IconFind, Inc. v. Google, Inc.

Filing 30

MEMORANDUM by Google, Inc. in SUPPORT of 29 MOTION for JUDGMENT on the pleadings of Invalidity of U.S. Patent No . 7,181,459. 7,181,459. (Malecek, Michael) Modified on 4/18/2011 (Duong, D).

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Michael J. Malecek (State Bar No. 171034)
Email address: [e-mail]
Kenneth Maikish (State Bar No. 267265)
Email address: [e-mail]
KAYE SCHOLER LLP
Two Palo Alto Square, Suite 400
3000 El Camino Real
Palo Alto, California 94306
Telephone: [phone]
Facsimile: [phone]

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Attorneys for Defendant
GOOGLE INC.

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UNITED STATES DISTRICT COURT

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FOR THE EASTERN DISTRICT OF CALIFORNIA

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ICONFIND, INC.,

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Case No. 2:11-CV-00319 GEB JFM

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Plaintiff,

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v.

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GOOGLE INC.,

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Defendant.

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DEFENDANT GOOGLE INC.’S
MEMORANDUM IN SUPPORT
OF ITS MOTION FOR JUDGMENT ON
THE PLEADINGS OF INVALIDITY OF
U.S. PATENT NO. 7,181,459
Date:
May 16, 2011
Time:
9:00am
Location:
Courtroom 10
The Honorable Garland E. Burrell, Jr.

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TABLE OF CONTENTS

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I.

INTRODUCTION .............................................................................................................. 2

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II.

BACKGROUND ................................................................................................................ 3

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III.

LEGAL STANDARD......................................................................................................... 4

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IV.

ARGUMENT...................................................................................................................... 5

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A.

The Claims of the ’459 Patent Fail the Machine-or-Transformation Test.............. 6
1.

The Claims of the ’459 Patent Fail the “Machine” Prong of the
Machine-or-Transformation Test............................................................... 7

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The Claims of the ’459 Patent Fail the “Transformation” Prong
of the Machine-or-Transformation Test.................................................... 10

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B.

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V.

The Claims of the ’459 Patent Are Directed at an Abstract Idea as in Benson
and Flook and, therefore, Are Invalid for Failing to Meet the Requirements
of 35 U.S.C. § 101 ............................................................................................... 11

CONCLUSION................................................................................................................. 13

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TABLE OF AUTHORITIES

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Cases

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Advanced Micro Devices v. Samsung Elecs. Co.,
2010 U.S. Dist. LEXIS 24243 (N.D. Cal. Mar. 15, 2010).................................................. 3

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Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Can.,
2011 U.S. Dist. LEXIS 14272 (E.D. Mo. Feb. 14, 2011)......................................... 6, 8, 10

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Bilski v. Kappos,
130 S. Ct. 3218 (2010)............................................................................................... passim

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CLS Bank Int'l v. Alice Corp. Pty, Ltd.,
2011 U.S. Dist. LEXIS 23669 (D.D.C. Mar. 9, 2011)............................................ 8, 10, 12

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Cybersource Corp. v. Retail Decisions, Inc.,
620 F. Supp. 2d 1068 (N.D. Cal. 2009) ............................................................................ 11

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Diamond v. Diehr,
450 U.S. 175 (1981).................................................................................................. 5, 6, 14

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Ex Parte Cherkas,
No. 2009-11287, 2010 WL 4219765 (October 25, 2010)................................................. 11

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Fuzzysharp Techs., Inc. v. 3D Labs, Inc., Ltd.,
Case No. 07-5948, 2009 U.S. Dist. LEXIS 115493 (N.D. Cal. Dec. 11, 2009) ............... 10

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Gottschalk v. Benson,
409 U.S. 63 (1972)..................................................................................................... passim

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Graff/Ross Holdings LLP v. Fed. Home Loan Mortg. Corp.,
2010 U.S. Dist. LEXIS 141399 (D.D.C. Aug. 27, 2010) ................................................... 9

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Hal Roach Studios, Inc. v. Richard Feiner & Co.,
896 F.2d 1542 (9th Cir. 1989) ............................................................................................ 4

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In re Bilski,
545 F.3d 943 (Fed. Cir. 2008).................................................................................... passim

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In re Comiskey,
554 F.3d 967 (Fed. Cir. 2009)............................................................................................. 2

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King Pharmaceuticals, Inc. v. Eon Labs, Inc.,
616 F.3d 1267 (Fed. Cir. 2010)........................................................................................... 8

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Parker v. Flook,
437 U.S. 584 (1978)................................................................................................... passim

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Prometheus Labs., Inc. v. Mayo Collaborative Servs. & Mayo Clinic Rochester,
Case No. 2008-1403, 2010 U.S. App. LEXIS 25956 (Fed. Cir. Dec. 17, 2010) ................ 7

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Research Corp. Techs. v. Microsoft Corp.,
627 F.3d 859 (Fed. Cir. 2010)........................................................................................... 12

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SiRF Technology, Inc. v. Int’l Trade Com’n,
601 F.3d 1319, 1332 (Fed. Cir. 2010)................................................................................. 9

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Ultramercial, LLC v. Hulu LLC,
2010 U.S. Dist. LEXIS 93453 (C.D. Cal. Aug. 13, 2010)...................................... 8, 10, 11

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Statutes
35 U.S.C. § 101...................................................................................................................... passim
FED. R. CIV. P. 12 (C) .................................................................................................................. 2, 4

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NOTES ON CITATIONS

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The patent-in-suit, U.S. Patent No. 7,181,459 (“the ’459 patent”), is attached as Exhibit 1
to the Declaration of Kenneth Makish (the “Makish Decl.”). References to the ’459 patent are
indicated by column and line number. A reference to “3:15” means column 3, line 15.

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Concurrent with its Motion on the Pleadings, Google has filed its Request for Judicial
Notice of the Prosecution History of U.S. Patent No. 7,181,459. While Google does not believe
that the Court need consult the Prosecution History in order to reach resolution of this matter,
reference to the Prosecution History is illuminating and corroborates Google contention that the
’459 patent is invalid pursuant to 35 U.S.C. § 101.

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Relevant portions of the Prosecution History are attached to the Makish Decl., as follows:

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Description

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Patent Application of Lee H. Grant and Susan A. Capizzi for Method of Coding,
Categorizing, and Retrieving Network Pages and Sites dated February 22, 2002
in U.S. Patent Application No. 10/082,596.

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Exhibit

Office Action Summary dated May 24, 2004 in U.S. Patent Application No.
10/082,596.

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Response to Official Action dated June 22, 2004 in U.S. Patent Application No.
10/082,596.

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Amendment in Response to Non-Final Office Action dated April 27, 2005 in
U.S. Patent Application No. 10/082,596.

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Office Action Summary dated July 11, 2005 in U.S. Patent Application No.
10/082,596.

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Amendment After Final Action (37 C.F.R. Section 1.116) dated September 8,
2005 in U.S. Patent Application No. 10/082,596.

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I.

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INTRODUCTION
The Supreme Court has recently reminded us that Section 101 of the Patent Act has its

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limits – abstract ideas are not patentable. Bilski v. Kappos, 130 S. Ct. 3218, 3225 (2010) (“Bilski

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II”). Both the Supreme Court and recent decisions applying this guidance have found that adding

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to an abstract idea the notion of implementing it on a computer does not make the idea patentable.

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The claims of the ’459 patent are exactly that: an abstract idea simply implemented on a

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computer.

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In fact, the prosecution history of the ’459 patent makes this point abundantly clear.
Initially, the Examiner rejected all of the claims as invalid under Section 101 because all the

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claims were all directed to an abstract idea. Rather than respond to the substance of this rejection,

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and without attempting to argue to the contrary, the patentee merely altered the preamble of its

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claims to include the phrase “a computer implemented method” in an attempt to tie the abstract

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concepts of its patent claims to a machine (i.e., a general purpose computer). As the Supreme

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Court has recently made clear, however, abstract ideas – which are unpatentable as a matter of

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law – cannot otherwise be made patentable simply by directing them to run on a general purpose

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computer. In short, the Examiner’s initial rejection was correct and the patentee’s “cure” is

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insufficient as a matter of law.

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Because the claims of the ’459 patent are directed to non-patentable subject matter, Google

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requests that this Court grant its Motion for Judgment on the Pleadings of Invalidity of the ’459

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Patent, pursuant to FED. R. CIV. P. 12 (C).1

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The issue of patentable subject matter is a question of law. In re Comiskey, 554 F.3d 967, 975
(Fed. Cir. 2009). Accordingly, Google believes that no additional matters beyond those relating to
the pleadings (including the ’459 patent) need be considered. Because the Prosecution History of
the ’459 patent provides background and corroboration of the issues raised in this motion, Google
requests, through its concurrently filed Request for Judicial Notice, that this Court take judicial
notice of the Prosecution History of the ’459 patent (although Google does not believe that the
Court must necessarily consider the Prosecution History in order to reach a determination). See,
e.g., Advanced Micro Devices v. Samsung Elecs. Co., 2010 U.S. Dist. LEXIS 24243 (N.D. Cal.
(continued...)
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II.

BACKGROUND
Plaintiff’s suit, filed February 4, 2011, relates to allegations of infringement of the ’459

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patent against Google’s Picasa, Knol, and Books web properties. Complaint, ¶ 5, Dkt No. 1. The

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’459 patent is entitled “Method of Coding, Categorizing, and Retrieving Network Pages and

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Sites” and generally relates to a method of categorizing pages on network. ’459 patent, Abstract.

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The application leading to the ’459 patent was filed February 22, 2002, and initially

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included 50 claims. Ex. 2. On May 24, 2004, the Examiner issued a restriction requirement,

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essentially indicating that the application was directed to two independent concepts and requiring

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the patentee to narrow its application to a single concept. Ex. 3. The patentee then narrowed the

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application to 32 claims (i.e., the initial 32 claims of its original application). Ex. 4.
In response to an office action dated January 27, 2005, rejecting all the claims of the

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application, the patentee made various amendments to the claims, canceled one of its claims, and

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added one additional claim. Ex. 5. Nevertheless, on July 11, 2005, the Examiner issued another

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rejection in which it rejected all of the pending claims of the application. Ex. 6. Among the bases

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of rejection, the Examiner rejected all of the claims of the application as failing to be directed to

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patentable subject matter pursuant to 35 U.S.C. § 101 indicating:

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Note as presently written the claim simply recites a series of steps [of] an
abstract idea that can be implemented with a pen and paper. The examiner
suggests including [a] limitation such as “a computer implemented method” to
clarify that the series of steps are implemented on a computer.

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Id. at 2 (emphasis added). As part of its response, on September 8, 2005, patentee amended its

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claims in accord with the Examiner’s suggestion altering the preamble of the claims to read “a

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computer implemented method.” Ex. 7. Thereafter, the Examiner withdrew the objection to the

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claims with respect to the patentable subject matter rejection. Although there was continued back-

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Mar. 15, 2010) (indicating that, in determining a Motion on the Pleadings, “courts may consider
exhibits submitted or referenced in the complaint and matters that may be judicially noticed
pursuant to Federal Rule of Evidence 201”).

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and-forth between the examiner and the patentee prior to the claims being allowed, there were no

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further rejections based on 35 U.S.C. § 101.

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The Examiner’s initial rejection pursuant to Section 101 was correct because the claims

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were – and are – directed towards an abstract idea that, as a matter of law, is not eligible for patent

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protection. As discussed below, notwithstanding the Examiner’s suggestion, recent case law,

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including from the Supreme Court, makes clear that abstract ideas, such as those embodied in the

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claims of the ’459 patent, cannot be made patentable merely by tying such concepts to a general

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purpose computer. Simply taking an unpatentable abstract idea and adding “extra-solution”

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language to the effect that the idea should be implemented on a computer does not make the

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abstract idea patentable.

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III.

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LEGAL STANDARD
“After the pleadings are closed but within such time as not to delay the trial, any party

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may move for judgment on the pleadings.” FED. R. CIV. P. 12 (C). “Judgment on the pleadings is

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proper when the moving party clearly establishes on the face of the pleadings that no material

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issue of fact remains to be resolved and that it is entitled to judgment as a matter of law.” Hal

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Roach Studios, Inc. v. Richard Feiner & Co., 896 F.2d 1542, 1550 (9th Cir. 1989). In resolving

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such a motion, “the allegations of the non-moving party must be accepted as true, while the

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allegations of the moving party which have been denied are assumed to be false.” Id.

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Whether a claim is drawn to patent-eligible subject matter under Section 101 of the Patent

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Act is an issue of law that is a threshold inquiry into a patent’s validity. In re Bilski, 545 F.3d

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943, 950 (Fed. Cir. 2008) (en banc) (“Bilski I”). Any claim failing the requirements of Section

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101 of the Patent Act “must be rejected even if it meets all of the other legal requirements of

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patentability.” Id.

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35 U.S.C. § 101, which governs patentable subject matter reads: “Whoever invents or

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discovers any new useful process, machine, manufacture, or composition of matter, or any new

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and useful improvement thereof, may obtain a patent therefor, subject to the conditions and

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requirements of this title.” While broad in scope, the framework of what constitutes appropriate

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subject matter under 35 U.S.C. § 101 is not unlimited. The Supreme Court has identified three

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exceptions to the Patent Act’s scope: (1) laws of nature; (2) physical phenomena; and (3) abstract

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ideas. Bilski v. Kappos, 130 S. Ct. 3218, 3225 (2010) (“Bilski II”); see also Gottschalk v. Benson,

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409 U.S. 63 (1972); Parker v. Flook, 437 U.S. 584 (1978); Diamond v. Diehr, 450 U.S. 175

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(1981). As the Court in Benson explains, “[p]henomena of nature, though just discovered, mental

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processes, and abstract intellectual concepts are not patentable, as they are the basic tools of

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scientific work.” Benson, 409 U.S. at 185. As the Supreme Court has explained, these

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exceptions are consistent with 35 U.S.C. § 101’s requirement that a patentable invention be “new

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and useful.” Bilski II, 130 S. Ct. at 3225.

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As discussed further below, whether one applies the “machine-or-transformation” test of

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Bilski I or conducts the claim comparison analysis of Bilski II, one must conclude that these claims

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are invalid under Section 101. Accord, Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Can., 2011

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U.S. Dist. LEXIS 14272 at *24 (E.D. Mo. Feb. 14, 2011) (“In making this decision, the Court will

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first consider whether the claims satisfy the machine-or-transformation test and then will apply

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Bilski [II] and examine whether what is claimed is an abstract idea under Benson, Flook, and

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Diehr.”). The Examiner was correct to note that the claims as filed were a mere abstract idea.

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Adding “extra-solution” activity in the form of the words “a computer implemented method” does

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nothing to change this. The court should reject all claims of the ’459 patent as unpatentable under

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35 U.S.C. § 101.

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IV.

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ARGUMENT
The ’459 patent contains 31 claims, three of which are independent. Claim 1, which is

illustrative of the other claims reads:
1. A computer implemented method of categorizing a network page,
comprising:

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providing a list of categories, wherein said list of categories include a
category for transacting business and a category for providing information,

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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;

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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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’459 patent, 12: 24-38. Claims 2 through 29 all ultimately depend from claim 1 and include

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additional elements such as categorization by subject matter, categorization by copyright status

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of the material on the page, categorization based on the types of files associated with a page, and

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various other similar refinements. Claim 30 is an independent claim which provides the

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additional limitation over Claim 1 of providing a categorization code for labeling the network

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page with a categorization label, “wherein said categorization label indicates a set of categories

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and subcategories to which the network page is assigned.” Claim 31, also an independent claim,

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is identical to Claim 1 save that categorization of copyright status is restricted to the “public

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domain, fair use only, use with attribution, and permission of copyright owner needed.” All of

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the independent claims (and, by extension, all of the dependant claims as well), recite the

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language “a computer implemented method.”

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A. The Claims of the ’459 Patent Fail the Machine-or-Transformation Test

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To determine whether a method claim is directed towards patentable subject matter, a

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court may apply the machine-or-transformation test for guidance. Prometheus Labs., Inc. v.

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Mayo Collaborative Servs. & Mayo Clinic Rochester, Case No. 2008-1403, 2010 U.S. App.

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LEXIS 25956, *19-20 (Fed. Cir. Dec. 17, 2010). Under this test, an invention may be patentable

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(assuming it meets the other requirements of patentability) if “(1) it is tied to a particular machine

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or apparatus, or (2) it transforms a particular article into a different state or thing.” Bilski I, 545

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F.3d at 954. The Federal Circuit further clarified that “the use of a specific machine or

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transformation of an article must impose meaningful limits on the claim’s scope to impart patent-

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eligibility” and “the involvement of the machine or transformation in the claimed process must

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not entirely be insignificant extra-solution activity.” Id. at 961-62.

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While the Supreme Court’s decision in Bilski II indicates that the machine-or-

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transformation test is not the sole test for patentability, as acknowledged in numerous post-Bilski II

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decisions, it remains an important test for assessing patentable subject matter. King

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Pharmaceuticals, Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1278 (Fed. Cir. 2010) (“We . . . understand

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the Supreme Court to have rejected the exclusive nature of our test, but not necessarily the wisdom

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behind it.”); CLS Bank Int'l v. Alice Corp. Pty, Ltd., 2011 U.S. Dist. LEXIS 23669, at *34 (D.D.C.

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Mar. 9, 2011), (“The [machine-or-transformation] test is neither the exclusive nor the dispositive

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standard to determine whether an invention qualifies as a process under § 101, yet it remains a

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‘useful and important clue, an investigative tool’ in the analysis.”) (quoting Bilski II, 130 S. Ct. at

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3227); Bancorp Servs., 2011 U.S. Dist. LEXIS 14272 at *15 (concluding, after comprehensive

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analysis of various post-Bilski II rulings and opinions, that “the machine-or-transformation test

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remains a useful tool in determining whether a claim is drawn to an abstract idea and thus

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unpatentable under § 101”); Ultramercial, LLC v. Hulu, LLC, 2010 U.S. Dist. LEXIS 93453, at *7

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(C.D. Cal. Aug. 13, 2010) (“[E]ven after the Supreme Court’s decision in Bilski, the machine or

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transformation test appears to have a major screening function — albeit not perfect — that

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separates unpatentable ideas from patentable ones.”). Noteably, the U.S. Patent and Trademark

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Office continues to use the machine-or-transformation test as an indicator of patentability. See

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“Interim Guidance for Determining Subject Matter Eligibility for Process Claims in View of Bilski

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v. Kappos,” 75 Fed. Reg. 43,992 (July 27, 2010).

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The Claims of the ’459 Patent Fail the “Machine” Prong of the Machine-orTransformation Test

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A “machine” is “a concrete thing, consisting of parts, or of certain devices and
combination of devices. This includes every mechanical device or combination of mechanical
powers and devices to perform some function and produce a certain effect or result.” SiRF

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Technology, Inc. v. Int’l Trade Com’n, 601 F.3d 1319, 1332 (Fed. Cir. 2010) (citing In re

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Ferguson, 558 F.3d 1359, 1364 (Fed. Cir. 2009).

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The mere fact that the claims of the ’459 patent are “implemented on a computer” does
not satisfy the machine prong of the machine-or-transformation test. Bilski I, 545 F.3d at 957 (“It
is important to note at the outset that not every patent that recites a machine or transformation of
an article passes the machine-or-transformation test.”). “[T]he use of a specific machine or
transformation on an article must impose meaningful limits on the claim’s scope to impart patenteligibility.” Bilski I, at 961-62. Similarly, “the involvement of the machine or transformation in
the claimed process must not merely be insignficant extra-solution activity.” Id. To permit
otherwise would exalt form over substance and permit artful claim drafting to circumvent the
limitations contemplated by section 101. Graff/Ross Holdings LLP v. Fed. Home Loan Mortg.
Corp., 2010 U.S. Dist. LEXIS 141399 (D.D.C. Aug. 27, 2010) (quoting Flook at 590)
(“Furthermore, according to the Court, ‘[t]he notion that post-solution activity, no matter how
conventional or obvious in itself, can transform an unpatentable principle into a patentable
process exalts form over substance. A competent draftsman could attach some form of postsolution activity to almost any mathematical formula.’).
Various courts, post Bilski II, have found that the nominal recitation in a method claim of
a general purpose computer such as found in the claims of the ’459 patent cannot save such
claims from being found unpatentable pursuant to 35 U.S.C. § 101. See, e.g., CLS Bank Int'l ,
2011 U.S. Dist. LEXIS 23669, at *43-44 (“The Court concludes that nominal recitation of a
general-purpose computer in a method claim does not tie the claim to a particular machine or
apparatus or save the claim from being found unpatentable under § 101.”); Fuzzysharp Techs.,
Inc. v. 3D Labs, Inc., Ltd., Case No. 07-5948, 2009 U.S. Dist. LEXIS 115493, *12 (N.D. Cal.
Dec. 11, 2009) (“Courts applying Bilski have concluded that the mere recitation of ‘computer’ or
reference to using a computer in a patent claim [is] insufficient to tie a patent claim to a
particular machine.”) (emphasis in original); Bancorp Servs., 2011 U.S. Dist. LEXIS 14272 at

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*29 (“The recitation of the computer, computer system, and computer readable media do not

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satisfy the ‘machine’ prong of the machine-or-transformation test.”); Ultramercial, 2010 U.S.

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Dist. LEXIS 93453, at *13 (“That the disclosed invention is only used on computers or computer

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networks cannot alone satisfy the machine test without rendering the test completely toothless.”).

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As in the above cases, the ’459 patent’s recitation of methods that are “implemented on a

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computer” does not satisfy the machine prong of the machine-or-transformation test. The

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computer referenced in the preamble of all the claims is merely an “insignificant extra-solution.”

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Bilski I, 545 F.3d at 957-58. This nominal recitation in the preamble of the claims fails

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consideration of the “machine” prong because it does not “impose meaningful limits on the claim’s

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scope.” Bilski I, 545 F.3d at 961-62. In order for claims to be considered as being implemented on

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a machine, they need to recite “structural limitations that narrow the computer implemented

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method to something more specific than a general purpose computer [or] recite any specific

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operations performed that would structurally define the computer.” See, e.g., Ex Parte Cherkas,

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No. 2009-11287, 2010 WL 4219765, at *3 (October 25, 2010). In the claims of the ’459 patent, no

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such limitation or specific operation exists; accordingly, the claims fail the machine prong of the

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machine-or-transformation test.

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Any argument to the effect that the claims are tied to a machine because they are directed

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towards activity that inherently must take place over a network fails. As indicated above, such an

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argument violates the notion that only that which is central to the invention (here, the

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categorization and subsequent restrictions of “network pages”), is relevant to the machine prong of

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the test. In other words, the notion that the methods of the claims of the ’459 patent are “computer

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implemented” is merely “extra-solution” activity. Moreover, a network is too ephemeral to satisfy

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the machine prong of the test in any event. See Ultramercial, 2010 U.S. Dist. LEXIS 93453, at

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*10-11 (finding that claims reciting the limitation “over the Internet” where not directed towards

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patentable subject matter) citing Cybersource Corp. v. Retail Decisions, Inc., 620 F. Supp. 2d 1068

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(N.D. Cal. 2009).

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GOOGLE’S MOTION FOR JUDGMENT ON THE PLEADINGS
Case No. 2:11-CV-00319 GEB JFM

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2.

The Claims of the ’459 Patent Fail the “Transformation” Prong of the
Machine-or-Transformation Test

The sine qua non of the transformation test is the transformation of one thing into another.
“Transformation and reduction of an article ‘to a different state or thing’ is the clue to patentability
of a process claim that does not include particular machines.” Bilski II, 130 S.Ct. at 3227 quoting
Benson, 409 U.S. at 70. As the Federal Circuit explained in articulating the test, “[a] claimed
process is patent-eligible if it transforms an article into a different state or thing.” Bilski I, 545 F.3d
at 962. No such transformation takes place in the claims of the ’459 patent which, instead, deals
with the purported invention of categorizing “network pages.”
Neither the “network pages” nor anything else in the claims are transformed in any way.
Rather they are being categorized, and the claimed categorizations are themselves a mere
abstraction. “Purported transformations or manipulations simply of public or private legal
obligations or relationships, business risks, or other such abstractions cannot meet the test because
they are not physical objects or substances, and they are not representative of physical objects or
substances.” Bilski I, 545 F.3d at 963. Accordingly, the categorizations do not represent
transformations under the machine-or-transformation test.
In addition, any argument that the transformation test is satisfied because the underlying
categorizations are taking place on a computer and, thus, the underlying electrons of the various
memory systems are being “transformed” would be squarely misplaced. See, e.g., CLS Bank Int'l,
2011 U.S. Dist. LEXIS 23669, at *35-36 (soundly rejecting an argument that its claims satisfy the
transformation test “because data would necessarily have to be manipulated, and on a microscopic
level, a hard drive, for instance, would be ‘transformed’ by the process of ‘magnetizing or
demagnetizing part of a hard disk drive platter corresponding to a bit of data.’”). Moreover,
because a transformation only satisfies the test if the “transformation [is] central to the purpose of
the claimed process,” Bilski I, 545 F.3d at 962, and because the claims of the ’459 patent are not
directed towards the manipulation of computer memory, any such argument must fail.

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GOOGLE’S MOTION FOR JUDGMENT ON THE PLEADINGS
Case No. 2:11-CV-00319 GEB JFM

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None of the claims of the ’459 patent transform – physically or otherwise – any article

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under the transformation prong of the machine-or-transformation test and, consequently, the claims

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fail this prong of the test as well.

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B.

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The Claims of the ’459 Patent Are Directed at an Abstract Idea as in Benson and
Flook and, Therefore, Are Invalid for Failing to Meet the Requirements of 35 U.S.C. § 101
An idea is not patentable if it represents an abstract idea. “There is no clear definition of

what constitutes an abstract idea. . . .” CLS Bank Int’l, 2011 U.S. Dist. LEXIS 23669, at *29. As
noted recently by the Federal Circuit, “the Supreme Court did not presume to provide a rigid
formula or definition for abstractness.” Research Corp. Techs. v. Microsoft Corp., 627 F.3d 859,
868 (Fed. Cir. 2010).
As indicated above, the machine-or-transformation test is not the sole test for whether
something constitutes an abstract idea for patentability under 35 U.S.C. § 101. In Bilski II, the
Supreme Court found that the patent claims-in-question did nothing more than take the basic
concept of hedging risk and attempt to apply it broadly to the markets of commodities and energy
trading. As the Court indicated “[t]he concept of hedging, described in claim 1 and reduced to a
mathematical formula in claim 4, is an unpatentable abstract idea, just like the algorithms at issue
in Benson and Flook. Allowing petitioners to patent risk hedging would pre-empt use of this
approach in all fields, and would effectively grant a monopoly over an abstract idea.” Bilski II, 130
S. Ct. at 3231. The same is true with respect to the claims of the ’459 patent.
In the instant case, the claims of the patent do nothing more than recite the abstract idea of
categorizing a “network page” by the page’s copyright status and whether the page is related to
“transacting business” or “providing information” as well as controlling access to the network page
based on its characterizations. Just as the Supreme Court found in Bilski II, these claims are like
those rejected in the Benson and Flook cases.
In Benson, the Court affirmed the rejection of a patent application for “an algorithm to
convert binary-coded decimal numerals into pure binary code.” Bilski II, 130 S. Ct. at 3230 (citing
Benson, 409 U.S. at 64-67). There, the Court explained that “‘one may not patent an idea,’ but that

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Case No. 2:11-CV-00319 GEB JFM

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‘in practical effect that would be the result if the formula for converting . . . numerals to pure

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binary numerals were patented in this case.’” Id. (quoting Benson, 409 U.S. at 71).

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Unlike the claims of the ’459 patent, the claims in Benson did include an underlying

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computer structure. Claim 8, for example, recited “storing the binary coded decimal signals . . . in

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a shift register.” Benson, 409 U.S. at 73-74. Notwithstanding this underlying structure, (i.e., the

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shift register), the claim was determined to be invalid. In determining that the claim was an

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unpatentable algorithm, the Court found that the claim was not limited to a practical application,

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explaining that “[a] contrary holding ‘would wholly pre-empt the mathematical formula and in

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practical effect would be a patent on the algorithm itself.’” Bilski II, 130 S. Ct. at 3230 (quoting

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Benson, 409 U.S. at 72).

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In Flook, the Court was presented with claims to “a procedure for monitoring the conditions

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during the catalytic conversion process in the petrochemical and oil-refining industries,” where the

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“only innovation was reliance on a mathematical algorithm.” Id. (citing Flook, 437 U.S. at 585-

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86). As the Court explained, the “patent application describes a method of updating alarm limits”

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where “[i]n essence, the method consists of three steps: an initial step which merely measures the

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present value of the process variable (e.g., the temperature); an intermediate step which uses an

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algorithm to calculate an updated alarm limit value; and a final step in which the actual alarm limit

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is adjusted to the updated value.” Flook, 437 U.S. at 585.

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As in Benson, the claims were held unpatentable under § 101. Even though the claims “had

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been limited so that [the invention] could still be freely used outside the limited fields claimed by

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the patent (i.e., the petrochemical and oil- refining industries),” they nevertheless were not patent-

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eligible because once the particular algorithm was removed from consideration, “‘the application,

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considered as a whole, contain[ed] no patentable invention.’” Bilski II, 130 S. Ct. at 3230 (quoting

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Flook, 437 U.S. at 589- 90 & 594). As explained in Bilski II, “Flook stands for the proposition that

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the prohibition against patenting abstract ideas ‘cannot be circumvented by attempting to limit the

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Case No. 2:11-CV-00319 GEB JFM

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use of the formula to a particular technological environment’ or adding ‘insignificant postsolution

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activity.’” Id. (quoting Diehr, 450 U.S. at 191-92).

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As the Examiner indicated in initially rejecting all of the claims of the ’459 patent, the

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claims “simply recite[] a series of steps [of] an abstract idea that can be implemented with a pen

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and paper.” Maikish Decl., Ex. 6 at 2. This assessment was – and remains – correct. Noteably,

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the patentee did not object in any way to the Patent Examiner’s conclusion, and, instead, merely

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amended the claims, per the examiner’s suggestion, to include the phrase “a computer implemented

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method.” Maikish Decl., Ex. 7, at 5 and 6. (“In response, the preamble of claims 1, [30], and [31]

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are amended per the Examiner’s suggestion to satisfy the requirements of 35 U.S.C. § 101.” Id. at

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7. That the patentee followed the suggestion of the Patent Examiner (especially in light of the fact

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that the suggestion pre-dates the Supreme Court’s Bilksi II decision) is no defense to the current

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motion. As Bilski II and the numerous post-Bilski II decisions cited above make clear, extra-

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solution activity cannot form the basis of patentability under 35 U.S.C § 101.

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V.

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CONCLUSION
During prosecution of the patent-in-suit, the Examiner was correct in noting that the claims

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of the ’459 patent constitute an abstract idea and, in fact, represent nothing more than that which

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could be implemented “with a pen and paper.” Even though the patentee followed the advice of

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the Examiner, their solution, to simply direct the method of the claims to run on a general purpose

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computer, does not cure the problem. Taking an abstract idea and implementing it on a general

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purpose computer does not constitute a patentable invention pursuant to 35 U.S.C. § 101.

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Accordingly, for the above reasons, the claims of ’459 should be declared invalid for lack of

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patentable subject matter.

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GOOGLE’S MOTION FOR JUDGMENT ON THE PLEADINGS
Case No. 2:11-CV-00319 GEB JFM

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Dated: April 15, 2011

Respectfully submitted,
KAYE SCHOLER LLP

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By: /s/ Michael J. Malecek
Michael J. Malecek
Attorney for Defendant
GOOGLE INC.

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GOOGLE’S MOTION FOR JUDGMENT ON THE PLEADINGS
Case No. 2:11-CV-00319 GEB JFM