IconFind, Inc. v. Google, Inc.

Filing 44

OPPOSITION by IconFind, Inc. to 29 MOTION for JUDGMENT on the pleadings of Invalidity of US Patent No. 7,181,459. (Attachments: # 1 Exhibit "A", # 2 Exhibit "B", # 3 Exhibit "C")(Baxter, Daniel)

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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]

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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]

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Attorneys for Plaintiff, IconFind, Inc.

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IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF CALIFORNIA

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ICONFIND, INC.,

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

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Plaintiff,
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v.
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PLAINTIFF'S RESPONSE IN
OPPOSITION TO DEFENDANT'S
MOTION FOR JUDGMENT ON THE
PLEADINGS

GOOGLE INC.,
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Defendant.
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RESPONSE IN OPPOSITION TO MOTION FOR JUDGMENT (CASE NO. 11-00319 GEB JFM)

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TABLE OF CONTENTS

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I. 

INTRODUCTION .............................................................................................................. 1 

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II. 

THE PATENT-IN-SUIT..................................................................................................... 2 

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III. 

APPLICABLE LEGAL STANDARD ............................................................................... 3 
A. 

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Google’s Motion Under FRCP 12(c) Is
Improper Because The Pleadings Are Not “Closed”.............................................. 3 

B. 

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If The Court Treats Google’s Improper FRCP 12(c) Motion
as a Motion Pursuant to FRCP 12(b)(6), The Motion Is Still
A Premature Attempt to File a Motion for Summary Judgment
Before Even the Pleadings Stage of the Litigation is Complete............................. 4 

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IV. 

INVALIDITY IS NOT AMENABLE TO A MOTION FOR
JUDGMENT ON THE PLEADINGS (OR A MOTION TO DISMISS) ........................... 5 

V. 

GOOGLE'S MOTION SHOULD BE DENIED ON THE MERITS................................ 10 

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A. 

Introduction to the Section 101 Exceptions, Tests, Factors and Precedent .......... 10 

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B. 

The Subject Matter of the '459 Patent is Not "Abstract" ...................................... 11 

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C. 

The '459 Patent Claims Patent-Eligible
Subject Matter Under the Machine or Transformation Test................................. 14 

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1. 

The Claims of the ‘459 Patent Meet
the Machine Prong of the MOT Test ........................................................ 14 

2. 

The Claims of the ‘459 Patent Meet
the Transformation Prong of the MOT Test ............................................. 20 

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D. 

The Interim Guidelines Support a Finding That the Claims
of the ‘459 Patent Are Directed To Patentable Subject Matter ............................ 21 

E. 

The Claims of the ‘459 Patent Are Directed
To Patentable Subject Matter In Light of
The Supreme Court’s “Guidepost” Set of Cases .................................................. 22 

F. 

The Prosecution History of the ‘459 Patent Supports
A Finding That the ‘459 Patent is Directed To Eligible Subject Matter .............. 24 

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VI. 

CONCLUSION................................................................................................................. 27 

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RESPONSE IN OPPOSITION TO MOTION FOR JUDGMENT (CASE NO. 11-00319 GEB JFM)

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TABLE OF AUTHORITIES

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Federal Cases

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Abbott Labs. v. Sandoz, Inc.,
544 F.3d 1341 (Fed. Cir. 2008)..................................................................................................5

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Albright v. Oliver,
510 U.S. 266 (1994)...................................................................................................................5

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7
8

Altoona Publix Theatres, Inc. v. American Tri-Ergon Corp.,
294 U.S. 477 (U.S. 1935)...........................................................................................................6
Applied Materials, Inc. v. Advanced Semiconductor Materials Am., Inc.,
98 F.3d 1563 (Fed. Cir. 1996)..................................................................................................26

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10

Baker v. Kernan,
2008 WL 2705028 (E.D. Cal. July 09, 2008) ............................................................................4

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Bancorp Services, L.L.C. v. Sun Life Assur. Co. of Canada,
2011 WL 665679 (E.D. Mo. Feb 14, 2011).............................................................................18

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13
14
15

Bell Atl. Corp. v. Twombly,
550 U.S. 544 (2007)...................................................................................................................4
Berg v. Popham,
412 F.3d 1122 (9th Cir. 2005) ...................................................................................................5

16

Bilski v. Kappos,
130 S. Ct. 3218 (2010) (“Bilski II”) ....................................................10, 15, 16, 22, 23, 24, 27

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Bird Barrier America, Inc. v. Bird-B-Gone, Inc.,
2010 WL 761241 (C.D. Cal. Mar. 1, 2010)...............................................................................9

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19
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Burr v. Duryee,
68 U.S. (1 Wall.) 531 (1863) ...................................................................................................14
Cima Labs, Inc. v. Actavis Group HF,
2007 WL 1672229 (D. N.J. Jun. 7, 2007)..................................................................................8
CLS Bank Intern. v. Alice Corp. Pty. Ltd.,
2011 WL 802079 (D.D.C. Mar. 9, 2011).............................................................................7, 16

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23

Continental Can Co. v. Monsanto Co.,
948 F.2d 1264 (Fed. Cir. 1991)..................................................................................................6

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RESPONSE IN OPPOSITION TO MOTION FOR JUDGMENT (CASE NO. 11-00319 GEB JFM)

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Corning v. Burden,
56 U.S. 252 (1853)...................................................................................................................14

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3
4
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Culfin v. IBEW Local 11,
2010 WL 2465393 (C.D. Cal. June 15, 2010) ...........................................................................4
Cybersource Corp. v. Retail Decisions, Inc.,
620 F. Supp. 2d 1068 (N.D. Cal. March 27, 2009)..............................................................7, 19

6

Deston Therapeutics LLC v. Trigen Laboratories Inc.,
723 F. Supp. 2d 665 (D. Del. 2010).......................................................................................7, 8

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Diamond v. Diehr,
450 U.S. 175 (1981)...............................................................................................11, 22, 23, 24

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Doe v. United States,
419 F.3d 1058 (9th Cir. 2005) ...................................................................................................3
Erickson v. Pardus,
551 U.S. 89 (2007) (per curiam) ...............................................................................................5
Fuzzysharp Technologies Inc. v. 3DLabs Inc., Ltd.,
2009 WL 4899215 (N.D. Cal. Dec. 11, 2009).........................................................................18

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13
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Gottschalk v. Benson,
409 U.S. 63 (1972).................................................................................................11, 14, 22, 23
Hal Roach Studios, Inc. v. Richard Feiner and Co.,
896 F.2d 1542 (9th Cir. 1989) ...................................................................................................4
Hyatt v. Kappos,
625 F.3d 1320 (Fed. Cir. 2010) (en banc) ...............................................................................26

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In re Bilski,
545 F.3d 943 (Fed. Cir. 2008) (“Bilski I”) ........................................................5, 10, 14, 20, 23

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In re Comiskey,
554 F.3d 967 (Fed. Cir. 2009)....................................................................................................5

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20
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In re Nuijten,
500 F.3d 1346 (Fed. Cir. 2007)................................................................................................14
In re Schrader,
22 F.3d 290 (Fed. Cir. 1994)....................................................................................................16

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Jenkins v. McKeithen,
395 U.S. 411 (1969)...................................................................................................................5

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RESPONSE IN OPPOSITION TO MOTION FOR JUDGMENT (CASE NO. 11-00319 GEB JFM)

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1

Johnson v. Riverside Healthcare Sys. LP,
534 F.3d 1116 (9th Cir. 2008) ...................................................................................................4

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3
4
5

Jones v. Hardy,
727 F.2d 1524 (Fed. Cir. 1984)..................................................................................................6
KEMA, Inc. v. Koperwhats,
658 F.Supp.2d 1022 (N.D. Cal. 2009) .......................................................................................3

6

King Pharms., Inc. v. Eon Labs, Inc.,
616 F.3d 1267 (Fed. Cir. 2010)..................................................................................................6

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Page v. Horel,
2011 WL 97715 (N.D. Cal. Jan. 12, 2011) ................................................................................4

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9
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11

Parker v. Flook,
437 U.S. 584 (1978).....................................................................................................11, 15, 22
Progressive Cas. Ins. Co. v. Safeco Ins. Co.,
2010 WL 4698576 (N.D. Ohio Nov. 12, 2010) .........................................................................8
Prometheus Labs., Inc. v. Mayo Collaborative Servs. & Mayo Clinic Rochester,
628 F.3d 1347 (Fed. Cir. 2010)..........................................................................................14, 27

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13
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Research Corporation Technologies v. Microsoft Corporation
627 F.3d 859 (Fed. Cir. 2010)......................................................................................11, 12, 13
Sandt Tech., Ltd. v. Resco Metal & Plastics Corp.,
264 F.3d 1344 (Fed. Cir. 2001)..................................................................................................6
SIRF Tech., Inc. v. Int'l Trade Comm'n,
601 F.3d 1319 (Fed. Cir. 2010)..........................................................................................18, 19

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State Street Bank & Trust Co. v. Signature Fin. Group, Inc.,
149 F.3d 1368 (Fed. Cir. 1998)..................................................................................................7

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Technology Patents, LLC v. Deutsche Telekom AG,
573 F.Supp.2d 903 (D. Md. 2008) .............................................................................................9

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Ultramercial, LLC v. Hulu LLC,
2010 WL 3360098 (C.D. Cal. Aug. 13, 2010).....................................................................7, 19
Yangaroo Inc. v. Destiny Media Techs., Inc.,
2009 WL 2836643 (E.D. Wis. August 31, 2009) ......................................................................8

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Federal Statutes
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35 U.S.C. § 101..............................................................................................................................14
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RESPONSE IN OPPOSITION TO MOTION FOR JUDGMENT (CASE NO. 11-00319 GEB JFM)

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35 U.S.C. § 282............................................................................................................................5, 6

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Federal Rules

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Federal Rule of Civil Procedure 12(c) .........................................................................................1, 3

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RESPONSE IN OPPOSITION TO MOTION FOR JUDGMENT (CASE NO. 11-00319 GEB JFM)

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I.

INTRODUCTION

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Plaintiff IconFind, Inc. ("IconFind") respectfully submits its response in opposition to

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Defendant Google Inc.'s ("Google") Motion for Judgment on the Pleadings. Google’s motion

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fails as a matter of law on a number of procedural and substantive grounds. First, Google filed

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this motion pursuant to Federal Rule of Civil Procedure 12(c), which requires that the pleadings

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be "closed" when a Rule 12(c) motion is filed. The pleadings are not closed in this case –

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IconFind has not answered Google’s invalidity counterclaim.

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procedurally improper.

Therefore, the motion is

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Google alleges that the patent-in-suit is invalid for failure to meet the requirements for

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patentability under Section 101 of Title 35 because it claims an “abstract idea.” The law is clear:

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invalidity due to Section 101 deficiencies is intimately tied to claim construction and involves

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underlying legal and factual issues.

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litigation. Even further, Google asks the Court to declare all claims of the patent-in-suit invalid,

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yet does not address individually why each claim is allegedly invalid. Hence, Google has

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outright ignored and has plainly not met its “clear and convincing” burden of proof as to each

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claim in the patent-in-suit.

This issue cannot be determined at this stage in the

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Finally, should the Court reach the merits of Google’s motion, the United States Patent

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and Trademark Office (“USPTO”) has indeed heard and has vetted the exact same argument that

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Google now asserts. This is because it is clear that the claims are directed to patentable subject

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matter under all applicable statutory and case precedent. This Court should find – just as the

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USPTO found – that the claims of the patent-in-suit are directed towards much more than an

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abstract idea and meet the requirements of Section 101.

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For these and the following reasons, Google’s motion should be denied.

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RESPONSE IN OPPOSITION TO MOTION FOR JUDGMENT (CASE NO. 11-00319 GEB JFM)

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II.

THE PATENT-IN-SUIT

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The Patent-In-Suit, U.S. Patent No. 7,181,459 B2 (“the ‘459 Patent”) describes methods

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for categorizing network pages, such as web pages on the Internet. The ‘459 Patent recognizes

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that, in the context of the Internet, one problem with the organization of web pages was the lack

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of a standardized categorization system for the information contained on such web pages. (‘459

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Patent, Col. 1, ll. 38-48, Ex. A). The inventors set out to solve this problem by creating a method

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for categorizing network pages based upon the material on the page, including whether the pages

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contained commercial or non-commercial information, as well as the copyright status of the

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material on the page. (‘459 Patent, Col. 3, ll.8-21, Ex. A). Claim 1 states:

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1.
comprising:

A computer implemented method of categorizing a network page,

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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, and wherein said
list of categories include a category based on copyright status of material on a
page;

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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;

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and controlling usage of the network page using the categorization label and the
copyright status of the network page.
(Id. at Col. 12, ll. 24-38). Claim 1 identifies three types of categories: (1) a category for

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providing information; (2) a category for transacting business; and (3) a category based on
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copyright status of material on a page. (‘459 Patent, Col. 12, ll. 24-38, Ex. A). The network
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page is assigned a label based on at least the copyright status of the material on the page. That
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label, along with the copyright status of the network page, are used to control usage of the page.
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The two other independent claims are Claims 30 and 31. Claim 30 includes the step of
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providing a categorization code for labeling a page:
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PLAINTIFF'S RESPONSE IN OPPOSITION TO DEFENDANT'S MOTION FOR JUDGMENT ON THE
PLEADINGS

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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…

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(Id. at Col. 14, Ex. A). Claim 31 includes more specific types of copyright categories to which

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the network pages may be assigned:

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providing a list of categories, wherein said categories include a category based on
the copyright status of material on a page, and wherein the copyright status
comprises categories related to public domain, fair use only, use with attribution,
and permission of copyright owner needed…

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Id. The other 28 dependent claims add additional details, for instance, concerning the types of
categories to which a page may be assigned, what the categorization label is comprised of and
that the label is recognizable by a search engine. (Id. at Col. 12-14).
III.

APPLICABLE LEGAL STANDARD
A.

Google’s Motion Under FRCP 12(c) Is
Improper Because The Pleadings Are Not “Closed”

Federal Rule of Civil Procedure 12(c) provides that “[a]fter the pleadings are closed —
but early enough not to delay trial — a party may move for judgment on the pleadings.” The
Ninth Circuit has held that “the pleadings are closed for the purposes of Rule 12(c) once a
complaint and answer have been filed,” and that a motion for judgment on the pleadings is
“premature” where no answer has yet been filed. Doe v. United States, 419 F.3d 1058, 1061 (9th
Cir. 2005). Here, currently pending is IconFind’s Motion to Dismiss Google’s Counterclaim for
Invalidity and Motion to Strike Google’s Invalidity Defense (Dkt. No. 36) - which involves the
very subject of Google’s present motion.

IconFind has not answered Google’s Invalidity

Counterclaim. Accordingly, the pleadings are not closed and until the Court rules on IconFind’s
Motion to Dismiss, and responsive pleadings are filed, Google’s motion pursuant to Rule 12(c) is
premature. KEMA, Inc. v. Koperwhats, 658 F.Supp.2d 1022, 1027 (N.D. Cal. 2009) (explaining
PLAINTIFF'S RESPONSE IN OPPOSITION TO DEFENDANT'S MOTION FOR JUDGMENT ON THE
PLEADINGS

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that where counterclaims are asserted, “the pleadings are closed only when the plaintiff serves

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his reply”).

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Indeed, until the pleadings are closed, the Court cannot even conduct a proper Rule 12(c)

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analysis. "For the purposes of the motion, the allegations of the non-moving party must be

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accepted as true, while the allegations of the moving party which have been denied are assumed

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to be false." Hal Roach Studios, Inc. v. Richard Feiner and Co., 896 F.2d 1542, 1550 (9th Cir.

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1989). An assumption of truth or falsity cannot be applied to IconFind's reply, as it must under a

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proper analysis, because IconFind has not yet replied to Google's invalidity counterclaim.

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On this procedural basis alone, Google’s motion must be denied. Baker v. Kernan, 2008

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WL 2705028, *2 (E.D. Cal. July 09, 2008) (denying plaintiff’s Rule 12(c) motion for judgment

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as premature because it was filed before the “pleadings were closed”; defendant filed a motion to

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dismiss that was still pending at the time the plaintiff filed motion for judgment); Page v. Horel,

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2011 WL 97715, *4 (N.D. Cal. Jan. 12, 2011) (denying motion for judgment as premature as

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defendant had yet to answer amended complaint).

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B.

If The Court Treats Google’s Improper FRCP 12(c) Motion
as a Motion Pursuant to FRCP 12(b)(6), The Motion Is Still
A Premature Attempt to File a Motion for Summary Judgment
Before Even the Pleadings Stage of the Litigation is Complete

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A court, in its discretion, may choose to treat a premature and improper Rule 12(c)
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motion as a motion to dismiss for failure to state a claim pursuant to Rule 12(b)(6). Culfin v.
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IBEW Local 11, 2010 WL 2465393, *1 (C.D. Cal. June 15, 2010). If the Court chooses to treat
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Google's 12(c) motion as a motion to dismiss, then the following legal principles apply.
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A motion to dismiss for failure to state a claim under Rule 12(b)(6) should be granted
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only if the plaintiff fails to proffer “enough facts to state a claim to relief that is plausible on its
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face.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 547 (2007); Johnson v. Riverside Healthcare
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PLAINTIFF'S RESPONSE IN OPPOSITION TO DEFENDANT'S MOTION FOR JUDGMENT ON THE
PLEADINGS

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Sys. LP, 534 F.3d 1116, 1122 (9th Cir. 2008). In considering a motion to dismiss, the Court

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must accept the allegations of the complaint as true, Erickson v. Pardus, 551 U.S. 89, 90

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(2007) (per curiam); Albright v. Oliver, 510 U.S. 266, 267 (1994), and the Court must construe

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the pleading in the light most favorable to the party opposing the motion and resolve all doubts

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in the pleader's favor. Jenkins v. McKeithen, 395 U.S. 411, 421 (1969); Berg v. Popham, 412

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F.3d 1122, 1125 (9th Cir. 2005). As explained in detail below, the clear and overwhelming

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weight of authority holds that patent invalidity is not amenable to a motion to dismiss.

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IV.

INVALIDITY IS NOT AMENABLE TO A MOTION FOR
JUDGMENT ON THE PLEADINGS (OR A MOTION TO DISMISS)

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A patent is presumed valid. 35 U.S.C. § 282. Accordingly, the party challenging validity
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bears the very heavy burden of proving by clear and convincing evidence that the patent is
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invalid. In re Comiskey, 554 F.3d 967, 975 (Fed. Cir. 2009). While the determination of
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whether an asserted claim is invalid for lack of subject matter patentability under 35 U.S.C. §
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101 is a question of law, In re Bilski, 545 F.3d 943, 950 (Fed. Cir. 2008) (“Bilski I”), the
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question may involve several factual underpinnings. See In re Comiskey, 554 F.3d at 975
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(noting that “the legal question as to patentable subject matter may turn on subsidiary factual
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issues”).
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Moreover, in asking this Court to declare all claims of the ‘459 Patent invalid, Google
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plainly ignores its “clear and convincing” burden of proof as to each claim in the patent. (See
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Def.’s Mem., Dkt. No. 30, pp. 5-6, 13) (“[F]or the reasons above, the claims of the ‘459 should
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be declared invalid for lack of patentable subject matter”).

"'The burden of establishing

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invalidity of a patent or any claim thereof shall rest on the party asserting such invalidity.' …
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This burden 'exists at every stage of the litigation.'" Abbott Labs. v. Sandoz, Inc., 544 F.3d
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1341, 1346 (Fed. Cir. 2008) (emphasis added). Google must meet this “clear and convincing”
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PLAINTIFF'S RESPONSE IN OPPOSITION TO DEFENDANT'S MOTION FOR JUDGMENT ON THE
PLEADINGS

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burden of proof independently for each claim because “[e]ach claim carries an independent

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presumption of validity, 35 U.S.C. § 282, and stands or falls independent of the other claims.”

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Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1266-1267 (Fed. Cir. 1991) (citing

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Altoona Publix Theatres, Inc. v. American Tri-Ergon Corp., 294 U.S. 477, 487 (U.S. 1935)

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(“And each claim must stand or fall, as itself sufficiently defining invention, independently of the

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others”)). Accordingly, it is reversible error to hold any claim invalid in the absence of clear and

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convincing evidence specifically directed to that particular claim. Sandt Tech., Ltd. v. Resco

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Metal & Plastics Corp., 264 F.3d 1344, 1356 (Fed. Cir. 2001) (“Because dependent claims

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contain additional limitations, they cannot be presumed to be invalid as obvious just because the

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independent claims from which they depend have properly been so found”).

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Here, the ‘459 Patent has 31 claims, 12 of which were identified as representative

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examples in the Complaint. (Compl., Dkt. No. 1). Google attempts to paint the claims with a

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single broad brush, stating that all claims “recite the language ‘a computer implemented

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method.’” (Def.’s Mem., Dkt. No. 30, pp. 5-6). Google invites error by focusing solely on that

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limitation. "The Supreme Court has stated that a § 101 patentability analysis is directed to the

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claim as a whole, not individual limitations." King Pharms., Inc. v. Eon Labs, Inc., 616 F.3d

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1267, 1277 (Fed. Cir. 2010). Google’s failure to address each claim and each limitation

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independently is fatal to its motion. By definition, “each claim must be considered as defining a

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separate invention.” Jones v. Hardy, 727 F.2d 1524, 1528 (Fed. Cir. 1984) (citing 35 U.S.C.

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282). Google wholly fails to address numerous limitations in all of the claims, such as “indicium

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for each of said categories (claim 16), “icon” (claim 17) and “graphical user interface” (claim

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29). (‘459 Patent, Ex. A). Google's improper attempt to circumvent its burden of proof on the

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invalidity of each claim is a fundamental error which, taken alone, demonstrates that its motion

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should be denied.

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PLAINTIFF'S RESPONSE IN OPPOSITION TO DEFENDANT'S MOTION FOR JUDGMENT ON THE
PLEADINGS

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Importantly, “[w]hether a claim is valid under § 101 is a matter of claim construction.”

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CLS Bank Intern. v. Alice Corp. Pty. Ltd., 2011 WL 802079 at *14 (D.D.C. Mar. 9, 2011)

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(citing State Street Bank & Trust Co. v. Signature Fin. Group, Inc., 149 F.3d 1368, 1370 (Fed.

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Cir. 1998)). As the court held in Cybersource Corp. v. Retail Decisions, Inc., 620 F. Supp. 2d

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1068, 1073 (N.D. Cal. March 27, 2009), “claim construction is an important first step in a §

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101 analysis.” (emphasis added). In fact, the Federal Circuit in Bilski explicitly stated that this

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was so. Bilski I, 545 F.3d at 951 (citing State St. Bank & Trust Co. v. Signature Fin. Group, 149

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F.3d 1368, 1370 (Fed. Cir. 1998) (noting that invalidity under § 101 “is a matter of both claim

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construction and statutory construction”) (overruled on other grounds)). This makes perfect

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sense: how can the Court decide whether the claims of the ‘459 Patent are directed to patentable

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subject matter if the court has not determined the meaning of the claims? See also Deston

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Therapeutics LLC v. Trigen Laboratories Inc., 723 F. Supp. 2d 665, 670 (D. Del. 2010) ("[w]hile

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it is true that claim construction is a matter of law to be determined by the Court, the process for

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properly construing a patent claim is unsuited for a motion to dismiss”).

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While some of the claim terms were construed in IconFind, Inc. v. Yahoo! Inc., No. Civ.

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09-109 WBS JFM, Dec. 14, 2009 Order (Dkt. No. 50), Google does not rely on these

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constructions in its motion. Google instead has taken the position that the claim terms must be

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construed anew and/or that additional constructions are necessary because Google proposed a

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claim construction briefing schedule in the Parties’ Joint Rule 26(f) Report, which it sent to

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IconFind on April 25, 2011.

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Google cites only one case for the proposition that the issue of patent validity may be

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determined at this early stage of litigation without the benefit of a claim construction or expert

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testimony. See Ultramercial, LLC v. Hulu LLC, 2010 WL 3360098 (C.D. Cal. Aug. 13, 2010).

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However, numerous district courts have found otherwise, and even questioned the propriety of

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PLAINTIFF'S RESPONSE IN OPPOSITION TO DEFENDANT'S MOTION FOR JUDGMENT ON THE
PLEADINGS

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the Ultramercial decision. For example, in Progressive Cas. Ins. Co. v. Safeco Ins. Co., 2010

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WL 4698576, *4 (N.D. Ohio Nov. 12, 2010), a case on all fours with the present one, the district

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court declined to apply Ultramercial, reasoning:

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Ultramercial did not discuss the procedural posture of the case or the presumption
of validity and a patent challenger's burden to prove invalidity by clear and
convincing evidence, noting only that the court was rejecting “[p]laintiff's
argument that this motion should not be decided before claim construction”
because “[t]he patent terms are clear and [p]laintiff has not brought to the Court's
attention any reasonable construction that would bring the patent within
patentable subject matter.” Without such analysis, the Court finds that
Ultramercial does not support defendants' argument that finding the patent to be
invalid at such an early stage in the litigation is appropriate.

9

Id. at *5. Other district courts throughout the country have consistently held that where an issue

10

intimately tied to the claim construction process is the subject of a motion to dismiss, that motion

11

must be denied. The reason for this is simple: claim construction is an issue of law for the judge

12

to decide with the full benefit of the extrinsic and intrinsic records (e.g. patent, file history,

13

expert testimony, dictionaries, treatises, etc.) and the court on a motion to dismiss may only

14

consider the pleadings. As the court in Deston explained in denying defendant’s motion to

15

dismiss for non-infringement:

5
6
7

16
17
18

As a consequence, many courts in this circuit and elsewhere have declined to
construe patent claims on a motion to dismiss …[listing cases] … The Court will
follow this lengthy line of cases and conclude that claim construction is not
appropriate upon the present record of this Rule 12(b)(6) motion.

21

In light of the jurisprudence holding that claim construction is generally not
appropriate on a motion to dismiss, the ambiguity and possible conflict between
the plain language of the patent claims and the specifications, and the fact that
Plaintiffs have not resolved these issues in their complaint, the Court will decline
to engage in patent claim construction or find as a matter of law that Defendants
[don't infringe].

22

Deston, 723 F. Supp. 2d at 671-672. See Cima Labs, Inc. v. Actavis Group HF, 2007 WL

23

1672229, *4 (D. N.J. Jun. 7, 2007) (denying motion to dismiss and stating "the proper time for

24

this Court to address claim construction is not on a motion to dismiss”); Yangaroo Inc. v.

19
20

25

PLAINTIFF'S RESPONSE IN OPPOSITION TO DEFENDANT'S MOTION FOR JUDGMENT ON THE
PLEADINGS

-8-

1

Destiny Media Techs., Inc., 2009 WL 2836643, *3 (E.D. Wis. August 31, 2009) (denying

2

motion to dismiss and stating “[w]hile claim construction is a matter of law involving a

3

determination of the meaning and the scope of the patent claims asserted to be infringed, through

4

a consideration of sources intrinsic to the claim, such as the claim itself, the specification, and

5

the prosecution history, the proper time for this Court to address claim construction is not on a

6

motion to dismiss”); Bird Barrier America, Inc. v. Bird-B-Gone, Inc., 2010 WL 761241, *3

7

(C.D. Cal. Mar. 1, 2010) (denying motion to dismiss , explaining “[a]lthough claim construction

8

is a matter of law for the Court to decide, claim construction is inappropriate at this stage in the

9

litigation. The proper time for this Court to address claim construction is not a motion to dismiss

10

…The parties will have the opportunity to present evidence, both intrinsic and extrinsic, of their

11

preferred claim constructions at summary judgment”); Technology Patents, LLC v. Deutsche

12

Telekom AG, 573 F.Supp.2d 903, 919-920 (D. Md. 2008) (denying defendants motion to dismiss

13

and stating “piecemeal arguments raised in various briefs have not afforded the parties a proper

14

opportunity to assert their arguments in a coherent and complete fashion … the better approach

15

is to have the claim construction issues fully briefed and presented to the court at a later date”).

16

In sum, IconFind should be afforded the opportunity to fully brief this issue in its proper

17

procedural context as were the parties in Progressive, Deston, Yangaroo, Cima, Bird Barrier, and

18

Technology Patents. Invalidity involves underlying claim construction issues and it is clear that

19

a matter of claim construction cannot be decided on a motion to dismiss. IconFind should also

20

be given the opportunity to provide expert testimony or other extrinsic evidence on this issue,

21

particularly in regards to whether the inventions of the ‘459 Patent are “tied to a particular

22

machine” or are “transformative” under the law. Google's motion is premature.

23
24
25

PLAINTIFF'S RESPONSE IN OPPOSITION TO DEFENDANT'S MOTION FOR JUDGMENT ON THE
PLEADINGS

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1

V.

GOOGLE'S MOTION SHOULD BE DENIED ON THE MERITS

2

A.

Introduction to the Section 101 Exceptions, Tests, Factors and Precedent

3

Even if it were necessary to reach the merits of Google’s motion at this early stage, it is

4

clear that the ‘459 Patent meets the requirements for patentability under 35 U.S.C. § 101, and

5

controlling Supreme Court and Federal Circuit precedent. Whether a claim is drawn to patent-

6

eligible subject matter under Section 101 of the Patent Act is a question of law. In re Bilski, 545

7

F.3d 943, 950 (Fed. Cir. 2008) (“Bilski I”). While the Supreme Court has consistently construed

8

Section 101 broadly, the Court’s precedent provides three limited exceptions to the scope of

9

Section 101 of Title 35: (1) laws of nature; (2) physical phenomena; and (3) abstract ideas.

10

Bilski v. Kappos, 130 S. Ct. 3218, 3225 (2010) (“Bilski II”). Under these exceptions, Google

11

only asserts that the ‘459 Patent is unpatentable for claiming an "abstract idea." The Federal

12

Circuit has described the concept of an abstract idea as “whether the Applicants are seeking to

13

claim a fundamental principle (such as an abstract idea) or mental process.” Bilski I, 545 F.3d at

14

952.

15

The Supreme Court in Bilski II discussed the standards for resolving Section 101 disputes

16

and held that the so-called “machine or transformation test” (“MOT Test”) is a “useful and

17

important clue, an investigative tool, for determining whether some claimed inventions are

18

processes under §101,” but, contrary to the Federal Circuit majority in Bilski I, “is not the sole

19

test for deciding whether an invention is a patent-eligible ‘process.’” Bilski, 130 S. Ct. at 952.

20

While Google correctly notes that the USPTO continues to use the MOT Test as an indicator of

21

patentability, what Google fails to mention (or analyze) is that the USPTO, in offering guidelines

22

on this issue, identified a number of factors that should be weighed to determine whether a

23

method claim is directed to an abstract idea, and is thus ineligible for patent protection under

24
25

PLAINTIFF'S RESPONSE IN OPPOSITION TO DEFENDANT'S MOTION FOR JUDGMENT ON THE
PLEADINGS

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1

101. See “Interim Guidance for Determining Subject Matter Eligibility for Process Claims in

2

View of Bilski v. Kappos,” 75 Fed. Reg 43, 992 (July 27, 2010) (“Interim Guidelines”) (Ex. B).

3

Additionally, the Supreme Court in Bilski II noted that lower courts should look to

4

Gottschalk v. Benson, 409 U.S. 63 (1972), Parker v. Flook, 437 U.S. 584 (1978) and Diamond v.

5

Diehr, 450 U.S. 175, 187 (1981)) as “guideposts” to enlighten this inquiry. See Bilski II, 130 S.

6

Ct. at 3229-3231.

7

that the ‘459 Patent meets the patentability requirements of Section 101.

In addressing the Section 101 tools and authority in turn below, it is clear

8

B.

9

Since the Supreme Court's recent decision in Bilski II, the Federal Circuit has only

10

squarely addressed the issue of whether the subject matter of an invention was "abstract" one

11

time, and that decision is instructive here. In Research Corporation Technologies vs. Microsoft

12

Corporation, the Federal Circuit assessed an invention for a "'process' for rendering a halftone

13

image," which basically allows computers to display numerous colors using a limited number of

14

pixel colors. 627 F.3d 859, 863, 868 (Fed. Cir. 2010). The court recognized that the "Supreme

15

Court did not presume to provide a rigid formula or definition for abstractness," but instead,

16

"invited this court to develop 'other limiting criteria that further the purposes of the Patent Act."

17

Id. at 868. With that guidance, the court stated that it "will not presume to define 'abstract'

18

beyond the recognition that this disqualifying characteristic should exhibit itself so manifestly as

19

to override the broad statutory categories of eligible subject matter and the statutory context that

20

direct primary attention on the patentability criteria of the rest of the Patent Act." Id.

The Subject Matter of the '459 Patent is Not "Abstract"

21

Against that backdrop, the Federal Circuit reversed the district court's summary judgment

22

that the patents did not claim patent-eligible inventions largely on two bases. Id. at 868-869.

23

First, the court found that "[t]he invention presents functional and palpable applications in the

24

field of computer technology. … Indeed, the court notes that inventions with specific

25

PLAINTIFF'S RESPONSE IN OPPOSITION TO DEFENDANT'S MOTION FOR JUDGMENT ON THE
PLEADINGS

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1

applications or improvements to technologies in the marketplace are not likely to be so abstract

2

that they override the statutory language and framework of the Patent Act." Id. Second, the

3

acknowledged that "[i]n determining the eligibility of respondents' claimed process for patent

4

protection under section 101, their claims must be considered as a whole. It is inappropriate to

5

dissect the claims into old and new elements and then to ignore the presence of the old elements

6

in the analysis." Id. Thus, though the patented claims incorporated algorithms, the court found

7

that "the patentees here 'do not seek to patent a mathematical formula. Instead, they seek patent

8

protection for a process of 'half-toning in computer applications.'" Id. Applying these principles

9

to the '459 Patent makes clear its subject matter is not abstract.

10

The subject matter of the '459 Patent is coding and categorizing network pages, such as

11

web pages on the Internet, based on the content of the network page. The inventions organize

12

network pages using categorization labels and codes based upon the content on the network

13

page, including whether the pages contain commercial or non-commercial information, as well

14

as the copyright status of the material. (‘459 Patent, Col. 3, ll.8-21, Ex. A). A “network page” in

15

the context of the ‘459 Patent is a page on a network, such as the Internet, a private corporate

16

network, an intranet, a local area network or other network.1 In Claim 1 of the '459 Patent, a

17

network page can be categorized for “transacting business” and/or categorized for “providing

18

information,” for example, network pages that contain articles, journals or publications. After

19

the network page is “assigned” to one or more categories, it is labeled using at least the copyright

20

status of the material on the network page. Once the page has been labeled, use of the network

21

page is controlled using the label and copyright status. (‘459 Patent, Col. 12, ll. 24 - 39, Ex. A).

22
1

23
24
25

In IconFind Inc. v. Yahoo! Inc., No. Civ. 09-109 WBS JFM, Order of Dec. 14, 2009
(Dkt. No. 50), Judge Shubb construed the term “network page” as “page on the Internet, private
corporate network, local area network or other network.”
PLAINTIFF'S RESPONSE IN OPPOSITION TO DEFENDANT'S MOTION FOR JUDGMENT ON THE
PLEADINGS

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1

Independent Claim 30 is similar to Claim 1 but adds, among other things, that a categorization

2

code is used for labeling the network pages. This code is a unique system of characters or

3

symbols that represent the categories to which a page may be assigned. Independent Claim 31

4

adds, among other things, additional copyright categories, including “categories relating to the

5

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

6

(‘459 Patent, Col. 14, ll. 36 - 43, Ex. A).

7

Like the patents addressed in the Research Corporation Technologies decision, IconFind's

8

patent "presents functional and palpable applications in the field of computer technology." 627

9

F.3d at 868-869. As the background of the '459 Patent explains, "[t]he Internet contains over two

10

billion Web pages. It has been estimated that two million Web pages are added to the Internet

11

each day (The Industry Standard, Feb. 28, 2000). This vast amount of information is a

12

tremendous resource for the public to use. However, there is no effective way for a user to obtain

13

relevant information." ('459 Patent, Col. 1, ll. 27-32, Ex. A). The '459 Patent also explains that

14

"it is often difficult for a user to determine the copyright status of material on the Internet. There

15

is also no easy way for owners of content to indicate the copyright status of their material. This

16

problem has hampered the flow of information and left both the owners of content and users

17

confused and potentially in legal jeopardy." (Id. at Col. 2, ll. 66 - Col. 3, ll. 4, Ex. A). The

18

inventions claimed in the '459 Patent were designed to address these problems, and thus have

19

functional and palpable applications in the computer industry.

20

Additionally, like the underlying decision in Research Corporation Technologies,

21

Google's analysis falls short for failing to consider the claims as a whole, and instead, focusing

22

principally on the "computer implemented method" limitation. (See e.g. Def.’s Mem., Dkt. No.

23

30, pp. 6, 9 and 13). As discussed above, Claim 1 of the '459 Patent claims a computer

24

implemented method of categorizing a network page, including providing categories (such as

25

PLAINTIFF'S RESPONSE IN OPPOSITION TO DEFENDANT'S MOTION FOR JUDGMENT ON THE
PLEADINGS

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1

copyright status), assigning the network page to categories, providing a categorization label and

2

controlling usage of the network page using the categorization label and copyright status. ('459

3

Patent, Col. 12, ll. 24-38, Ex. A).

4

applications in Web/Internet development. Clearly, under Research Technologies Corporation,

5

the '459 Patent's inventions are not so manifestly abstract as to override the broad statutory

6

categories of eligible subject matter. See 35 U.S.C. § 101.

7

C.

These multi-faceted inventions plainly have practical

The '459 Patent Claims Patent-Eligible
Subject Matter Under the Machine or Transformation Test

8
To determine whether a method claims subject matter that is patent eligible, a court may
9
look to the MOT Test for guidance. Prometheus Labs., Inc. v. Mayo Collaborative Servs. &
10
Mayo Clinic Rochester, 628 F.3d 1347, 1355 (Fed. Cir. 2010). Under the MOT Test, a method
11
is patent eligible if: (1) “it is tied to a particular machine or apparatus,” or (2) “it transforms a
12
particular article into a different state or thing.” Bilski I, 545 F.3d at 954. “The use of a specific
13
machine or transformation of an article must impose meaningful limits on the claim’s scope to
14
impart patent-eligibility.” Id. at 962 (citing Benson, 409 U.S. at 590). In order for a patent to
15
meet the “transformation test,” the invention must “transform[] an article into a different state or
16
being.” Id. at 962. As set forth fully below, the '459 Patent satisfies either prong of the test.
17
1.
18

The Claims of the ‘459 Patent Meet
the Machine Prong of the MOT Test

19

The machine prong of the MOT Test requires that the invention(s) be “tied to a particular

20

machine or apparatus.” Bilski I, 545 F.3d at 954. The Supreme Court has defined the term

21

“machine” as “a concrete thing, consisting of parts, or of certain devices and combination of

22

devices.” Burr v. Duryee, 68 U.S. (1 Wall.) 531, 570 (1863); see also In re Nuijten, 500 F.3d

23

1346, 1356 (Fed. Cir. 2007).

This “includes every mechanical device or combination of

24
25

PLAINTIFF'S RESPONSE IN OPPOSITION TO DEFENDANT'S MOTION FOR JUDGMENT ON THE
PLEADINGS

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1

mechanical powers and devices to perform some function and produce a certain effect or result.”

2

In re Nuijten, 500 F.3d at 1356 (citing Corning v. Burden, 56 U.S. 252, 267 (1853).

3

The inventions of the ‘459 Patent are directed to providing a solution for “categorizing

4

and searching for information on a network and, more specifically, to categorizing and searching

5

Web pages over the Internet.” (‘459 Patent, Col. 1, ll. 21-25, Ex. A). Accordingly, the methods

6

as claimed are applicable in a client-server network, which includes tangible devices integral to

7

the functioning of the system as a whole. For example, in the context of the Internet, the claimed

8

inventions may run on one or more server machines, or more specifically, Web servers. These

9

servers and software applications thereon provide categories, categorization labels and

10

categorization codes; they also assign and control usage of the page. The thrust of Google's

11

argument on the machine prong is that "[t]he computer referenced in the preamble of all the

12

claims is merely an 'insignificant extra-solution." (Def.'s Mem., Dkt. No. 30, p.9); (Id. ("[T]he

13

notion that the methods of the claims of the '459 Patent are 'computer implemented' is merely

14

"extra-solution" activity.")). Google totally misses the mark on the legal concept “post-solution

15

activity”; this concept only applies to claims that include a mathematical algorithm or formula

16

(i.e. "post-solution" means after the mathematical problem is solved). As the Supreme Court

17

explained in Bilski II, the concept of “post-solution activity” surfaced in Flook, 437 U.S. at 585-

18

586. Bilski II, 130 S.Ct. 3218, 3230 (2010). In Flook, the claims were directed towards a

19

procedure for monitoring the conditions in the oil industry and the only element the invention

20

added over the prior art was a specific mathematical algorithm. 437 U.S. at 585-586. The claim

21

limited its application however to only the petrochemical and oil-refining industries so that the

22

algorithm could still “be freely used outside the petrochemical and oil-refining industries.” Id. at

23

589-590. The Court held that the process at issue was unpatentable under Section 101, “because

24

once that algorithm [wa]s assumed to be within the prior art, the application, considered as a

25

PLAINTIFF'S RESPONSE IN OPPOSITION TO DEFENDANT'S MOTION FOR JUDGMENT ON THE
PLEADINGS

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1

whole, contain[ed] no patentable invention.” Id. at 594. As the Supreme Court explained in

2

Bilski II, what Flook really stood for was the “proposition that the prohibition against patenting

3

abstract ideas ‘cannot be circumvented by attempting to limit the use of the formula to a

4

particular technological environment’ or adding ‘insignificant post-solution activity.’” 130 S Ct.

5

at 3230; see also In re Schrader, 22 F.3d 290, 294 (Fed. Cir. 1994) ("the recitation of

6

insignificant post-solution activity in a claim involving the solving of a mathematical algorithm

7

could not impart patentability to the claim").

8

Accordingly, “post-solution” activity refers to activities after the mathematical

9

problem is solved. The claims of the '459 Patent do not include a mathematical algorithm or

10

formula, so Google's "post-solution activity" arguments are totally misplaced. Notably, Google

11

repeats this nonsensical argument throughout its brief. (See Def.'s Mem., Dkt. No. 30, pp. 4, 5,

12

7, 8, 9, 13). The Court should reject each such instance of this argument.

13

Google's other chief argument under the machine prong is that the recitation of a general

14

purpose computer cannot save the '459 Patent's claims from being found unpatentable under

15

Section 101.2 (Def.'s Mem., Dkt. No. 30, p. 8). However, the cases Google cites for the

16

proposition that the recitation in a method of claim of a “general purpose computer” is not

17

sufficient structure to meet the MOT test are distinguishable from the case – and the claims – at

18

hand.

19
2

20
21
22
23
24
25

The crux of Google’s motion is that the mere recitation of “computer implemented
method” is not enough to meet the MOT Test. However, Google uses the same language to
procure its own patent rights. Specifically, as noted in the Complaint, Google cited IconFind’s
patent as prior art during prosecution of its own U.S. Patent No. 7,788,274, entitled "Systems and
methods for category-based search." (Compl., Dkt. No. 1, ¶9); ('274 Patent, Ex. C). The claims
of the ‘274 Patent include "A computer-implemented method for category-based search…" ('274
Patent, Ex. C). As such, it is quite ironic that while Google insists that IconFind's technology is
unpatentable, it nevertheless continues to seek patent protection on comparable technology and
similar claim language.
PLAINTIFF'S RESPONSE IN OPPOSITION TO DEFENDANT'S MOTION FOR JUDGMENT ON THE
PLEADINGS

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1

In CLS Bank Intern. v. Alice Corp. Pty. Ltd., 2011 WL 802079, *2 (D.D.C. Mar. 9,

2

2011), the inventions of the four patents-in-suit were directed towards a “methods or systems

3

that help lessen settlement risk using a computer system.” The defendants asserted – and the

4

court agreed – that the methods “attempt[ed] to patent the abstract idea of ‘exchanging an

5

obligation between parties’ after ensuring that there is ‘adequate value’ in independent accounts

6

maintained for the parties.’” Id. at 19. The claims recited “electronically adjusting” records

7

and/or accounts and contained no explicit recitation of any machine or apparatus, such as a

8

computer. Id. at *13. The court presumed for the purpose of the motion that the inventions were

9

to be realized through use of a computer with specific programming. Id. at *14. The court went

10

on to explain that “[t]he single fact that [plaintiff’s] method claims are implemented by a

11

computer does not mean the methods are tied to a particular machine under the MOT test,”

12

explaining “the claims before the court at most implicitly recite a computer by claiming

13

electronic adjustment of records or accounts." Id. at *14-16. The court then assessed whether a

14

computer “imposed any meaningful limitation on the processes themselves” and found that while

15

“a computer may facilitate and expedite the claimed methods, [] the methods before the court

16

could be performed without the use of a computer.” Id. at *18.

17

The inventions of the ‘459 Patent, to the contrary, not only explicitly recite that the

18

inventions are “computer implemented,” but the computer (e.g. a web server in the context of the

19

Internet), which consists of hardware and software, is essential to the inventions. As explained

20

above, these components provide the following functionality: providing a list of categories;

21

assigning network pages to these categories; providing a categorization label for the network

22

page using the copyright status of the material on the page; and controlling the usage of the

23

network page using the label and the copyright status. The system could not be implemented

24

without the use of the computer: the very heart of the invention is to categorize and label

25

PLAINTIFF'S RESPONSE IN OPPOSITION TO DEFENDANT'S MOTION FOR JUDGMENT ON THE
PLEADINGS

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1

network pages (e.g. Internet web pages). This cannot be done with a pencil and paper, as

2

Google contends. See SIRF Tech., Inc. v. Int'l Trade Comm'n, 601 F.3d 1319, 1332 (Fed. Cir.

3

2010) ("A GPS receiver is a machine and is integral to each of the claims at issue.").

4

Google's other citations are likewise distinguishable. In Bancorp Services, L.L.C. v. Sun

5

Life Assur. Co. of Canada, 2011 WL 665679, *1 (E.D. Mo. Feb 14, 2011), the patents-in-suit

6

were drawn to systems for administering and tracking the value of separate-account life

7

insurance policies. The court found that the “specified machines [in the claims] appear to be no

8

more than ‘object[s] on which the method operates’ and that ‘the steps of tracking, reconciling

9

and administering a life insurance policy with a stable value component can be completed

10

manually.’” Id. at *9. Similarly, in Fuzzysharp Technologies Inc. v. 3DLabs Inc., Ltd., 2009

11

WL 4899215, *1 (N.D. Cal. Dec. 11, 2009), the inventions of the patents-in-suit were “directed

12

to improving 3D computer graphics ‘through provision of an improved method for performing

13

visibility calculations’” and the claims were “drawn to mathematical algorithms that can be used

14

to reduce the number of calculations required to determine whether a 3D surface is visible or

15

invisible on a display screen.” As the court explained:

16
17
18

The claim language clearly states that these claims are drawn to mathematical
calculations and algorithms for calculating whether certain surfaces are visible or
invisible in 3D graphics … Though the calculations may be “performed by a
computer,” they are not tied to any particular computer. For these reasons, the
claims of the ‘047 and ‘067 Patent fail to pass muster under the Bilski machine
implementation test for patentability under 35 U.S.C. § 101.

19
Id. at *5. In this case, the claims of the ‘459 Patent are not drawn to a mathematical calculation
20
or algorithm (or any other fundamental law of nature) that was made electronic through the use
21
of a computer for efficiency purposes, as was the case in Fuzzysharp and Bancorp.

The

22
inventions of the ‘459 Patent are new and useful methods for categorizing network pages
23
according to content and copyright status. The invention could not be possible without the use of
24
25

PLAINTIFF'S RESPONSE IN OPPOSITION TO DEFENDANT'S MOTION FOR JUDGMENT ON THE
PLEADINGS

- 18 -

1

the “computer.”

Without the “computer” in Fuzzysharp, all that was left was an algorithm, and

2

without the “computer” in Bancorp, one would only be left with an idea for administering and

3

tracking the value of separate-account life insurance policies; in this case, without the

4

“computer,” there would be no inventions. See SIRF Tech., Inc., 601 F.3d at 1333 (holding

5

that the inventions "require the use of a particular machine (a GPS receiver) and could not be

6

performed with the use of such a receiver").

7

Lastly, with respect to the machine prong, Google cites Ultramercial and Cyberspace

8

Corp. v. Retail Decisions, Inc., 620 F. Supp. 2d 1068 (N.D. Cal. 2009), for the proposition that a

9

“network” is not a “machine” for the purposes of the MOT test. In Ultramercial, the claims of

10

the invention disclosed a method for allowing internet users to view copyrighted material free of

11

charge in exchange for watching certain advertisements. Ultramercial, LLC, 2010 WL 3360098

12

at *1 (C.D. Cal. Aug. 13, 2010). The claims included a number of steps that comprise the

13

process of displaying advertisements in exchange for access to copyrighted media and did not

14

recite anything that could be construed as a “machine” aside from the words “facilitator” and

15

“Internet.” Id. at *4. The claims and the specification, to the court, made clear that the claims

16

were “not aimed at a computer-specific application; it is a broad claim to the concept of

17

exchanging media for advertisement viewing.” Id. (emphasis added).

18

This is clearly not the case with respect to IconFind. The '459 Patent does not broadly

19

claim the concept of categorizing, but instead, a computer implemented method of categorizing

20

network pages including numerous specific machine-implemented (e.g. web server) steps.

21

Additionally, the fact that the Ultramercial court held that the recitation of the “Internet” did not

22

save the patent because the “Internet is not a machine” is also not on point here. Id. The

23

inventions of the ‘459 Patent are much more than a mere idea that functions over the Internet;

24
25

PLAINTIFF'S RESPONSE IN OPPOSITION TO DEFENDANT'S MOTION FOR JUDGMENT ON THE
PLEADINGS

- 19 -

1

they are specific computer-implemented methods of coding, categorizing and labeling pages that

2

reside on the Internet or other networks.

3

2.

The Claims of the ‘459 Patent Meet
the Transformation Prong of the MOT Test

4
The “transformation” prong of the MOT Test is met where the method “transforms an
5
article into a different state or thing.” Bilski I, 545 F.3d at 962. This transformation must also
6
be “central to the purpose of the claimed process.” Id. at 962. As explained above, the methods
7
transform network pages through the use of a "categorization label" so that use of the page is
8
restricted to the category or categories to which the page is assigned, including copyright status.
9
The pages are transformed when they are correctly labeled. This is important because the pages,
10
when labeled, provide the ability to notify others of the copyright status of that content. As the
11
patent explains, "[t]he categorization label will be readable by Web crawlers and may be visible
12
to users. … By selecting one of the four copyright-status indicia and placing it on the end of the
13
categorization label, the creator adds the information governing the use of the material." ('459
14
Patent, Col. 7, ll. 27-28, Ex. A).

As required by Bilski I, this "categorization label"

15
transformation is "central to the purposes of the claimed process." Bilski I, 545 F.3d at 962.
16
Google cites CS Bank Int’l in asserting that it would be incorrect to argue that “the
17
underlying categorizations are taking place on a computer and, thus, the underlying electrons of
18
the various memory systems are being “transformed.” (Def.'s Mem., Dkt. No. 30, p. 10). Google
19
misses the mark on this preemptive argument. Quite to the contrary, IconFind is not arguing that
20
network pages are transformed because the underlying electrons of the data are being
21
transformed. First, the network pages themselves are being transformed i.e. the underlying code
22
that makes up the pages. Additionally, the network pages may also be transformed by the
23
placement of a visible label. In any event, the network page is being transformed. Bilski I's
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1

discussion of In re Abele is instructive on this point. 545 F.3d at 962-963. The Bilski I court

2

noted that "the transformation of that raw data into a visual depiction of a physical object on a

3

display was sufficient to render that more narrowly-claimed process patent-eligible." Like the

4

raw data in In re Abele, the underlying code of a network page (e.g. a Web page) is rendered into

5

visual depictions of physical objects (e.g. Amazon.com depicts physical items for purchase).

6

Clearly, the invention transforms network pages – a purpose of the invention was to

7

categorize the pages in a certain way (i.e. through a label) so that the use of the network pages

8

would be restricted according to the content and copyright status. Accordingly, the '459 Patent

9

passes muster under the transformation prong of the MOT Test.

10

D.

The Interim Guidelines Support a Finding That the Claims
of the ‘459 Patent Are Directed To Patentable Subject Matter

11
Several factors cited by the USPTO in its Interim Guidelines support a finding that the
12
claims in the ‘459 Patent are not drawn to an abstract idea.

The first factor mirrors the

13
“machine” prong of the MOT Test and includes the following additional factors applicable
14
where, as here, a machine is expressly recited in the claims (which is in and of itself a factor
15
weighing in favor of patentability):
16

18

Whether the machine or apparatus implements the steps of the method. Integral
use of a machine or apparatus to achieve performance of the method weighs
toward eligibility …. [T]he extent to which (or how) the machine or apparatus
imposes meaningful limits on the execution of the claimed method steps.

19

(75 Fed. Reg. at 43,925, Ex. B). These factors clearly weigh toward eligibility in this case. Each

20

computer on which the invention performs, whether it be a web server in the context of the

21

Internet or another server machine in a private corporate network, is clearly integral to the

22

process of providing and assigning categorization labels and codes to network pages. The

23

computer is not “merely an object on which the method operates.” The web server is integral to

17

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PLAINTIFF'S RESPONSE IN OPPOSITION TO DEFENDANT'S MOTION FOR JUDGMENT ON THE
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1

the method of categorizing, labeling and coding pages that reside on the Internet – it is what

2

makes the functional actions and palpable results of the methods possible.

3

The next consideration mirrors the “transformation” prong of the MOT Test and includes

4

the following additional factors, where, as here, transformation exists (which is in and of itself

5

also a factor weighing in favor of patentability):
The particularity or generality of the transformation. …The nature of the
transformation in terms of the type or extent of change in state or thing, for
instance by having a different function or use, which would weigh toward
eligibility[.] … A transformation that contributes only nominally or
insignificantly to the execution of the claimed method (e.g., in a data gathering
step or in a field-of-use limitation) would weigh against eligibility.

6
7
8
9

(75 Fed. Reg. at 43,925, Ex. B). These factors also weigh toward patentability in this case. As
10
explained above, the pages are transformed when they are correctly labeled. Transformation
11
clearly occurs and this transformation is essential to the claimed inventions: the pages, now
12
labeled, provide the ability to notify others of the copyright status of content on the network
13
page. After a page is labeled, search engines may recognize the label on the page. For all of
14
these reasons, the USPTO's guidelines support patentability of the subject matter of the '459
15
Patent.
16
E.
17
18
19
20
21
22
23

The Claims of the ‘459 Patent Are Directed
To Patentable Subject Matter In Light of
The Supreme Court’s “Guidepost” Set of Cases

The Supreme Court in Bilski II noted that lower courts should look to Gottschalk v.
Benson, 409 U.S. 63 (1972), Parker v. Flook, 437 U.S. 584 (1978) and Diamond v. Diehr, 450
U.S. 175, 187 (1981)) as “guideposts” to enlighten this inquiry. See Bilski II, 130 S. Ct. at 32293231.
In Benson, the Supreme Court rejected a patent application for a method for
programming a general-purpose computer to convert binary-coded decimal numerals into pure

24
25

PLAINTIFF'S RESPONSE IN OPPOSITION TO DEFENDANT'S MOTION FOR JUDGMENT ON THE
PLEADINGS

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1

binary numerals. 409 U.S. at 65. The process used a piece of hardware—the reentrant shift

2

register—to carry out calculations. Id. at 73. The Court held that the application at issue was not

3

a “process,” but an unpatentable abstract idea, stating “it is conceded that one may not patent an

4

idea. But in practical effect that would be the result if the formula for converting ... numerals to

5

pure binary numerals were patented in this case.” Id. at 71. A contrary holding “would wholly

6

pre-empt the mathematical formula and in practical effect would be a patent on the algorithm

7

itself.” Id. at 72. The claims at issue in the ‘459 Patent are not directed towards a specific

8

formula or algorithm; instead, the claims at issue here concern a specific method of categorizing

9

and labeling network pages. Thus, Benson does not dictate, or even support, a finding that the

10

‘459 Patent’s subject matter is unpatentable.

11

As discussed above, the Bilski II court acknowledged that Flook “stands for the

12

proposition that the prohibition against patenting abstract ideas ’cannot be circumvented by

13

attempting to limit the use of the formula to a particular technological environment‘ or adding

14

’insignificant post-solution activity.’” 130 S Ct. at 3230. As noted above, no algorithm is

15

required in the claims of the ‘459 Patent; the claims of the ‘459 Patent are directed to a methods

16

for categorizing and labeling network pages to allow for more informed and organized access to

17

them and their copyright status.

18

Google notably did not cite Diehr in its brief despite the Supreme Court’s explicit

19

direction to lower courts to take into account Benson, Flook and Diehr. This is because Diehr

20

does not support Google’s position.

21

principles articulated in Benson and Flook.” Bilski II, 130 S. Ct. 3230. The claims in Diehr

22

were directed to a previously unknown method for “molding raw, uncured synthetic rubber into

23

cured precision products,” using a mathematical formula to complete some of its several steps by

24

way of a computer. Diehr, 450 U.S., at 177. The Court explained that while an abstract idea,

25

PLAINTIFF'S RESPONSE IN OPPOSITION TO DEFENDANT'S MOTION FOR JUDGMENT ON THE
PLEADINGS

In Diehr, “the Court established a limitation on the

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1

law of nature, or mathematical formula could not be patented, “an application of a law of nature

2

or mathematical formula to a known structure or process may well be deserving of patent

3

protection.” Id. at 187. Hence, Diehr “emphasized the need to consider the invention as a

4

whole, rather than ‘dissect[ing] the claims into old and new elements and then ... ignor[ing] the

5

presence of the old elements in the analysis.’” Bilski II, 130 S. Ct. at 3230 (citing Diehr, 450

6

U.S. at 188, 101 S.Ct. 1048). The Diehr court concluded that because the claim was not “an

7

attempt to patent a mathematical formula, but rather [was] an industrial process for the molding

8

of rubber products,” it fell within § 101's patentable subject matter.” Id. (citing Diehr, 450 U.S.

9

at 188, 101 S.Ct. 1048).

10

Accordingly, Diehr instructs the Court to take into account the inventions claimed in the

11

‘459 Patent as a whole in assessing whether it meets the requirements of Section 101. Google

12

characterizes the invention as merely methods of categorizing a network page. However, in

13

assessing the inventions and claims as a whole, as IconFind has done in this memorandum, it is

14

clear that the claims are directed to not just the mere categorization of network pages, but the

15

categorization, assignment, labeling and coding of those pages so the creators can notify others

16

regarding the copyright status of that content, others are aware of how they are allowed to use the

17

content of the network page according to the label on the page, and search engines can recognize

18

network pages assigned to certain categories.

19

F.

The Prosecution History of the ‘459 Patent Supports
A Finding That the ‘459 Patent is Directed To Eligible Subject Matter

20
Google clings to the prosecution history of the ‘459 Patent to support its argument that its
21
claims are drawn to ineligible subject matter under Section 101. Google argues that the rejection
22
of the claims under Section 101 and the subsequent addition of the phrase “computer
23
implemented” support a finding of unpatentability. To the contrary, this supports a finding that
24
25

PLAINTIFF'S RESPONSE IN OPPOSITION TO DEFENDANT'S MOTION FOR JUDGMENT ON THE
PLEADINGS

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the USPTO, when presented with the exact same question the Court is faced with today, found

2

that the ‘459 Patent was directed to eligible subject matter.

3

First, Google self-servingly plucks out portions of the file history without context.

4

Google makes it seem as though Section 101 was the only rejection in the file history, and

5

improperly infers that the applicant simply added “a computer implemented method” to cure this

6

problem. However, the independent claims as amended at the time of that rejection were

7

different than they are today; for instance, Claim 1 read:3

8
9
10
11
(See Google’s Request for Judicial Notice, Ex. 1-2, p. 43 (Dkt. No. 31-2)). After a telephone
12
interview concerning a separate Section 102 rejection, the examiner issued an Interview
13
Summary which indicated that the claims still stood as rejected under Section 101. In the
14
applicants' response to the examiner's Section 101 rejection, the applicant amended the claims as
15
follows:
16
17
18
19
20
21
22
23
24
25

(See Google’s Request for Judicial Notice, Ex. 1-2, p. 75 (Dkt. No. 31-2)). The examiner in his
response cited no Section 101 rejection. (See Google’s Request for Judicial Notice, Ex. 1-3, pp.

3

The crossed through words were deleted and the underlined words were added by the
applicant.
PLAINTIFF'S RESPONSE IN OPPOSITION TO DEFENDANT'S MOTION FOR JUDGMENT ON THE
PLEADINGS

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1

10-18 (Dkt. No. 31-3)). Still, the claims were amended further to include, for Claim 1, the steps

2

of “providing a categorization label…” and “controlling usage of the network page…”. (See

3

Google’s Request for Judicial Notice, Ex. 1-3, p. 24 (Dkt. No. 31-3)). Those are the claims of the

4

‘459 Patent as issued. Indeed, the examiner expressly relied on the additional steps “assigning

5

said network page…”, “providing a categorization label…”, and “controlling usage of the

6

network page…” as the reasons for allowance – not the “computer implemented method”

7

language. (See Google’s Request for Judicial Notice, Ex. 1-3, pp. 73-76 (Dkt. No. 31-3)).

8

As such, for Google to suggest that the claims were amended solely because of or in

9

response to a Section 101 rejection is improper. Additionally, for Google to imply that the

10

claims as rejected under Section 101 were identical to the issued claims with the exception of the

11

phrase “a computer implemented method” is simply an incorrect characterization of the file

12

history.

13

Second, the fact that the PTO, after assessing this precise issue, confirmed the

14

patentability of the claims of the ‘459 Patent undercuts Google’s arguments. See Hyatt v.

15

Kappos, 625 F.3d 1320, 1334 (Fed. Cir. 2010) (en banc) (recognizing the deference owed the

16

PTO as “the knowledgeable agency charged with assessing patentability”); Applied Materials,

17

Inc. v. Advanced Semiconductor Materials Am., Inc., 98 F.3d 1563, 1569 (Fed. Cir. 1996) (“The

18

presumption of validity is based on the presumption of administrative correctness of actions of

19

the agency charged with examination of patentability”).

20

Finally, any attempt by Google to argue that the PTO’s decision would have been

21

different in a post-Bilski II era would also invite legal error. Google mischaracterizes the

22

Supreme Court’s Bilski II decision by stating that the Court “recently made clear, however,

23

abstract ideas – which are unpatentable as a matter of law – cannot otherwise be made patentable

24

simply by directing them to run on a general purpose computer.” (Def. Mem, Dkt. No. 30., p.

25

PLAINTIFF'S RESPONSE IN OPPOSITION TO DEFENDANT'S MOTION FOR JUDGMENT ON THE
PLEADINGS

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1

2,). However, Bilski II simply clarified that the MOT Test was not the exclusive test, as the

2

Federal Circuit had held in Bilski I, and that it is instead a “useful and important clue, an

3

investigative tool.” Bilski II, 130 S. Ct. at 3226; see also Prometheus Labs., Inc., 628 F.3d at

4

1355. The law regarding Section 101 remains the same post-Bilski; the Court merely clarified

5

that the MOT Test is not the exclusive test. Accordingly, that the prosecution of the ‘459 Patent

6

occurred pre-Bilski II is of no consequence. The examiner still had the benefit of the authorities

7

relied upon by Bilski II (i.e., Benson, Flook, and Diehr) as well as the MOT Test.

8

For the foregoing reasons, this Court has the benefit of the expertise of the PTO on this

9

precise issue and should follow the lead of the examiner in finding that the claims are directed to

10

patentable subject matter under Section 101.

11

VI.

CONCLUSION

12

WHEREFORE, for the foregoing reasons, IconFind respectfully requests that this Court

13

deny Google’s motion for judgment on the pleadings pursuant to Rule 12(c) because, as that rule

14

requires, the pleadings are not yet "closed." Should the Court convert Google’s motion to a

15

motion to dismiss for failure to state a claim pursuant to Rule 12(b)(6), or a motion for summary

16

judgment, IconFind respectfully requests that this Court deny Google’s motion on the merits.

17

Respectfully submitted,

18

/s/ Daniel L. Baxter
WILKE, FLEURY, HOFFELT, GOULD &
BIRNEY, LLP
Thomas G. Redmon (SBN 47090)
[e-mail]
Daniel L. Baxter (SBN 203862)
[e-mail]

19
20
21
22

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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