IconFind, Inc. v. Google, Inc.
Filing
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RESPONSE by IconFind, Inc. to 98 Brief,. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit C, Part 1, # 5 Exhibit C, Part 2, # 6 Exhibit C, Part 3, # 7 Exhibit C, Part 4, # 8 Exhibit C, Part 5, # 9 Exhibit D)(Haan, Brian)
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WILKE, FLEURY, HOFFELT, GOULD & BIRNEY, LLP
Thomas G. Redmon (SBN 47090)
TRedmon@wilkefleury.com
Daniel L. Baxter (SBN 203862)
DBaxter@wilkefleury.com
400 Capitol Mall, 22nd Floor
Sacramento, CA 95814
Phone: (916) 441-2430
Fax: (916) 442-6664
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NIRO, HALLER & NIRO
Raymond P. Niro (Admitted Pro hac vice)
RNiro@nshn.com
Raymond P. Niro, Jr. (Admitted Pro hac vice)
RNiroJr@nshn.com
Brian E. Haan (Admitted Pro hac vice)
BHaan@nshn.com
181 West Madison, Suite 4600
Chicago, IL 60602-4515
Phone: (312) 236-0733
Fax: (312) 236-3137
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Attorneys for Plaintiff IconFind, Inc.
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IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF CALIFORNIA
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ICONFIND, INC.,
Case No. 2:11-cv-00319-GEB-JFM
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Plaintiff,
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v.
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GOOGLE INC.,
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Defendant.
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PLAINTIFF ICONFIND, INC.'S
RESPONSIVE CLAIM
CONSTRUCTION BRIEF
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TABLE OF CONTENTS
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I.
INTRODUCTION .............................................................................................................. 1
II.
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ICONFIND'S PROPOSED CLAIM CONSTRUCTIONS ARE THE CORRECT
CONSTRUCTIONS ........................................................................................................... 1
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A.
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"Network Page" (Claims 1, 30, 31) ........................................................................ 1
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1.
Google's Construction Is Not Supported By Judge Shubb's Claim
Construction Order...................................................................................... 2
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2.
Google's Negative Limitation Is Not Supported By The Intrinsic Record . 4
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3.
Google's Reference To The Yahoo! Settlement Is Improper ...................... 5
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B.
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Assigning said network page to one or more of [a plurality of] said list of
categories (Claims 1, 31); A set of categories and subcategories to which the
network page is assigned (Claim 30) ...................................................................... 6
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1.
The Prosecution History Demonstrates That The Claimed Step Of
Assigning Is Implemented By A Computer, Not The Creator.................... 7
2.
The Specification Supports The Computer Implemented Step Of
Assigning The Network Page ..................................................................... 9
3.
Google's Proposals To Add The "creator of the web page choosing" and
"chosen by the creator" Are Misguided .................................................... 10
4.
The Court Should Also Reject Google's Attempt To Import The
Limitations "characterize said network page" And "characterizing the
network page" ........................................................................................... 12
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C.
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Categories related to public domain, fair use only, use with attribution, and
permission of copyright owner needed (Claims 6, 31) ......................................... 14
1.
Google's Construction Violates Precepts Of English Grammar, And
Improperly Applies The Copyright Status Category To The Whole
Network Page ............................................................................................ 15
2.
IconFind's—Not Google's—Construction Is Supported By the
Specification ............................................................................................. 16
3.
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Google Mischaracterizes The Prosecution History................................... 17
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III.
CONCLUSION ................................................................................................................. 19
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PLAINTIFF ICONFIND, INC.’S RESPONSIVE CLAIM CONSTRUCTION BRIEF
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TABLE OF AUTHORITIES
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Page(s)
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FEDERAL CASES
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Chiron Corp. v. Genentech, Inc.,
266 F. Supp. 2d 1172 (E.D. Cal. 2002)(Shubb, J.) ..................................................................15
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Gemstar-TV Guide Int’l, Inc. v. ITC,
383 F.3d 1352 (Fed. Cir. 2004)..................................................................................................8
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In re Hyatt,
708 F.2d 712 (Fed. Cir. 1983)..................................................................................................15
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Innogenetics, N.V. v. Abbott Labs.,
512 F.3d 1363 (Fed. Cir. 2008)..................................................................................................3
Innova/Pure Water v. Safari Water Filtration,
381 F.3d 967 (Fed. Cir. 1995)..................................................................................................11
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Interactive Gift Express, Inc. v. Compuserve, Inc.,
256 F.3d 1323 (Fed. Cir. 2001)................................................................................................13
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LizardTech, Inc. v. Earth Res. Mapping, Inc.,
424 F.3d 1111 (Fed. Cir. 2004)................................................................................................10
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Markman v. Westview Instruments, Inc.,
52 F.3d 967 (Fed. Cir. 1995)......................................................................................................2
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Omega Eng’g, Inc. v. Raytek Corp,
334 F.3d 1314 (Fed. Cir. 2003)..................................................................................................4
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Phillips v. AWH Corp.,
415 F.3d 1303 (Fed. Cir. 2005)................................................................................................13
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Rexnord Corp. v. Laitram,
274 F.3d 1336 (Fed. Cir. 2001)................................................................................................10
Tech. Licensing Corp. v. Thomson, Inc.,
2010 U.S. Dist. LEXIS 21735, at *16 (E.D. Cal. Mar. 9, 2010) ...............................................3
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PLAINTIFF ICONFIND, INC.’S RESPONSIVE CLAIM CONSTRUCTION BRIEF
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Pursuant to the Court's Order on October 7, 2011 (Dkt. No. 72), Plaintiff IconFind, Inc.
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("IconFind") hereby provides its Responsive Claim Construction Brief.
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I.
INTRODUCTION
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Google violates the very basic rules of claim construction by importing extraneous
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requirements from preferred embodiments into its proposed constructions, by taking
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unambiguous claim terms and rewording them, and by misrepresenting the intrinsic record to suit
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its non-infringement arguments.
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With respect to the term "network page," Google seeks to import a negative limitation
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which is not part of Judge Shubb's' claim construction Order, which is not supported by the
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intrinsic record and which is not consistent with the so-called "concession" made by IconFind's
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counsel at the prior Markman hearing. Regarding "assigning" the network page, Google seeks to
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require that the "creator" assign, when the patent was clearly amended to require that the
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assigning be performed by a computer. Lastly, Google seeks to require "each" of four exemplary
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copyright status categories for claim 31, when that claim expressly requires only "a category"
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(singular—not plural) based on copyright status.
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In short, Google is attempting to turn this claim construction process into a word game
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divorced from the intrinsic record with absurd and nonsensical results that have no rational
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connection to the technologies at issue. The Court should reject Google's litigation-induced
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constructions "supported" only by attorney argument and, instead, adopt IconFind's constructions
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that are properly based on the intrinsic record and the rules of claim construction.
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II.
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ICONFIND'S PROPOSED CLAIM CONSTRUCTIONS ARE THE CORRECT
CONSTRUCTIONS
A.
Terms
"Network Page" (Claims 1, 30, 31)
IconFind's Proposed
Construction
Google's Proposed Construction
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Page on the Internet, private
corporate network, intranet,
local area network or other
network
network page
Page on the Internet, private corporate
network, intranet, local area network or
other network wherein an image on a page
does not constitute a page
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IconFind's—and not Google's—proposed construction of the term "network page" is the
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same claim construction adopted by the Court in the Yahoo! Litigation, and is fully supported by
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the intrinsic record.
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1.
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Google's Construction Is Not Supported By Judge Shubb's Claim
Construction Order
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In the Yahoo! Litigation, Judge Shubb construed the term presently at issue, "network
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page," to mean "Page on the Internet, private corporate network, intranet, local area network or
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other network." (Ex. B, Yahoo! Markman Order, p. 8). As with the other four constructions
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provided by Judge Shubb (which both parties agree to and request adoption by this Court),
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IconFind also requests that this Court adopt Judge Shubb's construction of "network page."
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Google, however, requests that this Court change Judge Shubb's construction of "network page"
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to import further limitations to the term "page," when Judge Shubb explicitly held that "the term
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'page' needs no further construction." Id. Worse yet, Google requests that this Court modify
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Judge Shubb's construction not by defining what a network page is, but instead, what a network
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page is not. In particular, Google proposes to improperly include the negative limitation
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"wherein an image on a page does not constitute a page." In support, Google directly misquotes
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from the December 7, 2009 claim construction hearing. Put simply, this is not proper claim
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construction procedure or analysis.
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Claims are to be interpreted in view of the intrinsic evidence – namely the claims
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themselves, the specification and the prosecution history. Markman v. Westview Instruments,
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Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc). Importantly, limitations from the preferred
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embodiments or specific examples in the specification cannot be read into the claims.
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Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1370 (Fed. Cir. 2008) ("[T]his court will not
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at any time import limitations from the specification into the claims."). Google asks this Court
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not to import a limitation from the specification (which itself would be improper), but rather, to
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import a limitation from dicta in a judicial decision. Google cites no case law or other support
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for this abomination of the claim construction practice, and counsel for IconFind could find
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none. Instead, Google provides an abundance of law on collateral estoppel, but as Judge Shubb
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recently recognized, "[e]ven where the requirements for collateral estoppel are met, the decision
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to apply the doctrine is within the court's discretion." Tech. Licensing Corp. v. Thomson, Inc.,
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2010 U.S. Dist. LEXIS 21735, at *16 (E.D. Cal. Mar. 9, 2010).
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In any event, to the extent collateral estoppel applies, it supports IconFind's proposal that
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"network page" should be given the same claim construction rendered by Judge Shubb – "Page
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on the Internet, private corporate network, intranet, local area network or other network." (Ex.
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B, Yahoo! Markman Order, p.8). Google's added negative limitation was not part of Judge
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Shubb's construction, and it would be improper to apply collateral estoppel to claim terms
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specifically not construed by Judge Shubb. Google's attempt to stretch the doctrine of collateral
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estoppel beyond any logical limit is unsupportable.
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If the Court is inclined to consider the reasoning behind Judge Shubb's decision not to
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further construe the term "page," IconFind notes that its representation to Judge Shubb at the
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December 7, 2009 claim construction hearing was as follows:
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THE COURT: …You do not claim that an image which is on a page is a, quote,
page, unquote, itself.
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MR. HAAN: An image itself, in and of itself the image file is not a page.
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THE COURT: All right.
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(Ex. D, Transcript of Proceedings, p.75) (emphasis added).
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limitation "wherein an image on a page does not constitute a page" is entirely different than
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IconFind's representation that an image file "in and of itself" is not a page. As set forth fully in
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IconFind's opening claim construction brief, while an image file in and of itself is not a page, an
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image file accessible over a network can be a page. (Pl.'s Brf., Dkt. 94, p.18). If Google wants
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to add the "concession" into the claim construction here, at least it should accurately reflect what
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IconFind's counsel actually said at the December 7, 2009 hearing. For these reasons standing
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alone, Google negative limitation should be expressly rejected by this Court, but there are more.
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2.
Google's proposed negative
Google's Negative Limitation Is Not Supported By The Intrinsic
Record
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The Federal Circuit has long held that negative limitations must be supported by clear,
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express intent in the intrinsic record. Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323
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(Fed. Cir. 2003) ("Our independent review of the patent document … reveals no express intent to
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confer on the claim language the novel meaning imparted by this negative limitation.
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Accordingly, we must conclude that there is no basis in the patent specification for adding the
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negative limitation.") (citation omitted). Patent examiners at the USPTO are likewise instructed
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through the Manual of Patent Examining Procedure.
MPEP § 2173.05(i) ("Any negative
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limitation or exclusionary proviso must have basis in the original disclosure.").
Google's
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citations to "material on the page" do not preclude a page from being made up solely of any
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particular content alone, such as text, images or videos. Indeed, the '459 patent expressly
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contemplates and claims methods for categorizing pages based on the types of files associated
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with a page. See e.g. Claims 8, 13-15 (Ex. A, '459 Patent, Col. 12-13). The specification
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describes this as follows:
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Third tier 16 is a division into one or more categories according to the type of
files associated with a Web page. There are several different types of files,
PLAINTIFF ICONFIND, INC.’S RESPONSIVE CLAIM CONSTRUCTION BRIEF
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including text, graphics, audio, video, multimedia, and files for communications
between persons. … The preferred embodiment of the invention includes the
following five file-type categories: Visual 46, Audio 48, Multimedia 50, Textonly 52, and Communication 54. Category 46, Visual, includes files containing
pictures, charts, graphs, and diagrams.
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(Ex. A, '459 Patent, Col. 5, ll. 29-40). Thus, according to the teachings of the '459 patent, many
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different file types may be associated with a page, including "graphics" and "pictures." This
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supports that a page can be made up of any particular content or file type, such as text, images or
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videos, either solely or collectively. It certainly does not provide the requisite intrinsic support
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for Google's negative limitation. For these additional reasons, the intrinsic record does not
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support Google's negative limitation, and IconFind's proposed constructions should be adopted.
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3.
Google's Reference To The Yahoo! Settlement Is Improper
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Google's introductory paragraph falsely states that Judge Shubb's claim construction
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Order "appeared to dispose of the Yahoo! case" (Def.’s Brf. at 1, Dkt. 98) and that IconFind was
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basically forced to capitulate into a settlement with Yahoo! (Id., p. 1, 8-9). The truth is that
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IconFind offered Google the same relative settlement terms as Yahoo!, but Google rejected the
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proposal as being more than an order of magnitude too high – so much for Google's misleading
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reference to the Yahoo! settlement, which is not even a proper claim construction factor in any
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event.
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IconFind that insisted the claim construction Order should remain "in full force and effect," as
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IconFind is perfectly comfortable with the actual claim constructions in Judge Shubb's Order, as
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opposed to the mischaracterization of the December 7, 2009 hearing transcript reflected in
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Google's brief.
Likewise, as part of the Yahoo! settlement and joint request for dismissal, it was
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PLAINTIFF ICONFIND, INC.’S RESPONSIVE CLAIM CONSTRUCTION BRIEF
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B.
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Assigning said network page to one or more of [a plurality of] said list of
categories (Claims 1, 31); A set of categories and subcategories to which the
network page is assigned (Claim 30)
Terms
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assigning said
network page
to one or more
of [a plurality
of] said list of
categories
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a set of
categories and
subcategories
to which the
network page
is assigned
IconFind's Proposed Construction
This element need not be construed
separately and should be given its plain
and ordinary meaning in the context of
the intrinsic record as understood by a
person of skill at the time of the
invention.
If the Court deems a construction is
necessary, IconFind proposes:
Assigning the network page to at least
one of the categories
This element need not be construed
separately and should be given its plain
and ordinary meaning in the context of
the intrinsic record as understood by a
person of skill at the time of the
invention.
If the Court deems a construction is
necessary, IconFind proposes:
Google's Proposed
Construction
The creator of the web page
choosing which one or more of [a
plurality of] said list of categories
characterize said network page
A set of categories and
subcategories that were chosen
by the creator of the web page as
characterizing the network page
a set of categories and subcategories to
which the network page is assigned
where subcategories are combinations of
categories
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Google's arguments pertaining to the present limitations rely on its fundamentally flawed
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position that the '459 Patent "does not even suggest, much less support, a method in which a
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computer assigns network pages to categories." (Def.'s Brf. at 20, Dkt. 98). To the contrary, the
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'459 Patent was amended during prosecution to clarify that the series of steps are implemented
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on a computer. This amendment, like IconFind's construction, is fully supported. Google also
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seeks to add to and alter these limitations by including the "creator of the web page choosing,"
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"chosen by the creator of the web page," "characterize said network page," and "characterizing
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the network page." These interpretations and additions are misguided and unnecessary.
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1.
The Prosecution History Demonstrates That The Claimed Step Of
Assigning Is Implemented By A Computer, Not The Creator
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Amendments made during prosecution clearly support—and require—that the claimed
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step of assigning is implemented by a computer, not the "creator" of the page.
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Specifically, during prosecution of the application which issued as the '459 Patent, the
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examiner rejected all of the claims under 35 U.S.C. § 101, and stated "[t]he examiner suggest
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[sic] including limitation such as 'a computer implemented method' to clarify that the series of
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steps are implemented on a computer," as shown below:
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(Ex. C, Pros. History, IF000121). Consequently, the applicant amended all independent claims,
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stating "[i]n response, the preamble of claims 1, 32, and 51 are amended per the Examiner's
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PLAINTIFF ICONFIND, INC.’S RESPONSIVE CLAIM CONSTRUCTION BRIEF
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suggestion to satisfy the requirements of 35 U.S.C. § 101," (Ex. C, Pros. History, IF000114), as
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shown in exemplary amended claim 1 below:
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(Ex. C, Pros. History, IF000109). Thus, as the prosecution history makes clear, the step of
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"assigning said network page" is performed by the computer.
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Notably, this also undermines Google's argument that Judge Shubb's opinion supports
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that the claimed step of assigning is done manually. In particular, Google argues that its
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construction requiring that the creator assigns the network pages is consistent with Judge
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Schubb's statement that "[i]n the preferred embodiment, a designer of a network page manually
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assigns the page to appropriate categories by applying a 'categorization code' for each category to
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which the page is assigned." (Def.'s Brf., Dkt. 98, p. 19 (citing Ex. B, Yahoo! Markman Order,
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p.3)). Read in context, Judge Shubb's statement, including his citation to Col. 6:62-65 of the '459
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Patent, clearly focus on the categorization code—not on the "manually" assigning. Indeed, the
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term "manual(ly)" appears nowhere in the '459 Patent or prosecution history. Even if Judge
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Shubb was correct as to his characterization of the preferred embodiment, the claims of the
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patent need not be construed as being limited to that embodiment. Gemstar-TV Guide Int'l, Inc.
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v. ITC, 383 F.3d 1352, 1366 (Fed. Cir. 2004). Thus, Judge Shubb's passing reference to
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"manually" assigning does not support Google's position and, more importantly, does not
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overcome the clear import of the amendment made during prosecution requiring that the
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"assigning" step be implemented by a computer.
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2.
The Specification Supports The Computer Implemented Step Of
Assigning The Network Page
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Contrary to Google's assertions, the written description of the '459 Patent fully supports
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the claimed "computer implemented" method, including the step of "assigning" the network
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page.
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The "assigning" step is described in the written description of the '459 Patent at Column
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6, among other places, stating in pertinent part:
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The creator of a Web page may assign the Web page to any number or
combination of the categories of three tiers 12,14, and 16, and one of the
copyright-status categories 17, depending on which categories best characterize
the Web page. The steps of assigning a page to categories may be performed
in several different ways known to those skilled in the art. The creator may
also decide not to assign the page to any of the categories of a particular tier. The
creator may assign the page to one of the copyright-status 17 categories with or
without also assigning the page to any of the categories of three tiers 12, 14, and
16. Thus, the copyright status categories 17 can be used in connection with the
categories of some or all of three tiers 12, 14, and 16, alone, or not at all. The
outcome of the categorization method is that a page is designated to be "in" or
"within" the categories that best characterize the page.
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(Ex. A, '459 Patent, Col. 6, ll. 12-27) (emphasis added). Ignoring this passage, Google argues
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that "[t]he '459 patent specification does not even suggest, much less support, a method in which
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a computer assigns network pages to categories." (Def.'s Brf., Dkt. 98, p. 20). To the contrary,
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the step of assigning is fully supported by this passage, including the statement that "[t]he steps
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of assigning a page to categories may be performed in several different ways known to those
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skilled in the art." That the written description does not spell out every last detail of how the
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computer assigns is of no consequence. The inventors are entitled to rely on the knowledge of
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those skilled in the art, and do not claim to have invented the single step of assigning a page, but
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rather, the novel combination of numerous steps including providing categories (including for
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copyright status), assigning a page, providing a categorization label and controlling usage. The
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inventors expressly note that the step of assigning a page could be implemented by various ways
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known to those skilled in the art, which is consistent with black letter law on the written
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description requirement:
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the patent specification is written for a person of skill in the art, and such a person
comes to the patent with the knowledge of what has come before. In re GPAC
Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Placed in that context, it is unnecessary
to spell out every detail of the invention in the specification; only enough must be
included to convince a person of skill in the art that the inventor possessed the
invention and to enable such a person to make and use the invention without
undue experimentation.
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LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1345 (Fed. Cir. 2005). Thus, the
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written description of the '459 Patent fully supports the claimed "computer implemented"
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method, including the step of "assigning" the network page.
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3.
Google's Proposals To Add The "creator of the web page choosing"
and "chosen by the creator" Are Misguided
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That the assigning step is performed by the computer also forecloses Google's argument
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that the present claim limitations pertain to the "creator" of the network page "choosing"
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categories. While the specification discusses "selection" or "choosing" of categories by a
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"creator" during application of the invention, it is clear from the prosecution history that the
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claims were written from the perspective of the computer. By importing the "creator" into the
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claims, Google inappropriately conflates the specification and claims. As the Federal Circuit has
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long held: "Specifications teach. Claims claim." Rexnord Corp. v. Laitram, 274 F.3d 1336, 1344
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(Fed. Cir. 2001). When the inventors meant to use the terms "select" or "choose" in the written
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description, they did. For instance, the specification states "[b]y selecting one of the four
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copyright-status indicia and placing it on the end of the categorization label, the creator adds the
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information governing the use of the material." (Ex. A, '459 Patent, Col. 7, ll. 31-34) (emphasis
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added). The specification further states "[t]he creator may or may not choose to include the
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copyright-status categories." (Ex. A, '459 Patent, Col. 8, ll. 1-2) (emphasis added). However,
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with respect to "assigning," the specification states "[t]he steps of assigning a page to categories
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may be performed in several different ways known to those skilled in the art." (Ex. A, '459
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Patent, Col. 6, ll. 12-27) (emphasis added). "[W]hen an applicant uses different terms in a claim
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it is permissible to infer that he intended his choice of different terms to reflect a differentiation
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in the meaning of those terms." Innova/Pure Water v. Safari Water Filtration, 381 F.3d 1111,
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1119 (Fed. Cir. 2004). Thus, the inventors' choice to use the term "assigning" in the claim
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language rather than "selecting" or "choosing" should be given deference. Moreover, that the
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assigning "may be performed in several different ways known to those skilled in the art" further
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supports that the step of "assigning" is not merely "selecting" or "choosing." Why would the
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expertise of a person skilled in the art be required if "assigning" merely meant "selecting" or
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"choosing"?
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Importantly, that the claims were written from the perspective of the computer, including
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"assigning" categories, does not foreclose the selecting or choosing of categories by a human in
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practical application. The claimed inventions can in fact be employed in a system where a
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human selects or chooses the categories, and the corresponding assignment of such categories to
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the web page is carried out by the computer. The claims do not require that the computer
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"automatically" assign the categories, or detect the content and assign categories. Accordingly,
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as claimed, the computer can assign categories based on selections or choices made by humans.
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Thus, contrary to Google's arguments, IconFind's constructions are neither inconsistent with the
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goals of the '459 Patent nor impermissibly broad. For at least these reasons, the Court should
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reject Google's proposals to interpret the present limitations to include the "creator of the web
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page choosing" and "chosen by the creator."
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4.
The Court Should Also Reject Google's Attempt To Import The
Limitations "characterize said network page" And "characterizing
the network page"
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Reviewing the present limitations in the context of the claims in which they appear
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demonstrates that Google's proposed language "characterize said network page" and
5
"characterizing the network page" is simply unnecessary, and instead is just a transparent attempt
6
to import limitations into the claims.
7
The terms "assigning said network page to one or more of said list of categories" and "a
8
set of categories and subcategories to which the network page is assigned" are found in claims 1
9
and 30, respectively, as set forth below:
10
11
12
13
1. A computer implemented method of categorizing a network page, comprising:
providing a list of categories, wherein said list of categories include a category for
transacting business and a category for providing information, and wherein said
list of categories include a category based on copyright status of material on a
page; assigning said network page to one or more of said list of categories;
providing a categorization label for the network page using the copyright status of
material on the network page; and controlling usage of the network page using the
categorization label and the copyright status of the network page.
14
19
30. A computer implemented method for categorizing a network page,
comprising: providing a list of categories, wherein said list of categories include a
category for transacting business and a category for providing information, and
wherein said list of categories include a plurality of categories based on the
copyright status of material on a page; providing a categorization code for
labeling the network page with a categorization label, wherein said categorization
label indicates a set of categories and subcategories to which the network page
is assigned, and wherein said categorization label indicates the copyright status of
material on the network page; and controlling usage of the network page using the
categorization label and the copyright status of the network page.
20
(Exhibit A, '459 Patent, Col.12-13) (emphasis added). Significantly, the claim language also
21
includes, as the inventors so intended, that the copyright status category(ies) pertain to "material
22
on a page." Google's proposed language inappropriately modifies and broadens this limitation,
23
requiring that categories "characterize said network page" and that the categorization label
24
indicates categories "characterizing the network page." This proposal conflicts with the plain
25
PLAINTIFF ICONFIND, INC.’S RESPONSIVE CLAIM CONSTRUCTION BRIEF
15
16
17
18
- 12 -
1
language of the claims, which merely require for the category(ies) based on copyright status,
2
that the category(ies) pertains to "material on a page,"—not that it necessarily "characterize" the
3
whole network page. Google's construction clearly diverges from the claim language, when
4
instead, the analytical focus of claim construction must begin with and remain centered on the
5
language of the claims themselves. Interactive Gift Express, Inc. v. Compuserve, Inc., 256 F.3d
6
1323, 1331 (Fed. Cir. 2001).
7
While the specification may be used to aid in the interpretation of the claims, it may not
8
be used as a source for adding extraneous limitations. To help avoid importing limitations, the
9
en banc Federal Circuit court in Phillips explained that:
10
11
12
One of the best ways to teach a person of ordinary skill in the art how to make and
use the invention is to provide an example of how to practice the invention in a
particular case. Much of the time, upon reading the specification in that context, it
will become clear whether the patentee is setting out specific examples of the
invention to accomplish those goals, or whether the patentee instead intends for
the claims and the embodiments in the specification to be strictly coextensive.
13
Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc). The specification
14
discusses both "categorizing a page on a network, during or after the time that the page is
15
created, according to the copyright status of the material on the page," and assigning "any
16
number or combination of the categories of three tiers 12,14, and 16, and one of the copyright17
status categories 17, depending on which categories best characterize the Web page."
18
(Exhibit A, '459 Patent, Col. 3, ll.48-51 & Col. 6, ll. 13-16) (emphasis added). However, what
19
the inventors expressly chose to include in the claims was "material on the page." Google's
20
after-the-fact attempt to import "characterize said network page" and "characterizing the
21
network page" into the claims improperly usurps the inventors' express intent, and should be
22
rejected by the Court.
23
24
25
PLAINTIFF ICONFIND, INC.’S RESPONSIVE CLAIM CONSTRUCTION BRIEF
- 13 -
1
Google's proposals instead appear to be sought for the sole purpose of supporting its
2
non-infringement case.
3
inherently subjective. The categories must "characterize" the page according to whom? A web
4
page creator? A web page viewer? Clearly, Google merely seeks to inject ambiguity into the
5
claims so it can argue to the jury that its categories do not "characterize" the page. For this
6
additional reason, the Court should reject Google's attempt to read "characterize said network
7
page" and "characterizing the network page" into the claims.
8
C.
In particular, requiring that categories "characterize" the page is
Categories related to public domain, fair use only, use with attribution, and
permission of copyright owner needed (Claims 6, 31)
9
10
11
12
13
14
15
16
17
18
IconFind's Proposed Construction
Google's Proposed
Construction
This element need not be construed separately
and should be given its plain and ordinary
meaning in the context of the intrinsic record
as understood by a person of skill at the time
of the invention.
Categories that indicate that
the network page may be
subject to each of the
following licensing
restrictions: (1) the network
page may be used by others
without any restrictions; (2)
the network page may only
be used for fair uses; (3) the
network page may be used
if attribution to the
copyright owner is given;
and (4) the network page
may be used only when
permission is granted by the
copyright owner
Term
categories
related to public
domain, fair use
only, use with
attribution, and
permission of
copyright owner
needed
If the Court deems a construction is
necessary, IconFind proposes:
Categories related to material that can be used
freely without any restrictions, material meant
to be used in accordance with accepted fair
use guidelines, material accompanied by an
attribution to the author or copyright owner,
and material that cannot be used unless the
copyright owner is first contacted for
permission
19
Google's construction is grammatically incorrect in the context of the claim, otherwise
20
contradicts the claim language, is at odds with the specification and is not supported by the
21
prosecution history.
22
23
24
25
PLAINTIFF ICONFIND, INC.’S RESPONSIVE CLAIM CONSTRUCTION BRIEF
- 14 -
1
2
1.
Google's Construction Violates Precepts Of English Grammar, And
Improperly Applies The Copyright Status Category To The Whole
Network Page
3
First, viewing the claim language as a whole demonstrates that Google's requirement that
4
the network page be subject to "each of the following licensing restrictions" is grammatically
5
incorrect. Claim 31 reads as follows:
10
31. A computer implemented method of categorizing a network page, comprising:
providing a list of categories, wherein said categories include a category based
on the copyright status of material on a page, and wherein the copyright status
comprises categories related to public domain, fair use only, use with
attribution, and permission of copyright owner needed; assigning said network
page to one or more of a plurality of said list of categories; providing a
categorization label for the network page using the copyright status of material on
the network page; and controlling usage of the network page using the
categorization label and the copyright status of the network page.
11
(Exhibit A, '459 Patent, Col. 14, ll. 34-51) (emphasis added). The present limitation (the second
12
bolded phrase) appears in a wherein clause that modifies the preceding clause, "a category based
13
on the copyright status of material on a page" (the first bolded phrase). Google's interpretation of
14
the second phrase as subjecting the page to "each of the following licensing restrictions"—i.e.
15
multiple categories—contradicts the clause it modifies, which merely requires "a category based
16
on the copyright status"—i.e. a single category. As courts in this District and the Federal Circuit
17
have recognized, "patent claims 'must be read in accordance with precepts of English grammar.'"
18
Chiron Corp. v. Genentech, Inc., 266 F. Supp. 2d 1172, 1179 (E.D. Cal. 2002) (Shubb, J.)
19
(quoting In re Hyatt, 708 F.2d 712, 714 (Fed. Cir. 1983)). Google's grammatically incorrect
20
construction is simply wrong—"each" of the four categories need not be represented in the
21
claimed "a category." Notably, the present limitation also appears in claim 6, which depends on
22
independent claim 1. Like claim 31, claim 1 only requires "a category based on copyright
6
7
8
9
23
24
25
PLAINTIFF ICONFIND, INC.’S RESPONSIVE CLAIM CONSTRUCTION BRIEF
- 15 -
1
status…" (Exhibit A, '459 Patent, Col. 12, ll. 24-39).1 Thus, Google's construction is likewise
2
grammatically inconsistent with claim 1.
3
Second, Google's construction is otherwise at odds with the claim language because the
4
first bolded phrase above plainly states "a category based on the copyright status of material on
5
a page". Thus, the category pertains to "material on a page," and not necessarily the whole page.
6
Google's interpretation of the second clause contradicts this clause by inappropriately requiring
7
the following restrictions: "(1) the network page may be used by others without any
8
restrictions; (2) the network page may only be used for fair uses; (3) the network page may
9
be used if attribution to the copyright owner is given; and (4) the network page may be used
10
only when permission is granted by the copyright owner." As the preceding claim language
11
makes clear, the copyright status category merely pertains to "material on a page," so Google's
12
"network page may only be used" language is overly restrictive, and not well-founded. For these
13
reasons, Google's construction is contrary to the plain language of the claims.
14
2.
IconFind's—Not Google's—Construction Is Supported By the
Specification
15
IconFind's construction of this element includes the express definition of the categories
16
provided in the specification of the '459 Patent, whereas Google seeks to include its own,
17
unsupported definitions. The table below displays this clearly.
18
19
20
Term
public
domain
21
fair use only
Specification
(Col. 5, ll. 48-58)
material that is in the public
domain and can be used
freely without any
restrictions
Fair Use Only is material
IconFind's
Construction
material that can be used
freely without any
restrictions
material meant to be used
Google's
Construction
the network page
may be used by
others without any
restrictions
the network page
22
1
23
24
25
Exhibits A through D of Plaintiff’s opening brief, all cited herein, are filed again
herewith for the Court’s convenience, as well as to correct Exhibit C (prosecution history) which
was incomplete as originally filed at Dkt. 94-3 through 94-8.
PLAINTIFF ICONFIND, INC.’S RESPONSIVE CLAIM CONSTRUCTION BRIEF
- 16 -
1
2
3
4
use with
attribution
5
6
7
permission
of copyright
owner
needed
meant to be used in
accordance with accepted
fair use guidelines
Use with Attribution is
material that can be used as
long as its use is
accompanied by an
attribution to the author or
copyright owner
Permission of Copyright
Owner Needed is material
that cannot be used unless
the copyright owner is first
contacted for permission
in accordance with
accepted fair use
guidelines
may only be used for
fair uses
material accompanied by
an attribution to the
author or copyright
owner
the network page
may be used if
attribution to the
copyright owner is
given
material that cannot be
used unless the copyright
owner is first contacted
for permission
the network page
may be used only
when permission is
granted by the
copyright owner
8
See (Exhibit A, '459 Patent, Col. 5, ll. 48-58). As shown in the table, IconFind's construction of
9
each of the categories is taken verbatim from the specification. Google's construction modifies
10
these categories and, curiously, Google provided no support for these modifications in its
11
opening brief. As an example, IconFind's construction of "fair use only" is "material meant to be
12
used in accordance with accepted fair use guidelines," as expressly provided in the specification.
13
For what reason should this Court interpret this element to mean "the network page may only be
14
used for fair uses," as Google proposes? Because Google has offered no support for these
15
modifications, its construction should be rejected.
16
3.
Google Mischaracterizes The Prosecution History
17
Through its characterization of the prosecution history, Google would have this Court
18
believe that the claims of the '459 Patent were allowed because the applicants added four specific
19
copyright categories. Not so. While the four categories were added through amendment to the
20
claim that ultimately issued as claim 31, the examiner sustained his rejection of claim 31 in view
21
of the same prior art after the amendment. The applicant first amended claim 31 (prosecution
22
claim 51) as follows:
23
24
25
PLAINTIFF ICONFIND, INC.’S RESPONSIVE CLAIM CONSTRUCTION BRIEF
- 17 -
1
2
3
4
5
6
7
8
(Ex. C, Pros. History, IF000113). Subsequently, the examiner rejected the claim in view of the
same prior art, stating in pertinent part:
9
10
11
12
13
14
15
16
17
18
19
(Ex. C, Pros. History, IF000113). Though the applicant continued to debate with the examiner
over whether the prior art disclosed these categories, the applicant otherwise amended claim 31
(prosecution claim 51) adding further steps to the method to obtain allowance, as follows:
20
21
22
23
24
25
PLAINTIFF ICONFIND, INC.’S RESPONSIVE CLAIM CONSTRUCTION BRIEF
- 18 -
1
2
3
4
5
6
7
8
9
(Ex. C, Pros. History, IF000067). These last two method steps were identified in the examiner's
10
statement of reasons for allowance, while the four specific copyright categories were not. (Ex.
11
C, Pros. History, IF000025). Thus, the four specific copyright categories were not what the
12
examiner deemed novel over the prior art, as Google submits.
13
Not insignificantly, while amending claim 31 to add the last two steps, the applicant also
14
deleted the requirement of a "plurality of categories" based on copyright status, as the figure
15
above clearly shows. This demonstrates an express intent by the inventors that claim 31 does not
16
require a plurality of copyright status categories as Google proposes, but instead, that the single
17
copyright status category required is related to any (not each) of the four categories provided, as
18
IconFind's construction properly conveys. For this additional reason, standing alone, Google's
19
construction must be rejected.
20
III.
21
22
CONCLUSION
For all of the foregoing reasons, IconFind's proposed constructions are the correct
constructions, and IconFind requests that the Court adopt them in their entirety.
23
24
25
PLAINTIFF ICONFIND, INC.’S RESPONSIVE CLAIM CONSTRUCTION BRIEF
- 19 -
1
Respectfully submitted,
2
/s/ Brian E. Haan
WILKE, FLEURY, HOFFELT, GOULD &
BIRNEY, LLP
Thomas G. Redmon (SBN 47090)
TRedmon@wilkefleury.com
Daniel L. Baxter (SBN 203862)
DBaxter@wilkefleury.com
3
4
5
6
NIRO, HALLER & NIRO
Raymond P. Niro (Pro hac vice)
RNiro@nshn.com
Raymond P. Niro, Jr. (Pro hac vice)
RNiroJr@nshn.com
Brian E. Haan (Pro hac vice)
BHaan@nshn.com
Attorneys for Plaintiff IconFind, Inc.
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PLAINTIFF ICONFIND, INC.’S RESPONSIVE CLAIM CONSTRUCTION BRIEF
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1
2
3
4
5
CERTIFICATE OF SERVICE
The undersigned hereby certifies that on June 12, 2012 the foregoing:
PLAINTIFF ICONFIND, INC.'S RESPONSIVE
CLAIM CONSTRUCTION BRIEF
was filed with the Court's CM/ECF system, which will serve the following counsel of record:
10
Michael J. Malecek
Michael.malecek@kayescholer.com
Kenneth Maikish
Kenneth.maikish@kayescholer.com
Kaye Scholer LLP
Two Palo Alto Square, Suite 400
3000 El Camino Real
Palo Alto, California 94306
Telephone: (650) 319-4500
Facsimile: (650) 319-4700
11
Attorneys for Defendant Google Inc.
12
I certify that all parties in this case are represented by counsel who are CM/ECF participants.
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9
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20
21
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/s/ Brian E. Haan
Attorney for Plaintiff IconFind, Inc.
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