IconFind, Inc. v. Google, Inc.

Filing 23

MEMORANDUM by IconFind, Inc. in SUPPORT of 22 MOTION to DISMISS MOTION to STRIKE. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Proposed Order)(Haan, Brian)

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WILKE, FLEURY, HOFFELT, GOULD & BIRNEY, LLP Thomas G. Redmon (SBN 47090) [e-mail] Daniel L. Baxter (SBN 203862) [e-mail] 400 Capitol Mall, 22nd Floor Sacramento, CA 95814 Phone: [phone] Fax: [phone] NIRO, HALLER & NIRO Raymond P. Niro (Admitted Pro hac vice) [e-mail] Raymond P. Niro, Jr. (Admitted Pro hac vice) [e-mail] Brian E. Haan (Admitted Pro hac vice) [e-mail] Anna B. Folgers (Admitted Pro hac vice) [e-mail] 181 West Madison, Suite 4600 Chicago, IL 60602-4515 Phone: [phone] Fax: [phone] Attorneys for Plaintiff IconFind, Inc. IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF CALIFORNIA ICONFIND, INC., Case No. 2:11-cv-00319-GEB-JFM Plaintiff, PLAINTIFF ICONFIND, INC.'S MEMORANDUM IN SUPPORT OF ITS MOTION TO DISMISS PURSUANT TO FRCP 12(B)(6) AND MOTION TO STRIKE PURSUANT TO FRCP 12(F) DATE: MAY 2, 2011 TIME: 9:00 A.M. PLACE: COURTROOM 10 JUDGE GARLAND E. BURRELL, JR.

16 17 v. 18 GOOGLE INC., 19 Defendant. 20 21 22 23 24 25 26

Plaintiff IconFind, Inc. ("IconFind") respectfully moves to dismiss the counterclaim purporting to allege invalidity of the patent-in-suit by Defendant Google Inc. ("Google") under Rule 12(b)(6). IconFind also moves to strike Google's corresponding affirmative defense of invalidity pursuant to Rule 12(f). Because Google has failed to specify adequate grounds or

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supporting facts that could possibly support a finding that IconFind's patent is invalid, Google's invalidity counterclaim (Count Two) and corresponding affirmative defense (Second Defense) fail to state claims on which relief can be granted and must be dismissed as a matter of law. The patent invalidity allegations by Google nakedly assert that the IconFind patent is invalid under any of Sections 101, 102, 103 and 112 of the Patent Act. As a threshold matter, merely citing a list of statutes ­ without more ­ is not a counterclaim. But Google has taken inadequate pleading to yet another level as it vaguely asserts that the IconFind patent is invalid or unenforceable for failure to satisfy "one or more conditions of patentability set forth in Title 35 of the United States Code, including, but not limited to 35 U.S.C. §§ 101, 102, 103 and 112." (Def's Countercl., Dkt. No. 18, ¶ 11, Exhibit A). These conclusory allegations fail to identify which of the numerous statutory subsections under which they are brought, and are wholly devoid of factual support. Google's Second Defense replicates the language of its counterclaim Count Two, and is likewise deficient. (Def's Answer, Dkt. No. 18, ¶ 14, Exhibit A). As such, these allegations do not state a claim that is plausible on its face, and cannot withstand scrutiny under the Supreme Court's Twombly and Iqbal decisions. On that basis, numerous courts in this Circuit have dismissed similarly deficient counterclaims and affirmative defenses. Accordingly, and as set forth in further detail below, IconFind respectfully requests that the Court grant its motion to dismiss Google's counterclaim of patent invalidity (Count Two) pursuant to Rule 12(b)(6) and grant its motion to strike Google's affirmative defense of invalidity (Second Defense) pursuant to Rule 12(f). I. BACKGROUND

On February 3, 2011, IconFind filed this suit in the United States District Court for the Eastern District of California for infringement of its United States Patent No. 7,181,459 B2. -2PLAINTIFF ICONFIND, INC.'S MEMORANDUM IN SUPPORT OF ITS MOTION TO DISMISS PURSUANT TO FRCP 12(B)(6) AND MOTION TO STRIKE PURSUANT TO FRCP 12(F)

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Google has known about this patent for years. In January 2009, IconFind provided notice to Google that the '459 patent covered Google's operation of its website functionality. Nonetheless, Google has continued its infringement with disregard for the '459 patent. Google and its patent attorneys also were aware of the '459 patent as evidenced by the prosecution of Google's own U.S. Patent Nos. 7,664,734, 7,693,825 and 7,788,274. The pleading deficiencies of Google's counterclaim are striking, particularly given Google's familiarity with the patent, and that Google sought (and IconFind agreed to) an extension of time to answer the complaint. Thus, Google has had ample opportunity to prepare and adequately set forth the basis for its invalidity claim and affirmative defense. Its complete failure to do so requires dismissal of its counterclaim and affirmative defense. II. APPLICABLE LAW A. Rule 8 and Rule 12(b)(6)

"Under Federal Rule of Civil Procedure 8(a)(2), a pleading must contain `a short and plain statement of the claim showing that the pleader is entitled to relief.'" Ashcroft v. Iqbal, 129 S. Ct. 1937, 1949 (2009) (quoting Fed.R.Civ.P. 8(a)(2)). "A pleading that offers `labels' and conclusions' or `a formulaic recitation of the elements of a cause of action will not do.'" Id. (citing Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 555 (2007)). "Nor does a complaint suffice if it tenders `naked assertion[s]' devoid of `further factual enhancement.'" Id. "A Rule 12(b)(6) dismissal motion tests the legal sufficiency of the claims alleged in the complaint." McMaster v. United States, 2010 U.S. Dist. LEXIS 99831, at *2 (E.D. Cal. Sept. 9, 2010) (Burrell, J.); Navarro v. Block, 250 F.3d 729, 732 (9th Cir. 2001). In deciding such a motion, all material allegations of the complaint are accepted as true. Id. "To survive a motion to dismiss, a complaint must contain sufficient factual matter, accepted as true, to `state a claim -3PLAINTIFF ICONFIND, INC.'S MEMORANDUM IN SUPPORT OF ITS MOTION TO DISMISS PURSUANT TO FRCP 12(B)(6) AND MOTION TO STRIKE PURSUANT TO FRCP 12(F)

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to relief that is plausible on its face.'" Iqbal, 129 S. Ct. at 1949 (citations omitted). The Supreme Court in Iqbal explained that: [a] claim has facial plausibility when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged. ... The plausibility standard is not akin to a "probability requirement," but it asks for more than a sheer possibility that a defendant has acted unlawfully. ... Where a complaint pleads facts that are "merely consistent with" a defendant's liability, it "stops short of the line between possibility and plausibility of 'entitlement to relief.'" Id. The Iqbal Court further explained that its decision in Twombly was based on two underlying principles. Id. "First, the tenet that a court must accept as true all of the allegations contained in a complaint is inapplicable to legal conclusions. Threadbare recitals of the elements of the cause of action, supported by mere conclusory statements, do not suffice." Id. (emphasis added). "Second, only a complaint that states a plausible claim for relief survives a motion to dismiss. ... Determining whether a complaint states a plausible claim for relief will ... be a context-specific task that requires the reviewing court to draw on its judicial experience and common sense." Iqbal, 129 S. Ct. at 1950; See Tech. Licensing Corp. v. Technicolor USA, Inc., 2010 U.S. Dist. LEXIS 113292, at *5-6 (E.D. Cal. Oct. 15, 2010) (Shubb, J.). B. Rule 12(f)

Under Rule 12(f), "[t]he court may strike from a pleading an insufficient defense or any redundant, immaterial, impertinent, or scandalous matter." Fed. R. Civ. P. 12(f). "The purpose of the rule is to avoid the costs that accompany litigating spurious issues by dispensing with those issues prior to trial." J & J Sports Prods. v. Delgado, 2011 U.S. Dist. LEXIS 9013, at *3-4 (E.D. Cal. Jan. 18, 2011) (Shubb, J.). Though a motion to strike is generally viewed with disfavor, it may be appropriate where allegations "may cause prejudice to one of the parties." Ramos Oil Recyclers, Inc. v. AWIM, Inc., 2007 U.S. Dist. LEXIS 62608, at *3 (E.D. Cal. Aug. -4PLAINTIFF ICONFIND, INC.'S MEMORANDUM IN SUPPORT OF ITS MOTION TO DISMISS PURSUANT TO FRCP 12(B)(6) AND MOTION TO STRIKE PURSUANT TO FRCP 12(F)

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15, 2007) (Burrell, J.). "A defense may be struck if it fails to provide `fair notice' of the basis for the defense." Qarbon.com v. eHelp Corp., 315 F. Supp. 2d 1046, 1051 (N.D. Cal. 2004) (Ware, J.) (granting motion to strike affirmative defenses for patent invalidity for "failure to provide `fair notice' of what the defense is and the grounds upon it rests"), (citing Advanced Cardiovascular Sys. v. Scimed Sys., 1996 U.S. Dist. LEXIS 11700, at *9-10 (N.D. Cal. July 24, 1996) (granting motion to strike affirmative defenses of patent invalidity)). In fact, in this Circuit, the "key to determining the sufficiency of pleading an affirmative defense is whether it gives plaintiff fair notice of the defense." Ramos Oil Recyclers, Inc., 2007 U.S. Dist. LEXIS 62608, at *3, (citing Wyshak v. City National Bank, 607 F.2d 824, 827 (9th Cir. 1979)). III. GOOGLE'S ONE-SENTENCE COUNTERCLAIM ALLEGING PATENT INVALIDITY UNDER "ONE OR MORE" CONDITIONS OF PATENTABILITY IN TITLE 35 INCLUDING SECTIONS 101, 102, 103 AND 112 IS INSUFFICIENT AS A MATTER OF LAW

A claim for declaratory judgment of invalidity that wholly fails to specify the grounds for 13 invalidity is insufficient as it does not provide fair notice of the party's claims. PB Farradyne, 14 Inc. v. Peterson, 2006 U.S. Dist. LEXIS 3408, at *8-10 (N.D. Cal., Jan. 17, 2006). 15 Qarbon.com, the court dismissed a counterclaim for invalidity which was indistinguishable to the 16 counterclaim in this case, finding it "radically insufficient." In assessing the counterclaim, the 17 Qarbon.com court stated: 18 19 20 21 22 23 24 25 26
PLAINTIFF ICONFIND, INC.'S MEMORANDUM IN SUPPORT OF ITS MOTION TO DISMISS PURSUANT TO FRCP 12(B)(6) AND MOTION TO STRIKE PURSUANT TO FRCP 12(F)

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eHelp alleges that "the '441 patent is invalid and void under the provisions of Title 35, United States Code §§ 100 et seq., and specifically, §§ 101, 102, 103, and/or 112 ...." Counterclaim P6. Such a pleading is "radically insufficient." ... By making general allegations, eHelp fails to give "fair notice" to Qarbon. 'Effective notice pleading should provide the defendant with a basis for assessing the initial strength of the plaintiff's claim, for preserving relevant evidence, for identifying any related counter- or cross-claims, and for preparing an appropriate answer."

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315 F. Supp. 2d at 1050-1051 (internal citations omitted) (emphasis added). Similarly, in PB Farradyne, Inc., 2006 U.S. Dist. LEXIS 3408 , at *8-10 (Illston, J.), the court granted a motion to dismiss counterclaims that were virtually identical to those in Qarbon.com and in this case, finding that, as pled, the counterclaims did not "provide defendants with sufficient notice of the basis for its claims." Likewise, in Duramed Pharms., Inc. v. Watson Labs., Inc., the court dismissed a counterclaim which contained the general allegation that the claims of the patent-insuit were "invalid because they fail to comply with one or more of the statutory requirements for patentability set forth in 35 U.S.C. §§ 101 et seq," stating "[plaintiff] is correct that this allegation fails to state a claim. By failing to specify which of the many grounds of patent invalidity it is relying upon, [defendant] does not put [plaintiff] on fair notice as to the basis of its counterclaim." 2008 U.S. Dist. LEXIS 103389, at *11 (D. Nev. Dec. 12, 2008). Google's declaratory judgment counterclaim for patent invalidity provides no more detail than the "radically insufficient" claims dismissed in Qarbon.com, PB Farradyne, and Duramed. Google's conclusory allegations do not even contain the "threadbare recitals of the elements of the cause of action," which the Supreme Court has held are insufficient. Iqbal, 129 S. Ct. at 1949. Aside from incorporating its party and jurisdictional allegations, and its non-infringement counterclaim, the entirety of Google's counterclaim for patent invalidity is as follows: 11. The '459 patent is invalid for failure to satisfy one or more of the conditions of patentability set forth in Title 35 of the United States Codes, including, but not limited to, 35 U.S.C. §§ 101, 102, 103, and 112. (Def's Countercl., Dkt. No. 18, ¶ 11, Exhibit A). Google contends that the patent-in-suit is invalid under some unspecified subsections of §§ 101, 102, 103, or 112 of the Patent Act. But, Google's mere listing of the patent statutes ­ without any facts or even any legal elements ­ fails

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to provide any, much less "fair [ ]notice of what the ... claim is and the grounds upon which it rests." Twombly, 550 U.S. at 555 (quoting Conley v. Gibson, 355 U.S. 41, 47 (1957)). For example, Section 102 of the Patent Act alone provides seven (7) subsections. (35 U.S.C. § 102, Exhibit B). At least five (5) of these subsections, in turn, set forth numerous independent and far-ranging grounds for invalidating a patent claim, such as prior public use, prior offer to sell, prior printed-publication, abandonment, prior patenting in a foreign country by the inventor or his or her legal representatives or assigns, prior published patent applications by others, prior issued patents by others, non-joinder of inventors, prior invention by others and the like. See 35 U.S.C. § 102(a)-(g), (35 U.S.C. § 102, Exhibit B). Google fails to identify any of these grounds under Section 102 for alleged patent invalidity, fails to provide even the barest legal elements of any such ground and, worse yet, fails to provide any facts to support its one-sentence counterclaim. The same is true with respect to the passing reference by Google to Section 103, which sets forth additional bases for patent invalidity in the event that "the invention is not identically disclosed or described as set forth in section 102 ...." (35 U.S.C. § 103, Exhibit C). Section 112 likewise provides numerous additional grounds for challenging a patent including, among others, written description, lack of enablement, claim indefiniteness and failure to disclose the best mode of the invention. (35 U.S.C. § 112, Exhibit D). Google does not even identify any of these bases or plead any legal elements, much less plead adequate facts to support such elements. Google's open-ended listing of statutes, without more, fails to provide any notice to IconFind ­ or the Court ­ of the nature of its counterclaim other than that Google apparently contends that the patent-in-suit is invalid. That is no different than an antitrust plaintiff alleging, -7PLAINTIFF ICONFIND, INC.'S MEMORANDUM IN SUPPORT OF ITS MOTION TO DISMISS PURSUANT TO FRCP 12(B)(6) AND MOTION TO STRIKE PURSUANT TO FRCP 12(F)

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without more, that the defendant is liable because it violated some unspecified sections of one of the antitrust statutes. Not only is Google's counterclaim wholly devoid of even a formulaic recitation of the elements (which itself "will not do" under Iqbal and Twombly), but it contains no factual enhancement whatsoever. Here, the Court cannot accept as true any facts in these counterclaims, as it must under a Rule 12(b)(6) analysis, because Google has alleged no facts at all. As such, Google's counterclaim fails to either "raise a right to relief above the speculative level" or "state a claim that is plausible on its face." Twombly, 550 U.S. at 555, 570. Even worse, Google's invalidity counterclaim includes a "catch all" allegation that the `459 patent is "invalid for failure to satisfy one or more of the conditions of patentability set forth in Title 35 of the United States Code, including, but not limited to, 35 U.S.C. §§ 101, 102, 103, and 112." (Def's Countercl., Dkt. No. 18, ¶ 11, Exhibit A) (emphasis added). In essence, Google contends that the patent in suit is invalid under §§ 101, 102, 103, 112, or any other provision of Title 35. However, simply citing Title 35 of the United States Code is not a valid counterclaim. See Sprint Comms. Co. v. TheGlobe.com, Inc., 233 F.R.D. 615, 619 (D. Kan. 2006). In Sprint, the court assessed a similar affirmative defense and counterclaim, which both alleged that "[Defendant] is informed and believes that [the plaintiff's patents], and each of the seven claims thereof, are invalid, void and/or unenforceable under one or more of the sections of Title 35 of the United States Code." Id. at 618. The court struck the affirmative defense and counterclaim, finding them "fatally vague." Id. at 619. Google's "catch-all" allegation under "one or more of the conditions of patentability set forth in Title 35 of the United States Code" is equally defective. Accordingly, Google's attempt to preserve its ability to later assert any provision of Title 35 is improper.

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Moreover, IconFind will be prejudiced by Google's inadequate pleadings. Scheduling orders and other discovery controls are meant to streamline the litigation process ­ not to provide litigants the opportunity to offer a vague pleading, unnecessarily expand the scope of the litigation and then rely on the expensive and time-consuming fact and expert discovery process to flush out their theories. Allowing Google to proceed with its vague invalidity pleading prejudices IconFind, as it unfairly allows Google additional time to develop its theories, and forces IconFind to use the expensive and time consuming discovery process to extract Google's theories which should have been provided in the pleading. In short, if Google has viable theories of patent invalidity, it should be allowed to plead and litigate them, provided that they are well-grounded in fact and law and they provide adequate notice to IconFind and the Court of its allegations. What it should not be allowed to do is to merely speculate ­ without providing any notice to IconFind and to the Court ­ that the patentin-suit is invalid for unspecified reasons in a pleading and then use that deficient pleading to expand the scope of the lawsuit unnecessarily. For this and all of the foregoing reasons, Google's invalidity counterclaim should be dismissed. IV. GOOGLE'S SECOND AFFIRMATIVE DEFENSE SHOULD BE STRICKEN FROM THE PLEADING FOR FAILING TO PROVIDE FAIR NOTICE OF THE DEFENSE

For the reasons set forth above, Google's affirmative defense alleging patent invalidity (Second Defense) should also be dismissed. Under Rule 12(f), "[t]he court may strike from a pleading an insufficient defense." Fed. R. Civ. P. 12(f). "Under Rule 8 of the Federal Rules of Civil Procedure, an affirmative defense must be pled with the minimal specificity to give the plaintiff `fair notice' of the defense." Advanced Cardio, 1996 U.S. Dist. LEXIS 11700, at *9-10; -9PLAINTIFF ICONFIND, INC.'S MEMORANDUM IN SUPPORT OF ITS MOTION TO DISMISS PURSUANT TO FRCP 12(B)(6) AND MOTION TO STRIKE PURSUANT TO FRCP 12(F)

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see also Qarbon.com, 315 F. Supp. 2d at 1049 (N.D. Cal. 2004) (striking affirmative defenses and stating, "[defendant's] affirmative defenses fail to provide `fair notice' of what the defense is and the grounds upon which it rests"). In this Circuit, the "key to determining the sufficiency of pleading an affirmative defense is whether it gives plaintiff fair notice of the defenses." Ramos Oil Recyclers, Inc., 2007 U.S. Dist. LEXIS 62608, at *3 (citing Wyshak, 607 F.2d at 827). In Advanced Cardiovascular Sys., the court struck the defendant's affirmative defense that the patent-in-suit was "invalid, void, and unenforceable for failure to satisfy the requirements of patentability contained in Title 35, United States Code, including but not limited to, sections 101, 102, 103 and/or 112." Id. at 1773. In so holding the court noted that "[s]ince sections 101, 102, 103, and 112 provide numerous grounds for finding a patent invalid, defendant must provide a more specific statement of the basis for this defense in order to give [plaintiff] fair notice of the claims being asserted." Id. Similarly, the court in Sprint, following the "cogent analysis" of the PB Farradyne, Qarbon.com, and Advanced Cardiovascular Sys. line of cases struck a similar affirmative defense which stated "[defendant] is informed and believes that [plaintiff's seven patents], and each of the seven claims thereof, are invalid, void and/or unenforceable under one or more of the sections of Title 35 of the United States Code." 233 F.R.D. at 619. In so holding the court stated: Simply examining the first affirmative defense on its face, it is immediately apparent that [defendant] has not met the minimal pleading requirements of Rule 8. As [plaintiff] explains, Title 35 of the United States code includes 112 discrete sections. It is unreasonable to make [plaintiff] guess which of these sections [defendant] is relying upon to contend that [plaintiffs] patent claims are unenforceable. Id. at 619.

22 In Reid-Ashman Manufacturing, Inc. v. Swanson Semiconductor Service, LLC, the court 23 struck an affirmative defense which stated that the patent-in-suit was "invalid for failing to meet 24 25 26
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one or more of the conditions for patentability specified in Title 35 of the United States Code, including but not limited to 35 U.S.C. §§ 102, 103, 112, and 132." 2007 U.S. Dist. LEXIS 37665, at *17-18 (N.D. Cal., May 10, 2007). In striking the affirmative defense, the court noted "[e]ven under the minimal notice pleadings requirements of Fed.R.Civ.P 8(a), which requires only a `short statement of the claim showing that the pleader is entitled to relief,' this allegation is insufficient because it does not provide [plaintiff] with sufficient notice of the defense being asserted." Id. As set forth by the authority above, Google's counterclaim for invalidity clearly does not meet the requirements of Rule 8, does not provide IconFind fair notice of Google's counterclaim and cannot withstand a Rule 12(b)(6) challenge. Likewise, Google's corresponding affirmative defense provides no more detail than those asserted in Advanced Cardiovascular Sys., Qarbon.com, Sprint and Reid-Ashman, and states as follows: 14. The claims of the '459 patent are invalid and/or unenforceable for failure satisfy one or more conditions of patentability set forth in Title 35 of the United States Code, including, but not limited to, 35 U.S.C. §§ 101, 102, 103, and 112. (Def's. Answer, Dkt. No. 18, ¶ 14, Exhibit A). Google's affirmative defense merely includes labels and fails to provide fair notice of the factual grounds on which it rests and, therefore, should be stricken on those bases. Like Google's deficient counterclaim, Google's affirmative defense on patent invalidity prejudices IconFind because it unfairly allows Google additional time to develop its theories, and forces IconFind to use the expensive and time consuming discovery process to extract Google's invalidity theories which should have been pled. V. CONCLUSION

WHEREFORE, IconFind respectfully requests that the Court grant its motion to dismiss Google's counterclaim of patent invalidity (Count Two) pursuant to Rule 12(b)(6) and grant its - 11 PLAINTIFF ICONFIND, INC.'S MEMORANDUM IN SUPPORT OF ITS MOTION TO DISMISS PURSUANT TO FRCP 12(B)(6) AND MOTION TO STRIKE PURSUANT TO FRCP 12(F)

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motion to strike Google's affirmative defense of patent invalidity (Second Defense) pursuant to Rule 12(f). Respectfully submitted, WILKE, FLEURY, HOFFELT, GOULD & BIRNEY, LLP Thomas G. Redmon (SBN 47090) [e-mail] Daniel L. Baxter (SBN 203862) [e-mail] Attorneys for Plaintiff IconFind, Inc. /s/ Brian E. Haan NIRO, HALLER & NIRO Raymond P. Niro (Pro hac vice) [e-mail] Raymond P. Niro, Jr. (Pro hac vice) [e-mail] Brian E. Haan (Pro hac vice) [e-mail] Anna B. Folgers (Pro hac vice) [e-mail] Attorneys for Plaintiff IconFind, Inc.

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CERTIFICATE OF SERVICE The undersigned hereby certifies that on April 1, 2011 the foregoing PLAINTIFF ICONFIND, INC.'S MEMORANDUM IN SUPPORT OF ITS MOTION TO DISMISS PURSUANT TO FRCP 12(B)(6) AND MOTION TO STRIKE PURSUANT TO FRCP 12(F) was filed with the Clerk of Court using the CM/ECF system, which will then send a notification of such filing to the following counsel of record. Michael J. Malecek [e-mail] Kaye Scholer LLP Two Palo Alto Square, Suite 400 3000 El Camino Real Palo Alto, California 94306 Telephone: [phone] Facsimile: [phone]
H

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Attorneys for Defendant Google Inc. I certify that all parties in this case are represented by counsel who are CM/ECF participants.

/s/ Brian E. Haan Attorney for Plaintiff

PLAINTIFF ICONFIND, INC.'S MEMORANDUM IN SUPPORT OF ITS MOTION TO DISMISS PURSUANT TO

FRCP 12(B)(6) AND MOTION TO STRIKE PURSUANT TO FRCP 12(F)