IconFind, Inc. v. Google, Inc.

Filing 109

CLAIM CONSTRUCTION ORDER signed by Judge Garland E. Burrell, Jr on 11/1/12. The parties shall file a further joint status report within 30 days of the date this order is filed addressing the filing of dispositive motions, and the timing of those motions; anticipated post-claim construction discovery; and, any other pretrial matters. (Meuleman, A)

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IN THE UNITED STATES DISTRICT COURT
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FOR THE EASTERN DISTRICT OF CALIFORNIA
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Iconfind, Inc.,

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Plaintiff,
v.

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Google, Inc.,

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Defendant.
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2:11-cv-0319-GEB-JFM
CLAIM CONSTRUCTION ORDER

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This order issues following consideration of each party’s

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brief and argument concerning the meaning of certain terms and phrases

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in Plaintiff Iconfind, Inc.’s (“Iconfind”) U.S. Patent No. 7,181,459

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(“the ‘459 Patent”).

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Categorizing, and Retrieving Network Pages and Sites.”

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section of the ‘459 Patent states: “The present invention relates

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generally to methods for categorizing and searching for information on

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a network and, more specifically, to categorizing and searching Web

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pages on the Internet.” (‘459 Patent 1:22-25.) Iconfind alleges in its

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complaint that Defendant Google, Inc. (“Google”) infringes the ‘459

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Patent by its “use, ownership and operation of websites in which it

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incorporates and facilitates Creative Commons licenses, including but

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not limited to Google Knol, Google Books and Google Picasa.”

The ‘459 Patent is titled “Method of Coding,
The background

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The parties dispute the meaning of the bolded terms and

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phrases below in independent claims 1, 30, 31 and dependent claim 6 of

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the ‘459 Patent:

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Claim 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.

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Claim 6
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The method of claim 1, wherein said plurality
of categories based on the copyright status of
material on a page comprise categories related to
public domain, fair use only, use with attribution,
and permission of copyright owner needed.

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Claim 30

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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.

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Claim 31
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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
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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.

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“A court construing a patent claim seeks to accord a claim the

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meaning it would have to a person of ordinary skill in the art at the

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time

of

the

invention.”

Innova/Pure

Water,

Inc.

v.

Safari

Water

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Filtration Systems, Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004). “Such

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person is deemed to read the words used in the patent documents with an

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understanding of their meaning in the field, and to have knowledge of

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any special meaning and usage in the field.” Multiform Desiccants, Inc.

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v. Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998).

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“[I]n interpreting [a claim term], the court should look first

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to the intrinsic evidence of record, i.e., the patent itself, including

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the claims, the specification and, if in evidence, the prosecution

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history.” Vitronics Corp. v. Conceptronic, 90 F.3d 1576, 1582 (Fed. Cir.

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1996). “[T]he claims themselves provide substantial guidance as to the

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meaning of particular claim terms . . . [and] the context in which a

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claim term is used in the asserted claim can be highly instructive.”

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Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed Cir. 2005) (internal

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citations omitted). “[T]he specification is always highly relevant to

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the claim construction analysis[;] . . . it is the single best guide to

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the meaning of a disputed term.” Vitronics, 90 F.3d at 1582.

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A.

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“Network Page”
The parties propose different constructions for the meaning of

the

words

“network

page.”

Iconfind
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argues

that

the

following

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construction of network page, which was adopted in Iconfind, Inc. v.

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Yahoo!, Inc., Case No. 09-0109, 2009 WL 8454648, at *4 (E.D. Cal. Dec.

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14, 2009) (“Yahoo!”), should be adopted in this case: “Page on the

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Internet, private corporate network, intranet, local area network, or

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other network.” (Iconfind Br. 14:12-14.)

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Google argues this proposed construction of “network page”

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fails to “capture[] an important concession made by [Iconfind] in

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[Yahoo!]”; specifically, the Yahoo! court “determined that ‘page’ did

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not require construction” since Iconfind’s counsel conceded during the

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claim construction hearing in Yahoo! “that an image on a ‘page’ did not

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constitute a ‘page.’” (Google Br. 13:5-6.) Google argues that the claims

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and specification in the ‘459 Patent support the addition of the

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following limitation to the Yahoo! court’s construction of “network

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page”: “wherein an image on a page does not constitute a page.”

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Claim 1 of the ‘459 Patent concerns: “A . . .

method of

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categorizing a network page” “wherein . . . categories include a

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category based on copyright status of material on a page.” (‘459 Patent

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12:24-30.) Independent claims 30 and 31 also describe methods for

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categorizing a “network page” which include the “copyright status of

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material on a page.” (14:22-23, 38-39.)

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The

specification

states:

“Pages

on

the

Internet

are

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identifiable by unique addresses and include both Web sites and Web

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pages.” (‘459 Patent 4:48-49.) The terms “page” and “Web page” are used

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interchangeably

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following example under the heading “Description of the Preferred

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Embodiments”:

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throughout

the

specification;

as

evidenced

First tier [] is a division into one or both of two
major categories: pages that are involved in
transacting business and pages that are involved in
providing information. . . . Some Web pages may be
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by

the

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involved in both transacting business and providing
information and thereby fall within both the
categories of “Commerce” and “Information.”

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(‘459 Patent 4:60-67, 5:1-9 (emphasis added).) A person of ordinary

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skill in the art reading the ‘459 Patent would understand that a “page”

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is an address on a network, for example a Web page.

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In addition, the specification discusses “a hierarchy of three

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tiers . . . to categorize, and to search for information located on, Web

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pages.” (‘459 Patent 4:50-53.) The specification states the “[t]hird

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tier [] is a division into one or more categories according to the type

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of files associated with a Web page . . . including . . . graphics[.]”

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(‘459 Patent 5:30-31.) The specification also states that the “Visual”

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category within this tier “includes files containing pictures[.]” (‘459

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Patent 5:39.) A person of ordinary skill in the art reading the ‘459

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Patent would understand that the third tier of categories concerns the

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type of files on a page, and consequently that a page contains files,

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which may include picture files.

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Google’s proposed limitation is supported by the intrinsic

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record since a person of ordinary skill in the art reading the ‘459

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Patent would

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Therefore, the following construction of network page is adopted: An

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address on the Internet, private corporate network, intranet, local area

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network or other network, for example, a Web page; wherein an image on

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a page is not a page.

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B.

understand

that

an

image

on

a

page

is

not

a

page.

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“Assigning said network page to one or more of a plurality of said
list of categories” and “a set of categories and subcategories to
which the network page is assigned”

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The parties dispute the meaning of the following phrases:

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“assigning said network page to one or more of a plurality of said list

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of categories”; and, “a set of categories and subcategories to which the
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network page is assigned.” Iconfind argues these phrases “should be

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given [the] plain and ordinary meaning in the context of the intrinsic

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record as understood by a person of skill at the time of the invention.”

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(Iconfind

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“requir[ing] that the assignment be performed by the creator[.]” (Google

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Br. 16:8-9.)

Br.

19:9-12.)

Google

seeks

to

limit

each

phrase

by

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The specification states the invention “includes the steps of

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providing the creator with a list of categories and providing the

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creator an opportunity to assign the page to one or more of the

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categories.” (‘459 Patent 5:64-67.) The specification describes the

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assignment step as follows: “The creator of a Web page may assign the

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Web page to any number or combination of the categories of three tiers

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. . . and one of the copyright-status categories . . . . The creator may

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also decide not to assign the page to any of the categories of a

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particular tier.” (‘459 Patent 6:12-16.) “After the creator decides to

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which categories to assign the page, the creator may mark or tag the

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page as belonging in or within the assigned categories by associating,

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with the page, the corresponding indicium for each assigned category.”

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(459 Patent 6:50-51.) “[T]he specification . . . consistently and

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exclusively” states that the categories are assigned to a network page

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by the creator. Hologic, Inc. v. SenoRx, Inc., 639 F.3d 1329, 1338 (Fed.

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Cir. 2011).

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Therefore, the following constructions of “assigning said

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network page to one or more of a plurality of said list of categories”

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and “a set of categories and subcategories to which the network page is

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assigned” are adopted:

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The

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creator

assigns

the

network

page

to

one

or

more

categories; and, a set of categories and subcategories to which the
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network page is assigned by the creator.

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C.

“Categories related to public domain, fair use only, use with
attribution, and permission of copyright owner needed”

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The parties dispute the meaning of the phrase “categories

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related to public domain, fair use only, use with attribution, and

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permission of copyright owner needed.” Iconfind argues this phrase “need

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not be construed separately and should be given its plain and ordinary

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meaning in the context of the intrinsic record as understood by a person

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of skill at the time of the invention.” (Iconfind Br. 26:22-24, 27:1.)

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Google seeks a construction which “requires that the method provide four

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mutually exclusive categories as the claims require.” (Google Br. 22:6-

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12.) Iconfind responds that “‘each’ of the four categories need not be

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represented in . . . ‘a category’” in claims 6 and 31. (Iconfind Resp.

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Br. 15:20-21.)

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Claim 6 states the “categories based on the copyright status

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of material on a page comprise categories related to public domain, fair

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use only, use with attribution, and permission of copyright owner

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needed.” (‘459 Patent 12:54-56.) Claim 31 states “the copyright status

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comprises categories related to public domain, fair use only, use with

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attribution, and permission of copyright owner needed.” (‘459 Patent

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14:40-42.) “In the patent claim context the term compris[e] is well

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understood to mean ‘including but not limited to.’” Cias, Inc. v.

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Alliance Gaming Corp., 504 F.3d 1356, 1360 (Fed. Cir. 2007) (citation

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omitted). Therefore, a person of ordinary skill in the art would

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understand that the category based on copyright status in claims 6 and

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31 includes “categories related to public domain, fair use only, use

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with attribution, and permission of copyright owner needed.”

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The specification provides the following definitions of these
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categories:

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Public Domain is material that is in the public
domain and can be used freely without any
restrictions. Fair Use Only is material 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 which may or may not
be granted and may include fees and additional
terms.

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(‘459 Patent 5:49-58.)

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In light of the specification and the claims, a person of

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ordinary skill in the art reading the ‘459 Patent would understand that

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claims 6 and 31 require categories that relate to the definitions

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provided in the ‘459 Patent for Public Domain, Fair Use Only, Use with

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Attribution, and Permission of Copyright Owner Needed. Therefore, the

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following construction of “categories related to public domain, fair use

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only, use with attribution, and permission of copyright owner needed” is

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adopted:

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The category based on copyright status includes categories

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related to the following: in the public domain and can be used freely

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without any restrictions; meant to be used in accordance with accepted

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fair use guidelines; can be used as long as its use is accompanied by an

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attribution to the author or copyright owner; or, cannot be used unless

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the copyright owner is first contacted for permission which may or may

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not be granted and may include fees and additional terms.

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D.

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Agreed Upon Constructions
The parties have submitted agreed upon constructions for the

following terms which are also adopted:

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8

1

Term

Construction

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category for transacting business

A category for network pages that
have as a purpose transacting
business

category for providing
information

A category for network pages that
have as a purpose the provision
of information, for example,
network pages that contain
articles, journals, or
publications

categorization label

Label indicating a category or
categories to which a page is
assigned

categorization code

System of characters or symbols
that represent categories

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The parties shall file a further joint status report within
thirty (30) days of the date this order is filed addressing the
following:
a)
The filing of dispositive motions, and the
timing of those motions;
b) Anticipated post-claim construction discovery;
and,
c)
Any other pretrial matters.

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Dated: November
1, 2012

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GARLAND E. BURRELL, JR.
Senior United States District
Judge

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