IconFind, Inc. v. Google, Inc.

Filing 100

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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1 2 3 4 5 6 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 11 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 12 Attorneys for Plaintiff IconFind, Inc. 7 8 9 10 IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF CALIFORNIA 13 14 ICONFIND, INC., Case No. 2:11-cv-00319-GEB-JFM 15 Plaintiff, 16 v. 17 GOOGLE INC., 18 Defendant. 19 20 21 22 23 24 25 PLAINTIFF ICONFIND, INC.'S RESPONSIVE CLAIM CONSTRUCTION BRIEF 1 TABLE OF CONTENTS 2 3 I. INTRODUCTION .............................................................................................................. 1 II. 5 ICONFIND'S PROPOSED CLAIM CONSTRUCTIONS ARE THE CORRECT CONSTRUCTIONS ........................................................................................................... 1 6 A. 4 "Network Page" (Claims 1, 30, 31) ........................................................................ 1 7 1. Google's Construction Is Not Supported By Judge Shubb's Claim Construction Order...................................................................................... 2 8 2. Google's Negative Limitation Is Not Supported By The Intrinsic Record . 4 9 3. Google's Reference To The Yahoo! Settlement Is Improper ...................... 5 10 B. 11 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 12 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 13 14 15 16 17 18 C. 19 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. 20 Google Mischaracterizes The Prosecution History................................... 17 21 22 23 24 III. CONCLUSION ................................................................................................................. 19 25 PLAINTIFF ICONFIND, INC.’S RESPONSIVE CLAIM CONSTRUCTION BRIEF -i- 1 TABLE OF AUTHORITIES 2 Page(s) 3 FEDERAL CASES 4 Chiron Corp. v. Genentech, Inc., 266 F. Supp. 2d 1172 (E.D. Cal. 2002)(Shubb, J.) ..................................................................15 5 6 Gemstar-TV Guide Int’l, Inc. v. ITC, 383 F.3d 1352 (Fed. Cir. 2004)..................................................................................................8 7 In re Hyatt, 708 F.2d 712 (Fed. Cir. 1983)..................................................................................................15 8 9 10 11 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 12 Interactive Gift Express, Inc. v. Compuserve, Inc., 256 F.3d 1323 (Fed. Cir. 2001)................................................................................................13 13 LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1111 (Fed. Cir. 2004)................................................................................................10 14 15 Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995)......................................................................................................2 16 Omega Eng’g, Inc. v. Raytek Corp, 334 F.3d 1314 (Fed. Cir. 2003)..................................................................................................4 17 Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)................................................................................................13 18 19 20 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 21 22 23 24 25 PLAINTIFF ICONFIND, INC.’S RESPONSIVE CLAIM CONSTRUCTION BRIEF - ii - Pursuant to the Court's Order on October 7, 2011 (Dkt. No. 72), Plaintiff IconFind, Inc. 1 2 ("IconFind") hereby provides its Responsive Claim Construction Brief. 3 I. INTRODUCTION 4 Google violates the very basic rules of claim construction by importing extraneous 5 requirements from preferred embodiments into its proposed constructions, by taking 6 unambiguous claim terms and rewording them, and by misrepresenting the intrinsic record to suit 7 its non-infringement arguments. 8 With respect to the term "network page," Google seeks to import a negative limitation 9 which is not part of Judge Shubb's' claim construction Order, which is not supported by the 10 intrinsic record and which is not consistent with the so-called "concession" made by IconFind's 11 counsel at the prior Markman hearing. Regarding "assigning" the network page, Google seeks to 12 require that the "creator" assign, when the patent was clearly amended to require that the 13 assigning be performed by a computer. Lastly, Google seeks to require "each" of four exemplary 14 copyright status categories for claim 31, when that claim expressly requires only "a category" 15 (singular—not plural) based on copyright status. 16 In short, Google is attempting to turn this claim construction process into a word game 17 divorced from the intrinsic record with absurd and nonsensical results that have no rational 18 connection to the technologies at issue. The Court should reject Google's litigation-induced 19 constructions "supported" only by attorney argument and, instead, adopt IconFind's constructions 20 that are properly based on the intrinsic record and the rules of claim construction. 21 II. 22 23 24 25 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 PLAINTIFF ICONFIND, INC.’S RESPONSIVE CLAIM CONSTRUCTION BRIEF -1- 1 2 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 3 IconFind's—and not Google's—proposed construction of the term "network page" is the 4 same claim construction adopted by the Court in the Yahoo! Litigation, and is fully supported by 5 the intrinsic record. 6 1. 7 Google's Construction Is Not Supported By Judge Shubb's Claim Construction Order 8 In the Yahoo! Litigation, Judge Shubb construed the term presently at issue, "network 9 page," to mean "Page on the Internet, private corporate network, intranet, local area network or 10 other network." (Ex. B, Yahoo! Markman Order, p. 8). As with the other four constructions 11 provided by Judge Shubb (which both parties agree to and request adoption by this Court), 12 IconFind also requests that this Court adopt Judge Shubb's construction of "network page." 13 Google, however, requests that this Court change Judge Shubb's construction of "network page" 14 to import further limitations to the term "page," when Judge Shubb explicitly held that "the term 15 'page' needs no further construction." Id. Worse yet, Google requests that this Court modify 16 Judge Shubb's construction not by defining what a network page is, but instead, what a network 17 page is not. In particular, Google proposes to improperly include the negative limitation 18 "wherein an image on a page does not constitute a page." In support, Google directly misquotes 19 from the December 7, 2009 claim construction hearing. Put simply, this is not proper claim 20 construction procedure or analysis. 21 Claims are to be interpreted in view of the intrinsic evidence – namely the claims 22 themselves, the specification and the prosecution history. Markman v. Westview Instruments, 23 Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc). Importantly, limitations from the preferred 24 embodiments or specific examples in the specification cannot be read into the claims. 25 PLAINTIFF ICONFIND, INC.’S RESPONSIVE CLAIM CONSTRUCTION BRIEF -2- 1 Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1370 (Fed. Cir. 2008) ("[T]his court will not 2 at any time import limitations from the specification into the claims."). Google asks this Court 3 not to import a limitation from the specification (which itself would be improper), but rather, to 4 import a limitation from dicta in a judicial decision. Google cites no case law or other support 5 for this abomination of the claim construction practice, and counsel for IconFind could find 6 none. Instead, Google provides an abundance of law on collateral estoppel, but as Judge Shubb 7 recently recognized, "[e]ven where the requirements for collateral estoppel are met, the decision 8 to apply the doctrine is within the court's discretion." Tech. Licensing Corp. v. Thomson, Inc., 9 2010 U.S. Dist. LEXIS 21735, at *16 (E.D. Cal. Mar. 9, 2010). 10 In any event, to the extent collateral estoppel applies, it supports IconFind's proposal that 11 "network page" should be given the same claim construction rendered by Judge Shubb – "Page 12 on the Internet, private corporate network, intranet, local area network or other network." (Ex. 13 B, Yahoo! Markman Order, p.8). Google's added negative limitation was not part of Judge 14 Shubb's construction, and it would be improper to apply collateral estoppel to claim terms 15 specifically not construed by Judge Shubb. Google's attempt to stretch the doctrine of collateral 16 estoppel beyond any logical limit is unsupportable. 17 If the Court is inclined to consider the reasoning behind Judge Shubb's decision not to 18 further construe the term "page," IconFind notes that its representation to Judge Shubb at the 19 December 7, 2009 claim construction hearing was as follows: 20 THE COURT: …You do not claim that an image which is on a page is a, quote, page, unquote, itself. 21 MR. HAAN: An image itself, in and of itself the image file is not a page. 22 THE COURT: All right. 23 24 25 PLAINTIFF ICONFIND, INC.’S RESPONSIVE CLAIM CONSTRUCTION BRIEF -3- 1 (Ex. D, Transcript of Proceedings, p.75) (emphasis added). 2 limitation "wherein an image on a page does not constitute a page" is entirely different than 3 IconFind's representation that an image file "in and of itself" is not a page. As set forth fully in 4 IconFind's opening claim construction brief, while an image file in and of itself is not a page, an 5 image file accessible over a network can be a page. (Pl.'s Brf., Dkt. 94, p.18). If Google wants 6 to add the "concession" into the claim construction here, at least it should accurately reflect what 7 IconFind's counsel actually said at the December 7, 2009 hearing. For these reasons standing 8 alone, Google negative limitation should be expressly rejected by this Court, but there are more. 9 2. Google's proposed negative Google's Negative Limitation Is Not Supported By The Intrinsic Record 10 The Federal Circuit has long held that negative limitations must be supported by clear, 11 express intent in the intrinsic record. Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323 12 (Fed. Cir. 2003) ("Our independent review of the patent document … reveals no express intent to 13 confer on the claim language the novel meaning imparted by this negative limitation. 14 Accordingly, we must conclude that there is no basis in the patent specification for adding the 15 negative limitation.") (citation omitted). Patent examiners at the USPTO are likewise instructed 16 through the Manual of Patent Examining Procedure. MPEP § 2173.05(i) ("Any negative 17 limitation or exclusionary proviso must have basis in the original disclosure."). Google's 18 citations to "material on the page" do not preclude a page from being made up solely of any 19 particular content alone, such as text, images or videos. Indeed, the '459 patent expressly 20 contemplates and claims methods for categorizing pages based on the types of files associated 21 with a page. See e.g. Claims 8, 13-15 (Ex. A, '459 Patent, Col. 12-13). The specification 22 describes this as follows: 23 24 25 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 -4- 3 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. 4 (Ex. A, '459 Patent, Col. 5, ll. 29-40). Thus, according to the teachings of the '459 patent, many 5 different file types may be associated with a page, including "graphics" and "pictures." This 6 supports that a page can be made up of any particular content or file type, such as text, images or 7 videos, either solely or collectively. It certainly does not provide the requisite intrinsic support 8 for Google's negative limitation. For these additional reasons, the intrinsic record does not 9 support Google's negative limitation, and IconFind's proposed constructions should be adopted. 1 2 10 3. Google's Reference To The Yahoo! Settlement Is Improper 11 Google's introductory paragraph falsely states that Judge Shubb's claim construction 12 Order "appeared to dispose of the Yahoo! case" (Def.’s Brf. at 1, Dkt. 98) and that IconFind was 13 basically forced to capitulate into a settlement with Yahoo! (Id., p. 1, 8-9). The truth is that 14 IconFind offered Google the same relative settlement terms as Yahoo!, but Google rejected the 15 proposal as being more than an order of magnitude too high – so much for Google's misleading 16 reference to the Yahoo! settlement, which is not even a proper claim construction factor in any 17 event. 18 IconFind that insisted the claim construction Order should remain "in full force and effect," as 19 IconFind is perfectly comfortable with the actual claim constructions in Judge Shubb's Order, as 20 opposed to the mischaracterization of the December 7, 2009 hearing transcript reflected in 21 Google's brief. Likewise, as part of the Yahoo! settlement and joint request for dismissal, it was 22 23 24 25 PLAINTIFF ICONFIND, INC.’S RESPONSIVE CLAIM CONSTRUCTION BRIEF -5- 1 B. 2 3 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 4 5 6 7 8 assigning said network page to one or more of [a plurality of] said list of categories 9 10 11 12 13 14 15 16 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 17 Google's arguments pertaining to the present limitations rely on its fundamentally flawed 18 position that the '459 Patent "does not even suggest, much less support, a method in which a 19 computer assigns network pages to categories." (Def.'s Brf. at 20, Dkt. 98). To the contrary, the 20 '459 Patent was amended during prosecution to clarify that the series of steps are implemented 21 on a computer. This amendment, like IconFind's construction, is fully supported. Google also 22 seeks to add to and alter these limitations by including the "creator of the web page choosing," 23 24 25 PLAINTIFF ICONFIND, INC.’S RESPONSIVE CLAIM CONSTRUCTION BRIEF -6- 1 "chosen by the creator of the web page," "characterize said network page," and "characterizing 2 the network page." These interpretations and additions are misguided and unnecessary. 3 1. The Prosecution History Demonstrates That The Claimed Step Of Assigning Is Implemented By A Computer, Not The Creator 4 Amendments made during prosecution clearly support—and require—that the claimed 5 step of assigning is implemented by a computer, not the "creator" of the page. 6 Specifically, during prosecution of the application which issued as the '459 Patent, the 7 examiner rejected all of the claims under 35 U.S.C. § 101, and stated "[t]he examiner suggest 8 [sic] including limitation such as 'a computer implemented method' to clarify that the series of 9 steps are implemented on a computer," as shown below: 10 11 12 13 14 15 16 17 18 19 20 21 (Ex. C, Pros. History, IF000121). Consequently, the applicant amended all independent claims, 22 stating "[i]n response, the preamble of claims 1, 32, and 51 are amended per the Examiner's 23 24 25 PLAINTIFF ICONFIND, INC.’S RESPONSIVE CLAIM CONSTRUCTION BRIEF -7- 1 suggestion to satisfy the requirements of 35 U.S.C. § 101," (Ex. C, Pros. History, IF000114), as 2 shown in exemplary amended claim 1 below: 3 4 5 6 7 8 9 10 (Ex. C, Pros. History, IF000109). Thus, as the prosecution history makes clear, the step of 11 "assigning said network page" is performed by the computer. 12 Notably, this also undermines Google's argument that Judge Shubb's opinion supports 13 that the claimed step of assigning is done manually. In particular, Google argues that its 14 construction requiring that the creator assigns the network pages is consistent with Judge 15 Schubb's statement that "[i]n the preferred embodiment, a designer of a network page manually 16 assigns the page to appropriate categories by applying a 'categorization code' for each category to 17 which the page is assigned." (Def.'s Brf., Dkt. 98, p. 19 (citing Ex. B, Yahoo! Markman Order, 18 p.3)). Read in context, Judge Shubb's statement, including his citation to Col. 6:62-65 of the '459 19 Patent, clearly focus on the categorization code—not on the "manually" assigning. Indeed, the 20 term "manual(ly)" appears nowhere in the '459 Patent or prosecution history. Even if Judge 21 Shubb was correct as to his characterization of the preferred embodiment, the claims of the 22 patent need not be construed as being limited to that embodiment. Gemstar-TV Guide Int'l, Inc. 23 v. ITC, 383 F.3d 1352, 1366 (Fed. Cir. 2004). Thus, Judge Shubb's passing reference to 24 "manually" assigning does not support Google's position and, more importantly, does not 25 PLAINTIFF ICONFIND, INC.’S RESPONSIVE CLAIM CONSTRUCTION BRIEF -8- 1 overcome the clear import of the amendment made during prosecution requiring that the 2 "assigning" step be implemented by a computer. 3 2. The Specification Supports The Computer Implemented Step Of Assigning The Network Page 4 Contrary to Google's assertions, the written description of the '459 Patent fully supports 5 the claimed "computer implemented" method, including the step of "assigning" the network 6 page. 7 The "assigning" step is described in the written description of the '459 Patent at Column 8 6, among other places, stating in pertinent part: 9 15 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. 16 (Ex. A, '459 Patent, Col. 6, ll. 12-27) (emphasis added). Ignoring this passage, Google argues 17 that "[t]he '459 patent specification does not even suggest, much less support, a method in which 18 a computer assigns network pages to categories." (Def.'s Brf., Dkt. 98, p. 20). To the contrary, 19 the step of assigning is fully supported by this passage, including the statement that "[t]he steps 20 of assigning a page to categories may be performed in several different ways known to those 21 skilled in the art." That the written description does not spell out every last detail of how the 22 computer assigns is of no consequence. The inventors are entitled to rely on the knowledge of 23 those skilled in the art, and do not claim to have invented the single step of assigning a page, but 24 rather, the novel combination of numerous steps including providing categories (including for 25 PLAINTIFF ICONFIND, INC.’S RESPONSIVE CLAIM CONSTRUCTION BRIEF 10 11 12 13 14 -9- 1 copyright status), assigning a page, providing a categorization label and controlling usage. The 2 inventors expressly note that the step of assigning a page could be implemented by various ways 3 known to those skilled in the art, which is consistent with black letter law on the written 4 description requirement: 8 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. 9 LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1345 (Fed. Cir. 2005). Thus, the 10 written description of the '459 Patent fully supports the claimed "computer implemented" 11 method, including the step of "assigning" the network page. 5 6 7 12 3. Google's Proposals To Add The "creator of the web page choosing" and "chosen by the creator" Are Misguided 13 That the assigning step is performed by the computer also forecloses Google's argument 14 that the present claim limitations pertain to the "creator" of the network page "choosing" 15 categories. While the specification discusses "selection" or "choosing" of categories by a 16 "creator" during application of the invention, it is clear from the prosecution history that the 17 claims were written from the perspective of the computer. By importing the "creator" into the 18 claims, Google inappropriately conflates the specification and claims. As the Federal Circuit has 19 long held: "Specifications teach. Claims claim." Rexnord Corp. v. Laitram, 274 F.3d 1336, 1344 20 (Fed. Cir. 2001). When the inventors meant to use the terms "select" or "choose" in the written 21 description, they did. For instance, the specification states "[b]y selecting one of the four 22 copyright-status indicia and placing it on the end of the categorization label, the creator adds the 23 information governing the use of the material." (Ex. A, '459 Patent, Col. 7, ll. 31-34) (emphasis 24 25 PLAINTIFF ICONFIND, INC.’S RESPONSIVE CLAIM CONSTRUCTION BRIEF - 10 - 1 added). The specification further states "[t]he creator may or may not choose to include the 2 copyright-status categories." (Ex. A, '459 Patent, Col. 8, ll. 1-2) (emphasis added). However, 3 with respect to "assigning," the specification states "[t]he steps of assigning a page to categories 4 may be performed in several different ways known to those skilled in the art." (Ex. A, '459 5 Patent, Col. 6, ll. 12-27) (emphasis added). "[W]hen an applicant uses different terms in a claim 6 it is permissible to infer that he intended his choice of different terms to reflect a differentiation 7 in the meaning of those terms." Innova/Pure Water v. Safari Water Filtration, 381 F.3d 1111, 8 1119 (Fed. Cir. 2004). Thus, the inventors' choice to use the term "assigning" in the claim 9 language rather than "selecting" or "choosing" should be given deference. Moreover, that the 10 assigning "may be performed in several different ways known to those skilled in the art" further 11 supports that the step of "assigning" is not merely "selecting" or "choosing." Why would the 12 expertise of a person skilled in the art be required if "assigning" merely meant "selecting" or 13 "choosing"? 14 Importantly, that the claims were written from the perspective of the computer, including 15 "assigning" categories, does not foreclose the selecting or choosing of categories by a human in 16 practical application. The claimed inventions can in fact be employed in a system where a 17 human selects or chooses the categories, and the corresponding assignment of such categories to 18 the web page is carried out by the computer. The claims do not require that the computer 19 "automatically" assign the categories, or detect the content and assign categories. Accordingly, 20 as claimed, the computer can assign categories based on selections or choices made by humans. 21 Thus, contrary to Google's arguments, IconFind's constructions are neither inconsistent with the 22 goals of the '459 Patent nor impermissibly broad. For at least these reasons, the Court should 23 reject Google's proposals to interpret the present limitations to include the "creator of the web 24 page choosing" and "chosen by the creator." 25 PLAINTIFF ICONFIND, INC.’S RESPONSIVE CLAIM CONSTRUCTION BRIEF - 11 - 1 2 4. The Court Should Also Reject Google's Attempt To Import The Limitations "characterize said network page" And "characterizing the network page" 3 Reviewing the present limitations in the context of the claims in which they appear 4 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. 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 PLAINTIFF ICONFIND, INC.’S RESPONSIVE CLAIM CONSTRUCTION BRIEF - 20 - 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. 6 7 8 9 13 14 15 16 17 18 19 20 21 22 23 24 25 /s/ Brian E. Haan Attorney for Plaintiff IconFind, Inc.

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