IconFind, Inc. v. Google, Inc.

Filing 50

REPLY by IconFind, Inc. to RESPONSE to 22 MOTION to DISMISS MOTION to STRIKE. (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.

PLAINTIFF'S REPLY IN SUPPORT OF
ITS MOTION TO DISMISS AND
MOTION TO STRIKE (DKT. 35)

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GOOGLE INC.,
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Defendant.
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DATE: MAY 16, 2011
TIME: 9:00 A.M.
PLACE: COURTROOM 10
JUDGE GARLAND E. BURRELL, JR.

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PLAINTIFF'S REPLY IN SUPPORT OF ITS MOTION TO DISMISS AND MOTION TO STRIKE (DKT. 35)

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TABLE OF CONTENTS

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I. 

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

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II. 

GOOGLE'S COUNTERCLAIM FOR DECLARATORY JUDGMENT OF
INVALIDITY (COUNT TWO) IS FACIALLY IMPLAUSIBLE..................................... 2 

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           Page(s)

A. 

The Ninth Circuit and Federal Circuit Adhere to Twombly's and Iqbal's
Plausibility Requirements ....................................................................................... 2 

B. 

Google Fails to Identify Statutory Subsections or Supporting Facts That Could
Possibly Provide Plausibility to its Counterclaim................................................... 4 

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III. 

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GOOGLE'S SECOND DEFENSE SHOULD BE STRICKEN UNDER TWOMBLY,
IQBAL, AND RULES 8 AND 12 ...................................................................................... 7 

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A. 

IconFind's Motion to Strike Google's Affirmative Defense is a Proper Use of Rule
12(f), and the Twombly and Iqbal Standards Apply............................................... 7 

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B. 

Google's Second Affirmative Defense of Patent Invalidity Is Insufficient and
Should be Stricken .................................................................................................. 8 

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IV. 

DISCOVERY AND CAREFUL CASE MANAGEMENT DOES NOT RELIEVE
GOOGLE OF ITS OBLIGATION TO PROVIDE SUFFICIENT PLEADINGS;
LIKEWISE, EQUITY CANNOT SAVE GOOGLE'S INSUFFICIENT ALLEGATIONS
............................................................................................................................................. 9 

V. 

CONCLUSION................................................................................................................. 12 

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PLAINTIFF'S REPLY IN SUPPORT OF ITS MOTION TO DISMISS AND MOTION TO STRIKE (DKT. 35)

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TABLE OF AUTHORITIES

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Page(s)
CASES
Ashcroft v. Iqbal,
129 S. Ct. 1937 (2009)..................................................................................................... passim
Barnes v. AT&T Pension Benefit Plan,
718 F. Supp. 2d 1167 (N.D. Cal. 2010) .....................................................................................7

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Bell Atlantic Corp. v. Twombly,
550 U.S. 544 (2007)......................................................................................................... passim

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Bilski v. Kappos,
130 S. Ct. 3218 (2010)...............................................................................................................5

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Chanthavong v. Aurora Loan Servs., Inc.,
2011 U.S. Dist. LEXIS 34395 (Mar. 18, 2011) (Burrell, J.) .....................................................3
Colida v. Nokia, Inc.,
2009 U.S. App. LEXIS 21909 (Fed. Cir. Oct. 6, 2009).............................................................3
Coppes v. Wachovia Mortgage Corp.,
2011 U.S. Dist. LEXIS 42061 (E.D. Cal. April 13, 2011) (Burrell, J.).....................................2

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Federal Sav. & Loan Ins. Corp. v. Gemini Management,
921 F.2d 241 (9th Cir. 1990) .....................................................................................................7

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Gumbs v. Litton Loan Serv.,
2010 U.S. Dist. LEXIS 87095 (E.D. Cal. Aug. 24, 2010) (Burrell, J.) ...................................12

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Hudson v. First Transit, Inc.,
2011 U.S. Dist. LEXIS 14097 (N.D. Cal. Feb. 3, 2011) ...........................................................8

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IconFind, Inc. v. Yahoo! Inc.,
Case No. 2:09-cv-00109 (E.D. Cal), Dkt. Nos. 20, 22 ............................................................11
J&J Sports Prods., Inc. v. Franco,
2011 U.S. Dist. LEXIS 25642 (E.D. Cal. Mar. 1, 2011) .......................................................7, 8
KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398, 419 (U.S. 2007)...............................................................................................6, 8

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McArdle v. AT&T Mobility LLC,
657 F. Supp. 2d 1140 (N.D. Cal. 2009) .....................................................................................7

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Moss v. United States Secret Serv.,
572 F.3d 962, 969 (9th Cir. 2009) ..............................................................................................3

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PLAINTIFF'S REPLY IN SUPPORT OF ITS MOTION TO DISMISS AND MOTION TO STRIKE (DKT. 35)

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Network Caching Tech., LLC v. Novell, Inc.,
2001 U.S. Dist. LEXIS 26211 (N.D. Cal. Dec. 31, 2001) .............................................1, 6, 8, 9

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The Wine Group LLC v. L. AND R. Wine Co.,
2011 U.S. Dist. LEXIS 5765 (E.D. Cal. Jan. 13, 2011) ........................................................7, 8

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STATUTES

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35 U.S.C. § 101............................................................................................................................4, 6

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35 U.S.C. § 102........................................................................................................................4, 5, 6

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35 U.S.C. § 103................................................................................................................................6

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35 U.S.C. § 271..............................................................................................................................11
FEDERAL RULES
Form 30 of the Federal Rules of Civil Procedure ............................................................................9
Rule 8 .................................................................................................................................1, 7, 9, 11

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Rule 12(b)(6)................................................................................................................1, 2, 3, 10, 12
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Rule 12(c).........................................................................................................................................5
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Rule 12(f) ...............................................................................................................................1, 7, 12
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Federal Circuit Rule 32.1(c) ............................................................................................................3

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PLAINTIFF'S REPLY IN SUPPORT OF ITS MOTION TO DISMISS AND MOTION TO STRIKE (DKT. 35)

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I.

INTRODUCTION

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Plaintiff IconFind, Inc. (“IconFind”) moved to dismiss Defendant Google, Inc.'s

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("Google") “amended” invalidity counterclaim under Rule 12(b)(6), and moved to strike

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Google's corresponding amended affirmative defense of invalidity pursuant to Rule 12(f)

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because they failed to state plausible claims. Google's amended pleading provides precious-little

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more detail (in the form of label and conclusions) than its original pleading, with no explanation

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or facts supporting how its laundry-list of statutes applies to IconFind's patent. IconFind is left

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guessing why Google contends the '459 Patent is invalid. Google's labels and conclusions fail to

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provide "fair notice" to IconFind.

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Contrary to Google's arguments, IconFind does not overstate the pleading requirements

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under Rule 8. IconFind's motion is firmly grounded in controlling Supreme Court precedent, and

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Google acknowledges in its Opposition that a complaint must state a plausible claim under

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Twombly and Iqbal. Yet, even though it had an opportunity to provide plausible claims in its

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amended pleading, Google did not even attempt to do so. Instead, Google admittedly imitated

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counterclaim language from the pre-Twombly, pre-Iqbal case Network Caching Tech., LLC v.

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Novell, Inc., 2001 U.S. Dist. LEXIS 26211, at*6-7 (N.D. Cal. Dec. 31, 2001). In fact, the few

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changes Google did make to the counterclaim language from that case left Google asserting that

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the invention "lacks utility" under the wrong statutory subsections. Though Google seeks to

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suggest otherwise, the vast majority of courts –including courts in this District— also apply

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Twombly pleading standards to affirmative defenses.

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replicates the language of its counterclaim Count Two, it is likewise deficient.

Because Google's Second Defense

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As a fallback, Google argues that IconFind seeks to impose a higher pleading standard on

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Google's invalidity allegations than on IconFind's infringement claim. This is simply untrue.

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IconFind's claim for infringement clearly articulates which statutory subsection applies, whereas

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Google's invalidity counterclaim does not.

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PLAINTIFF'S REPLY IN SUPPORT OF ITS MOTION TO DISMISS AND MOTION TO STRIKE (DKT. 35)

IconFind's infringement claim contains factual
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allegations, including an identification of accused websites and features by name, whereas

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Google's invalidity counterclaim contains none. Google identifies no prior art and makes no

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other factual allegations. As such, Google has not nudged its invalidity allegations across the

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line from conceivable to plausible, as is required to survive a motion to dismiss.

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Because Google has again failed to specify adequate grounds or supporting facts that

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could possibly support a finding that IconFind’s patent is invalid, Google's amended invalidity

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counterclaim (Count Two) and corresponding amended affirmative defense (Second Defense)

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fail to state claims on which relief can be granted and must be dismissed with prejudice as a

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matter of law.

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II.

GOOGLE'S COUNTERCLAIM FOR DECLARATORY JUDGMENT
OF INVALIDITY (COUNT TWO) IS FACIALLY IMPLAUSIBLE

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A.
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The Ninth Circuit and Federal Circuit Adhere
to Twombly's and Iqbal's Plausibility Requirements

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Google cites a host of pre-Twombly, pre-Iqbal Ninth Circuit decisions (seven in total) in

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setting forth its legal standards for Rule 12(b)(6) and concludes that "it is only under

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extraordinary circumstances that dismissal is proper under Rule 12(b)(6)." (Def.'s Mem., Dkt.

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No. 42, p.4-5). However, Google ignores the most pertinent and controlling authority from the

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Supreme Court, which held that “[t]o survive a motion to dismiss, a complaint must contain

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sufficient factual matter, accepted as true, to ‘state a claim to relief that is plausible on its face.’”

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Ashcroft v. Iqbal, 129 S. Ct. 1937, 1949 (2009) (emphasis added) (quoting Bell Atlantic Corp. v.

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Twombly, 550 U.S. 544, 570 (2007)). "A claim has facial plausibility when the plaintiff pleads

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factual content that allows the court to draw the reasonable inference that the defendant is liable

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for the misconduct alleged." Id. As this Court has recognized, "[t]he plausibility standard is not

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akin to a 'probability requirement,' but it asks for more than a sheer possibility that a defendant

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has acted lawfully." Coppes v. Wachovia Mortgage Corp., 2011 U.S. Dist. LEXIS 42061, at *2

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PLAINTIFF'S REPLY IN SUPPORT OF ITS MOTION TO DISMISS AND MOTION TO STRIKE (DKT. 35)

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(E.D. Cal. April 13, 2011) (Burrell, J.) (citing Moss v. United States Secret Serv., 572 F.3d 962,

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969 (9th Cir. 2009)).

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Though all well-pleaded factual allegations must be accepted as true, this tenet is

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"inapplicable to legal conclusions." Id. (citing Iqbal, 129 S. Ct. at 1949). "A pleading that offers

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'labels and conclusions' or 'a formulaic recitation of the elements of a cause of action will not do.'

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Nor does a complaint suffice if it tenders 'naked assertions' devoid of 'further factual

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enhancement.'" Chanthavong v. Aurora Loan Servs., Inc., 2011 U.S. Dist. LEXIS 34395, at *3

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(Mar. 18, 2011) (Burrell, J.) (citing Iqbal, 129 S. Ct. at 1949). Thus, "for a complaint to survive

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a motion to dismiss, the non-conclusory 'factual content," and reasonable inferences from that

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content, must be plausibly suggestive of a claim entitling the plaintiff to relief." Id. (citing Moss,

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572 F.3d at 969 (quoting Twombly, 550 U.S. at 557)).

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The Supreme Court has laid to rest any argument that Twombly was limited to antitrust

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cases, holding that “Twombly expounded the pleading standard for ‘all civil actions.’” Iqbal,

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129 S. Ct. at 1953. This clearly includes patent cases. Since Iqbal, the Federal Circuit has

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applied the plausibility standard to affirm a Rule 12(b)(6) dismissal of a patent infringement

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claim. Colida v. Nokia, Inc., 2009 U.S. App. LEXIS 21909, at **3 (Fed. Cir. Oct. 6, 2009).1 In

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Colida, the Federal Circuit acknowledged that “the complaint must have sufficient ‘facial

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plausibility’ to ‘allow[] the court to draw the reasonable inference that the defendant is liable.’

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Id. at **4 (citing Iqbal, 129 S. Ct. at 1949). It further recognized that “[t]he plaintiff's factual

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allegations must ‘raise a right to relief above the speculative level’ and cross ‘the line from

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conceivable to plausible.’” Id. at **4 (citing Twombly, 550 U.S. at 570). These standards

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likewise apply to Google's patent invalidity counterclaim.

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Colida v. Nokia, Inc. was issued as unpublished or non-precedential, but under Federal
Circuit Rule 32.1(c), it is permissible to cite to non-precedential dispositions issued after January
1, 2007.

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PLAINTIFF'S REPLY IN SUPPORT OF ITS MOTION TO DISMISS AND MOTION TO STRIKE (DKT. 35)

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B.

Google Fails to Identify Statutory Subsections or Supporting
Facts That Could Possibly Provide Plausibility to its Counterclaim

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Simply put, Google's counterclaim fails to state a plausible claim for declaratory
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judgment of patent invalidity because it contains no facts and identifies no statutory
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subsections.2 Google's list of statutes, now amended to add the barest legal conclusions, fails to

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provide "fair notice" of Google's invalidity claims. IconFind is already aware of these statutes;
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Google is obligated to provide a plausible basis to support why they apply in this case.
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Otherwise, how can IconFind possibly understand and respond to Google's allegations?
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With respect to Google's Section "102, 103 and/or 112" allegations, it broadly argues that
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"Google’s counterclaims relating to the invalidity of the ’459 patent in its Amended Answer and
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Counterclaims clearly allege facts that, if true, would state a claim for patent invalidity." (Def.'s
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Mem., Dkt. No. 42, p. 5). What facts are alleged? Google identifies none. Google's invalidity
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counterclaim does not even contain a recitation of the elements of the cause of action. As a
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result, Google fails to provide IconFind notice of, for instance, which of the at least seven
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independent grounds it is asserting under Section 102. See 35 U.S.C. § 102(a)-(g).
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With respect to its Section 101 allegation, Google argues that "[t]o the extent that
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Plaintiff was concerned about the adequacy and sufficiency of Google’s pleading with respect to
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invalidity under 35 U.S.C. 101, Google’s Motion on the Pleadings clearly moots any such issue."
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The entirety of Google's counterclaim for patent invalidity is as follows:

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11. The ’459 patent is invalid under 35 U.S.C. § 101 because it fails to claim
patentable subject matter insofar as it seeks to claim an abstract idea.

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12. The ’459 patent is invalid because it fails to meet the “conditions for
patentability” of 35 USC §§ 102, 103, and/or 112 because the alleged invention
thereof lacks utility; is taught by, suggested by, and/or obvious in view of, the
prior art; and/or is unsupported by the written description of the patented
invention.

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(Countercl., Dkt. No. 27, ¶¶ 11-12).

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PLAINTIFF'S REPLY IN SUPPORT OF ITS MOTION TO DISMISS AND MOTION TO STRIKE (DKT. 35)

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(Def.'s Mem., Dkt. No. 42, p. 3, n.1). Not so. If anything, Google's motion on the pleadings, and

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IconFind's response thereto, underscore the inadequacy of Google's pleading. As the briefing on

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that motion makes clear, Google's allegation that the patent is invalid because it "seeks to claim

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an abstract idea" is merely a legal theory. See Bilski v. Kappos, 130 S. Ct. 3218 (2010). For the

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purposes of that motion, both parties were forced to request judicial notice of the patent and file

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history because Google's pleading included no factual allegations on their substance. (See Req.

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Judicial Not., Dkt. Nos., 31, 46). In any event, Google's motion for judgment on the pleadings is

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premature because Rule 12(c) requires that the pleadings be "closed." Fed. R. Civ. P. 12(c).

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Thus, Google's untimely Rule 12(c) motion is not a proper supplement for its insufficient

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pleading.

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That Google alleges no facts in support of its invalidity counterclaim likely explains why

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it chose not to argue (and in fact totally avoided the subject) in its Opposition that its invalidity

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allegations are “plausible.” Indeed, though Google admits that it must state a "plausible" claim

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in its Legal Standards section, not once does Google mention plausibility in its arguments.

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(Def.'s Mem., Dkt. No., pp. 4-12). As such, Google clearly fails the Supreme Court's two-

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pronged plausibility analysis: “[w]e begin our analysis by identifying the allegations in the

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complaint that are not entitled to the assumption of truth.” Iqbal, 129 S. Ct. at 1951. Here, none

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of Google’s invalidity allegations are entitled to the assumption of truth because they are, at

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most, merely legal conclusions. Id. “We next consider the factual allegations in [the] complaint

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to determine if they plausibly suggest an entitlement to relief.” Id. Here, Google’s invalidity

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allegations contain no factual allegations3 for the Court to consider.

With no allegations

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For instance, had Google wanted to assert invalidity under the on-sale bar of 35 U.S.C.
§ 102(b), and provide supporting facts, it could simply allege that “[Insert person] sold [insert
product] which embodied the claims of the patent-in-suit more than one year prior to IconFind’s
date of application.”

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PLAINTIFF'S REPLY IN SUPPORT OF ITS MOTION TO DISMISS AND MOTION TO STRIKE (DKT. 35)

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assumed as true, and no supporting facts to consider, Google’s invalidity counterclaim clearly

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does not “plausibly suggest an entitlement to relief.” Id.

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Google should not be rewarded for replicating the counterclaim language at issue in

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Network Caching Tech., LLC v. Novell, Inc., 2001 U.S. Dist. LEXIS 26211, at*6-7 (N.D. Cal.

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Dec. 31, 2001).

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specificity would be helpful," Google's reliance on that ten-year old decision after Twombly and

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Iqbal is unsound. Additionally, among the language Google plucked from that decision was the

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assertion that the invention "is taught by, suggested by, and/or obvious in view of, the prior art."

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(Countercl., Dkt. No. 27, ¶ 12). This language is clearly directed at the so-called teaching-

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suggestion-motivation (TSM) test for obviousness, which is no longer the critical test for

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obviousness. Specifically, in KSR Int'l Co. v. Teleflex Inc., the Supreme Court criticized the test

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as "incompatible with our precedents" and stated that "[t]he obviousness analysis cannot be

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confined by a formalistic conception of the words teaching, suggestion, and motivation … ."

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KSR Int'l Co., 550 U.S. 398, 419 (U.S. 2007). As IconFind has previously noted, as a result of

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the few changes Google did make to the counterclaim language from Network Caching, Google

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nonsensically asserts that the invention "lacks utility" under Sections 102, 103 and/or 112.

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(Countercl., Dkt. No. 27, ¶ 12). Utility is an issue under Section 101, not the statutes Google

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cites. See 35 U.S.C. § 101. Given Google's failed efforts at modifying the language it took from

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Network Caching, and given that Network Caching is outdated in view of Twombly, Iqbal and

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KSR, Google's reliance on that decision is clearly flawed.

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Given that the Network Caching court acknowledged that "more factual

For at least these reasons, IconFind respectfully requests that this Court dismiss Google's
counterclaim Count Two - Declaratory Judgment of Invalidity of the ’459 Patent.

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PLAINTIFF'S REPLY IN SUPPORT OF ITS MOTION TO DISMISS AND MOTION TO STRIKE (DKT. 35)

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III.

GOOGLE'S SECOND DEFENSE SHOULD BE STRICKEN
UNDER TWOMBLY, IQBAL, AND RULES 8 AND 12

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A.
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IconFind's Motion to Strike Google's Affirmative Defense
is a Proper Use of Rule 12(f), and the Twombly and Iqbal Standards Apply

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Google's legal standards incorrectly assert that a motion to strike an affirmative defense is

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an improper use of Rule 12(f), and that the pleading standards for affirmative defenses are

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different than counterclaims. Google invites error on both counts. Specifically, Google argues

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that "the Ninth Circuit has not ruled on the proper use of a Rule 12(f) motion to strike an

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affirmative defense." (Def.'s Mem, Dkt. No. 42, p. 7) (quoting McArdle v. AT&T Mobility

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LLC, 657 F. Supp. 2d 1140, 1149 (N.D. Cal. 2009). However, the Ninth Circuit has clearly

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affirmed the use of Rule 12(f) to strike affirmative defenses. See Federal Sav. & Loan Ins. Corp.

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v. Gemini Management, 921 F.2d 241, 243 (9th Cir. 1990) ("We must decide whether the district

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court … abused its discretion in striking Gemini's affirmative defenses under Fed. R. Civ. P.

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12(f). … the decision of the district court is affirmed."). Likewise, courts in this District have

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granted motions to strike affirmative defenses brought under Rule 12(f), including affirmative

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defenses of patent invalidity. J&J Sports Prods., Inc. v. Franco, 2011 U.S. Dist. LEXIS 25642, at

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*6 (E.D. Cal. Mar. 1, 2011) (striking patent invalidity defense); The Wine Group LLC v. L.

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AND R. Wine Co., 2011 U.S. Dist. LEXIS 5765, at *7 (E.D. Cal. Jan. 13, 2011) (striking

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trademark defenses).

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Additionally, Google attempts to create uncertainty in the standard by arguing that "[case

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law is unsettled whether the standard of pleading claims and counterclaims articulated in

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Twombly and Iqbal apply to affirmative defenses." (Def.'s Mem., Dkt. No. 42, p.9). Contrary to

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Google's argument, "the vast majority of courts presented with the issue have extended

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Twombly's heightened pleading standard to affirmative defenses." Barnes v. AT&T Pension

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Benefit Plan, 718 F. Supp. 2d 1167, 1171 (N.D. Cal. 2010) (applying Twombly standards to

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affirmative defenses). Among these are numerous courts in California, including in this District.

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PLAINTIFF'S REPLY IN SUPPORT OF ITS MOTION TO DISMISS AND MOTION TO STRIKE (DKT. 35)

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J&J Sports Prods., Inc., 2011 U.S. Dist. LEXIS 25642, at *3-5 (striking patent invalidity defense

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under Twombly and Iqbal); The Wine Group LLC, 2011 U.S. Dist. LEXIS 5765, at *4-8

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(striking defenses under Twombly and Iqbal); Hudson v. First Transit, Inc., 2011 U.S. Dist.

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LEXIS 14097, at *3 (N.D. Cal. Feb. 3, 2011) ("Twombly's heightened pleading standard applies

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to affirmative defenses."). Thus, the heightened standards of Twombly, Iqbal and their progeny

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clearly apply to Google's patent invalidity affirmative defense.

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B.

Google's Second Affirmative Defense of
Patent Invalidity Is Insufficient and Should be Stricken

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Because the standards set out in Twombly and Iqbal apply to affirmative defenses,
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Google's patent invalidity defense (Second Defense) fails for the reasons set forth above
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regarding Google's deficient counterclaim. Google identifies no reasons why its Second Defense
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should survive beyond those it articulated regarding the identical, corresponding counterclaim.
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Thus, for the same reasons Google's invalidity counterclaim should be dismissed, its Second
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Defense of patent invalidity should also be stricken.
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Google's arguments are threefold and none are persuasive. First, Google argues that its
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affirmative defense is adequate under Network Caching, 2001 U.S. Dist. LEXIS 26211. As set
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forth in detail in Section II-B above, Network Caching is outdated in view of Twombly, Iqbal
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and KSR, so Google's reliance on that decision is clearly unsound. Google also argues that
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"Plaintiff, however, points to nothing in [Network Caching] that would necessitate a different
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holding in light of Twombly and Iqbal." (Def.'s Mem., Dkt. No. 42, p. 8, n. 3). In addition to the
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numerous reasons articulated in Section II-B of why Google's reliance on that decision is flawed,
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IconFind notes that, like Google's Opposition to this motion, the Network Caching court
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conducted no "plausibility" analysis as it must under Twombly and Iqbal. Iqbal, 129 S. Ct. at
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1949; Twombly, 550 U.S. at 570. Thus, Network Caching simply does not support the adequacy
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of Google's affirmative defense.
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PLAINTIFF'S REPLY IN SUPPORT OF ITS MOTION TO DISMISS AND MOTION TO STRIKE (DKT. 35)

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Next, Google cites a different Google litigation where the plaintiff agreed to withdraw its

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motion to dismiss Google's invalidity counterclaims and affirmative defenses, and instead

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proceed with discovery. (Def.'s Mem., Dkt. No. 42, p. 8). As set forth more fully in Section V

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below, discovery is no replacement for adequate pleadings. See Iqbal, 129 S. Ct. at 1950 (noting

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that Rule 8 "does not unlock the doors of discovery for a plaintiff armed with nothing more than

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conclusions"). Moreover, IconFind fails to see how the plaintiff's agreed withdrawal in that case

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demands a similar result here.

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Lastly, Google argues that Form 30 of the Federal Rules of Civil Procedure demonstrates

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that Google's affirmative defense of patent invalidity is sufficient. (Def.'s Mem., Dkt. No. 42,

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p.10). Form 30 does not support Google's positions. First of all, the exemplary affirmative

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defense provided in Form 304 pertains to a statute of limitations, so its illustrative value for this

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case is minimal at best. Nevertheless, IconFind notes that the example in Form 30 provides a

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fill-in space for providing a factual allegation as to how many years the claim arose before the

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action commenced.

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IconFind's assertion that affirmative defenses should include factual allegations. Like Google's

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insufficient counterclaim, Google's identically-worded affirmative defense contains no factual

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allegations at all, and should thus be dismissed.

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IV.

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See Fed. R. Civ. P. Form 30.

Thus, if anything, Form 30 supports

DISCOVERY AND CAREFUL CASE MANAGEMENT
DOES NOT RELIEVE GOOGLE OF ITS OBLIGATION
TO PROVIDE SUFFICIENT PLEADINGS; LIKEWISE,
EQUITY CANNOT SAVE GOOGLE'S INSUFFICIENT ALLEGATIONS

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Google's last-ditch effort to save its deficient invalidity counterclaim and affirmative
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defense is to rely on discovery in place of proper pleadings, and to implore the Court to consider
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Form 30 provides the following exemplary affirmative defense: "Statute of Limitations
– The plaintiff's claim is barred by the statute of limitations because it arose ___ years before this
action was commenced." Fed. R. Civ. P. Form 30.

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PLAINTIFF'S REPLY IN SUPPORT OF ITS MOTION TO DISMISS AND MOTION TO STRIKE (DKT. 35)

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the equities. As set forth below, Google's reliance on discovery is at odds with the express

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language of Twombly and Iqbal. Likewise, Google cites no authority, and IconFind has located

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none, for the proposition that a Rule 12(b)(6) motion to dismiss is an equitable decision.

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First, Google argues that "discovery is the appropriate mechanism for the parties to

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receive detailed contentions," and that "Google and Plaintiff have reached agreement that formal

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infringement contentions and invalidity contentions should be part of the Court's scheduling

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order in this matter." (Def.'s Mem., Dkt. No. 42, p. 11). This is no replacement for adequate

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pleadings, and Google's suggestion otherwise would render the Supreme Court’s Twombly and

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Iqbal decisions meaningless.

Specifically, the Supreme Court has held that careful case

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management does not alleviate a party’s burden to meet Rule 8's pleading requirements: “[w]e

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have held, however, that the question presented by a motion to dismiss a complaint for

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insufficient pleadings does not turn on the controls placed upon the discovery process.” Iqbal,

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129 S. Ct. at 1953. In Twombly, the Supreme Court also noted:

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[i]t is no answer to say that a claim just shy of a plausible entitlement to relief can,
if groundless, be weeded out early in the discovery process through “careful case
management,” … given the common lament that the success of judicial
supervision in checking discovery abuse has been on the modest side. …
Probably, then, it is only by taking care to require allegations that reach the level
suggesting [the alleged claim] that we can hope to avoid the potentially enormous
expense of discovery in cases with no “reasonably founded hope that the
discovery process will reveal relevant evidence…”

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550 U.S. 544, 560 (internal citations omitted). Moreover, allowing Google to proceed with its
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vague pleading prejudices IconFind by forcing IconFind to provide its full infringement
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contentions without any notice of Google's invalidity theories.
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Finally, Google implores the Court to consider the equities by arguing that because
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Plaintiff and its counsel have not allegedly held others, or themselves, to the standards of
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Twombly and Iqbal, Google should be allowed to proceed with deficient pleadings. First,
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IconFind's decision not to move to dismiss Yahoo's invalidity counterclaim in the Yahoo matter
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PLAINTIFF'S REPLY IN SUPPORT OF ITS MOTION TO DISMISS AND MOTION TO STRIKE (DKT. 35)

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is of no import here. Yahoo's counterclaim, and IconFind's reply thereto, were filed in March

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2009 – months before the Supreme Court's May 18, 2009 decision in Iqbal. See IconFind, Inc. v.

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Yahoo! Inc., Case No. 2:09-cv-00109 (E.D. Cal), Dkt. Nos. 20, 22. Google's reliance on

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IconFind's counsel's pleadings in unrelated matters that are pre-Twombly and/or in other circuits

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is simply irrelevant.

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Lastly, Google’s equitable argument incorrectly asserts that, "[IconFind's] allegations of

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infringement certainly do not meet the pleading requirement Plaintiff posits is required in

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Google's counterclaim and affirmative defenses." (Def.'s Mem., Dkt. No. 42, p. 11). Google is

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plainly mistaken. Had IconFind taken Google’s approach to pleading—i.e. identifying no facts

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or statutory subsections—it would have merely alleged: “Google has infringed IconFind’s ‘459

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Patent under 35 U.S.C. § 271.” Google would surely have chided IconFind for such bald

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allegations in a motion to dismiss of its own. Unlike Google, however, IconFind articulated the

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subsection of the relevant statue—specifically, “Google has infringed and continues to infringe

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… the '459 patent under 35 U.S.C. § 271(a) …" (Compl., Dkt. No. 1, at ¶ 7). IconFind also

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alleged factual specifics, such as 1) the allegedly infringed claims, 2) the accused websites by

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name, 3) a specific infringing feature of the websites by name, and 4) that Google had actual

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notice of its infringement before the suit. Accordingly, IconFind is not asking the Court to

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require more of Google than of IconFind, but instead, is merely asking for the specific grounds

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of invalidity asserted and sufficient facts in support, as required by Rule 8, so that IconFind can

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understand Google’s allegations and respond to them. Iqbal, 129 S. Ct. 1949 (“A pleading that

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offers ‘labels and conclusions’ or ‘a formulaic recitation of the elements of the cause of action

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will not do. … Nor does a complaint suffice if it tenders ‘naked assertions’ devoid of ‘further

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factual enhancement.’”) (citations omitted). Google has for a second time failed to specify

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PLAINTIFF'S REPLY IN SUPPORT OF ITS MOTION TO DISMISS AND MOTION TO STRIKE (DKT. 35)

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adequate grounds or supporting facts that could plausibly support a finding that IconFind's patent

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is invalid, and thus, its invalidity counterclaim and affirmative defense should be dismissed.5

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V.

CONCLUSION

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For all of the foregoing reasons, IconFind respectfully requests that the Court grant its

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motion to dismiss Google's amended counterclaim of patent invalidity (Count Two) pursuant to

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Rule 12(b)(6) and grant its motion to strike Google's amended affirmative defense of patent

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invalidity (Second Defense) pursuant to Rule 12(f).

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Respectfully submitted,

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May 9, 2011

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

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]

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Attorneys for Plaintiff IconFind, Inc.

Attorneys for Plaintiff IconFind, Inc.

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In its opposition, Google failed to identify how it could cure the deficiencies in its
already-amended counterclaim and defense, so the Court should dismiss them with prejudice.
Gumbs v. Litton Loan Serv., 2010 U.S. Dist. LEXIS 87095, at *6 (E.D. Cal. Aug. 24, 2010)
(Burrell, J.) (dismissing with prejudice because the complainants "failed to identify in their
opposition how they will cure the deficiencies" and "granting leave to amend would be futile").

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PLAINTIFF'S REPLY IN SUPPORT OF ITS MOTION TO DISMISS AND MOTION TO STRIKE (DKT. 35)

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