IconFind, Inc. v. Google, Inc.

Filing 66

SECOND AMENDED ANSWER to 1 Complaint with Jury Demand, COUNTERCLAIM against IconFind, Inc. by Google, Inc.. (Attachments: # 1 Exhibit 1, # 2 Appendix A, # 3 Appendix B, # 4 Appendix C, # 5 Appendix D, # 6 Appendix E, # 7 Appendix F, # 8 Appendix G, # 9 Appendix H, # 10 Appendix I, # 11 Appendix J, # 12 Appendix K)(Malecek, Michael)

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

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UNITED STATES DISTRICT COURT

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FOR THE EASTERN DISTRICT OF CALIFORNIA

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ICONFIND, INC.,

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Plaintiff,

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v.
GOOGLE INC.,

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Defendant.

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

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DEFENDANT GOOGLE INC.’S INVALIDITY CONTENTIONS PURSUANT
TO JOINT STATUS REPORT

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GOOGLE’S INVALIDITY CONTENTIONS
Case No. 2:11-CV-00319 GEB JFM

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Pursuant to the Joint Status Report (Dkt. 47), Defendant Google Inc., (“Google”) hereby
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provides its Invalidity Contentions to Plaintiff IconFind, Inc., (hereinafter “IconFind”) with
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respect to the asserted claims identified by IconFind in its July 1, 2011, Plaintiff’s Infringement
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Contentions To Google Inc. (“Infringement Contentions”).
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Google’s investigation of the matters disclosed is ongoing. Google reserves the right to
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supplement or modify these disclosures as new information becomes available through fact and
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expert discovery or other investigation as provided in the Federal Rules of Civil Procedure, and
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if the claim(s) of U.S. Patent No. 7,181,459 (“the ’459 patent”) are construed by this Court or
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any other court. These Contentions are made without prejudice to Google’s right to obtain and
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present before or at trial any additional evidence that may be acquired through discovery or
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otherwise in this action.
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I.

RESERVATIONS AND OBJECTIONS

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The information and documents produced are provisional and subject to revision as
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follows. For purposes of these Invalidity Contentions, Google identifies prior art references and
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provides element-by-element claim charts based in part on the apparent constructions of the
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asserted claims advanced by IconFind in its Infringement Contentions. Nothing in these
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disclosures shall be treated as an admission that Google agrees with IconFind regarding the
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scope of any of the asserted claims or claim constructions advanced by IconFind in its
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Infringement Contentions. Google’s claim constructions will be disclosed during the claim
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construction process. If the Court’s claim construction alters or changes the scope or meaning of
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an asserted claim or claim element, Google reserves its right to supplement these contentions.
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In many instances, Google’s Invalidity Contentions are based on their understanding of
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the asserted claims in light of the positions apparently taken by IconFind in its Infringement
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Contentions, to the extent those contentions can be understood. In other words, to the extent the
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contentions employed by IconFind in alleging infringement is accepted (including any implicit
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claim constructions suggested by the infringement contentions), the claims are invalid. In
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GOOGLE’S INVALIDITY CONTENTIONS
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making such invalidity contentions, Google does not agree to nor acquiesce in IconFind’s
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infringement contentions or its implicit claim constructions. Further, Google reserves all rights
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to amend these Invalidity Contentions should IconFind’s contentions change.
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Google also expressly reserves the right to revise, amend, and/or supplement its
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disclosures and document production should IconFind attempt to rely on any information that it
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failed to provide in its disclosures. Furthermore, because discovery has only recently begun,
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Google reserves the right to revise, amend, and/or supplement the information provided herein
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should further analysis and discovery lead to additional information, consistent with the Joint
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Status Report and the Federal Rules of Civil Procedure. In addition, Google’s ultimate
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contentions concerning the invalidity of the asserted claims may change depending upon the
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Court’s construction of the claims and/or positions that IconFind or its witnesses (including the
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purported inventors of the ’459 patent) may take concerning claim interpretation, infringement,
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and/or invalidity issues, including but not limited to indefiniteness, conception, reduction to
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practice, inventorship, anticipation, obviousness, and secondary considerations.
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Prior art not included in this disclosure, whether known or not known to Google, may
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become relevant. In addition, the obviousness combinations of references provided below under
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35 U.S.C. § 103 are merely exemplary and are not intended to be exhaustive. In particular,
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Google is currently unaware of the extent, if any, to which IconFind will contend that elements
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of the asserted claims are not disclosed in the prior art identified by Google. To the extent such
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an issue arises, Google reserves the right to identify other references that would render such
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element obvious.
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Furthermore, Google’s claim charts cite particular teachings and/or disclosures of the
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prior art as applied to features of the asserted claims. However, persons of ordinary skill in the
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art generally may view an item of prior art in the context of other publications, literature,
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products, and technical knowledge. As such, Google reserves the right to rely on uncited
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portions of the prior art references, related file histories, other publications, and testimony as aids
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GOOGLE’S INVALIDITY CONTENTIONS
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in understanding and interpreting the cited portions, as providing context to them, and as
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additional evidence that the prior art discloses a claim element. Google further reserves the right
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to rely on uncited portions of the prior art references, related file histories, other publications,
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and testimony to establish that a person of ordinary skill in the art would have been motivated to
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combine certain of the cited references so as to render the claims obvious.
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Google has only produced claim charts for those claims that are currently asserted against
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Google, according to Plaintiff’s Infringement Contentions (the “Asserted Claims”). If Plaintiff
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revises its Infringement Contentions to include additional claims, Google expressly reserves the
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right to supplement its claim charts.
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Google further reserves the right to rely on invalidity based on 35 U.S.C. § 101 and §
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112(1) and (2) beyond that which is discussed below to the extent those defenses arise based
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upon discovery of additional facts or changes in the law. Nothing in these disclosures shall be
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treated as an admission that Google is obligated to produce documentation not under its custody
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or control, or that can be obtained from some other source that is more convenient, less
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burdensome and/or less expensive, or for which the burden or expense outweighs its likely
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benefit. Google expressly reserves the right to revise, amend, and/or supplement its disclosures
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and document production should additional documentation become available.
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II.

INVALIDITY CONTENTIONS

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A. Identification of Prior Art
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Google identifies the following prior art. Google may also rely on any of the references
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disclosed in the ’459 patent.
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For the reasons set out above, Google may rely upon any of the prior art listed below, and
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may also identify or rely upon additional references, either individually or in combination, that
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anticipate or render obvious the Asserted Claims.
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U.S. Patent No. 5,933,827 (filed September 25, 1996; issued August 3, 1999 to Cole
and Engleman) (“Cole”)

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U.S. Patent No. 6,112,181 (filed November 6, 1997; issued August 29, 2000 to Shear,
et al.) (“Shear”)

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U.S. Patent No. 6,094,657 (filed October 1, 1997; issued July 25, 2000 to Hailpern, et
al.) (“Hailpern”)

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U.S. Patent No. 5,835,905 (filed April 9, 1997; issued November 10, 1998 to Pirolli,
et al.) (“Pirolli”)

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MELVYL® Catalog developed by the University of California in 1980. The
MELVYL® Catalog is described in, for example:

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o “MELVYL® Reference Manual”, Regents of the University of California,
1985 (“MELVYL”)

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Paul Resnick and James Miller, “PICS: Internet Access Controls Without
Censorship”, Communications of the ACM 39 (10): 87–93, published October, 1996
(“Resnick”)

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Miller, J., Resnick, P., and Singer, D., “Rating Services and Rating Systems (and
Their Machine Readable Descriptions)”, World Wide Web Consortium, published
May 5, 1996 on www.w3.org (“Resnick Ratings”)

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Krauskopf, T., Miller, J., Resnick, P., and Treese, G.W., “Label Syntax and
Communication Protocols”, World Wide Web Consortium, published May 5, 1996 on
www.w3.org (“Resnick Label Syntax”)

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Rohit Khare & Joseph Reagle, “Rights Management, Copy Detection, and Access
Control” (Proceedings of NRC/SCTB/Information Systems Trustworthiness Project),
published June 6, 1997 on www.w3.org (“Khare”)

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A. Daviel, “Copy Control for Web Documents”, Vancouver Webpages, Internet
Draft, published November 1996 (“Daviel”)

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Diane Hillmann, “Using Dublin Core,” published July 16, 2000 on dublincore.org
(“Dublin”)

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DCMI, “DCMI Type Vocabulary.” published July 11, 2000 on dublincore.org
(“Dublin Type Vocabulary”)

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World Wide Web Consortium, “HTML 4.0 Specification,” published April 24, 1998
on www.w3.org (“HTML 4.0”)

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Ricardo Baeza-Yates and Berthier Riberio-Neto, “Modern Information Retrieval,”
Addison Wesley Longman Publishing Co. Inc., May 15 1999 (“Baeza-Yates”)

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GOOGLE’S INVALIDITY CONTENTIONS
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B. Anticipating References
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Each of the Asserted Claims of the ’459 patent, as properly construed, is anticipated or
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rendered obvious in light of the prior art or potential prior art listed above (“References”). To
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the extent that any of the References do not anticipate the Asserted Claims, their combination
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with the knowledge of one of ordinary skill in the art or other prior art disclosing the allegedly
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missing limitation renders the Asserted Claims obvious. As noted above, discovery is continuing
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and Google is still investigating the prior art and the basis or bases upon which references cited
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herein constitute or evidence prior art under 35 U.S.C. §§ 102 and 103. Google’s ongoing
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investigation relates to but is not limited to the publication dates of the references, the nature and
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location of publication of the references, the circumstances surrounding the making of any
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inventions before the applicants for the ’459 patent, and other facts relevant to whether a
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reference constitutes or evidences prior art.
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Google may rely on all or a subset of the References depending on the Court’s claim
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constructions, Plaintiffs’ arguments, and Google’s further investigations. Google’s contentions
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are in no way an admission or suggestion that a specific reference does not independently
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anticipate the Asserted Claims under 35 U.S.C. § 102. Provided below are a few exemplary, but
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not exhaustive, combinations of the References. For the reasons set out above, Google reserves
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the right to amend or supplement the Preliminary Invalidity Contentions, for example, to identify
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combinations of particular references with one another with additional particularity.
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All Asserted Claims of the ’459 patent are anticipated by Resnick. Alternatively, all
Asserted Claims of the ’459 patent are rendered obvious by Resnick in view of Dublin

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All Asserted Claims of the ’459 patent are anticipated by Shear

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All Asserted Claims of the ’459 patent are anticipated by Dublin

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All Asserted Claims of the ’459 patent are rendered obvious by Cole, or, alternatively
Cole in view of Khare, or, alternatively, in view of Dublin, or, alternatively, in view
of Resnick, or, alternatively, in view of Daviel

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GOOGLE’S INVALIDITY CONTENTIONS
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All Asserted Claims of the ’459 patent are rendered obvious by Khare in view of
Dublin, or, alternatively, in view of Resnick

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All Asserted Claims of the ’459 patent are rendered obvious by Pirolli in view of
Khare

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All Asserted Claims of the ’459 patent are rendered obvious by Hailpern in view of
Khare, or, alternatively, in view of Dublin, or, alternatively, in view of Daviel, or,
alternatively, in view of Resnick

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All Asserted Claims of the ’459 patent are rendered obvious by MELVYL®

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C. 35 U.S.C. § 101 Invalidity Contentions
The ’459 patent is directed to an abstract idea and therefore does not claim patentable
subject matter as required under 35 U.S.C. § 101. To determine whether a method claim is
directed towards patentable subject matter, a court may apply the machine-or-transformation test
for guidance. Prometheus Labs., Inc. v. Mayo Collaborative Servs. & Mayo Clinic Rochester,
Case No. 2008-1403, 2010 U.S. App.LEXIS 25956, *19-20 (Fed. Cir. Dec. 17, 2010). The ’459
patent does not satisfy the machine prong of the machine-or-transformation test because its
nominal recitation of a “computer” does not impose meaningful limits on the scope of the claims
as required by the relevant case law. In order for claims to be considered as being implemented
on a machine, they need to recite “structural limitations that narrow the computer implemented
method to something more specific than a general purpose computer [or] recite any specific
operations performed that would structurally define the computer.” See, e.g., Ex Parte Cherkas,
No. 2009-11287, 2010 WL 4219765, at *3 (October 25, 2010). In the claims of the ’459 patent,
no such limitation or specific operation exists; accordingly, the claims fail the machine prong of
the machine-or-transformation test.
The ’459 patent also fails the transformation prong of the machine-or-transformation test.
“Transformation and reduction of an article ‘to a different state or thing’ is the clue to
patentability of a process claim that does not include particular machines.” Bilski v. Kappos, 130
S. Ct. 3218, 3227 (2010). Neither the “network pages” in the ’459 patent, nor anything else in

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the claims are transformed in any way. Rather, at most, they are being categorized, and the
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claimed categorizations are themselves a mere abstraction.
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The claims of the ’459 patent do nothing more than recite the abstract idea of
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categorizing a “network page” by the page’s copyright status and whether the page is related to
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“transacting business” or “providing information” as well as controlling access to the network
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page based on its characterizations; therefore the claims are invalid under 35 U.S.C. § 101. See
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Google’s Memorandum Of Law In Support Of Its Motion For Judgment On The Pleadings, (Dkt.
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30); Google’s Reply In Support Of Its Motion On The Pleadings (Dkt. 49). Furthermore,
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because the claims are directed at an abstract idea they also lack utility as required 35 U.S.C. §
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101.
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D. 35 U.S.C. § 112 Invalidity Contentions
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i.

35 U.S.C. § 112 Contention - Indefiniteness

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The Asserted Claims of the ’459 patent are invalid because each includes the indefinite
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claim limitation “controlling usage of the network page using the categorization label and the
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copyright status of the network page.”
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The specification does not discuss the meaning of this claim term. Furthermore, the term
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“controlling usage” is not a term of art and has no special meaning in the field of computer
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programming. When applying a categorization label to a network page, a person having ordinary
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skill in the art would have no objective way to determine whether that categorization label is
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“controlling usage” of the network page because the specification does not teach one how to
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make that determination. Thus, this claim limitation is indefinite because it fails to meet the
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requirements of 35 U.S.C. § 112, ¶ 2. See Datamize, LLC v. Plumtree Software, Inc., 417 F.3d
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1342 (Fed. Cir. 2005).
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ii.

35 U.S.C. § 112 Contention – Lack of Enablement

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The Asserted Claims of the ’459 patent are invalid under 35 U.S.C. § 112, ¶ 1 due to lack
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of enablement. Each claim includes the claim limitation “controlling usage of the network page
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using the categorization label and the copyright status of the network page,” which is not enabled
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by the specification.
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This claim element is not discussed in the specification or the prosecution history.
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Furthermore, the term “controlling usage” is not a term of art and has no special meaning in the
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field of computer programming. If this claim term is not found to be indefinite, it must be given
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its ordinary and customary meaning. See CCS Fitness, Inc. v. Brunswick Corp., 288 F. 3d 1359,
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1365-66 (Fed. Cir. 2002). The ordinary and customary meaning of this claim term is restricting
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or restraining usage of the network page, i.e., disabling some functionality or usage of the
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material, for example, disabling the ability to copy text from a network page or disabling the
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ability to print a network page. The specification does not teach one skilled in the art how to
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restrain the usage of the network page using the categorization label. Therefore, this limitation is
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not enabled and the Asserted Claims are invalid under 35 U.S.C. § 112, ¶ 1. See Genentech Inc.
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v. Novo Nordisk A/S, 108 F.3d 1361, 1365 (Fed. Cir. 1997) (Patents are required to “teach those
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skilled in the art how to make and use the full scope of the claimed invention without ‘undue
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experimentation.’”).
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iii.

35 U.S.C. § 112 Contention – Failure of Written Description

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The Asserted Claims of the ’459 patent are invalid under 35 U.S.C. § 112, ¶ 2 because
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each asserted claim fails to meet the written description requirement. Each claim includes the
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claim limitation “controlling usage of the network page using the categorization label and the
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copyright status of the network page,” which is not supported by the specification.
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This claim element is not discussed in the specification or the prosecution history.
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Furthermore, the term “controlling usage” is not a term of art and has no special meaning in the
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field of computer programming. If this claim term is not found to be indefinite, it must be given
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its ordinary and customary meaning. See CCS Fitness, Inc. v. Brunswick Corp., 288 F. 3d 1359,
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1365-66 (Fed. Cir. 2002). The ordinary and customary meaning of this claim term is restricting
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or restraining usage of the network page, i.e., disabling some functionality or usage of the
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material, for example, disabling the ability to copy text from a network page or disabling the
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ability to print a network page. The specification does not adequately convey to a person having
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ordinary skill in the art that the inventor was in possession of an invention that controlled usage
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of a network page; therefore, the Asserted Claims of the ’459 patent are invalid because each
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claim fails to meet the written description requirement. See LizardTech v. Earth Resources
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Mapping, 424 F.3d 1336 (Fed. Cir. 2005) (invalidating a patent under § 112 because the claims
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encompassed more than the specification described).
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iv.

35 U.S.C. § 112 Contention - Indefiniteness

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Claims 27 and 28 of the ’459 patent are invalid because each include the phrase
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“recognizable to a search engine.” This claim element is insolubly ambiguous and therefore
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invalid. See Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005).
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The specification does not discuss how to make a categorization label “recognizable to a
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search engine.” The ’459 patent fails to provide any objective way to determine whether a
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categorization label is “recognizable to a search engine.” Thus, the claim limitation fails to meet
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the requirements of 35 U.S.C. § 112, ¶ 2.
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Dated: August 12, 2011

Respectfully submitted,
KAYE SCHOLER LLP

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

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