Pop Top Corp. v. Barnesandnoble.com: Web Highlighter Patent Case Dismissed After 1,529 Days
Pop Top, Corp. filed a patent infringement action against Barnesandnoble.com in the Southern District of New York, asserting US7966623B2 covering methods and apparatus for enabling highlighter services on web pages. After plaintiff’s counsel withdrew and no successor appeared, Judge Broderick dismissed the case without prejudice under Rule 41(b) — ending a 1,529-day litigation without a merits ruling.
A procedural collapse: counsel withdrawal ends a four-year web patent fight
Pop Top, Corp. filed suit against Barnesandnoble.com, LLC on August 18, 2020 in the U.S. District Court for the Southern District of New York, asserting infringement of US7966623B2 — a patent covering methods and apparatus for enabling highlighter services for visitors to web pages. The case was assigned to Judge Vernon S. Broderick and proceeded through more than four years of litigation before its resolution. The patent-in-suit relates to interactive web-based annotation and highlighting technology, a capability relevant to e-commerce and digital reading platforms such as the defendant’s.
The case ended not on the merits but through a chain of procedural events. On July 3, 2024, plaintiff’s sole counsel, Matthew Wawrzyn, was granted leave to withdraw. Judge Broderick stayed the case and issued multiple extensions — ultimately to October 21, 2024 — for Pop Top to retain successor counsel, warning that failure to do so would result in dismissal for failure to prosecute under Fed. R. Civ. P. 41(b). No new counsel appeared and no other prosecutorial action was taken. On October 25, 2024, the court dismissed the action without prejudice.
A dismissal without prejudice under Rule 41(b) is notable because it leaves the door technically open for refiling, yet after 1,529 days of litigation the practical and strategic calculus for Pop Top is complex. The public record does not disclose why successor counsel could not be retained — whether due to funding constraints, case-strength assessments, or other commercial factors. For Barnesandnoble.com, the dismissal without prejudice means the infringement cloud is lifted for now but not permanently extinguished, suggesting ongoing monitoring of US7966623B2 may be warranted.
Filing to Dismissed without Prejudice in 1529 days
1,529 days from filing to dismissal — well above the median district court patent case duration of ~730 days
Rule 41(b) dismissal without prejudice: what it means for both parties
Rule 41(b) dismissal for failure to prosecute — not a merits ruling
Fed. R. Civ. P. 41(b) allows a court to dismiss an action when a plaintiff fails to prosecute or comply with court orders. Judge Broderick invoked this rule after Pop Top failed to retain successor counsel despite three extended deadlines. Critically, the dismissal is without prejudice — meaning no adjudication on validity, infringement, or claim scope was made. The patent itself remains in force subject to its normal USPTO status.
Procedural dismissal — no merits decidedDismissal without prejudice: refiling remains theoretically possible
A without-prejudice dismissal does not bar Pop Top from reasserting US7966623B2 against Barnesandnoble.com or other parties, provided any new action is filed within applicable statutes of limitations and the patent remains enforceable. However, the failure to retain counsel after 1,529 days of litigation suggests resource or strategic constraints that may practically impede refiling. The public record is silent on whether a licensing resolution or settlement was reached outside the court docket.
Refiling theoretically possibleNo merits win for Barnes & Noble — infringement cloud not permanently cleared
Barnesandnoble.com secured dismissal without any finding of non-infringement or invalidity. While the immediate litigation risk is removed, the without-prejudice designation means the threat from US7966623B2 is not extinguished. Defendants in this position typically consider whether to pursue inter partes review or other validity challenges proactively, to remove the patent’s leverage before any refiling occurs.
No invalidity finding obtainedWeb annotation patent risk persists for digital commerce platforms
US7966623B2 covers a method and apparatus for enabling highlighter services on web pages — functionality broadly relevant to e-commerce, digital publishing, and online reading platforms. The dismissal without prejudice means competitors and platforms deploying similar web highlighting or annotation features cannot treat this case as resolving their risk exposure. Any entity relying on comparable web annotation technology should assess whether US7966623B2 remains a live enforcement risk.
FTO analysis recommendedFull party and counsel information
| Role | Name | Type | Detail |
|---|---|---|---|
| Plaintiff | Pop Top, Corp. | Company | Web technology patent holder — asserting US7966623B2 covering web page highlighter servicesSearch in Eureka ↗ |
| Defendant | Barnesandnoble.com, LLC | Company | Barnesandnoble.com, LLC — e-commerce and digital reading platform operatorSearch in Eureka ↗ |
| Plaintiff counsel | Matthew M. Wawrzyn. | Attorney | Counsel for Pop Top, Corp.Search in Eureka ↗ |
| Plaintiff law firm | FisherBroyles LLP | Law Firm | Representing Pop Top, Corp.Search in Eureka ↗ |
| Defendant counsel | Dana Erin Berkowitz | Attorney | Counsel for Barnesandnoble.com, LLCSearch in Eureka ↗ |
| Defendant counsel | Elizabeth Brannen | Attorney | Counsel for Barnesandnoble.com, LLCSearch in Eureka ↗ |
| Defendant law firm | King & Spalding LLP | Law Firm | Representing Barnesandnoble.com, LLCSearch in Eureka ↗ |
| Defendant law firm | Stris & Maher LLP | Law Firm | Representing Barnesandnoble.com, LLCSearch in Eureka ↗ |
| Presiding judge | Judge Vernon S. Broderick | Judge | New York Southern District CourtSearch in Eureka ↗ |
Official order — verbatim text
Judge Broderick’s dismissal order is procedural rather than substantive — it records no finding on infringement, validity, or claim construction. The without-prejudice qualifier is significant: unlike a dismissal with prejudice, it does not operate as an adjudication on the merits and does not bar future assertion of US7966623B2 within the applicable limitations period. The order’s reference to Rule 41(b) and the sequential extensions granted to Pop Top suggest the court exercised appropriate patience before terminating the action, consistent with Second Circuit standards requiring consideration of prosecutorial delay and prejudice to the defendant.
US7966623B2 — Method and apparatus for web page highlighter services
US7966623B2, filed under application number 11/766793, covers a method and apparatus for enabling highlighter services for visitors to web pages. This class of invention relates to client-side or server-assisted annotation technology that allows users to mark, highlight, or interact with content on third-party web pages — a function highly relevant to digital reading, e-commerce product pages, and online content platforms. The patent’s grant date and claim scope position it in the era of early web 2.0 interactivity, where such annotation capabilities were commercially differentiating.
For the e-commerce and digital publishing sectors, US7966623B2 represents a category of web interaction patent that has historically attracted assertion activity against platform operators. Barnesandnoble.com’s business — combining e-commerce with digital reading via the Nook platform — makes it a plausible target for a patent covering web-based highlighting. The case’s dismissal without prejudice means the patent retains its assertion potential, and any company deploying comparable web annotation, highlighting, or content-marking features should treat this patent as an active monitoring priority until its expiration or a final invalidity ruling is obtained.
Should your team run an FTO analysis against US7966623B2?
Any company operating a web platform that enables users to highlight, annotate, or mark content on web pages — including e-commerce sites, digital reading applications, SaaS document tools, or browser-based productivity software — should assess potential exposure to US7966623B2. The without-prejudice dismissal in this case means the patent was never found invalid or not infringed. R&D and product teams building or acquiring highlighting, annotation, or content-interaction features should not assume this case resolves their freedom-to-operate position.
PatSnap Eureka’s FTO Search Agent allows IP and product teams to run a structured freedom-to-operate analysis against US7966623B2 and its related family members. Eureka can map claim scope against your product architecture, identify prior art relevant to validity, surface continuation applications, and track assignment history — giving you an evidence-based view of whether your web annotation implementation falls within the patent’s reach before a new enforcement action is filed.
Run a freedom-to-operate analysis on US7966623B2 to assess your product’s exposure
Run FTO in Eureka →Similar web annotation and highlighter patent cases in S.D.N.Y. and beyond
Browse comparable patent infringement actions involving web interaction and annotation technology filed in the Southern District of New York and related federal venues.
What this case signals for the web annotation and digital commerce IP landscape
The procedural collapse of this case obscures the underlying patent risk — US7966623B2 remains a live asset that IP teams should monitor.
Counsel withdrawal as a case-ending event: a warning for patent plaintiffs
This case illustrates how the loss of a single attorney can unravel years of litigation for a corporate plaintiff. Federal courts do not permit companies to proceed pro se, and failure to retain successor counsel — even with extended deadlines — results in involuntary dismissal. Patent holders relying on a sole practitioner or boutique firm carry meaningful continuity risk that in-house teams should proactively manage.
Without-prejudice dismissal: why defendants should not declare victory
Barnesandnoble.com exits this litigation without a finding of non-infringement or invalidity. US7966623B2 remains potentially enforceable. Competitors in the web platform and digital commerce sector should monitor patent ownership and assignment activity around this patent and consider proactive IPR or ex parte reexamination to achieve a more durable resolution.
Pop v Barnesandnoble.com — key questions answered
The case was dismissed without prejudice on October 25, 2024, under Fed. R. Civ. P. 41(b) for failure to prosecute. Plaintiff Pop Top, Corp. failed to retain successor counsel after its original attorney was granted leave to withdraw in July 2024, despite multiple court-ordered extensions. No merits ruling on infringement or validity was issued.
Pop Top, Corp. asserted US7966623B2 (application number 11/766793), which covers a method and apparatus for enabling highlighter services for visitors to web pages. The patent relates to web-based annotation and content-highlighting technology relevant to digital commerce and online reading platforms.
A dismissal without prejudice under Rule 41(b) does not constitute an adjudication on the merits and does not permanently bar refiling. Pop Top could theoretically reassert US7966623B2 within the applicable statute of limitations, provided the patent remains enforceable. However, practical and strategic constraints — such as the inability to retain counsel — may impede any future action.
No. Because the dismissal was without prejudice and no finding of non-infringement or invalidity was made, Barnesandnoble.com cannot rely on this outcome as a merits defence to future assertions of US7966623B2. The patent’s enforceability is unaffected by the procedural dismissal. Proactive validity challenges such as inter partes review may be advisable.
Pop Top, Corp. was represented by FisherBroyles LLP through attorney Matthew M. Wawrzyn, who later successfully moved to withdraw. Barnesandnoble.com was defended by King & Spalding LLP (attorney Dana Erin Berkowitz) and Stris & Maher LLP (attorney Elizabeth Brannen).
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