IconFind, Inc. v. Google, Inc.

Filing 77

OPPOSITION by IconFind, Inc. to 73 RENEWED MOTION for Judgment on the Pleadings. (Attachments: # 1 Declaration, # 2 Exhibit A, # 3 Exhibit B, # 4 Exhibit C, # 5 Exhibit D)(Folgers, Anna) Modified on 1/10/2012 (Meuleman, A).

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WILKE, FLEURY, HOFFELT, GOULD & BIRNEY, LLP
Thomas G. Redmon (SBN 47090)
[e-mail]
Daniel L. Baxter (SBN 203862)
[e-mail]
400 Capitol Mall, 22nd Floor
Sacramento, CA 95814
Phone: [phone]
Fax: [phone]

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NIRO, HALLER & NIRO
Raymond P. Niro (Admitted Pro hac vice)
[e-mail]
Raymond P. Niro, Jr. (Admitted Pro hac vice)
[e-mail]
Brian E. Haan (Admitted Pro hac vice)
[e-mail]
Anna B. Folgers (Admitted Pro hac vice)
[e-mail]
181 West Madison, Suite 4600
Chicago, IL 60602-4515
Phone: [phone]
Fax: [phone]

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Attorneys for Plaintiff, IconFind, Inc.

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IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF CALIFORNIA
ICONFIND, INC.,

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

v.
GOOGLE INC.,
Defendant.

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

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TABLE OF CONTENTS

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I.

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

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II.

THE PATENT-IN-SUIT ..................................................................................................... 1

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III.

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

Invalidity is Not Amenable to a Motion for Judgment on the Pleadings (or a
Motion to Dismiss) ................................................................................................. 3

B.

Introduction to the Section 101 Exceptions, Tests, Factors and Precedent ............ 7

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C.

The Subject Matter of the '459 Patent is Not An "Abstract" Idea .......................... 9

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D.

The '459 Patent Claims Patent-Eligible Subject Matter Under the Machine or
Transformation Test (“MOT”) .............................................................................. 14

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1.

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The Claims of the ‘459 Patent Meet the Transformation Prong of the
MOT Test .................................................................................................. 18

E.

The Claims of the ‘459 Patent Are Directed To Patentable Subject Matter In
Light of The Supreme Court’s “Guidepost” Set of Cases ................................... 20

F.

The Prosecution History of the ‘459 Patent Supports A Finding That the ‘459
Patent is Directed To Eligible Subject Matter ...................................................... 22

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

2.

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IV.

CONCLUSION ................................................................................................................. 24

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PLAINTIFF'S RESPONSE IN OPPOSITION TO DEFENDANT'S RENEWED MOTION FOR JUDGMENT ON THE
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Table of Authorities

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FEDERAL CASES

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

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Altoona Publix Theatres, Inc. v. American Tri-Ergon Corp.,
294 U.S. 477 (1935) ...................................................................................................................3

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Applied Materials, Inc. v. Advanced Semiconductor Materials Am., Inc.,
98 F.3d 1563 (Fed. Cir. 1996)..................................................................................................23

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Bancorp Services, L.L.C. v. Sun Life Assur. Co. of Canada,
2011 WL 665679 (E.D. Mo. Feb 14, 2011) .......................................................................17, 18
Bilski v. Kappos,
130 S. Ct. 3218 (2010) ..................................................................................................... passim
Bird Barrier America, Inc. v. Bird-B-Gone, Inc.,
2010 WL 761241 (C.D. Cal. Mar. 1, 2010) ...............................................................................7
Burr v. Duryee,
68 U.S. (1 Wall.) 531 (1863) ...................................................................................................14
Cima Labs, Inc. v. Actavis Group HF,
2007 WL 1672229 (D. N.J. Jun. 7, 2007) ..................................................................................6
CLS Bank Intern. v. Alice Corp. Pty. Ltd.,
2011 WL 802079 (D.D.C. Mar. 9, 2011).......................................................................4, 16, 17

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Continental Can Co. v. Monsanto Co.,
948 F.2d 1264 (Fed. Cir. 1991)..................................................................................................3

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

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Cybersource Corp. v. Retail Decisions, Inc.,
620 F. Supp. 2d 1068 (N.D. Cal. March 27, 2009) ....................................................................4
Cybersource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366 (Fed. Cir. 2011)................................................................................................12

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Deston Therapeutics LLC v. Trigen Laboratories Inc.,
723 F. Supp. 2d 665 (D. Del. 2010) .......................................................................................5, 6

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Diamond v. Diehr,
450 U.S. 175 (1981) .......................................................................................................9, 20, 21

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

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Gottschalk v. Benson,
409 U.S. 63 (1972) .........................................................................................................9, 14, 20
Hyatt v. Kappos,
625 F.3d 1320 (Fed. Cir. 2010) (en banc) ...............................................................................23
In re Bilski,
545 F.3d 943 (Fed. Cir. 2008).......................................................................................... passim

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

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In re Nuijten,
500 F.3d 1346 (Fed. Cir. 2007)................................................................................................14

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In re Schrader,
22 F.3d 290 (Fed. Cir. 1994)....................................................................................................16
Jones v. Hardy,
727 F.2d 1524 (Fed. Cir. 1984)..................................................................................................4
King Pharms., Inc. v. Eon Labs, Inc.,
616 F.3d 1267 (Fed. Cir. 2010)..................................................................................................4
Parker v. Flook,
437 U.S. 584 (1978) .......................................................................................................9, 15, 20
Progressive Cas. Ins. Co. v. Safeco Ins. Co.,
2010 WL 4698576 (N.D. Ohio Nov. 12, 2010) .........................................................................6
Sandt Tech., Ltd. v. Resco Metal & Plastics Corp.,
264 F.3d 1344 (Fed. Cir. 2001)..................................................................................................4

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SIRF Tech., Inc. v. Int'l Trade Comm'n,
601 F.3d 1319 (Fed. Cir. 2010)..........................................................................................17, 18

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State Street Bank & Trust Co. v. Signature Fin. Group, Inc.,
149 F.3d 1368 (Fed. Cir. 1998)..............................................................................................4, 5

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Technology Patents, LLC v. Deutsche Telekom AG,
573 F.Supp.2d 903 (D. Md. 2008) .............................................................................................7
Ultramercial, LLC v. Hulu LLC,
2010 WL 3360098 (C.D. Cal. Aug. 13, 2010) ...........................................................................5
Ultramercial, LLC v. Hulu LLC,
657 F.3d 1323 (Fed. Cir. 2011) (rehearing en banc denied Nov. 18, 2011) ................... passim

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

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Yangaroo Inc. v. Destiny Media Techs., Inc.,
2009 WL 2836643 (E.D. Wis. Aug. 31, 2009) ..........................................................................6
FEDERAL STATUTES
35 U.S.C. 282 ...................................................................................................................................4
35 U.S.C. § 101 ...................................................................................................................... passim

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35 U.S.C. § 282 ................................................................................................................................3

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RULES

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Rule 12(b)(6) ....................................................................................................................................6

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REGULATIONS

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75 Fed. Reg 43, 992 (July 27, 2010) (“Interim Guidelines”) ..........................................................9

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PLAINTIFF'S RESPONSE IN OPPOSITION TO DEFENDANT'S RENEWED MOTION FOR JUDGMENT ON THE
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I.

INTRODUCTION

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

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

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motion fails as a matter of law on a number of grounds.

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

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for patentability under Section 101 of Title 35 because it allegedly claims an “abstract idea.”

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The law is unwavering: invalidity due to Section 101 deficiencies is intimately tied to claim

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construction and involves underlying legal and factual issues. This issue simply cannot be

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determined at this stage in the litigation. Even further, Google asks the Court to declare all

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claims of the patent-in-suit invalid, yet does not address individually why each claim is allegedly

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invalid. Hence, Google has outright ignored and has plainly not met its “clear and convincing”

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burden of proof as to each claim in the patent-in-suit.

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Second, the United States Patent and Trademark Office (“USPTO”) has indeed heard and

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has vetted the exact same argument that Google now asserts. It is clear that the claims are

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directed to patentable subject matter under all applicable statutory and case precedent. This

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Court should find – just as the USPTO found – that the claims of the patent-in-suit are directed

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towards much more than an abstract idea and meet the requirements of Section 101.
For these and the following reasons, Google’s renewed motion should be denied.

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II.

THE PATENT-IN-SUIT

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

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

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

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

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

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

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

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

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1.
comprising:

A computer implemented method of categorizing a network page,

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providing a list of categories, wherein said list of categories include a category for
transacting business and a category for providing information, and wherein said
list of categories include a category based on copyright status of material on a
page;

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assigning said network page to one or more of said list of categories;

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providing a categorization label for the network page using the copyright status of
material on the network page;

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

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(Id. at Col. 12, ll. 24-38). Claim 1 identifies three types of categories: (1) a category for
providing information; (2) a category for transacting business; and (3) a category based on
copyright status of material on a page. (‘459 Patent, Col. 12, ll. 24-38, Ex. A). The network
page is assigned a label based on at least the copyright status of the material on the page. That
label, along with the copyright status of the network page, are used to control usage of the page.
The two other independent claims are Claims 30 and 31. Claim 30 includes the step of
providing a categorization code for labeling a page:
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…
(Id. at Col. 14, Ex. A). Claim 31 includes more specific types of copyright categories to which
the network pages may be assigned:
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
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comprises categories related to public domain, fair use only, use with attribution,
and permission of copyright owner needed…
Id. The other 28 dependent claims contain additional details, for instance, concerning the types
of categories to which a page may be assigned, what the categorization label is comprised of and
that the label is recognizable by a search engine. (Id. at Col. 12-14).
III.

APPLICABLE LEGAL STANDARD
A.

Invalidity is Not Amenable to a Motion for
Judgment on the Pleadings (or a Motion to Dismiss)

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A patent is presumed valid. 35 U.S.C. § 282. Accordingly, the party challenging validity

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bears the heavy burden of proving by clear and convincing evidence that the patent is invalid. In

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re Comiskey, 554 F.3d 967, 975 (Fed. Cir. 2009). While the determination of whether an

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asserted claim is invalid for lack of subject matter patentability under 35 U.S.C. § 101 is a

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question of law, In re Bilski, 545 F.3d 943, 950 (Fed. Cir. 2008) (“Bilski I”), the question may

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involve several factual underpinnings. See In re Comiskey, 554 F.3d at 975 (noting that “the

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legal question as to patentable subject matter may turn on subsidiary factual issues”).

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"'The burden of establishing invalidity of a patent or any claim thereof shall rest on the

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party asserting such invalidity.' … This burden 'exists at every stage of the litigation.'" Abbott

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Labs. v. Sandoz, Inc., 544 F.3d 1341, 1346 (Fed. Cir. 2008) (emphasis added). Google must

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meet this “clear and convincing” burden of proof independently for each claim because “[e]ach

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claim carries an independent presumption of validity, 35 U.S.C. § 282, and stands or falls

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independent of the other claims.” Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1266-

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1267 (Fed. Cir. 1991) (citing Altoona Publix Theatres, Inc. v. American Tri-Ergon Corp., 294

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U.S. 477, 487 (U.S. 1935) (“And each claim must stand or fall, as itself sufficiently defining

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invention, independently of the others”)). Accordingly, it is reversible error to hold any claim

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invalid in the absence of clear and convincing evidence specifically directed to that particular

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claim. Sandt Tech., Ltd. v. Resco Metal & Plastics Corp., 264 F.3d 1344, 1356 (Fed. Cir. 2001)

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(“Because dependent claims contain additional limitations, they cannot be presumed to be

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invalid as obvious just because the independent claims from which they depend have properly

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been so found”).

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

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

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

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method.’” (Def.’s Mem., Dkt. No. 74, pp. 6). Google invites error by focusing solely on that

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

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

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

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

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

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

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

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

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

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denied.

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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construed anew and/or that additional constructions are necessary.

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In Google’s initial motion, Google cited only one case for the proposition that the issue of

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patent validity may be determined at this early stage of litigation without the benefit of a claim

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construction or expert testimony. See Ultramercial, LLC v. Hulu LLC, 2010 WL 3360098 (C.D.

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Cal. Aug. 13, 2010). Since that time, the Federal Circuit heard Ultramercial’s appeal and

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reversed and remanded the district court’s decision, finding that “the claimed invention was not

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so manifestly abstract as to override the statutory language of section 101.” Ultramercial, LLC

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v. Hulu LLC, 657 F.3d 1323, 1330 (Fed. Cir. 2011) (rehearing en banc denied Nov. 18, 2011).

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The Federal Circuit in Ultramercial, while stating that a claim construction was not necessary in

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that particular case, explained why it is helpful:

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On many occasions … a definition of the invention via claim construction can clarify the
basic character of the subject matter of the invention. Thus, claim meaning may clarify
the actual subject matter at stake in the invention and can enlighten, or even answer,
questions about the subject matter abstractness.

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657 F.3 1323 at 1325. This reasoning is applicable to this case and numerous other district

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courts have agreed. For example in Progressive Cas. Ins. Co. v. Safeco Ins. Co., 2010 WL

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

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court explained:

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

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Id. at *5. The reason for this is simple: claim construction is an issue of law for the judge to

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

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

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

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non-infringement:

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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B.

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Even if it were necessary to reach the merits of Google’s motion before a claim

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construction in this case, it is clear that the ‘459 Patent meets the requirements for patentability

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

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under 35 U.S.C. § 101, and controlling Supreme Court and Federal Circuit precedent. While the

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Supreme Court has consistently construed Section 101 broadly, the Court’s precedent provides

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three limited exceptions to the scope of Section 101 of Title 35: (1) laws of nature; (2) physical

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phenomena; and (3) abstract ideas. Bilski v. Kappos, 130 S. Ct. 3218, 3225 (2010) (“Bilski II”).

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Under these exceptions, Google only asserts that the ‘459 Patent is unpatentable for claiming an

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"abstract idea." The Federal Circuit has described the concept of an abstract idea as “whether the

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Applicants are seeking to claim a fundamental principle (such as an abstract idea) or mental

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process.” Bilski I, 545 F.3d at 952.

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

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

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

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

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

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As the Federal Circuit in Ultramercial recently explained:

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While the machine-or-transformation logic served well as a tool to evaluate the
subject matter of Industrial Age processes, that test has far less application to
inventions of the Information Age. Technology without anchors in physical
structures and mechanical steps simply defy easy classification under the
machine-or-transformation categories.
As the Supreme Court suggests,
mechanically applying the physical test risks obscuring the larger object of
securing patents for valuable inventions without transgressing the public domain.

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Ultramercial, 657 F.3d at 1327 (citations omitted). In this case, the inventions of the ‘459 Patent

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are directed to assigning a network page to one or more categories based on at least the copyright

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status of the material, and providing a label which is used to control usage of the page. As in

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Ultramercial, the inventions have no “anchor in physical structure” as they involve the acts of

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software that cannot be seen and network pages that cannot be touched. Hence, this is the

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precise situation that the Federal Circuit identified where the application of the MOT test will be

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less helpful, if at all.

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Moreover, while Google correctly notes that the USPTO continues to use the MOT Test

4

as an indicator of patentability, what Google fails to mention (or analyze) is that the USPTO, in

5

offering guidelines on this issue, identified a number of factors that should be weighed to

6

determine whether a method claim is directed to an abstract idea, and is thus ineligible for patent

7

protection under 101. See “Interim Guidance for Determining Subject Matter Eligibility for

8

Process Claims in View of Bilski v. Kappos,” 75 Fed. Reg 43, 992 (July 27, 2010) (“Interim

9

Guidelines”) (Ex. B).

10

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

11

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

12

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

13

Ct. at 3229-3231. In addressing the Section 101 tools and authority in turn below, there is no

14

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

15

C.

16

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

17

in several cases whether the subject matter of an invention was "abstract.” Several cases are

18

instructive here.

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

19

First, in Research Corporation Technologies vs. Microsoft Corporation, the Federal

20

Circuit assessed an invention for a "'process' for rendering a halftone image," which allows

21

computers to display numerous colors using a limited number of pixel colors. 627 F.3d 859,

22

863, 868 (Fed. Cir. 2010). The court recognized that the "Supreme Court did not presume to

23

provide a rigid formula or definition for abstractness," but instead, "invited this court to develop

24

'other limiting criteria that further the purposes of the Patent Act." Id. at 868. With that

25

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1

guidance, the court stated that it "will not presume to define 'abstract' beyond the recognition that

2

this disqualifying characteristic should exhibit itself so manifestly as to override the broad

3

statutory categories of eligible subject matter and the statutory context that direct primary

4

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

5

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

6

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

7

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

8

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

9

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

10

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

11

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

12

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

13

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

14

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

15

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

16

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

17

In Ultramercial, 657 F.3d 1323, the Federal Circuit reversed a district court’s dismissal of

18

Ultramercial’s claims for failure to claim statutory subject under Section 101. The claimed

19

method was a method for monetizing and distributing copyrighted products over the Internet. In

20

finding that the invention “as a practical application of the general concept of advertising as

21

currency and improvement to prior art technology” was not “so manifestly abstract as to override

22

the statutory language of section 101,” the Court first applied the analysis tool set forth in

23

Research Corp. and assessed whether the inventions had a specific application or improvement to

24

technologies in the marketplace. Id. at 657 F.3d at 1330, 1328. The Court noted that “[b]y its

25

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1

terms, the claimed invention purports to improve existing technology in the marketplace” by

2

introducing a method of online advertising purported to solve the problem of declining

3

clickthrough rates through banner ads, for instance. Id. at 1328. The Court reasoned that while

4

the “mere idea that advertising can be used as a form of currency is abstract” it did “not simply

5

claim the age-old idea that advertising can serve as currency.” Id. To the contrary, the patent

6

“discloses a practical application of this idea.” To support this assertion the Court noted that

7

“[m]any of the steps are likely to require intricate and complex computer programming.” Id.

8

Moreover, “certain of these steps clearly require specific application to the Internet and cyber-

9

market environment.” Id. “One clear example is the third step, ‘providing said media products

10

for sale on an Internet website … [a]nd, of course, if the products are to be ‘offered; for sale on

11

the Internet, they must be ‘restricted’ – step four – by complex computer programming as well.”

12

Notably for the purposes of this case the court explained:

13
14
15
16

Viewing the subject matter as a whole, the invention involved an extensive computer
interface. This court does not define the level of programming complexity required
before a computer-impleneted method can be patent eligible. Nor does this court hold
that the use of an Internet website to practice such a method is either necessary or
insufficient in every case to satisfy § 101.
Id. at 1328.

17

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

18

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

19

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

20

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

21

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

22

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

23
24
25
26

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1

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

2

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

3

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

4

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

5

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

6

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

7

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

8

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

9

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

10

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

11

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

12

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

13

Google relies on Cybersource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (2011) to

14

argue that the “substantive steps” of the claims of the ‘459 Patent “can essentially be performed

15

by the human mind” and hence, represent an unpatentable abstract idea. The patent-in-suit and

16

reasoning in Cybersource are easily distinguishable from the case at hand.

17

In Cybersource, the claim at issue “simply requires one to ‘obtain and compare intangible

18

data pertinent to business risks.’”

Id. at 1370.

Hence, the Court found that “[t]he mere

19

collection and organization of data regarding credit card numbers and Internet addresses is

20

insufficient to meet the transformation prong of the test, and the plain language of claim 3 does

21

not require the method to be performed by a particular machine, or even a machine at all”. Id.

22
23
24
25
26

1

In IconFind Inc. v. Yahoo! Inc., No. Civ. 09-109 WBS JFM, Order of Dec. 14, 2009
(Dkt. No. 50), Judge Shubb construed the term “network page” as “page on the Internet, private
corporate network, local area network or other network.”
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1

As explained above, the inventions of the ‘459 Patent cannot simply be performed in the

2

human mind.

Like the patents addressed in the Ultramercial and Research Corporation

3

Technologies decision, IconFind's patent "presents functional and palpable applications in the

4

field of computer technology." 627 F.3d at 868-869. As the background of the '459 Patent

5

explains, "[t]he Internet contains over two billion Web pages. It has been estimated that two

6

million Web pages are added to the Internet each day (The Industry Standard, Feb. 28, 2000).

7

This vast amount of information is a tremendous resource for the public to use. However, there

8

is no effective way for a user to obtain relevant information." ('459 Patent, Col. 1, ll. 27-32, Ex.

9

A). The '459 Patent also explains that "it is often difficult for a user to determine the copyright

10

status of material on the Internet. There is also no easy way for owners of content to indicate the

11

copyright status of their material. This problem has hampered the flow of information and left

12

both the owners of content and users confused and potentially in legal jeopardy." (Id. at Col. 2,

13

ll. 66 - Col. 3, ll. 4, Ex. A). The inventions claimed in the '459 Patent were designed to address

14

these problems, and thus have functional and palpable applications in the computer industry.

15

Additionally, like the underlying decision in Research Corporation Technologies,

16

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

17

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

18

74, pp. 6). As discussed above, Claim 1 of the '459 Patent claims a computer implemented

19

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

20

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

21

usage of the network page using the categorization label and copyright status. ('459 Patent, Col.

22

12, ll. 24-38, Ex. A). These multi-faceted inventions plainly have practical applications in

23

Web/Internet development. Clearly, under Ultramercial and Research Technologies, the '459

24

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

25

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

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1

eligible subject matter. See 35 U.S.C. § 101. They are not abstract ideas and they are not simply

2

“mental steps” that can occur in the mind of a person.

3
4
5
6
7
8
9
10
11
12
13
14
15
16

D.

The '459 Patent Claims Patent-Eligible Subject Matter
Under the Machine or Transformation Test (“MOT”)

Google highlights the MOT test in its briefing. However, as noted above, the MOT test
is much less helpful in cases such as the present one, which involve technology without anchors.
Ultramercial, 657 F. 3d at 1327. IconFind still addresses Google’s assertions under this test for
the purposes of providing to the Court a clear and accurate briefing on which to base its decision.
Under the MOT test a method is patent eligible if: (1) “it is tied to a particular machine or
apparatus,” or (2) “it transforms a particular article into a different state or thing.” Bilski I, 545
F.3d at 954. “The use of a specific machine or transformation of an article must impose
meaningful limits on the claim’s scope to impart patent-eligibility.” Id. at 962 (citing Benson,
409 U.S. at 590). In order for a patent to meet the “transformation test,” the invention must
“transform[] an article into a different state or being.” Id. at 962. The '459 Patent satisfies bot
prongs of the test, though it need only satisfy one to be patent eligible.
1.

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

17

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

18

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

19

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

20

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

21

1346, 1356 (Fed. Cir. 2007).

22

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

23

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

This “includes every mechanical device or combination of

24
25
26

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1

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

2

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

3

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

4

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

5

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

6

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

7

servers and software applications thereon provide categories, categorization labels and

8

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

9

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

10

claims is merely an 'insignificant extra-solution." (Def.'s Mem., Dkt. No. 74, p. 9). Google

11

totally misses the mark on the legal concept “post-solution activity”; this concept only applies to

12

claims that include a mathematical algorithm or formula (i.e. "post-solution" means after the

13

mathematical problem is solved). As the Supreme Court explained in Bilski II, the concept of

14

“post-solution activity” surfaced in Flook, 437 U.S. at 585-586. Bilski II, 130 S.Ct. 3218, 3230

15

(2010). In Flook, the claims were directed towards a procedure for monitoring the conditions in

16

the oil industry and the only element the invention added over the prior art was a specific

17

mathematical algorithm. 437 U.S. at 585-586. The claim limited its application however to only

18

the petrochemical and oil-refining industries so that the algorithm could still “be freely used

19

outside the petrochemical and oil-refining industries.” Id. at 589-590. The Court held that the

20

process at issue was unpatentable under Section 101, “because once that algorithm [wa]s

21

assumed to be within the prior art, the application, considered as a whole, contain[ed] no

22

patentable invention.” Id. at 594. As the Supreme Court explained in Bilski II, what Flook

23

really stood for was the “proposition that the prohibition against patenting abstract ideas ‘cannot

24

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

25

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1

environment’ or adding ‘insignificant post-solution activity.’” 130 S Ct. at 3230; see also In re

2

Schrader, 22 F.3d 290, 294 (Fed. Cir. 1994) ("the recitation of insignificant post-solution activity

3

in a claim involving the solving of a mathematical algorithm could not impart patentability to the

4

claim").

5

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

6

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

7

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

8

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

9

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

10

Section 101.2 (Def.'s Mem., Dkt. No. 74, p. 8). However, the cases Google cites for the

11

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

12

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

13

hand.

14

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

15

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

16

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

17

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

18

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

19
20
21
22
23
24
25
26

2

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

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

2

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

3

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

4

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

5

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

6

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

7

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

8

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

9

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

10

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

11

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

12

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

13

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

14

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

15

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

16

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

17

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

18

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

19

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

20

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

21

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

22

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

23

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

24

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

25

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PLEADINGS

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1

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

2

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

3

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

4

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

5

manually.’” Id. at *9.

6

In this case, the claims of the ‘459 Patent are not drawn to a mathematical calculation or

7

algorithm (or any other fundamental law of nature) that was made electronic through the use of a

8

computer for efficiency purposes, as was the case in Bancorp. The inventions of the ‘459 Patent

9

are new and useful methods for categorizing network pages according to content and copyright

10

status. The invention could not be possible without the use of the “computer.” Without the

11

“computer” in Bancorp, one would only be left with an idea for administering and tracking the

12

value of separate-account life insurance policies; in this case, without the “computer,” there

13

would be no inventions. See SIRF Tech., Inc., 601 F.3d at 1333 (holding that the inventions

14

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

15

use of such a receiver").

16
17
18
19
20
21
22
23

2.

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

The “transformation” prong of the MOT Test is met where the method “transforms an
article into a different state or thing.” Bilski I, 545 F.3d at 962. This transformation must also
be “central to the purpose of the claimed process.” Id. at 962. As explained above, the methods
transform network pages through the use of a "categorization label" so that use of the page is
restricted to the category or categories to which the page is assigned, including copyright status.
The pages are transformed when they are correctly labeled. This is important because the pages,
when labeled, provide the ability to notify others of the copyright status of that content. As the

24
25
26

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PLEADINGS

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1

patent explains, "[t]he categorization label will be readable by Web crawlers and may be visible

2

to users. … By selecting one of the four copyright-status indicia and placing it on the end of the

3

categorization label, the creator adds the information governing the use of the material." ('459

4

Patent, Col. 7, ll. 27-28, Ex. A).

5

transformation is "central to the purposes of the claimed process." Bilski I, 545 F.3d at 962.

As required by Bilski I, this "categorization label"

6

Google cites CLS Bank Int’l in asserting that it would be incorrect to argue that “the

7

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

8

the various memory systems are being “transformed.” (Def.'s Mem., Dkt. No. 74, p. 11). Google

9

misses the mark on this preemptive argument. Quite to the contrary, IconFind is not arguing that

10

network pages are transformed because the underlying electrons of the data are being

11

transformed. First, the network pages themselves are being transformed i.e. the underlying code

12

that makes up the pages. Additionally, the network pages may also be transformed by the

13

placement of a visible label. In any event, the network page is being transformed. Bilski I's

14

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

15

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

16

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

17

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

18

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

19

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

20

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

21

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

22

passes muster under the transformation prong of the MOT Test.

23
24
25
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1

E.

2

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

3

The Supreme Court in Bilski II noted that lower courts should look to Gottschalk v.

4

Benson, 409 U.S. 63 (1972), Parker v. Flook, 437 U.S. 584 (1978) and Diamond v. Diehr, 450

5

U.S. 175, 187 (1981)) as “guideposts” to enlighten this inquiry. See Bilski II, 130 S. Ct. at 3229-

6

3231.

7

In Benson, the Supreme Court rejected a patent application for a method for

8

programming a general-purpose computer to convert binary-coded decimal numerals into pure

9

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

10

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

11

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

12

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

13

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

14

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

15

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

16

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

17

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

18

‘459 Patent’s subject matter is unpatentable.

19

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

20

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

21

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

22

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

23

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

24
25
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1

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

2

them and their copyright status.

3

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

4

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

5

does not support Google’s position.

6

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

7

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

8

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

9

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

10

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

11

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

12

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

13

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

14

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

15

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

16

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

17

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

18

at 188, 101 S.Ct. 1048).

In Diehr, “the Court established a limitation on the

19

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

20

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

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

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

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

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

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

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

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network pages assigned to certain categories.

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F.

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

Google clings to the prosecution history of the ‘459 Patent to support its argument that its
claims are drawn to ineligible subject matter under Section 101. Google argues that the rejection
of the claims under Section 101 and the subsequent addition of the phrase “computer
implemented” support a finding of unpatentability. To the contrary, this supports a finding that
the USPTO, when presented with the exact same question the Court is faced with today, found
that the ‘459 Patent was directed to eligible subject matter.
First, Google self-servingly plucks out portions of the file history without context.
Google makes it seem as though Section 101 was the only rejection in the file history, and
improperly infers that the applicant simply added “a computer implemented method” to cure this
problem. However, the independent claims as amended at the time of that rejection were
different than they are today; for instance, Claim 1 read:3

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(See Google’s Request for Judicial Notice, Ex. 1-2, p. 43 (Dkt. No. 31-2)). After a telephone

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interview concerning a separate Section 102 rejection, the examiner issued an Interview

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Summary which indicated that the claims still stood as rejected under Section 101. In the

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The crossed through words were deleted and the underlined words were added by the
applicant.
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applicants' response to the examiner's Section 101 rejection, the applicant amended the claims as

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follows:

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(See Google’s Request for Judicial Notice, Ex. 1-2, p. 75 (Dkt. No. 31-2)). The examiner in his

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response cited no Section 101 rejection. (See Google’s Request for Judicial Notice, Ex. 1-3, pp.

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

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

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

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

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

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

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

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

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response to a Section 101 rejection is improper. For Google to imply that the claims as rejected

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under Section 101 were identical to the issued claims with the exception of the phrase “a

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computer implemented method” is simply an incorrect characterization of the file history.

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

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

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

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

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

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

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the agency charged with examination of patentability”).

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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patentable subject matter under Section 101.

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IV.

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

deny Google’s renewed motion for judgment.

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Respectfully submitted,

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

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NIRO, HALLER & NIRO
Raymond P. Niro (Pro hac vice)
[e-mail]
Raymond P. Niro, Jr. (Pro hac vice)
[e-mail]
Brian E. Haan (Pro hac vice)
[e-mail]
Anna B. Folgers (Pro hac vice)
[e-mail]

Attorneys for Plaintiff, IconFind, Inc.

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CERTIFICATE OF SERVICE
The undersigned hereby certifies that on January 9, 2012 the foregoing
PLAINTIFF'S RESPONSE IN OPPOSITION TO
DEFENDANT'S RENEWED MOTION FOR JUDGMENT ON THE PLEADINGS
was filed with the Clerk of Court using the CM/ECF system, which will then send a notification
of such filing to the following counsel of record.
Michael J. Malecek
[e-mail]
Kenneth Maikish
[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.
I certify that all parties in this case are represented by counsel who are CM/ECF participants.

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/s/ Anna B. Folgers
Attorneys for Plaintiff

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