IconFind, Inc. v. Google, Inc.

Filing 74

MEMORANDUM by Google, Inc. in SUPPORT of 73 MOTION for JUDGMENT RENEWED MOTION FOR JUDGMENT ON THE PLEADINGS OF INVALIDITY OF U.S. PATENT NO. 7,181,459. (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
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.,
Plaintiff,

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v.

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GOOGLE INC.,

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Defendant.

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Case No. 2:11-CV-00319 GEB JFM
GOOGLE INC.’S RENEWED MOTION
FOR JUDGMENT ON THE PLEADINGS
OF INVALIDITY OF U.S. PATENT NO.
7,181,459

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TABLE OF CONTENTS

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I.

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

II.

BACKGROUND ................................................................................................................ 2

III.

LEGAL STANDARD......................................................................................................... 3

IV.

ARGUMENT...................................................................................................................... 5
A.

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

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2.

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B.

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The Claims of the ’459 Patent Are Directed at an Abstract Idea................... 11
1.

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2.

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V.

The Claims of the ’459 Patent Fail the “Machine” Prong of the
Machine-or-Transformation Test................................................................ 7
The Claims of the ’459 Patent Fail the “Transformation” Prong of the
Machine-or-Transformation Test.............................................................. 10

The Claims of the ’459 Patent Are Not Patent Eligible Are Directed
to Mental Steps and Are Not Patent Eligible ............................................ 12
As in Benson and Flook the Claims of the ’459 Patent are Directed to
an Unpatentable Abstract Idea .................................................................. 14

CONCLUSION................................................................................................................. 16

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TABLE OF AUTHORITIES
Cases
Accenture Global Servs., GmbH v. Guidewire Software, Inc.,
No. 07-826, 2011 U.S. Dist. LEXIS 57853 (D. Del. May 31, 2011)............................ 7, 14
Advanced Micro Devices v. Samsung Elecs.Co.,
No. 08-986, 2010 U.S. Dist. LEXIS 24243 (N.D. Cal. Mar. 15, 2010) ............................. 1
Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Can.,
771 F.Supp.2d 1054 (E.D. Mo. 2011)......................................................................... 4, 7, 9
Bell Commc’ns Research, Inc. v. Vitalink Commc’ns Corp.,
55 F.3d 615 (Fed. Cir. 1995)............................................................................................... 6
Bilski v. Kappos,
130 S. Ct. 3218 (2010)............................................................................................... passim
CLS Bank Int'l v. Alice Corp. Pty, Ltd.,
No. 07-974, 2011 U.S. Dist. LEXIS 23669 (D.D.C. Mar. 9, 2011) ................... 7, 8, 11, 12
Cybersource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366 (Fed. Cir. 2011).................................................................................. passim
Diamond v. Diehr,
450 U.S. 175 (1981)............................................................................................ 4, 5, 12, 15
Ex Parte Cherkas,
No. 2009-11287, 2010 WL 4219765 (B.P.A.I. Oct. 25, 2010) .......................................... 9
Fuzzysharp Techs., Inc. v. 3D Labs, Inc., Ltd.,
No. 07-5948, 2009 U.S. Dist. LEXIS 115493 (N.D. Cal. Dec. 11, 2009).......................... 9
Glory Licensing LLC v. Toys “R” Us, Inc.,
No. 09-4252, 2011 U.S Dist. LEXIS 51888 at (D.N.J. May 16, 2011) .............................. 9
Gottschalk v. Benson,
409 U.S. 63 (1972)..................................................................................................... passim
Graff/Ross Holdings LLP v. Fed. Home Loan Mortg. Corp.,
No. 07-796, 2010 U.S. Dist. LEXIS 141399 (D.D.C. Aug. 27, 2010) ............................... 8
Hal Roach Studios, Inc. v. Richard Feiner & Co.,
896 F.2d 1542 (9th Cir. 1989) ........................................................................................ 3, 4
In re Bilski,
545 F.3d 943 (Fed. Cir. 2008).................................................................................... passim
In re Comiskey,
554 F.3d 967 (Fed. Cir. 2009)............................................................................................. 1
In re Ferguson,
558 F.3d 1359 (Fed. Cir. 2009)..................................................................................... 8, 11
In re Vilalta, et al.,
No. 2009-10862, 2011 WL 6012377 (B.P.A.I. Nov. 29, 2011) ......................................... 5
King Pharmaceuticals, Inc. v. Eon Labs, Inc.,
616 F.3d 1267 (Fed. Cir. 2010)........................................................................................... 7
Parker v. Flook,
437 U.S. 584 (1978)................................................................................................... passim
Prometheus Labs., Inc. v. Mayo Collaborative Servs. & Mayo Clinic Rochester,
628 F.3d 1347 (Fed. Cir. 2010)........................................................................................... 6
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Research Corp. Techs. v. Microsoft Corp.,
627 F.3d 859 (Fed. Cir. 2010)..................................................................................... 12, 14
SiRF Technology, Inc. v. Int’l Trade Comm’n,
601 F.3d 1319 (Fed. Cir. 2010)........................................................................................... 8
Ultramercial, LLC v. Hulu, LLC,
657 F.3d 1323 (Fed. Cir. 2011)................................................................................. 4, 7, 14
VS Techs., LLC v. Twitter, Inc.,
No. 11-43, 2011 U.S. Dist. LEXIS 114998 (E.D. Va. Oct. 4, 2011).................................. 7
Statutes
FED. R. CIV. P. 12(c) ....................................................................................................................... 1
Federal Rule of Evidence 201......................................................................................................... 1
Other Authorities
“Interim Guidance for Determining Subject Matter Eligibility for Process Claims in View
of Bilski v. Kappos,”
75 Fed. Reg. 43,992 (July 27, 2010)................................................................................... 7

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NOTES ON CITATIONS

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The patent-in-suit, U.S. Patent No. 7,181,459 (“the ’459 patent”), is attached as Exhibit 1

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to the Declaration of Kenneth M. Maikish (the “Maikish Decl.”). References to the ’459 patent

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are indicated by column and line number. A reference to “3:15” means column 3, line 15.

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Google filed a Request for Judicial Notice of the Prosecution History of U.S. Patent No.

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7,181,459 on April 15, 2011, concurrently with its original Motion For Judgment On The
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Pleadings. (Dkt. No. 31.) While Google does not believe that the Court need consult the
Prosecution History in order to reach resolution of this matter, reference to the Prosecution

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History is illuminating and corroborates Google contention that the ’459 patent is invalid pursuant

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to 35 U.S.C. § 101.

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Relevant portions of the Prosecution History are attached to the Maikish Decl., as follows:
Exhibit Description

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

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

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

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

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

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

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I.

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

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limits on patentable subject matter – abstract ideas are not patentable. Bilski v. Kappos, 130 S.

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Ct. 3218, 3225 (2010) (“Bilski II”). The Supreme Court and recent decisions applying its

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guidance have found that merely adding to an abstract idea the notion of implementing it on a

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computer does not render the idea patentable. The claims of the ’459 patent are exactly that: an

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abstract idea simply implemented on a computer, and accordingly, are not patentable.
The prosecution history of the ’459 patent makes this point abundantly clear. Initially, the

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Examiner rejected all of the claims as invalid under Section 101 as directed to an abstract idea.

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Rather than argue the contrary or respond to the substance of the rejection, the patentee merely

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altered the preamble of its claims to include the phrase “a computer implemented method” in an

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attempt to tie the abstract concepts of the patent claims to a machine (i.e., a general purpose

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computer).
As the Supreme Court has recently made clear, however, this is not enough to render

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claims patentable under Section 101. Abstract ideas – unpatentable as a matter of law – cannot

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otherwise be made patentable simply by directing them to run on a general purpose computer. In

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short, recent jurisprudence establishes that the Examiner’s initial rejection was correct and the

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patentee’s “cure” is insufficient as a matter of law.
Because the claims of the ’459 patent are directed to non-patentable subject matter,

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

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the ’459 Patent, pursuant to FED. R. CIV. P. 12(c).1

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The issue of patentable subject matter is a question of law. In re Comiskey, 554 F.3d 967,
975 (Fed. Cir. 2009). Accordingly, Google believes that no additional matters beyond those
relating to the pleadings (including the ’459 patent) need be considered. Because the Prosecution
History of the ’459 patent provides background and corroboration of the issues raised in this
motion, Google requests, through its concurrently filed Request for Judicial Notice, that this
Court take judicial notice of the Prosecution History of the ’459 patent (although Google does not
believe that the Court must necessarily consider the Prosecution History in order to reach a
determination). See, e.g., Advanced Micro Devices v. Samsung Elecs.Co., No. 08-986, 2010 U.S.
Dist. LEXIS 24243, at *36 (N.D. Cal. Mar. 15, 2010) (indicating that, in determining a Motion on
the Pleadings, “courts may consider exhibits submitted or referenced in the complaint and matters
that may be judicially noticed pursuant to Federal Rule of Evidence 201”).

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(continued...)
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II.

BACKGROUND
Plaintiff brought this action on February 4, 2011, alleging infringement of the ’459 patent

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by Google’s Picasa, Knol,2 and Books web properties. Complaint, ¶ 5, Dkt No. 1. Google filed

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its first Motion for Judgment on the Pleadings of Invalidity of U.S. Patent 7,181,459 shortly

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thereafter. (Dkt. No. 29.) On June 3, 2011, the Court issued an order denying the earlier filed

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Motion for Judgment on the Pleadings as premature. (Dkt. No. 53.) In its Pretrial Scheduling

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Order, the Court indicated that “[i]f Google elects to refile its motion for Invalidity of U.S. Patent

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No. 7,181,459 under 35 U.S.C. at the point when pleadings are closed, the Court will hear

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Google’s renewed Motion on January 23, 2012.” (Dkt. No. 55.) The pleadings are now closed

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(see, e.g., Plaintiff’s Answer to Google’s Second Amended Counterclaims, Dkt. No. 69), and the

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instant motion is Google’s Renewed Motion for Judgment on the Pleadings of Invalidity of U.S.

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Patent No. 7,181,459.
The ’459 patent is entitled “Method of Coding, Categorizing, and Retrieving Network

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

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

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initially included 50 claims. Maikish Decl., Ex. 2. On May 24, 2004, the Examiner issued a

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restriction requirement, essentially indicating that the application was directed to two independent

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inventions and requiring the patentee to narrow its application to a single invention. Maikish

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Decl., Ex. 3. The patentee then narrowed the application to 32 claims (i.e., the initial 32 claims of

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its original application). Maikish Decl., Ex. 4.
In response to an office action dated January 27, 2005, rejecting all the claims of the

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

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added one additional claim. Maikish Decl., Ex. 5. Nevertheless, on July 11, 2005, the Examiner

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Google recently announced that it will be shutting down the Knol web property over the
next year. The Google Knol website will no longer be available after April 30, 2012 and data
from Google Knol will not be available after October 1, 2012. See,
http://googleblog.blogspot.com/2011/11/more-spring-cleaning-out-of-season.html (last visted
December 13, 2011).

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issued another rejection in which she rejected all of the pending claims of the application.

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Maikish Decl., Ex. 6. Among the bases of rejection, the Examiner rejected all of the claims of the

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application as failing to be directed to patentable subject matter pursuant to 35 U.S.C. § 101

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indicating:

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

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Id. at 2 (emphasis added). The patentee did not object to the Examiner’s Section 101 rejection.
Instead, on September 8, 2005, the patentee amended its claims in accord with the Examiner’s
suggestion altering the preamble of the claims to read “a computer implemented method.”
Maikish Decl., Ex. 7. The Examiner subsequently withdrew the objection to the claims with
respect to the patentable subject matter rejection. Although prosecution of the claims continued,
including additional amendment to the claims, there were no further rejections based on 35
U.S.C. § 101.
The Examiner’s initial rejection pursuant to Section 101 was correct because the claims

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were – and are – directed towards an abstract idea that, as a matter of law, is not eligible for
patent protection. As discussed below, notwithstanding the Examiner’s suggestion, recent case
law, including from the Supreme Court, makes clear that abstract ideas, such as those embodied
in the claims of the ’459 patent, cannot be made patentable merely by tying such concepts to a
general purpose computer. Simply taking an unpatentable abstract idea and adding “extrasolution” language to the effect that the idea should be implemented on a computer does not make
the abstract idea patentable.
III.

LEGAL STANDARD
“Judgment on the pleadings is proper when the moving party clearly establishes on the

face of the pleadings that no material issue of fact remains to be resolved and that it is entitled to
judgment as a matter of law.” Hal Roach Studios, Inc. v. Richard Feiner & Co., 896 F.2d 1542,
1550 (9th Cir. 1989). In resolving such a motion, “the allegations of the non-moving party must
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be accepted as true, while the allegations of the moving party which have been denied are

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assumed to be false.” Id.

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35 U.S.C. § 101 provides: “Whoever invents or discovers any new and useful process,

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machine, manufacture, or composition of matter, or any new and useful improvement thereof,

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may obtain a patent therefor, subject to the conditions and requirements of this title.” Whether a

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claim is drawn to patent-eligible subject matter under Section 101 of the Patent Act is an issue of

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law that is a threshold inquiry into a patent’s validity. In re Bilski, 545 F.3d 943, 950 (Fed. Cir.

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2008) (en banc) (“Bilski I”). Any claim failing the requirements of Section 101 of the Patent Act

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“must be rejected even if it meets all of the other legal requirements of patentability.” Id.

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The framework of what constitutes appropriate subject matter under 35 U.S.C. § 101 is

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not unlimited. The Supreme Court has identified three exceptions to the Patent Act’s scope: (1)

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laws of nature; (2) physical phenomena; and (3) abstract ideas. Bilski II, 130 S. Ct. at 3225; see

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

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v. Diehr, 450 U.S. 175 (1981). As the Court in Benson explains, “[p]henomena of nature, though

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just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are

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the basic tools of scientific and technological work.” Benson, 409 U.S. at 67. As the Supreme

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Court has recently expounded, these exceptions are consistent with 35 U.S.C. § 101’s requirement

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that a patentable invention be “new and useful.” Bilski II, 130 S. Ct. at 3225.

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Neither the Federal Circuit nor the Supreme Court has adopted a per se test to determine

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what constitutes an abstract idea under 35 U.S.C. §101. Ultramercial, LLC v. Hulu, LLC, 657

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F.3d 1323, 1327 (Fed. Cir. 2011) (“Both members of the Supreme Court and this court have

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recognized the difficulty of providing a precise formula or definition for the judge-made

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ineligible category of abstractness [under 35 U.S.C. § 101].”). However, both the Federal Circuit

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and the Supreme Court have recently provided insight into assessing this issue. As discussed

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further below, whether one applies the “machine-or-transformation” test of Bilski I or conducts

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the claim comparison analysis of Bilski II, one must conclude that these claims are invalid under

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Section 101. Accord, Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Can., 771 F. Supp. 2d

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1054, 1063 (E.D. Mo. 2011) (“In making this decision, the Court will first consider whether the
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claims satisfy the machine-or-transformation test and then will apply Bilski [II] and examine

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whether what is claimed is an abstract idea under Benson, Flook, and Diehr.”); see also, In re

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Vilalta, et al., No. 2009-10862, 2011 WL 6012377, at *1-2 (B.P.A.I. Nov. 29, 2011).
In this instance, perhaps the most telling fact of all is the Patent Examiner’s initial 101

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rejection. As she pointed out in rejecting the claims on 101 grounds, the claims are directed to a

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series of mental steps capable of being performed entirely with the human mind. As the Federal

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Circuit has recently reminded in Cybersource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed.

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Cir. 2011), claims directed to mental steps capable of being performed by a person in their head,

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should be rejected as claiming an abstract idea.
Courts have routinely held that adding “extra-solution” activity in the form of the words

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“a computer implemented method” (i.e., the only thing the patentee did to “overcome” the

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Examiner’s 101 rejection) does not rescue otherwise abstract ideas from a Section 101 challenge.

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Id.; Bilski I, 545 F.3d at 961-62. But that is exactly what the patentee did here. Merely adding

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these words to the preamble cannot save the claims of the ’459 patent. Accordingly, the court

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should reject all claims of the ’459 patent as unpatentable under 35 U.S.C. § 101.

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IV.

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

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

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

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

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assigning said network page to one or more of said list of categories;
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providing a categorization label for the network page using the copyright
status of material on the network page; and

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

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

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

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

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

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

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

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

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is identical to Claim 1 save that list of categories is restricted to “public domain, fair use only, use

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with attribution, and permission of copyright owner needed.” All of the independent claims (and,

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by extension, all of the dependent claims as well), recite the language “a computer implemented

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method” in the preamble.3 As discussed below, the claims of ’459 are no different than the kinds

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of claims various courts have found invalid since the Federal Circuit and Supreme Court

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addressed the issue of patentable subject matter in Bilski I and Bilski II.

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A.

The Claims of the ’459 Patent Fail the Machine-or-Transformation Test
The machine-or-transformation test remains a useful tool to help courts determine whether

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claims are directed towards patentable subject matter. Prometheus Labs., Inc. v. Mayo

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Collaborative Servs. & Mayo Clinic Rochester, 628 F.3d 1347, 1355 (Fed. Cir. 2010); accord

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CyberSource, 654 F.3d at 1370. Under this test, an invention may be patentable (assuming it

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

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or (2) it transforms a particular article into a different state or thing.” Bilski I, 545 F.3d at 954.

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The Federal Circuit further clarified that “the use of a specific machine or transformation of an

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article must impose meaningful limits on the claim’s scope to impart patent-eligibility” and “the

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involvement of the machine or transformation in the claimed process must not entirely be

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insignificant extra-solution activity.” Id. at 961-62.

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It is also telling that the patentee merely added these words to the preamble because the
preamble is typically not even limiting of a claim. See Bell Commc’ns Research, Inc. v. Vitalink
Commc’ns Corp., 55 F.3d 615, 620 (Fed. Cir. 1995) (“Much ink has, of course, been consumed in
debates regarding when and to what extent claim preambles limit the scope of the claims in which
they appear.”).

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

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

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

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

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

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it.”); CLS Bank Int'l v. Alice Corp. Pty, Ltd., No. 07-974, 2011 U.S. Dist. LEXIS 23669, at *34

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

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

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remains a ‘useful and important clue, an investigative tool’ in the analysis.”) (quoting Bilski II,

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130 S. Ct. at 3227); Accenture Global Servs., GmbH v. Guidewire Software, Inc., No. 07-826,

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2011 U.S. Dist. LEXIS 57853, at *20 (D. Del. May 31, 2011) (“Using the court’s previous

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machine or transformation determination as an ‘important clue’ in the analysis, the court must

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now determine whether the claims as a whole convey an unpatentable, abstract idea.”); Bancorp

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Servs., 2011 U.S. Dist. LEXIS 14272, at *15 (concluding, after comprehensive analysis of

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

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

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under § 101”); accord VS Techs., LLC v. Twitter, Inc., No. 11-43, 2011 U.S. Dist. LEXIS 114998,

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at *7-8 (E.D. Va. Oct. 4, 2011); c.f., Ultramercial, 657 F.3d at 1327 (noting that “technology

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without anchors in physical structures and mechanical steps simply defy easy classification under

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the machine-or-transformation categories” and instead focusing on the “practical application of

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the [technology in-suit]”). Indeed, the U.S. Patent and Trademark Office continues to use the

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machine-or-transformation test as an indicator of patentability. See “Interim Guidance for

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Determining Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos,” 75 Fed.

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Reg. 43,992 (July 27, 2010).

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1.

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

A machine is “a concrete thing, consisting of parts, or of certain devices and combination
of devices. This includes every mechanical device or combination of mechanical powers and

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devices to perform some function and produce a certain effect or result.” SiRF Tech., Inc. v. Int’l

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Trade Comm’n, 601 F.3d 1319, 1332 (Fed. Cir. 2010) (citing In re Ferguson, 558 F.3d 1359,

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1364 (Fed. Cir. 2009).

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The mere fact that the claims of the ’459 patent recite the phrase “computer implemented

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method” does not satisfy the machine prong of the machine-or-transformation test. Bancorp

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Servs., 771 F. Supp. 2d at 1063 (“It is important to note at the outset that not every patent that

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recites a machine or transformation of an article passes the machine-or-transformation test.”).

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“[T]he use of a specific machine or transformation on an article must impose meaningful limits

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on the claim’s scope to impart patent eligibility.” Bilski I, 545 F.3d at 961-62 (emphasis added).

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Put another way, “the involvement of the machine or transformation in the claimed process must

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not merely be insignificant extra-solution activity.” Id. (emphasis added)

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To permit otherwise would exalt form over substance and permit artful claim drafting to

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circumvent the limitations contemplated by section 101. Graff/Ross Holdings LLP v. Fed. Home

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Loan Mortg. Corp., No. 07-796, 2010 U.S. Dist. LEXIS 141399, at *14 (D.D.C. Aug. 27, 2010)

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(quoting Flook, 437 U.S. at 590) (“Furthermore, according to the Court, ‘[t]he notion that post-

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solution activity, no matter how conventional or obvious in itself, can transform an unpatentable

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principle into a patentable process exalts form over substance. A competent draftsman could

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attach some form of post-solution activity to almost any mathematical formula.’”). The

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patentee’s actions here – merely adding the phrase “computer implemented method” to the

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preamble of claims otherwise directed to an abstract idea – is the poster child for impermissive

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“extra-solution” activity.

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In the wake of Bilski II, numerous courts have found that the nominal recitation in a

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method claim of a general purpose computer such as found in the claims of the ’459 patent cannot

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save such claims from being found unpatentable pursuant to 35 U.S.C. § 101. See, e.g., CLS

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Bank Int'l, 2011 U.S. Dist. LEXIS 23669, at *43-44 (methods of exchanging financial obligations

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between parties were not directed at patentable subject matter even though they were performed

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on a computer because “[t]he Court concludes that nominal recitation of a general-purpose

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computer in a method claim does not tie the claim to a particular machine or apparatus or save the
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claim from being found unpatentable under § 101”); Fuzzysharp Techs., Inc. v. 3D Labs, Inc.,

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Ltd., No. 07-5948, 2009 U.S. Dist. LEXIS 115493, *12 (N.D. Cal., Dec. 11, 2009) (ruling that

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method claims directed at finding invisible surfaces in a 3-D rendering process using a computer

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were not directed at patentable subject matter because “[c]ourts applying Bilski have concluded

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that the mere recitation of ‘computer’ or reference to using a computer in a patent claim [is]

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insufficient to tie a patent claim to a particular machine”) (emphasis in original), vacated on

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other grounds, 2011 U.S. App. LEXIS 22274 (Fed.Cir. Nov. 4, 2011); Bancorp Servs., 771 F.

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Supp. 2d at 1065 (finding that systems and methods directed at calculating a value for life

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insurance policies were not directed at patentable subject matter despite the fact that they were

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performed on a computer because “[t]he recitation of the computer, computer system, and

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computer readable media do not satisfy the ‘machine’ prong of the machine-or-transformation

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test”); Glory Licensing LLC v. Toys “R” Us, Inc., No. 09-4252, 2011 U.S. Dist. LEXIS 51888, at

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*6-7 (D.N.J. May 16, 2011) (unpublished opinion) (ruling that methods for extracting information

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from an input file and transmitting that information to an application program using ‘content

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instructions’ and ‘customizable transmission format instructions’ on a programmed computer was

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not directed to patentable subject matter because “[t]he case law is clear that simply the use of a

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programmed computer is not sufficient to satisfy the machine or apparatus prong of the test”).

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

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

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

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

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

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claim’s scope.” Bilski I, 545 F.3d at 961-62. For such claims to be considered as being

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

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

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

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Cherkas, No. 2009-11287, 2010 WL 4219765, at *3 (B.P.A.I. Oct. 25, 2010). In the claims of the

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’459 patent, no such limitation or specific operation exists; accordingly, the claims fail the

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machine prong of the machine-or-transformation test.
Nor can the ’459 patent be saved by arguing that the claims are tied to a machine because

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they are directed towards activity that inherently must take place over a network. The Federal

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Circuit squarely rejected that argument in CyberSource, finding similar network claims too

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ephemeral to satisfy the machine prong of the test. See Cybersource, 654 F.3d at 1370 (rejecting

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Patentee’s argument that the claims are performed “over the Internet” as satisfying the machine

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prong and finding that the “over the Internet” aspects of the claim are not integral to that which

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was claimed). Even more, any network activity is superfluous to the claims of the ’459 patent

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which are directed at the categorization, labeling, and subsequent controlling of the use of

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“network pages.” The notion that the claims of the ’459 patent are “network implemented” is

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simply “extra-solution” activity and equally misplaced.

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2.

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

The sine qua non of the transformation test is the transformation of one thing into another.
“Transformation and reduction of an article ‘to a different state or thing’ is the clue to the
patentability of a process claim that does not include particular machines.” Bilski II, 130 S. Ct. at
3226-3227 (quoting Benson, 409 U.S. at 70). As the Federal Circuit explained in articulating the
test, “[a] claimed process is patent-eligible if it transforms an article into a different state or
thing.” Bilski I, 545 F.3d at 962. No such transformation takes place in the claims of the ’459
patent.
At its heart, the purported invention of the ’459 patent relates to the labeling of network
pages. Neither the network pages nor anything else in the claims are transformed in any way.
Rather the pages are being categorized using labels, and the claimed categorizations are
themselves a mere abstraction. The addition of a label to a network page is not transformative.
As Bilski I informs, “[p]urported transformations or manipulations simply of public or private
legal obligations or relationships, business risks, or other such abstractions cannot meet the test
because they are not physical objects or substances, and they are not representative of physical

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objects or substances.” 545 F.3d at 963. This assignment of a label relating to copyright status of

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a network page is exactly the kind of manipulation of legal obligation (i.e., the copyright status)

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and of abstract categorization, that Bilski I clearly informs is not the kind of “transformation”

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required under the transformation prong of the test. See, e.g., In re Ferguson, 558 F.3d 1359,

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1364 (Fed. Cir. 2009) (“Nor do Applicants’ methods, as claimed, transform any article into a

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different state or thing. At best it can be said that Applicants’ methods are directed to organizing

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business or legal relationships in the structuring of a sales force (or marketing company).”).

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Any argument that the transformation test is satisfied because the underlying

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categorizations are taking place on a computer and, thus, the underlying electrons of the various

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memory systems are being “transformed” would be squarely misplaced. See, e.g., CLS Bank Int'l,

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2011 U.S. Dist. LEXIS 23669, at *35-36 (soundly rejecting an argument that its claims satisfy the

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transformation test “because data would necessarily have to be manipulated, and on a

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microscopic level, a hard drive, for instance, would be ‘transformed’ by the process of

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‘magnetizing or demagnetizing part of a hard disk drive platter corresponding to a bit of data’”).

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Moreover, because (1) a transformation only satisfies the test if the “transformation [is] central to

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the purpose of the claimed process,” Bilski I, 545 F.3d at 962, and because (2) the claims of the

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’459 patent are not directed towards the manipulation of computer memory, any such argument

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

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

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claims fail this prong of the test as well.

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B.

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The Claims of the ’459 Patent Are Directed at an Abstract Idea
As indicated above, the machine-or-transformation test is not the sole test for whether

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something constitutes an abstract idea for patentability under 35 U.S.C. § 101. As the Supreme

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Court found in Bilski II, and as the Federal Circuit more recently reminded us in CyberSource, it

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can also be appropriate to analyze the nature of the claims and determine whether they seek to

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claim an abstract idea (or other unpatentable subject matter).

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An idea is not patentable if it represents an abstract idea. Bilski II, 130 S. Ct. at 3225

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(quoting Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980)). However, “[t]here is no clear

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definition of what constitutes an abstract idea. . . .” CLS Bank Int’l, 2011 U.S. Dist. LEXIS

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23669, at *29. As noted recently by the Federal Circuit, “the Supreme Court did not presume to

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provide a rigid formula or definition for abstractness.” Research Corp. Techs. v. Microsoft Corp.,

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627 F.3d 859, 868 (Fed. Cir. 2010).

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In Bilski II, the Supreme Court found that the patent claims-in-question did nothing more

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than take the basic concept of hedging risk and attempt to apply it broadly to the markets of

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commodities and energy trading. As the Court indicated:

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[t]he concept of hedging, described in claim 1 and reduced to a
mathematical formula in claim 4, is an unpatentable abstract idea, just like
the algorithms at issue in Benson and Flook. Allowing petitioners to
patent risk hedging would pre-empt use of this approach in all fields, and
would effectively grant a monopoly over an abstract idea.

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Bilski II, 130 S. Ct. at 3231. Like the claims at issue in Benson and Flook, the claims of the ’459

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patent are directed to an abstract idea, and are, consequently, unpatentable.

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1.

The Claims of the ’459 Patent Are Not Patent Eligible Are Directed to
Mental Steps and Are Not Patent Eligible

As the Federal Circuit recently affirmed in CyberSource, patent claims should be rejected
when – as is the case here – they are directed to a mental process (i.e., “a subcategory of
unpatentable abstract ideas”). CyberSource Corp., 654 F.3d at 1371. In other words, methods
that can be performed mentally (or which are “the equivalent of human mental work”) are
unpatentable. Id. The claims of the ’459 patent are directed to unpatentable mental processes and
should therefore be held invalid.
As detailed above, distilled to their constituent parts, the substantive steps of the claims
are ’459 patent are:

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1.

Providing a list of categories;

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Assigning a network page to the “list of categories;”

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3.
Providing a label to the network page using the copyright
status of the material on the page; and

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4.
Controlling usage based on the label and the copyright status
of the page.
The claims of the ’459 patent are the antithesis of patentable subject matter for the very reason
that they represent steps that can be performed mentally by a human. Id. at 1372. (“It is clear that
unpatentable mental processes are the subject matter of claim 3. All of claim 3’s method steps
can be performed in the human mind, or by a human using pen and paper.”). With respect to the
instant claims, a person can provide a list of categories; that same person can assign a network
page to the list of categories; that same person can label the page using the copyright status of the
network page; and that same person could then control usage of the page based on the label and
the page’s copyright status. Each of these steps can essentially be performed in the human mind.
Accordingly, the claims of the ’459 patent represent an unpatentable abstract idea. Id. at 1373.
These same four steps are present in each and every claim. With respect to the two other
independent claims (claims 30 and 31), the above mental steps analysis is identical (claim 30
differs from claim 1 only through the additional limitation that the “categorization label indicates
a set of categories and subcategories to which the network page is assigned”) (claim 31 differs
only in that the copyright status is limited to “public domain, fair use only, use with attribution,
and permission of copyright owner needed”). Claims 2 through 29 (which all ultimately depend
from claim 1) include additional elements such as categorization by subject matter, categorization
by copyright status of the material on the page, categorization based on the types of files
associated with a page, and various other similar refinements, none of which brings the claims
into the area of patentable subject matter.
This mental steps analysis is borne out by the patent examiner’s original 101 rejection. As
discussed above, during prosecution, all the claims of the ’459 patent were rejected as being
directed to an abstract idea with the patent examiner using the very same reference to “pen and
paper” utilized by the Federal Circuit in CyberSource. The examiner’s exact words in rejecting
these claims were, “[n]ote as presently written the claim simply recites a series of steps [of] an
abstract idea that can be implemented with a pen and paper.” The patentee conceded this

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point, and in response simply amended the preamble of the claims to recited that the method

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occurs on a computer.

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Nor do the claims of the ’459 patent represent a specific application of an abstract idea.

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As the Federal Circuit recently explained, “inventions with specific applications or improvements

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to technologies in the marketplace are not likely to be so abstract that they override the statutory

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language and framework of the Patent Act.” Ultramercial, 657 F.3d at 1328 (quoting Research

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Corp. Techs., 627 F.3d at 869). The claims here are completely devoid of any such specific

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application or improvement to technologies in the marketplace. Rather they simply attempt to

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cover the notion of categorizing and labeling web pages based on their copyright status and then

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controlling access in light of such categorization ungrounded from any specific application or

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technology. Accord, Accenture Global Servs., 2011 U.S. Dist. LEXIS 57853, at *21 (“The

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patents are directed to concepts for organizing data rather than to specific devices or systems, and

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limiting the claims to the insurance industry does not specify the claims sufficiently to allow for

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their survival.”). The claims are accordingly abstract and directed toward mental steps – not the

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specific application an abstract idea – and are, therefore, unpatentable.

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2.

As in Benson and Flook the Claims of the ’459 Patent are Directed to an
Unpatentable Abstract Idea

Notwithstanding that the claims are invalid as subject to the “mental steps” doctrine, the
claims of the patent do nothing more than recite an abstract idea. Viewed in their best light, the
claims of the ’459 patent are directed at the idea of categorizing a “network page” by the page’s
copyright status and whether the page is related to “transacting business” or “providing
information” and then controlling access to the network page based on its characterizations. Just
as the Supreme Court found in Bilski II, these claims are like those rejected in the Benson and
Flook cases.
In Benson, the Court affirmed the rejection of a patent application for “an algorithm to
convert binary-coded decimal numerals into pure binary code.” Bilski II, 130 S. Ct. at 3230
(citing Benson, 409 U.S. at 64-67). The Court explained that “‘one may not patent an idea,’ but

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

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

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

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

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signals . . . in a shift register.” Benson, 409 U.S. at 73-74. Notwithstanding this underlying

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structure, (i.e., the shift register), the claim was determined to be invalid as an unpatentable

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algorithm. The Court found that the claim was not limited to a practical application, explaining

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

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

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409 U.S. at 72).
Similarly, in Flook, the Court was presented with claims to “a procedure for monitoring

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the conditions during the catalytic conversion process in the petrochemical and oil-refining

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industries,” where the “only innovation was reliance on a mathematical algorithm.” Id. (citing

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Flook, 437 U.S. at 585-86). As the Court explained, the “patent application describes a method of

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updating alarm limits” where “[i]n essence, the method consists of three steps: an initial step

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which merely measures the present value of the process variable (e.g., the temperature); an

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intermediate step which uses an algorithm to calculate an updated alarm limit value; and a final

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step in which the actual alarm limit is adjusted to the updated value.” Flook, 437 U.S. at 585.

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As in Benson, the claims were held unpatentable under Section 101. Even though the

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claims “had been limited so that [the invention] could still be freely used outside [the limited

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fields claimed by the patent (i.e., the petrochemical and oil-refining industries)],” they

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nevertheless were not patent-eligible because once the particular algorithm was removed from

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consideration, “‘the application, considered as a whole, contain[ed] no patentable invention.’”

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Bilski II, 130 S. Ct. at 3230 (quoting Flook, 437 U.S. at 589-90 & 594). As explained in Bilski II,

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“Flook stands for the proposition that the prohibition against patenting abstract ideas ‘cannot be

26

circumvented by attempting to limit the use of the formula to a particular technological

27

environment’ or adding ‘insignificant postsolution activity.’” Id. (quoting Diehr, 450 U.S. at

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191-92).
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The facts here are within the four corners of Benson and Flook. As the Examiner

1
2

indicated in initially rejecting all of the claims of the ’459 patent, the claims “simply recite[] a

3

series of steps [of] an abstract idea that can be implemented with a pen and paper.” Maikish

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Decl., Ex. 6 at 2. This assessment was – and remains – correct. Notably, the patentee did not

5

object to the Patent Examiner’s conclusion, and, instead, merely amended the claims, per the

6

examiner’s suggestion, to include the phrase “a computer implemented method.” Maikish Decl.,

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Ex. 7, at 5 and 6. (“In response, the preamble of claims 1, [30], and [31] are amended per the

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Examiner’s suggestion to satisfy the requirements of 35 U.S.C. § 101.” Id. at 7. That the

9

patentee followed the suggestion of the Patent Examiner (especially in light of the fact that the

10

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

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

12

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

13

V.

14

CONCLUSION
The recent weight of jurisprudence on Section 101 conclusively demonstrates that this

15

case should not move forward. During prosecution of the patent-in-suit, the Examiner was

16

correct in noting that the claims of the ’459 patent constitute an abstract idea and, in fact,

17

represent nothing more than that which could be implemented “with a pen and paper.” Even

18

though the patentee followed the advice of the Examiner, the solution, to simply direct the

19

method of the claims to run on a general purpose computer, does not cure the problem. Taking an

20

abstract idea and implementing it on a general purpose computer does not constitute a patentable

21

invention pursuant to 35 U.S.C. § 101. Accordingly, for the above reasons, the claims of ’459

22

should be declared invalid for lack of patentable subject matter.

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Dated: December 23, 2011

Respectfully submitted,
KAYE SCHOLER LLP
By:

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/s/ Michael J. Malecek
Michael J. Malecek
Kenneth M. Maikish
Attorneys for Defendant
GOOGLE INC.

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