a multimedia financial education company. Since 1996, in partnership with Simon and WEEK'S best-seller list. Schuster, eight Motley Fool books have been published which have all climbed to BUSINESS THE MOTLEY FOOL'S nationally syndicated weekly newspaper column debuted in 1997 and now appears in more than 200 papers. About the Motley Fool available at http://www.fooL.com/Server/printarticle.aspx?file=/press/about.htm (accessed August 24,2007) (Exhibit P). i Reprise Media develops strategic, integrated search marketing campaigrs that help the world's largest brands generate revenue and drive traffic to their websites. The company has been recogrized as a leader in the search CINibrary 0111090.0549889 1759659\'6 Page 4 8/27/2007 Case 5:07-cv-00109-JMH Document 12 Filed 08/27/2007 Page 14 of 24 http://www.searchviews.com!index. php/ archives/2006/0 5/ 5-questions- with-prefoundcom-ceo- steve-mansfield.phpprint/ (accessed August 24, 2007) (Exhibit S). But others questioned whether Pre Found could even compete with Google. Infuential bloggers asked "Now that is it all over for Google, the 'web 2.0 starup killer', is moving into social search territory starups like... PreFound?" Susan Kuchinskasl5, Prefound on Competing with Google, THE 36016 (Oct. 27, 2006) available at http://36Otechblog.com!prefound-on-competing-with- google/2006/10/27/ (accessed August 24, 2007) (Prefound.com is the website developed by the Plaintiff iLOR) (Exhibit W). Google continued to develop its Notebook and the product left beta phase on March 29, 2007. This was highlighted in the offcial Google Blog: "In case you haven't heard about it before, Google Notebook lets you conveniently collect, organize and share information while searching and browsing the web. If you've tried it already, I urge you to try again, as its new interface is much smoother to use than it was. ,,17 In danger oflosing its fragile foothold in the social search space, iLOR focused on prosecuting its pending patent application, covering its hyperlink technology, which issued as marketing field by a broad range of independent parties including Forrester Research, Jupiter Research, OMM Magazine and even Google. See, About Reprise Media available at http://www.repriseri.' labout.aspx (accessedKuchinskas is a former editor of THE 360. She has also co-authored Going Mobile - Building the real-time 15 Susan August 24,2007) (Exhibit T). enterprise with mobile applications that work, and she has published two reports (Profiting from Option Rich Networks and Gettng in the Wireless Game: Opportunities and Technology is a part of Entr Points) for CMP Technology. CMP news distribution and specialist information services for the professional and enthusiast markets, actively bringing buyers and sellers together across targeted media channels-publications, events and online. Ms' Kuchinskas work has also appeared in Technology Review, Wired, the Los Angeles Times and Business 2.0. See, About Susan Kuchinska" United Business Media (www.unitedbusinessmedia.com). a leading global provider of http://www.kuchinskas.com/aboutus.html (accessed August 24, 2007) (Exhibit U) and About Us IClvj, http://www.cmp.com/about/index.ihtml (accessed August 24,2007) (Exhibit '0. i THE 360 takes an analytical, in-depth look at the way that the Internet industry's largest players and most inovative newcomers are shaping the future. It tracks the technology, business models and interdependencies of the next generation of internet companies. See, THE 360, About the 360, http://360techblog.com/about/ (accessed August 24, 2007) (Exhibit Z). 17 Google Goes Multi-Lingual, THE OFFICIAL GoOGLE BLOG (March 29, 2007) available at http://googleblog.blogspot.com/2007 1031 google-notebook -goes-m ulti-linguaL.html (accessed August 24, 2007) (Exhibit X). CINibrary 0111090.0549889 1759659\'6 Page 5 8/27/2007 Case 5:07-cv-00109-JMH Document 12 Filed 08/27/2007 Page 15 of 24 u.s. Patent No. 7,206,839 on April 17, 2007 ("the '839 patent"). The '839 patent covers a novel and valuable method for enhancing a hyperlink that is currently being utilized in Google Notebook and by users ofthe Google Notebook. This patent represents iLOR's only chance to exclude Google from continuing to unlawfully erode iLOR's market position. As is recognized by O'Reilly, "One ofthe key lessons of the Web 2.0 era is this: Users add value." See, O'Reily (Exhibit C). Without users, asocial users will "go search site is virually useless. Affdavit at 11 7 (Exhibit R). A small percentage of to the trouble of adding value" to a social site via explicit means (publishing their favourite links to the rest of the world). See, 0 'Reily (Exhibit C). But the social site itself will also include means for "aggregating user data and building value as a side-effect of ordinary use of the app lication the systems ... get better the more people use them." I d. (emphasis added). In order for a social site that is dependent on users aggregating data to really become successful, it must offer users easily accessible online tools to assist them in aggregating the data. Affdavit at 11 7 (Exhibit R). Further, it is critical that the tools that are offered are so easy to use and helpful to these users that the tools become intrinsic to the browsing process itself for these users. Id. But, given Google's almost instant name recognition compared to iLOR, Defendant will soon render iLOR a non-entity in social search through the presence ofthe Google Notebook, by luring users away from iLOR s website, unless iLOR can prevent Google from using its patented technology. Ifthe infringement is stopped, then iLOR can engage in a marketing campaign to re- establish its position as an innovator for social search and attact users to its website. Affdavit at 11 9 (Exhibit R). This will, in turn, improve the overall operation ofthe website as noted by O'Reily. However, ifDefendants infringement continues unabated, iLOR, whose user base has been usurped by Google, will soon be locked out of an entire market - a market in which it is an CINibrary 0111090.0549889 1759659\'6 Page 6 8/27/2007 Case 5:07-cv-00109-JMH Document 12 Filed 08/27/2007 Page 16 of 24 innovator and patent holder. Id at 11 10. Therefore, iLOR seeks this preliminary injunction to stop Google's infringement ofiLOR's patent. II. Le!!al Framework Plaintiff has sued Defendant for infringement of its '839 patent. A patent is the grant of a property right to the inventor, issued by the United States Patent and Trademark Offce ("USPTO"). 35 U.S.C. 101. Each patent includes one or more claims which paricularly point out and claim the subject matter which the inventor regards as his invention, and a written description which sets forth how to make and use the claimed invention. 35 U.S.C. 112. Together, the claims and written description are referred to as the patent's specification. Id. Before any patent is issued, it is rigorously examined by the USPTO to ensure that patents are only granted for inventions which are new, useful, and unobvious. The record of communications between the patent offce and the inventor during examination is called the patent's "prosecution history" or "fie wrapper" See generally, Manual of Patent Examining Procedure 719 (USPTO, 8th Edition Revision 5, August 2006) available at http://www.uspto.gov/web/offces/pac/mpep/documents/0700719.htm#sect719 (accessed August 24, 2007) (Exhibit Y). Once a patent has been granted, whoever uses the patented invention without the permission of the patent holder is liable as an infringer. 35 U.S.C. 271(a). Further, anyone who actively induces infringement is also liable as an infringer. 35 US.C. 271(b). The Patent Act authorizes courts "(t)o grant injunctions in accordance with the principles of equity to prevent the vio lation of any right secured by patent, on such terms as the court deems reasonable." 35 U.S.C. 283. The grant or denial of an injunction is an act of equitable CINibrary 0111090.0549889 1759659\'6 Page 7 8/27/2007 Case 5:07-cv-00109-JMH Document 12 Filed 08/27/2007 Page 17 of 24 discretion by the distnct court. Guttman, Inc. v. Kopykake Enters., 302 F.3d 1352, 1356 (Fed. Cir. 2002) citing Novo Nordisk ofN. Am., Inc. v. Genentech, Inc., 77 F.3d 1364, 1367 (Fed. Cir. 1996). As the moving party, iLOR must establish its right to a preliminary injunction in light of a clear showing of four factors: (1) the movant has suffciently established a reasonable likelihood of success on the merits; (2) immediate ireparable harm will result if the relief is not granted, (3) the balance ofhardships to the paries weighs in the movant's favor; and (4) the public interest is best served by granting the injunctive relief. Polymer Techs. Inc. v. Bridwell, 103 F.3d 970,973 (Fed. Cir. 1996) followed by PHG Technologies, LLC v. Timemed Labeling Systems, 2006 WL 2670967; 2006 U. S. Dist. LEXIS 66828 (M.D.TN. 2006). See also, Atlas Powder Co. v. Ireco Chemicals, 773 F.2d 1230 (Fed. Cir. 1985) and also, J-Star Industries, Inc. v. Oakley, 720 F.Supp 1291, 1295 (W.D. Mich. 1989) (standard for review is a clear showing). "These factors, taken individually, are not dispositive, rather, the district court must weigh and measure each factor against the other factors and against the form and magnitude ofthe relief requested. " Hybritech, Inc. v. Abbott Labs., 849 F.2d 1446, 1451 (Fed. Cir. 1988). III. Ar!!ument As discussed below, iLOR can establish its right to a preliminary injunction in light of the four factors set forth above. A. Plaintiff Can Demonstrate a Clear Showing of Reasonable Likelihood of Success on the Merits To obtain a preliminary injunction, the movant must establish a clear showing of, at least, a "reasonable likelihood of success on the merits." Polymer, 103 F.3d at 973 citing Hybritech~ CINibrary 0111090.0549889 1759659\'6 Page 8 8/27/2007 Case 5:07-cv-00109-JMH Document 12 Filed 08/27/2007 Page 18 of 24 849 F.2d at 1451, andfollowed by PHG Techs., 2006 WL 2670967 at 8; 2006 US. Dist. LEXIS 66828 at 25-26. Likelihood of success on the merits is established by demonstrating that a patent is likely valid and has been infringed. Polymer, 103 F.3d at 973, citing Smith IntI. v. Hughes Tool Co., 718 F.2d 1573, 1581 (Fed. Cir.), cerl. denied, 464 u.s. 996 (1983). Only one claim need be infringed to prove infringement ofa patent. Johnson Worldwide Assocs. v. Zebco Corp., 175 F.3d 985, 988 (Fed. Cir. 1999). For purposes ofthe present motion, as set forth below, iLOR can demonstrate that claim 26 of the '839 Patent is valid and has been infringed. 1. The '839 Patent is Clearly Valid Patents are entitled to a statutory presumption of validity, and a challenger to the validity of a patent must demonstrate invalidity by clear and convincing evidence. 35 US. C. 282. While iLOR bears the burden of proof for establishing a likelihood of success on the merits, if the Defendant does not provide any persuasive evidence of invalidity, then "the very existence of patent satisfies. . . (the Plaintiff s) burden on validity." Purdue P harm a L.P. v. Boehringer Ingelheim, GNfH, 237 F.3d 1359, 1365-66 (Fed. Cir. 2001) rehearing en banc denied by Purdue PharmaL.P. v. Boehringer Ingelheim GNfH, 237 F.3d 1359 (Fed. Cir. 2001). See also, Iron Grip Barbell Co. v. USA Sporls, Inc. 392 F.3d 1317, 1340 (Fed. Cir . 2004). In this case, in light of the extremely thorough review, at the USPTO, ofthe '839 patent and applications related to the '839 patent, Defendant will not be able to provide persuasive evidence of invalidity. Therefore, in view ofthe presumption of validity of the '839 patent, iLOR has clearly satisfied success" test. the validity prong ofthe "reasonable likelihood of CINibrary 0111090.0549889 1759659\'6 Page 9 8/27/2007 Case 5:07-cv-00109-JMH Document 12 Filed 08/27/2007 Page 19 of 24 2. Claim 26 of the' 839 Patent is Clearly Infriged The assessment ofthe likelihood of infringement of a valid patent for purposes of a preliminary injunction, like a determination of patent infringement at a later stage of litigation, requires a two-step analysis. Lopes v. Intl. Rubber Distributors, Inc., 309 F Supp. 2d 972, 979 (N.D.Ohio. 2004) citing Markman v. Westview Instruments, Inc., 52 F.3d 967, 970-71 (Fed. Cir. 1995), aff'd, 517 U.S. 370 (1996). First, the Court determmes, as a matter oflaw, the correct meaning and scope of the asserted claims. Markman, 52 F.3d at 970-71. Then, the Court compares the properly construed claims to the accused device or method to determine, as a matter 0 f fact, whether all of the limitations of at least one claim are present. Byrne v. Black & Decker Corp.,2006 WL 1117685 at *3, 2006 u.s. Dist. LEXIS 24104 at *8 (E.D. KY. 2006) aff'd2007 WL 1492101; 2007 US App. LEXIS 12000 (Fed. Cir. 2007). In construing claims, there is a "strong presumption that claim terms carry their ordinary meaning as viewed by one of ordinary skill in the art." Apex Inc. v. Raritan Computer, Inc., 325 F.3d 1364, 1371 (Fed. Cir. 2003). However, "(p )roperly viewed, the 'ordinary meaning' of a claim term is its meaning to the ordinary artisan after reading the entire patent." Phillips v. AWH Corp., 415 F.3d 1303, 1321 (Fed. Cir. 2005). When determining the ordinary meaning of claim language, resort may be had to sources including "the words of the claims themselves, the remainder of the specification, the prosecution history, extrinsic evidence concerning relevant the ar." Philips, 415 F 3d scientific principles, the meaning oftechnical terms, and the state of at 1314 citing InnovaiPure Water, Inc. v. Safari Water Filtration Systems, Inc., 381 F.3d 1111 (Fed. Cir. 2004). An applicant is also entitled to rebut the presumption that claim terms are to be given their ordinary and customary meaning by clearly setting forth a definition of the term that is different from its ordinary and customary meaning(s). In re Paulsen, 30 F.3d 1475, 1480 (Fed. CINibrary 0111090.0549889 1759659\'6 Page 10 8/27/2007 Case 5:07-cv-00109-JMH Document 12 Filed 08/27/2007 Page 20 of 24 Cir. 1994). Finally, "(d)ictionaries or comparable sources are often useful to assist in understanding the commonly understood meaning of words." Philips, 415 F.3d at 1322. The following sections provide the Court with the correct meaning and scope of claim 26 of the '839 patent and then compare that claim to the acts performed in the downloading and use the Google Notebook to show that Google and its users are liable for infringing that claim. of a. Claim Construction Claim 26 ofthe '839 Patent is directed to a method for enhancing a hyperlink. 26. A method for enhancing a hyperlink, comprising providing a userselectable 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. Each claim limitation will be defined and applied to the Google Notebook. i. Providing a user-selectable lik enhancement for a toolbar In the '839 patent, "providing a user-selectable link enhancement for a toolbar" means making available a function in a toolbar, for example, an option inserted into the toolbar, which enhances a hyperlink by making it possible to do something with that hyperlink other than clicking to move to a new page. This interpretation is supported by both the specification of the '839 patent, and the dictionary definitions of the claim terms. Regarding the specification, the '839 patent makes clear that the invention is intended to allow the user to pedorm additional interactions with a hyperlink. For example, the '839 patent states that "there is a need for an improved hyperlink that provides the user with the ability to do more with a hyperlink than click CINibrary 0111090.0549889 1759659\'6 Page 11 8/27/2007 Case 5:07-cv-00109-JMH Document 12 Filed 08/27/2007 Page 21 of 24 to move to a new page. The present mvention solves this problem by providing an enhanced hyperlink that provides the user the ability to choose additional interactions with the hyperlink (beyond c licking and moving to a new page)." '839 Patent at co L. 2, ll. 21-29. The '839 patent specification also provides multiple examples of enhancements such as "check out later" and "anchor," among others. '839 patent, col. 4, 11. 10-55. Consistent with the interpretation provided above, each of those enhancements provides the user with the ability to do more with a hyperlink than click to move to a new page. The specification also explicitly defines a "toolbar," and provides examples of using a link enhancement with a toolbar which are consistent with the interpretation provided above. In the '839 patent, a "toolbar" is defined as "any graphic user interface presented to users as part of an Enhanced Hyperlink." '839 patent col. 3, 11. 25-26. With relation to lin enhancements, toolbars are disclosed which display options that are selected to utilize link enhancements. E.g., '839 patent, col. 5, 11. 46-47 ("With the tool bar displayed, the user may select which link enhancement they desire to utilize, if any. "); col. 8, 11. 20-22 ("The toolbar provides one method for the user to select the paricular link enhancement that the user desires to utilize. "). This indicates that a link enhancement "for a toolbar" is one which is represented by an option inserted into the toolbar. Accordingly, "providing a user-selectable link enhancement for a toolbar" should be understood to refer to making available a function in a toolbar, for example, an option inserted into the toolbar, which enhances a hyperlink by making it possible to do something with that hyperlink other than clicking to move to a new page. CINibrary 0111090.0549889 1759659\'6 Page 12 8/27/2007 Case 5:07-cv-00109-JMH Document 12 Filed 08/27/2007 Page 22 of 24 ii. 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. As used in the '839 patent, this phrase means that the toolbar containing the Itnk enhancement, as defined above, can become visible when the cursor is positioned in a certain area in relation to the hyperlink. This interpretation is clearly supported by the '839 patent's specification. As a concrete example of this, consider figure 2 of the '839 patent, reproduced below for the sake of convenience. "FIG. 2 (of the '839 patent) ilustrates a sample toolbar that may be displayed by the invention of FIG. I " Co!. 3, 11. 3-4. Figure I illustrates an exemplary flow chart in which a user selects a hyperlink "by moving a cursor either 'over' or near a hyperlink that the user wishes to select." Co1. 5,11. 36-38. Once the hyperlink is selected "the program displays a toolbar which illustrates the link enhancements available for that paricular hyperlink." Col. 5, lL 38-40. ( ~4id -, 12 ~ \'ilch Illlm"a1ri~ aie "pin IN - Wij \l\\\\et Ho oll"" Particular link a tl in portoliU SI0.imil enhancement(s) in toolbar appearing in HoHn... relation to the hyperlink id Currenl u.s. Ftatvred Maps Figure 2: Copy of Figure 2 of the '839 Patent. As shown in figure 2, the lmk enhancements shown might include "contact me later," "send reminder," or "check out later." Thus, the specification of the '839 patent supports the c!',i .brary 0111 ()')().054')gg') I 75%5')v2(, Page 13 8/2 7 12007 Case 5:07-cv-00109-JMH Document 12 Filed 08/27/2007 Page 23 of 24 construction that "the toolbar bemg displayable based on location of a cursor in relation to a hyperlink" means that the toolbar, containing the link enhancement, can become visible when the cursor is positioned in a certain area in relation to the hyperlink. I. Wherein said first page is associated with a first unifonn resource locator (URL); wherein said hyperlink is associated with a second URL and a second page This phrase should be interpreted to mean that the web page where the hyperlink appears has a first URL, and that the hyperlink is pro grammed to present a second page having a second URL to the user. The claim term "page" is explicitly defined as "any web page, electronic document, fie, screen display, or other location a user may access with a hyperlink." '839 patent at col. 3, 11. 29- 30. Referring to a technical dictionary, the term "URL" should be understood to refer to the location of an Internet resource, for instance, the address ofa web page. See, WHATIS.COM, URL, (November 27, 1999) available at http://we b.archive. org/we b/20000407183 83 5/http: //www.whatis.com!( visited August 24, 2007) (Exhibit BB). Accordingly, this phrase should be construed to mean that the web page where the hyperlink appears has a first URL, and that the hyperlink is pro grammed to present a second page having a second URL to the user. iv. Wherein said user-selectable lik enhancement is adapted to display a graphical element based on said first URL As set forth below, this phrase should be construed to mean that the link enhancement is designed to display an element that includes some graphics attribute and that the element is based on the first URL. The term "first URL" is construed in Section III. A. 2.a.iii, supra, to be the URL CINibrary 0111090.0549889 1759659\'6 Page 14 8/27/2007 Case 5:07-cv-00109-JMH Document 12 Filed 08/27/2007 Page 24 of 24 of the first page. "Graphical element" means an element that includes some graphics attribute; that is, it is not purely textual. The best indication of the meaning of the term "graphical element" as used in claim 26 comes from the language used in patents which are related to the '839 patent, and from the arguments made while those patents were being examined by the Patent Offce. For example, the examiner assigned to related u.s Patent No. 6,925,496 ('496 patent) explained, in a rejection mailed on January 28, 2004, that a prior art reference taught "displaying pending links and some associated graphical elements such as colors." Offce Action at 3 (January 28,2004) (rejecting application 09/594,786) (Exhibit CC). Thus, a "graphical element" should be construed in a manner which includes colors. Also, statements made during examination of related patents help define the term what does not fall within the scope of a "graphical "graphical element" by providing examples of element." For example, the Patent Offce rejected a claim which included the phrase "copying any associated graphical elements corresponding to the hyperlink." Id. In the Applicant's response, it was explained "As taught by Newfield - the associated graphical element corresponding to the hyperlink is not copied to the second window." See, Response at 5 (to January 28, 2004, Offce Action regarding 09/594,786) ("Exhibit DD"). Thus, because simply copying text, without any formatting elements (e.g., color), does not constitute copying a graphical element, a graphical element should be defined in a manner which excludes a bare unformatted text string. In other words, the claim uses the term "graphical element," not merely "graphics." In any event, unformatted text is not "graphics." Finally, this construction is further supported by resort to extrinsic evidence, that is, the way other inventors used the term "graphical element" around the time the '839 patent was originally fied. For instance, in a patent issued to International Business Machines (IBM), a CINibrary 0111090.0549889 1759659\'6 Page 15 8/27/2007

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