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)

APPENDIX K
U.S. Pat. No. 7,181,459

MELVYL®

1. A computer implemented
method of categorizing a
network page, comprising:

MELVYL® is a cataloging system for books that is implemented on a
computer. The MELVYL® system categorizes books and allows
users to search for books by subject, title, author, etc. using a
computer. See, e.g., MELVYL at 2.0 (“The MELVYL online catalog
provides the library patron with a powerful and flexible tool for
finding where books are located within the UC library system, and for
displaying the information from the catalog records in the database”).

[a] 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;

MELVYL® provided a list of subjects (i.e., categories). See, e.g.,
MELVYL at 3.1.4.1 (“There are six keyword indexes that can be
used to search for books in seven ways. The indexes are built by
extracting keyword access points from author, title, series and subject
heading fields in the bibliographic input records.”).
Creating categories for “transacting business,” “providing
information,” and a category based on copyright status of material on
a page in the MELVYL® system is a combination of known elements
that yields predictable results and is thus obvious. See KSR Intern.
Co. v. Teleflex Inc., 127 S. Ct. 1727, 1739 (2007) (“The combination
of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.”).
Categories for “transacting business” and “providing information” are
obvious in light of a number of online directories available prior to
August 9, 2001. See, e.g., Yahoo!’s homepage from February 8,
1999 available at
http://web.archive.org/web/19990208021547/http://www.yahoo.com/.
The MELVYL® system uses subjects provided by the Library of
Congress as its subject categories. These categories include multiple
categories under the business and commerce headings and multiple
informational categories.
Categories based on copyright status were known in the field of
categorization of online content since August 9, 2001. See, e.g.,
Open Publication License v1.0, published June 8, 1999, available at
http://www.opencontent.org/openpub/; The Assayer: Help, publicly
available since at least as early as February 2, 2001 at
http://www.theassayer.org/help.html (Listing the following categories
based on copyright status:
“0. Copyrighted, with a licensing agreement that prohibits selling or
permanent use (an anti-book)
1. Copyrighted, with no licensing agreement (a traditional book) [also
books on iUniverse]

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GOOGLE’S INVALIDITY CONTENTIONS - APPENDIX K

2. Copyrighted, doesn't cost money to read, but otherwise not free
3. Public domain
4. Copylefted, but with restrictions on modification and/or sale
5. Copylefted: anyone can read, modify, and sell”).
[b] assigning said network page
to one or more of said list of
categories;

The MELVYL® Catalog maintains a database that keeps a record of
books and the categories to which the books are assigned in order to
allow users to find books by searching for categories. See, e.g.,
MELVYL at 5.0.

[c] providing a categorization
label for the network page using
the copyright status of material
on the network page; and

MELVYL® discloses indicating the categorization label for the book
to the user. See, e.g., MELVYL at 6.4.2 (showing the “Long format
display” of data elements (i.e., books) that includes, in addition to
author, title and call number, a list of the subjects (i.e., categories) to
which the book is assigned).
Indicating the categorization label using the copyright status was well
known in the art prior to August 9, 2001. See, e.g., the copyright
notice at the bottom of HTML 4.0 (“Copyright © 1997 W3C (MIT,
INRIA, Keio ), All Rights Reserved.”).

[d] controlling usage of the
network page using the
categorization label and the
copyright status of the network
page.

MELVYL® discloses providing indicia of the categorization label for
the network page to the user. See, e.g., MELVYL at 6.4.2 (showing the
“Long format display” of data elements (i.e., books) that includes, in
addition to author, title and call number, a list of the subjects (i.e.,
categories) to which the book is assigned).
Providing indicia of the categorization label using the copyright status
was well known in the art prior to August 9, 2001. See, e.g., the
copyright notice at the bottom of HTML 4.0 (“Copyright © 1997
W3C (MIT, INRIA, Keio ), All Rights Reserved.”).

6. The method of claim 1,
wherein said plurality of
categories based on the
copyright status of material on a
page comprise categories related
to public domain, fair use only,
use with attribution, and
permission of copyright owner
needed.

The claimed categories are obvious permutations of copyright
categories known prior to August 9, 2001. See, e.g., Open
Publication License v1.0, published June 8, 1999, available at
http://www.opencontent.org/openpub/; The Assayer: Help, publicly
available since at least as early as February 2, 2001 at
http://www.theassayer.org/help.html.

9. The method of claim 1,
A plurality of categories based on copyright status of material is
wherein said categories include: obvious in view of known prior to August 9, 2001. See, e.g., Open
a plurality of categories based on Publication License v1.0, published June 8, 1999, available at

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GOOGLE’S INVALIDITY CONTENTIONS - APPENDIX K

the copyright status of the
material on a page.

http://www.opencontent.org/openpub/.

16. The method of claim 1,
further comprising providing an
indicium for each of said
categories.

MELVYL® discloses providing an indicium for each of the categories
to which the book is assigned. See MELVYL at 6.4.2 (showing the
“Long format display” of data elements (i.e., books) that includes, in
addition to author, title and call number, a list of the subjects (i.e.,
categories) to which the book is assigned).
Providing indicia of the categorization label using the copyright status
was well known in the art prior to August 9, 2001. See, e.g., the
copyright notice at the bottom of HTML 4.0 (“Copyright © 1997
W3C (MIT, INRIA, Keio ), All Rights Reserved.”).

17. The method of claim 16,
An indicium comprised of an icon would have been obvious to one
wherein said indicium comprises skilled in the art in because icons were commonly used to represent
an icon.
text in computer applications and web pages prior to August 9, 2001.
19. The method of claim 1,
further comprising providing a
categorization code that can be
used to label the page with the
categorization label that
indicates the categories to which
the page is assigned.

MELVYL® provides a database that associates books with records
(i.e., a categorization code). Each book is labeled in the database and
the label is displayed when accessed by a user of the system. See
MELVYL at 6.4.2 (showing the “Long format display” of data
elements (i.e., books) that includes, in addition to author, title and call
number, a list of the subjects (i.e., categories) to which the book is
assigned).

20. The method of claim 19,
wherein said categorization code
comprises an indicium for each
of said categories.

MELVYL® provides a database that associates books with records
(i.e., a categorization code). Each book is labeled in the database and
the label is displayed when accessed by a user of the system. See
MELVYL at 6.4.2 (showing the “Long format display” of data
elements (i.e., books) that includes, in addition to author, title and call
number, a list of the subjects (i.e., categories) to which the book is
assigned).

21. The method of claim 20,
MELVYL® does not limit category indicium to two letters.
wherein said indicium comprises
two letters.
22. The method of claim 20,
wherein said categorization label
includes the indicia for each
category to which a page is
-3-

MELVYL® provides labels for the books, a label for each category to
which a book is assigned is displayed when accessed by a user of the
system. See MELVYL at 6.4.2 (showing the “Long format display” of
data elements (i.e., books) that includes, in addition to author, title
GOOGLE’S INVALIDITY CONTENTIONS - APPENDIX K

assigned.

and call number, a list of the subjects (i.e., categories) to which the
book is assigned).

27. The method of claim 19,
MELVYL® provides a search engine that searches the database for
further comprising making said
books that match a user’s query. See MELVYL at 5.0 (describing the
categorization label recognizable search options available to users of the MELVYL® system).
by a search engine.
28. The method of claim 1,
further comprising making said
categories to which a page is
assigned recognizable by a
search engine.

MELVYL® provides a search engine that searches the database for
books that match a user’s query. See MELVYL at 5.0 (describing the
search options available to users of the MELVYL® system).

29. The method of claim 1,
wherein said list of categories is
provided on a graphical user
interface.

MELVYL® discloses a graphical user interface that provides the list
of categories. See MELVYL at 6.4.2 (showing the “Long format
display” of data elements (i.e., books) that includes, in addition to
author, title and call number, a list of the subjects (i.e., categories) to
which the book is assigned).

30. A computer implemented
method for categorizing a
network page, comprising:

MELVYL® is a cataloging system for books that is implemented on a
computer. The MELVYL® system categorizes books and allows
users to search for books by subject, title, author, etc. using a
computer. See, e.g., MELVYL at 2.0 (“The MELVYL online catalog
provides the library patron with a powerful and flexible tool for
finding where books are located within the UC library system, and for
displaying the information from the catalog records in the database”).

[a] 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
plurality of categories based on
the copyright status of material
on a page;

MELVYL® provided a list of subjects (i.e., categories). See, e.g.,
MELVYL at 3.1.4.1 (“There are six keyword indexes that can be
used to search for books in seven ways. The indexes are built by
extracting keyword access points from author, title, series and subject
heading fields in the bibliographic input records.”).
Creating categories for “transacting business,” “providing
information,” and a category based on copyright status of material on
a page in the MELVYL® system is a combination of known elements
that yields predictable results and is thus obvious. See KSR Intern.
Co. v. Teleflex Inc., 127 S. Ct. 1727, 1739 (2007) (“The combination
of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.”).
Categories for “transacting business” and “providing information” are

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GOOGLE’S INVALIDITY CONTENTIONS - APPENDIX K

obvious in light of a number of online directories available prior to
August 9, 2001. See, e.g., Yahoo!’s homepage from February 8,
1999 available at
http://web.archive.org/web/19990208021547/http://www.yahoo.com/.
The MELVYL® system uses subjects provided by the Library of
Congress as its subject categories. These categories include multiple
categories under the business and commerce headings and multiple
informational categories.
Categories based on copyright status were known in the field of
categorization of online content since August 9, 2001. See, e.g.,
Open Publication License v1.0, published June 8, 1999, available at
http://www.opencontent.org/openpub/; The Assayer: Help, publicly
available since at least as early as February 2, 2001 at
http://www.theassayer.org/help.html (Listing the following categories
based on copyright status:
“0. Copyrighted, with a licensing agreement that prohibits selling or
permanent use (an anti-book)
1. Copyrighted, with no licensing agreement (a traditional book) [also
books on iUniverse]
2. Copyrighted, doesn't cost money to read, but otherwise not free
3. Public domain
4. Copylefted, but with restrictions on modification and/or sale
5. Copylefted: anyone can read, modify, and sell”).
[b] 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;
and

-5-

MELVYL® provides a database that associates books with records
(i.e., a categorization code). Each book is labeled in the database and
the label is displayed when accessed by a user of the system. See
MELVYL at 6.4.2 (showing the “Long format display” of data
elements (i.e., books) that includes, in addition to author, title and call
number, a list of the subjects (i.e., categories) to which the book is
assigned).
Categories based on copyright status were known in the field of
categorization of online content since August 9, 2001. See, e.g.,
Open Publication License v1.0, published June 8, 1999, available at
http://www.opencontent.org/openpub/; The Assayer: Help, publicly
available since at least as early as February 2, 2001 at
http://www.theassayer.org/help.html (Listing the following categories
based on copyright status:
“0. Copyrighted, with a licensing agreement that prohibits selling or
permanent use (an anti-book)
1. Copyrighted, with no licensing agreement (a traditional book) [also
books on iUniverse]
2. Copyrighted, doesn't cost money to read, but otherwise not free
3. Public domain

GOOGLE’S INVALIDITY CONTENTIONS - APPENDIX K

4. Copylefted, but with restrictions on modification and/or sale
5. Copylefted: anyone can read, modify, and sell”).
[c] controlling usage of the
network page using the
categorization label and the
copyright status of the network
page.

MELVYL® discloses providing indicia of the categorization label for
the network page to the user. See, e.g., MELVYL at 6.4.2 (showing the
“Long format display” of data elements (i.e., books) that includes, in
addition to author, title and call number, a list of the subjects (i.e.,
categories) to which the book is assigned).
Providing indicia of the categorization label using the copyright status
was well known in the art prior to August 9, 2001. See, e.g., the
copyright notice at the bottom of HTML 4.0 (“Copyright © 1997
W3C (MIT, INRIA, Keio ), All Rights Reserved.”).

31. A computer implemented
method of categorizing a
network page, comprising:

MELVYL® is a cataloging system for books that is implemented on a
computer. The MELVYL® system categorizes books and allows
users to search for books by subject, title, author, etc. using a
computer. See, e.g., MELVYL at 2.0 (“The MELVYL online catalog
provides the library patron with a powerful and flexible tool for
finding where books are located within the UC library system, and for
displaying the information from the catalog records in the database”).

[a] 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;

MELVYL® provided a list of subjects (i.e., categories). See, e.g.,
MELVYL at 3.1.4.1 (“There are six keyword indexes that can be
used to search for books in seven ways. The indexes are built by
extracting keyword access points from author, title, series and subject
heading fields in the bibliographic input records.”).
Creating a category based on copyright status of material on a page in
the MELVYL® system is a combination of known elements that
yields predictable results and is thus obvious. See KSR Intern. Co. v.
Teleflex Inc., 127 S. Ct. 1727, 1739 (2007) (“The combination of
familiar elements according to known methods is likely to be obvious
when it does no more than yield predictable results.”).
Categories based on copyright status were known in the field of
categorization of online content since August 9, 2001. See, e.g.,
Open Publication License v1.0, published June 8, 1999, available at
http://www.opencontent.org/openpub/; The Assayer: Help, publicly
available since at least as early as February 2, 2001 at
http://www.theassayer.org/help.html (Listing the following categories
based on copyright status:
“0. Copyrighted, with a licensing agreement that prohibits selling or
permanent use (an anti-book)
1. Copyrighted, with no licensing agreement (a traditional book) [also
books on iUniverse]

-6-

GOOGLE’S INVALIDITY CONTENTIONS - APPENDIX K

2. Copyrighted, doesn't cost money to read, but otherwise not free
3. Public domain
4. Copylefted, but with restrictions on modification and/or sale
5. Copylefted: anyone can read, modify, and sell”).
[b] assigning said network page
to one or more of a plurality of
said list of categories;

The MELVYL® Catalog maintains a database that keeps a record of
books and the categories to which the books are assigned in order to
allow users to find books by searching for categories. See, e.g.,
MELVYL at 5.0.

[c] providing a categorization
label for the network page using
the copyright status of material
on the network page; and

MELVYL® discloses indicating the categorization label for the book
to the user. See, e.g., MELVYL at 6.4.2 (showing the “Long format
display” of data elements (i.e., books) that includes, in addition to
author, title and call number, a list of the subjects (i.e., categories) to
which the book is assigned).
Indicating the categorization label using the copyright status was well
known in the art prior to August 9, 2001. See, e.g., the copyright
notice at the bottom of HTML 4.0 (“Copyright © 1997 W3C (MIT,
INRIA, Keio ), All Rights Reserved.”).

[d] controlling usage of the
network page using the
categorization label and the
copyright status of the network
page.

MELVYL® discloses providing indicia of the categorization label for
the network page to the user. See, e.g., MELVYL at 6.4.2 (showing the
“Long format display” of data elements (i.e., books) that includes, in
addition to author, title and call number, a list of the subjects (i.e.,
categories) to which the book is assigned).
Providing indicia of the categorization label using the copyright status
was well known in the art prior to August 9, 2001. See, e.g., the
copyright notice at the bottom of HTML 4.0 (“Copyright © 1997
W3C (MIT, INRIA, Keio ), All Rights Reserved.”).

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GOOGLE’S INVALIDITY CONTENTIONS - APPENDIX K