DCT

2:04-cv-70366

Netjumper Sofware LLC v. Google Inc

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Key Events
Amended Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:04-cv-70366, E.D. Mich., 03/17/2014
  • Venue Allegations: Venue is based on allegations that Google conducts business in the Eastern District of Michigan.
  • Core Dispute: Plaintiff alleges that Defendant’s Google Toolbar, specifically its "Next/Previous" navigation feature, infringes a patent related to methods for retrieving and navigating through lists of hyperlinked data on a network.
  • Technical Context: The technology addresses inefficiencies in web browsing, particularly in navigating lists of search results, by allowing users to move sequentially through linked pages without repeatedly returning to the source list.
  • Key Procedural History: The case was originally filed in 2004. The asserted patent, U.S. 5,890,172, was the subject of an ex parte reexamination requested by Google in 2007. In 2011, the U.S. Patent and Trademark Office (PTO) concluded the reexamination, confirming the patentability of all original claims and issuing five new claims. The complaint also alleges pre-litigation communications where Plaintiff disclosed the patent to Google.

Case Timeline

Date Event
1996-10-08 '172 Patent Priority Date
1999-03-30 '172 Patent Issue Date
2007-08-23 Reexamination of '172 Patent requested by Google
2011-04-11 PTO issued Notice of Intent to Issue a Reexamination Certificate for '172 Patent
2011-06-28 PTO issued Ex Parte Reexamination Certificate for '172 Patent
2014-03-17 First Amended Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 5,890,172 - “METHOD AND APPARATUS FOR RETRIEVING DATA FROM A NETWORK USING LINKED LOCATION IDENTIFIERS”

  • Patent Identification: U.S. Patent No. 5,890,172, “METHOD AND APPARATUS FOR RETRIEVING DATA FROM A NETWORK USING LINKED LOCATION IDENTIFIERS,” issued March 30, 1999.

The Invention Explained

  • Problem Addressed: The patent describes the process of navigating search results as "cumbersome." When a user follows a link from a results page and then wants to view another result, they must repeatedly use the browser's "back" key to return to the original list, a process the patent calls inefficient, especially after "drilled-down through many levels." (’172 Patent, col. 2:13-19, 55-62).
  • The Patented Solution: The invention proposes a software tool, or "jumper," that operates alongside a web browser. The jumper parses a web page (such as a search results page) to extract and store a list of hyperlinks ("location identifiers"). It then provides user controls (e.g., "next," "previous") that allow a user to navigate sequentially through the web pages corresponding to the stored links, bypassing the need to return to the original results page. (’172 Patent, Abstract; col. 3:9-24). The tool is depicted as a separate "jumper window" with its own navigation buttons. (’172 Patent, FIG. 3).
  • Technical Importance: This method was designed to streamline web navigation for search-intensive tasks by creating a "non-linear" path that avoids the repetitive "drill-down" and reverse-traversal steps required by standard browsers at the time. (’172 Patent, col. 4:55-62).

Key Claims at a Glance

The complaint does not identify the specific claims being asserted, referring generally to infringement of "the ‘172 patent." (Compl. ¶12). Independent Claim 1, as issued, is representative of the core invention.

  • Independent Claim 1:
    • constructing a search window on a display screen of the local computer;
    • displaying a first and a second icon separate from the search window on said display screen;
    • retrieving an initial data file from the network... the initial data file including location identifiers;
    • parsing the location identifiers from the initial data file to form an initial list of location identifiers... responsive to a selection of the first icon; and
    • retrieving a first data file corresponding to a selected one of the location identifiers in the stored initial list... responsive to a selection of the second icon.
  • The complaint’s general allegations suggest it may reserve the right to assert other original claims (2-18) or the new claims (19-23) added during reexamination. (Compl. ¶8).

III. The Accused Instrumentality

Product Identification

  • The accused instrumentality is the "Google Toolbar," described as a module available for download that contains a feature called "Web Buttons," which in turn includes a "Next/Previous" feature. (Compl. ¶11).

Functionality and Market Context

  • The complaint alleges the Google Toolbar is combined with an internet browser by the end user. (Compl. ¶15, ¶23). Its "Next/Previous" feature is accused of enabling infringement of the ’172 Patent. (Compl. ¶11, ¶17). The complaint asserts significant market adoption, stating that "in excess of 14 million Google Toolbars have been downloaded by Google users." (Compl. ¶11). The functionality is presented as being related to navigating between web pages, presumably those found in a sequence like search results. (Compl. ¶17).

No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint does not contain a claim chart. The following table summarizes the infringement theory for representative Claim 1 based on the complaint's narrative allegations.

’172 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
constructing a search window on a display screen of the local computer; The user’s internet browser window, with which the Google Toolbar is combined. ¶15, ¶25 col. 14:26-29
displaying a first and a second icon separate from the search window on said display screen; The "Next/Previous" buttons located within the Google Toolbar, which is separate from the main browser pane displaying web content. ¶11, ¶17 col. 14:30-34
retrieving an initial data file from the network... and the initial data file including location identifiers; A web page, such as a Google search results page, that is retrieved by the browser and contains a list of hyperlinks. ¶11 col. 14:55-59
parsing the location identifiers from the initial data file to form an initial list of location identifiers... responsive to a selection of the first icon; and The complaint does not specify what constitutes the "first icon" or what user action triggers the parsing. It alleges that the Google Toolbar's components constitute the invention. ¶18, ¶29 col. 14:60-64
retrieving a first data file corresponding to a selected one of the location identifiers in the stored initial list... responsive to a selection of the second icon. A user clicking the "Next" or "Previous" button in the Google Toolbar, which causes the browser to navigate to the next or previous page in a sequence. ¶11, ¶17 col. 14:65-col. 15:5
  • Identified Points of Contention:
    • Scope Questions: The patent describes a "jumper window" that appears separate from the browser. (e.g., ’172 Patent, FIG. 3). An issue may arise as to whether the Google Toolbar, which is typically integrated into the browser's own user interface frame, meets the "separate" icon and window limitations of the claims.
    • Technical Questions: Claim 1 requires that parsing be "responsive to a selection of the first icon." The complaint does not identify which feature of the Google Toolbar corresponds to this "first icon" or what user action triggers the parsing. The defense may argue that the accused product lacks this claimed element, or that any parsing it performs is triggered automatically upon page load, not in response to a specific icon selection as required by the claim.

V. Key Claim Terms for Construction

  • The Term: "icon"

  • Context and Importance: Claim 1 requires two distinct icons: a "first icon" to trigger parsing and a "second icon" to trigger navigation. The infringement case depends on mapping features of the Google Toolbar to both of these claimed elements. Practitioners may focus on this term because the complaint identifies the "Next/Previous" buttons but is silent on what constitutes the "first icon."

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The patent does not provide an explicit definition of "icon," which may support an argument that the term should be given its plain and ordinary meaning, encompassing any user-selectable graphical interface element like a button.
    • Evidence for a Narrower Interpretation: The patent's embodiment in Figure 3 shows a series of distinct buttons on a button bar (304), such as a "refresh/update button" (326) and a "next entry button" (318). A party could argue this context implies "icon" refers to discrete, visually separate control elements, and that the claim requires two such distinct elements for the two separate functions. (’172 Patent, FIG. 3).

  • The Term: "parsing... responsive to a selection of the first icon"

  • Context and Importance: This phrase defines the specific trigger for the claimed parsing step. Proving infringement requires showing not just that the Google Toolbar parses links, but that it does so as a direct result of a user selecting a "first icon." The absence of any allegation of such a trigger in the complaint makes this a critical phrase.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: A plaintiff might argue that any user action that initiates the toolbar's functionality, such as loading a page with the toolbar active, constitutes a "selection" that makes the subsequent parsing "responsive."
    • Evidence for a Narrower Interpretation: The patent’s flowchart (FIG. 8A) depicts the "Fetch & Parse" step (804) as resulting from a "Refresh?" decision (802), which is a separate process path from the "Jumper Button Select?" decision (818) that leads to navigation. This suggests a two-step user interaction is contemplated by the invention, supporting a narrower interpretation that requires a distinct user action to trigger parsing. (’172 Patent, FIG. 8A).

VI. Other Allegations

  • Indirect Infringement: The complaint alleges both induced and contributory infringement. (Compl. ¶12). It further includes specific counts for infringement under 35 U.S.C. § 271(f)(1) and (f)(2), alleging Google supplies components of the invention (the Toolbar software) from the U.S. with the knowledge and intent that they will be combined outside the U.S. to form the infringing system. (Compl. ¶¶17-39). The basis for inducement includes allegations that Google provides "instructions, directions, suggestions, and/or invitations" that lead end users to combine the Toolbar with a browser in an infringing manner. (Compl. ¶24).
  • Willful Infringement: The complaint alleges willfulness based on pre-suit knowledge of the ’172 Patent. The alleged knowledge stems from two sources: direct disclosure by NetJumper to Google personnel during "discussions... concerning potential uses of its patented technologies" (Compl. ¶13), and Google's own successful request for reexamination of the patent. (Compl. ¶6, ¶19).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A core issue will be one of claim scope and technical operation: Does the Google Toolbar's functionality meet the two-step, two-icon process required by the patent's claims? Specifically, the case may turn on whether Plaintiff can provide evidence of a "first icon" in the accused product whose selection triggers the claimed "parsing" step, separate and distinct from the "second icon" (e.g., the "Next" button) that triggers navigation.
  • A second central question will be one of defensive estoppel: Having requested reexamination of the ’172 Patent, during which all original claims were confirmed as patentable, Google's ability to challenge the validity of those same claims in court may be limited by the doctrine of assignor estoppel or related principles, potentially focusing the case more heavily on infringement.
  • Finally, a key evidentiary question will concern willfulness: The complaint alleges not only that Google knew of the patent from pre-suit discussions, but that it initiated and participated in a multi-year reexamination. This history raises the question of whether Google's continued alleged infringement after the PTO confirmed the patent's claims was objectively reckless, which will be a central issue for determining enhanced damages.